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 .
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.
Claims 21-22, 24 and 28-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0179427 (herein Ringold) in view of US 2012/0168103 (herein White).
As to claims 21, 30-34, Ringold discloses a process for making a creping adhesive (see paragraph 11-14 and examples) and a creping adhesive thereof comprising:
Reacting a crosslinker and a prepolymer composing polyamidoamine backbones crosslinked by primary crosslinking moieties. Specifically, see paragraph 14 and examples describing that polyamidoamine is crosslinked in a first (primary) reaction and then a second (secondary, or a third) crosslinking reaction is performed, thus reading on a primary crosslinking moiety and a secondary crosslinking moiety. The primary crosslinking moieties are derived from a functionally symmetric crosslinker ()primary) and the second crosslinking is from epihalohydrin (paragraph 56) or a (second) functionally symmetric crosslinker (paragraph 14 describing wherein the second and third step form a functionally symmetric crosslinker) to produce a crosslinked resin. The reaction is in the presence of a solvent such as water (see paragraph 116 and examples). The primary and secondary are in the presence of solvent and/or other materials. See examples.
Ringold is silent on a modified polyvinyl alcohol.
White discloses similar creping adhesive and processes of making them. See abstract, paragraph 13 and examples. White discloses the polyaminoamide crosslinked resin and modified polyvinyl alcohol, wherein the modified polyvinyl alcohol are carboxylated and/or sulfonated. See paragraph 13-14. The presence of the modified polyvinyl alcohol improves adhesive strength, enhances drying efficiency as well as improved crepe quality. See paragraph 13 and examples. Further teaching that polyvinyl alcohol helps rewetting the adhesive for superior adhesion. See paragraph 5.
It would have been obvious at the time of the invention to have modified the process and creping adhesive of Ringold with modified carboxylated or sulfonated polyvinyl alcohol as suggested by White because one would want to improve adhesive strength, drying efficiency, crepe quality, and rewettability. See paragraph 5 and 13 of White.
As to claim 22, White discloses that the carboxylated polyvinyl alcohol is prepared from acrylic acid (and hydrolyzed polyvinyl acetate to yield vinyl alcohol units, see paragraphs 55-56). The hydrolysis is 80 to 95% (claim 15 of White) and the carboxylate content is 1 to 20 mol% (claim 9 of White). Acrylic acid reads on claim unit c, which is present in 1 to 20 mol%. Since the hydrolysis is 80 to 95 (mol) %, the vinyl acetate content (claimed unit b) is 20 to 5 mol%. Thus, the remainder (vinyl alcohol reading on unit a) is 60 to 97%, which reads on the claimed range. Note that all ranges of White have values within the claimed range. Thus, the claimed structure, while not explicitly drawn, is implicitly disclosed since each monomer unit is specifically mentioned as well as the ranges.
As to claim 28-35, as discussed above, Ringold discloses that the solvent is water (paragraph 116) and the crosslinker is epihalohydrin (paragraph 56). The crosslinker is methylenebisacrylamide (MBA, reading on structure VII, wherein R5=R6=hydrogen and 4=CH2, wherein t is 1). See paragraph 45 and examples. The examples also show that the primary crosslinker may be MBA and/or the secondary (see tables 5-6).
As to claim 29 and 36, as discussed above, Ringold discloses that the solvent is water (paragraph 116). The crosslinker is methylenebisacrylamide (MBA, reading on structure VII, wherein R5=R6=hydrogen and 4=CH2, wherein t is 1) as well as other polymers that read on the other structures such as diglycidyl poly ethylene glycol. See paragraph 45 and examples. The examples also show that the primary crosslinker may be MBA and/or the secondary (see tables 5-6).
As to claims 38-39, Ringold a creping adhesive (see paragraph 11-14 and examples) thereof comprising:
Reacting a crosslinker and a prepolymer composing polyamidoamine backbones crosslinked by primary crosslinking moieties. Specifically, see paragraph 14 and examples describing that polyamidoamine is crosslinked in a first (primary) reaction and then a second (secondary, or a third) crosslinking reaction is performed, thus reading on a primary crosslinking moiety and a secondary crosslinking moiety. The primary crosslinking moieties are derived from a functionally symmetric crosslinker ()primary) and the second crosslinking is from epihalohydrin (paragraph 56) or a (second) functionally symmetric crosslinker (paragraph 14 describing wherein the second and third step form a functionally symmetric crosslinker) to produce a crosslinked resin. The reaction is in the presence of a solvent such as water (see paragraph 116 and examples). The primary and secondary are in the presence of solvent and/or other materials. See examples.
Ringold is silent on a modified polyvinyl alcohol.
White discloses similar creping adhesive and processes of making them. See abstract, paragraph 13 and examples. White discloses the polyaminoamide crosslinked resin and modified polyvinyl alcohol, wherein the modified polyvinyl alcohol are carboxylated and/or sulfonated. See paragraph 13-14. The presence of the modified polyvinyl alcohol improves adhesive strength, enhances drying efficiency as well as improved crepe quality. See paragraph 13 and examples. Further teaching that polyvinyl alcohol helps rewetting the adhesive for superior adhesion. See paragraph 5. White discloses examples wherein the polyvinyl alcohol is present in e.g. 12.5 wt% and the polyamidoamide crosslinked resin is present in 87.5 wt% (see examples) and generally discloses (in claims 2-6 of White) amounts that overlap or fall within the claimed range.
It would have been obvious at the time of the invention to have modified the process and creping adhesive of Ringold with modified carboxylated or sulfonated polyvinyl alcohol as suggested by White because one would want to improve adhesive strength, drying efficiency, crepe quality, and rewettability. See paragraph 5 and 13 of White.
As to claims 24, 37 and 40, White discloses the sulfonated polyvinyl alcohol is prepared from acrylamidopropanesulfonic acid (see paragraph 6, and hydrolyzed polyvinyl acetate to yield vinyl alcohol units, see paragraphs 55-56). The hydrolysis is 80 to 95% (claim 15 of White) and the sulfonate content is 1 to 20 mol% (claim 12 of White). Acrylamidopropanesulfonic acid reads on claim unit c, which is present in 1 to 20 mol%. Since the hydrolysis is 80 to 95 (mol) %, the vinyl acetate content (claimed unit b) is 20 to 5 mol%. Thus, the remainder (vinyl alcohol reading on unit a) is 60 to 97%, which reads on the claimed range. Note that all ranges of White have values within the claimed range. Thus, the claimed structure, while not explicitly drawn, is implicitly disclosed since each monomer unit is specifically mentioned as well as the ranges. It is also noted that Acrylamidopropanesulfonic has three isomers and it is ambiguous which one White refers to, however one of which reads on the claimed structure.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-28, 30-35 and 37-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 and 10 of U.S. Patent No. 11,982,055. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 21, 23, 25-27 and 30, patented claim 1 discloses a creping adhesive that is a product that has primary crosslinking moieties and propanediyl moieties (secondary crosslinker residues formed from epihalohydrin). The solvent and modified polyvinyl alcohol are claimed. Since the primary crosslinking moieties are formed first by definition, the secondary crosslinker residues formed from epihalohydrin must be crosslinked in their presence by definition and thereby read on the claim.
As to claim 22, see patented claim 3.
As to claim 24, see patented claim 5.
As to claim 28, see patented claim 10.
As to claim 31-35, patented claim 1 discloses a creping adhesive that is a product that has primary crosslinking moieties and propanediyl moieties (secondary crosslinker residues formed from epihalohydrin). The solvent and modified polyvinyl alcohol are claimed.
As to claim 37, see patented claim 5.
As to claims 38-39, see patented claim 2.
As to claim 40, see patented claim 5.
Conclusion
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764