DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In response to the non-final Office Action (dated 26 January 2026), the Applicant submits the following:
-- Claim 2 has been canceled.
-- Claim 1 has been amended with the limitations previously established by the now canceled claim 2.
-- Claims 13 & 14 have been amended.
The arguments provided by the Applicant have been thoroughly reviewed & fully considered and are ultimately found persuasive in view of the amended claims. However, further search revealed more relevant prior art.
The Applicant argues the invention of the instant application cannot be rendered anticipated or obvious over the prior art of record as Fischer teaches the lowest temperature at which second carboxylic acid (i.e., citric acid) is added was 56°C, whereas the amended claims require the addition of the second carboxylic acid at temperatures below 40°C (Remarks, p. 10, bottom paragraph).
A teaching contained in a reference' s broader disclosure may be relied upon despite not appearing in the reference' s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. See MPEP § 2123.
In this case, although the Applicant is correct that the lowest temperature at which Fischer adds the second carboxylic acid is 56°C, Fischer’s broader disclosure of carrying out polymerization at temperatures in the range of 0°C-120°C and cooling the reaction mixture prior to addition of the second acid provides the necessary information to render the instant application non-obvious, as discussed in the new ground of rejection below.
The Applicant’s arguments with respect to the combination of Fischer and Bellmann are moot in view of the new ground of rejection presented below.
The Applicant argues that the examples presented in the instant specification demonstrate unexpected results that are evidence of non-obviousness. While the minimal increase in viscosity observed in the inventive examples is unexpected, the examples are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The amended claims claim a step of stabilizing the polymer dispersion by adding a second carboxylic acid at a temperature of the polymer dispersion of less than 40°C (Claim 1, lines 16-17). As it stands now, lines 16-17 of Claim 1 establishes the following limitations: (1) any carboxylic acid may be added, and (2) at any temperature below 40°C. However, the amount of experimental data within the present disclosure is not commensurate with the scope of the amended claims. They merely disclose the use of citric acid (as the carboxylic acid) being added to the cooled product at a temperature below 40°C (Specification, p. 27 & 28, [00103]).
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP § 716.02(d). Additionally, applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP § 716.02(b). The examples are therefore insufficient to establish non-obviousness of the claims.
The amended claims further claim a polymer dispersion, wherein the polymer dispersion exhibits substantially no viscosity increase when stored in a drying oven at 40°C for a period of from 2 days to 14 days after formation (Claim 13, lines 10-12). The issue at hand is the undefined descriptor “substantially”, which is a relative term. As said relative term is not a clear quantity, and absent any further definition thereof, the scope of the claim is similarly undefined.
This rejection is FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 13, claim 13 is rejected for the introduction of new matter. The Applicant provides paragraph [0091] and Figure. 4 from the instant Specification (Remarks, p. 9, first paragraph) as support for the new limitations in the amended claim 13. However, paragraph [0091] in the instant Specification does not mention the “…substantially no viscosity increase…” or makes any mention of viscosity changing (Specification, p. 25 & 26, [0091]). On the other hand, although Figure 4 appears to demonstrate some increase in viscosity, the lack of precision in the bulk viscosity values on the Y-axis makes it impossible to accurately determine the quantitative degree of increase. While some increase is present, it is not clear that the claimed “substantially no viscosity increase” has the same scope as the degree of increase shown in Figure 4.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 13 is rejected under 35 U.S.C. § 112(b) as being indefinite.
Regarding claim 13, the amended claim 13 now established the new limitation of “…wherein the polymer dispersion exhibits substantially no viscosity increase when stored in a drying oven at 40°C for a period of from 2 days to 14 days after formation…” (Claim 13, lines 10-12). The issue is ‘substantially’ is a relative term and is not defined quantitatively or expressly in the instant specification or claims.
Absent any further definition of ‘substantial’ or ‘substantially’ from the specification, it is not possible to definitively determine the metes and bounds of the claim. See MPEP § 2173.05.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3 – 12 & 14 are rejected under 35 U.S.C. § 103 as being obvious over Fischer et al. (US 7,323,510 B2).
Regarding claims 1 & 14, Fischer teaches methods for manufacturing water-in-water polymer dispersions containing polymer A and a polymer dispersant B (Abstract). Polymer A is manufactured via a monomer composition comprising cationic and/or non-ionic monomers is used (col. 5, lines 28-39). Ethylenically unsaturated monomers are preferably used as the polymeric dispersant B (col. 2, lines 63-67). The polymer dispersion is formed by subjecting the monomer composition to radical polymerization (col. 1, line 67 – col. 2, line 3), followed by the addition of a water-soluble acid (col. 2, lines 4-6). Particularly suitable acids for this step include carboxylic acids such as dicarboxylic, (poly)carboxylic and/or hydroxycarboxylic acids (col. 2, lines 23-29).
During manufacturing of said polymer dispersion, Fischer details diethylenetriamine pentaacetic acid (DTPA) was added to the mixture, followed by the addition of citric acid (cols. 9 & 10, Examples 1 & 2). DTPA reads on the limitations of the first carboxylic acid and citric acid reads on the second carboxylic acid, as citric acid comprises 3 carboxylic acid groups and is absent of nitrogen. Fischer teaches a pH value of the solution is 5.0 (col. 10, Example 3, line 39) & (col. 13, Example 14, line 56).
Although the experimental trials in Fischer teach a narrow range of temperatures (56°C (col. 13, Example 14) - 86°C (col. 11, Example 4)) at which citric acid is added, Fischer expressly states the polymerization temperature is generally 0°C-120°C (col. 6, line 63), and further emphasizes that it is advantageous to cool the reaction mixture before the addition of the acid (col. 7, lines 4-6). This reads on limitations established by claims 1 & 14. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 3, Fischer teaches the water-soluble acid may be organic or inorganic (col. 2, lines 23-25). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 4, Fischer teaches the pH value of the solution is 5.0 (col. 10, Example 3, line 39) & (col. 13, Example 14, line 56). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05.
Regarding claim 5, Fischer discloses the addition of citric acid (cols. 9 & 10, Examples 1 & 2). Citric acid reads on the second carboxylic acid, as citric acid comprises 3 carboxylic acid groups and is absent of nitrogen. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claims 6 & 7, Fischer teaches monomers suitable for use in the monomer composition, including non-ionic, cationic and amphiphilic monomers, detailed below:
Non-ionic monomers abiding by a general formula (I):
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81
153
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Wherein:
--- R1 is H or methyl,
--- R2 & R3 are H, C1-C5 alkyl or hydroxyalkyl.
Cationic monomers abiding by a general formula (II):
PNG
media_image2.png
84
165
media_image2.png
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Where Y is
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88
286
media_image3.png
Greyscale
Wherein:
--- R1 is H or methyl,
--- Z1 is O, NH, NR4 (where R4 is a C1-C4 alkyl),
--- Y is one of the depicted structures, wherein:
--- Y0 & Y1 are C2-C6 alkylene (possibly substituted with hydroxyl groups)
--- Y2 – Y7 are C1-C6 alkyl
--- Z is a halogen, acetate or SO4CH3
Amphiphilic monomers abiding by a general formula (III):
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media_image4.png
85
240
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Wherein:
--- Z1 is O, NH or NR4 (where R4 is a C1-C4 alkyl),
--- R1 is H or methyl,
--- R8 is C1-C6 alkylene,
--- R5 & R6 are C1-C6 alkyl,
--- R7 is C8-C32 alkyl, aryl &/or aralkyl,
--- Z is a halogen, pseudo-halogen, SO4CH3, acetate or abides by a general formula (IV):
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media_image5.png
84
239
media_image5.png
Greyscale
Wherein:
--- Z1 is O, NH or NR4 (where R4 is a C1-C4 alkyl),
--- R1 is H or methyl,
--- R10 is C8-C32 alkyl, aryl &/or aralkyl,
--- R9 is C2-C6 alkylene, and
--- n is an integer between 1 & 50.
The above teachings of Fischer are found in (col. 3, line 47 – col. 5, line 23; inclusively). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07. These teachings read on limitations established by instant claims 6 & 7.
Regarding claim 8, after detailing monomers abiding by general formula(s) (I) – (IV), Fischer elaborates, stating for the resultant dispersion of the invention, the monomers are employed in quantities of 5 wt.% - 60 wt.% (col. 5, lines 40-43). A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 9, for the polymeric dispersant Fischer gives particular preference that it is 100 wt.% cationic monomers (col. 2, lines 65-66). Fischer teaches cationic monomers abide by a general formula (II) as detailed below:
Cationic monomers abiding by a general formula (II): (col. 4, lines 7-39)
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84
165
media_image2.png
Greyscale
Where Y is
PNG
media_image3.png
88
286
media_image3.png
Greyscale
Wherein:
--- R1 is H or methyl,
--- Z1 is O, NH, NR4 (where R4 is a C1-C4 alkyl),
--- Y is one of the depicted structures, wherein:
--- Y0 & Y1 are C2-C6 alkylene (possibly substituted with hydroxyl groups)
--- Y2 – Y7 are C1-C6 alkyl
--- Z is a halogen, acetate or SO4CH3
It would have been obvious to one of ordinary skill in the art at the time of filing to select formula (II) as the monomer and employ it in the capacity that it constitutes 100 wt.% of the polymeric dispersant. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 10, Fischer teaches the polymeric dispersant is preferably 100 wt.% cationic monomer units derived from various ammonium salts (col. 2, line 63 – col. 3, line 10). In an embodiment, polytrimethylammoniumpropylacrylamide chloride (i.e., DIMAPA quat) was employed in this capacity (col. 9, line 58-64). This aligns with the particularly preferred cationic monomer identified by the inventors (Specification, p. 15, [0054]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Regarding claim 11, Fischer teaches the sequential addition of ingredients (col. 9, line 21, Example 1 – col. 10, line 15, Example 2).
Regarding claim 12, Fischer teaches cationic monomers abide by a general formula (II) as detailed below: (col. 4, lines 7-39)
PNG
media_image2.png
84
165
media_image2.png
Greyscale
Where Y is
PNG
media_image3.png
88
286
media_image3.png
Greyscale
Wherein:
--- R1 is H or methyl,
--- Z1 is O, NH, NR4 (where R4 is a C1-C4 alkyl),
--- Y is one of the depicted structures, wherein:
--- Y0 & Y1 are C2-C6 alkylene (possibly substituted with hydroxyl groups)
--- Y2 – Y7 are C1-C6 alkyl
--- Z is a halogen, acetate or SO4CH3
When Y0 or Y1 is a C2-C6 alkylene, said cationic monomer will have 2 or 3 or 4 ethylenically unsaturated groups. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTIAAN ROELOFSE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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