Detailed Office Action
The communication dated 10/23/2025 has been entered and fully considered.
Claims 4, 7, 14 have been canceled. Claim 21 is new. Claims 1, 5, 9, 12, and 20 have been amended. Claims 1-20 are pending.
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In light of cancelation the rejection to claim 4 has been withdrawn
In light of amendment the rejection of claim 20 has been withdrawn.
In light of argument the rejection to claim 19 has been withdrawn.
In light of amendment the rejections towards PAREN have been withdrawn.
Applicant argues that HARRIS does not anticipate or make obvious amended claim 1 and claims dependent therefore (nota bene the Examiner applies the same arguments towards independent claim 9 and those dependent therefrom which are rejected based upon HARRIS).
Specifically the applicant argues that the HARRIS discloses a terpolymer comprising acrylic acid or methacrylic acid in the alternative. The applicant makes this determination because the claim 1 of HARRIS uses the “or” language.
The claim of HARRIS is cited below with the pertinent clauses emphasized by the Examiner.
An improved process for inhibiting the formation of calcium carbonate scale in wood pulp production wherein the improvement comprises:
adding to a white liquor used to extract lignin from wood 1-100 ppm of a hydrolysed copolymer of (A) maleic anhydride with (B) at least one mono-ethylenically unsaturated monomer other than acrylic acid or methacrylic acid, or with a mixture of (B) and (C) acrylic acid or methacrylic acid.
The Examiner does not rely on the clause “with (B) at least one mono-ethylenically unsaturated monomer other than acrylic acid or methacrylic acid”.
The applicant’s position is that the “or” of the following clause “with a mixture of (B) and (C) acrylic acid or methacrylic acid” means that the terpolymer can have acrylic acid or methacrylic acid but not both.
The CAFC has sometimes held that the conjunction “or” means “either” but not “both” [Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (Fed. Cir. 2001)]. At other times it has held that the conjunction “or” means “either” and “both” [Brown v. 3M, 265 F.3d 1349 (Fed. Cir. 2001)]. The determination is specific to each case.
In this case the applicant wishes “or” in this clause of claim 1 of HARRIS to be interpreted as either methacrylic or acrylic but not both. Based on this interpretation the instant claims would be allowable.
However, the Examiner interprets the “or” of HARRIS in this clause to mean either methacrylic or acrylic or both methacrylic and acrylic. This is fully supported by the claims specifically claim 11 of HARRIS which was cited in the rejection below.
A process as claimed in claim 1, in which the copolymer is a terpolymer derived from maleic anhydride and two ethylenically unsaturated monomers selected from acrylic acid, methacrylic acid, crotonic acid, itaconic acid, aconitic acid, esters of said acids, acrylonitrile, acrylamide, vinyl acetate, styrene, .alpha.-methyl styrene, methyl vinyl ketone, acrolein, ethylene and propylene.
It is also supported by claim 10:
Process according to claim 9, in which the copolymer is a copolymer of maleic anhydride with allylsulfonic acid; a copolymer of maleic anhydride with N,N-dimethylacrylamide; a copolymer of maleic anhydride, the sodium salt of acrylamidomethylpropane sulfonic acid and vinyl acetate; or a copolymer of maleic anhydride with (i) an alkyl acrylate or alkyl methacrylate and (ii) acrylic acid, methacrylic acid or an aliphatic olefin.
That is both claims 10 and 11 claim a polymer which comprise maleic anhydride, acrylic, and methacrylic.
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, 2, 5, 6, and 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. 5,441,602 HARRIS et al., hereinafter HARRIS.
As for claim 1, HARRIS discloses a terpolymer comprising three monomers maleic anhydride with acrylic acid and methacrylic acid [claim 1 and claim 11] for inhibiting the formation of calcium carbonate scale in wood pulp production (a papermaking process) [claim 1].
The maleic anhydride reads on the second monomer. The maleic anhydride can be present in a 1:1 ratio with the other monomers [claim 3] and therefore is present in the total polymer at 50% molar which falls within the claimed range.
The methacrylic acid reads on the first monomer. The first and third monomers are 50% of the total weight of the polymer [claim 3]. The first and third monomer are in a 1:2 to a 2:1 ratio [claim 13]. This means that the first monomer will be present from 16.67 to 33.3% which falls within the claimed range.
The acrylic acid reads on the third monomer. The first and third monomers are 50% of the total weight of the polymer [claim 3]. The first and third monomer are in a 1:2 to a 2:1 ratio [claim 13]. This means that the first monomer will be present from 16.67 to 33.3% which overlaps the instant claimed range with sufficient specificity or makes a prima facie caser of obviousness.
A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range.
Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30
As for claim 2, HARRIS discloses that the polymer is added white liquor stream which goes to the digester [col. 3 lines 15-18].
As for claim 5, HARRIS discloses maleic anhydride and acrylic acid [claim 1 and claim 11] as a second and third monomer.
As for claim 6, HARRIS discloses maleic anhydride which reads on the second monomer [claim 1 and claim 11].
As for claim 21, the first and third monomer are in a 1:2 to a 2:1 ratio which falls within the instant claimed range [claim 13].
Claims 3, 8-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,441,602 HARRIS et al., hereinafter HARRIS.
As for claim 3, HARRIS discloses that the copolymer formed has a MW of 10,000 or less which overlaps with the instant claimed range [col. 2 lines 16-17]. The Examiner notes that HARRIS explicitly defines copolymers as including 3 monomers [claim 7] (therefore the recitation of less than 10,000 MW applies to terpolymers).
For avoidance of doubt, HARRIS does recite a terpolymer with a MW of 1,000 or less [col. 3 lines 6-7]. The Examiner takes the position that this is referring to the terpolymer with vinyl acetate and ethyl acrylate [col. 3 lines 2-5]. This interpretation is supported based on how it is written in the specification and how claim 18 narrows claim 14 instead of claim 11.
As for claim 8, HARRIS discloses 50% maleic anhydride as per above, 16.67 to 33.3% methacrylic acid which encompasses the instant claimed range, and 16.67 to 33.3% acrylic which encompasses the instant claimed range making a prima facie case of obviousness.
As for claim 9, HARRIS discloses a terpolymer comprising three monomers maleic anhydride with acrylic acid and methacrylic acid [claim 1 and claim 11] for inhibiting the formation of calcium carbonate scale in wood pulp production (a papermaking process) [claim 1].
HARRIS discloses that the copolymer formed has a MW of 10,000 or less which overlaps with the instant claimed range [col. 2 lines 16-17]. The Examiner notes that HARRIS explicitly defines copolymers as including 3 monomers [claim 7] (therefor the recitation of less than 10,000 MW applies to terpolymers).
For avoidance of doubt, HARRIS does recite a terpolymer with a MW of 1,000 or less [col. 3 lines 6-7]. The Examiner takes the position that this is referring to the terpolymer with vinyl acetate and ethyl acrylate [col. 3 lines 2-5]. This interpretation is supported based on how it is written in the specification and how claim 18 narrows claim 14 instead of claim 11.
The first and third monomer are in a 1:2 to a 2:1 ratio [claim 13][ which falls within the claimed range.
As for claim 10, the methacrylic acid reads on the first monomer. The first and third monomers are 50% of the total weight of the polymer [claim 3]. The first and third monomer are in a 1:2 to a 2:1 ratio [claim 13]. This means that the first monomer will be present from 16.67 to 33.3% which falls within the claimed range.
As for claim 11, HARRIS discloses that the polymer is added white liquor stream which goes to the digester [col. 3 lines 15-18].
As for claim 12, HARRIS discloses maleic anhydride and acrylic acid [claim 1 and claim 11] as a second and third monomer.
As for claim 13, HARRIS discloses maleic anhydride which reads on the second monomer [claim 1 and claim 11].
As for claim 15, HARRIS discloses 50% maleic anhydride as per above, 16.67 to 33.3% methacrylic acid which encompasses the instant claimed range, and 16.67 to 33.3% acrylic which encompasses the instant claimed range making a prima facie case of obviousness.
As for claims 16, the terpolymer of HARRIS comprises maleic anhydride, methacrylic and acrylic which are the monomers of the instant claim.
As for claims 17-19, HARRIS does not require the addition of any other components to the composition [claim 1, may also be used in col. 3 lines 19-27 makes the addition of other additives optional].
As for claim 20, as substantially the same polymer is used it is the examiners position that substantially the same calcium scale forming compounds will also be inhibited.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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