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 § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 8 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention because:
Claims 8 and 19 recite the limitation "the" starting polyvinyl alcohol. There is insufficient antecedent basis for this limitation in the claim and therefore the scope of the claim is unclear. For purposes of examination, claim 8 will be interpreted as "wherein the cationically polyvinyl alcohol is produced from a starting polymer with a weight average molecular weight of the starting polyvinyl alcohol of from 10 to 300 kDa".
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-5, 8-16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,645,794 to Davis et al. (as found on the IDS dated 6/10/2024).
Regarding Claim(s) 1-2, 9-16 Davis teaches polyvinyl alcohol polymer having pendant cationic quaternary nitrogen containing groups [abstract] (i.e., cationic polyvinyl alcohol) that is silent on a structure comprising monomer units in instantly claimed bracket “a”, thereby reading on “a” is 0 and e is 3.0-18. Davis’s Example 10 comprises PVA (polyvinyl alcohol) that is 90% hydrolyzed [Example 10] wherein PVA is a commercially available product prepared by hydrolysis of polyvinyl acetate [col3, L55-59]. As such, the polymer of example 10 comprises 90 mol% PVA groups (reading on c is from 40-98 mol%) and 10 mol% polyvinyl acetate groups (reading on d is from 1.0 to 25 mol%). The sum of d and e add up to 100 and therefore read on a+b+c+d add up to at least 90. Davis teaches the structure of example 10 of
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that corresponds to the instantly claimed monomer in bracket “b” wherein Rx Ry and Rz are CH3 groups (reading on C1 and methyl of claims 9-14).
Although Davis does not explicitly teach “b” is from 0.1-20 mol%, Davis teaches the nitrogen content of the final product ranges from 0.01% - 7% by weight [col2, L63-65] thereby reasonably reading on “b” is from 0.1-20 mol%.
Davis does not particularly teach the segment in bracket “f” as a CH2 unit or that f is an average of from 2.0 to 5.0.
However, Davis teaches a C02 moiety [example 10] and ethylene, propylene, butylene, pentylene (i.e., f is an average of from 2.0-5.0) as suitable examples of “R” [col1, L66-68]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute a C02 moiety for a ethylene, propylene, butylene, or pentylene moiety used in Davis’s disclosure. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Davis discloses that both C02 and ethylene, propylene, butylene, or pentylene are suitable R groups for use in linking groups, thus providing evidence of obviousness in substituting one for the other in such polyvinyl alcohol copolymers.
Regarding Claim(s) 3, Davis teaches the cationic polyvinyl alcohol of claim 1, wherein the hydrolysis of polyvinyl acetate may have from 0-25% residual acetate groups [Col3, L55-59] (i.e., d is 8.0-15). As such, it is reasonably calculated that the polyvinyl alcohol groups then account for 75-100 mol% of the instantly claimed copolymer, thereby reasonably reading on c is from 75-85 mol%.
Regarding Claim(s) 4-5, Davis teaches the cationic polyvinyl alcohol of claim 1, wherein “a” is 0 (reading on “a” is less than 0.5 of claim 4 and “a” is 0 of claim 5) and the nitrogen content of the final product ranges from 0.01% - 7% by weight [col2, L63-65] thereby reasonably reading on “b” is from 0.1-20 mol% of claim 4 and b is 1.0-10.0 mol% of claim 5.
Although Davis does not explicitly state this copolymer is hydrophilic, instant application states a copolymer with the instantly claimed ranges of claims 4 and 5 are considered to be hydrophilic [instant specification, [0045]]. Therefore it is reasonably expected that Davis’s cationically polyvinyl alcohol is hydrophilic.
Regarding Claim(s) 8 and 19, Davis teaches the cationic polyvinyl alcohol of claim 1, wherein the PVA has a number average molecular weight of 2,000 to 200,000 [col3, L60] reasonably reading on a range of 10-300kDa of claim 8 and 100 to 220kDa of claim 19.
Claim(s) 6-7 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,645,794 to Davis et al. in view of US2001/0056301 to Goupil et al.
Regarding Claim(s) 6-7 and 17-18, Davis teaches the cationic polyvinyl alcohol of claim 1, wherein the final polymer comprises 0.01% - 7% by weight [col2, L63-65] thereby reasonably reading on “b” is from 0.5-20 of claim 6 and 4.0-6.0 of claim 7 and 18.
Davis is silent regarding the cationically modified polyvinyl alcohol is hydrophobically modified and wherein “a” is from 0.5 to 5.0 of claim 6 and “a” is from 2.0 to 3.0 of claim 7.
However, Goupil teaches polyvinyl alcohol with pendant chains [abstract] wherein 0-25% of pendant ester groups are substituted by butyraldehyde acetals [0062]. Davis and Goupil are analogous art as they are from the same field of endeavor, namely modified polyvinyl alcohols applied to skin.
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to add 0-25% of butyraldehyde acetals (corresponding to the monomer in bracket “a”) into Davis’s polyvinyl alcohol copolymer thereby arriving at the claimed invention.
The motivation would have been that butyraldehyde acetals can increase hydrophobicity [0062] and can impart a certain degree of strength to the PVA [0017].
Though the prior art range is not identical to the claimed range, it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
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 are 1-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/407,490. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of co-pending application comprises the same copolymer as in instant claim 1 with minor differences in components “a” and “b”.
Claims are 1-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-5 of copending Application No. 18/407,491. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4 and 5 of co-pending application comprises the same copolymer as in instant claim 1, wherein the copolymer is constituent of a liquid hand dishwashing detergent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached on (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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