Detailed Office Action
The communication dated 10/7/2025 has been entered and fully considered.
Claims 1-20 are pending with claims 15-20 withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on 10/7/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-3 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/456,818(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims a colloidal aluminum hydroxide [copending claim 12] and a polymer which comprises anionic/and cationic monomers [copending claim 10]
Instant claim 2 see copending claim 10 the polymer can be cationic.
Instant claim 3 see copending claim 7 (acrylamide).
Instant claim 8 see copending claim 12
Instant claim 9 see copending claim 7.
Instant claim 10 see copending claim 8
Instant claim 11 see copending claim 10.
Instant claim 12 see copending claim 1.
Instant claim 13 see copending claim 11.
Instant claim 14 see copending claim 11.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
As for claim 6, it is not clear the scope of micropolymer, what encompasses a micropolymer or structure thereof. The specification does not give any clue or definition.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 7-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2022/0234923 BACKMAN et al., hereinafter BACKMAN, as evidenced by Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 8, BACKMAN discloses a mixture of aluminum-based coagulant, aluminum sulphate, a cationic polymer and an anionic polymer [abstract, 0049]. BACKMAN also discloses polyaluminum chloride [0028]. Alum when dissolved in water hydrolyzes to form aluminum hydroxide as evidenced by SMOOK [pg. 222 col. 2].
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As for claim 2, BACKMAN discloses a solution of primarily cationic alum, a cationic polymer and a small amount of anionic polymer [0044] which will therefore be cationic in overall charge [Table 1].
As for claim 7, BACKMAN discloses the pH during operation is 6.9 within the claimed range [Table 1].
As for claim 9, BACKMAN discloses that the cationic polymer can comprise DADMAC, MAPTAC copolymerized with meth-acrylamide [0030].
As for claim 10, BACKMAN discloses polyethyleneimine and polyvinyl amine [0030]
As for claim 12, BACKMAN discloses 200 ppm alum and 10 ppm of cationic polymer FF C50 [Table 1].
200 ppm of alum becomes ppm of aluminum hydroxide
200 ppm Alum (Al2(SO4)3) * 1 mole Alum (Al2(SO4)3)/342.15 g * (2 moles Aluminum hydroxide (Al(OH)3)/ 1 mol Alum (Al2(SO4)3) * (78 g /1 mole Aluminum hydroxide (Al(OH)3)) = 91 ppm aluminum hydroxide
91 ppm/10 ppm ~9:1 aluminum hydroxide:cationic polymer which falls within the claimed range.
Claims 1-3, 7, 8, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 5,766,485 LIND et al., hereinafter LIND, as evidenced by Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 8, LIND discloses alum, an anionic polymer and a cationic polymer [abstract, col. 3 lines 44-45, and claim 8] which form colloidal particles in situ [col 3 lines 50-55]. Alum when dissolved in water hydrolyzes to form aluminum hydroxide as evidenced by SMOOK [pg. 222 col. 2].
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As for claim 2, in LIND the alum is in a much higher weight than the anionic polymer and the anionic polymer is of low charge [abstract and col. 3 lines 45-47].
As for claims 3 and 14, LIND discloses the anionic polymer is polyacrylamide [claim 6] which is a linear polymer.
As for claim 7, LIND discloses a pH of 7 [col. 4 line 20-25 and claim 8].
Claims 1-4, 6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 5,215,668 BHATTACHARYYA et al., hereinafter BHATT, as evidenced by Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 8, BHATT discloses an aqueous mixture [col. 6 lines 52-55] comprising an aluminum salt [abstract] and a cationic polymer with anionic and cationic groups [abstract, col. 3 lines 50-60].
Alum when dissolved in water hydrolyzes to form aluminum hydroxide as evidenced by SMOOK [pg. 222 col. 2].
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As for claim 2, there are more cationic units on the polymer of BHATT than anionic units [col. 3 lines 50-65].
As for claim 3, BHATT discloses acrylamide [col. 3 lines 64-65],
As for claim 4, BHATT discloses 1-10% anionic units which can be acrylic [col. 3 lines 60-61 and table 2].
As for claim 6, the Examiner interprets the polymer as a micropolymer until the applicant shows otherwise.
As for claim 9, BHATT discloses acrylamide and APTAV and DMAEM.MCQ, DMAEA>MCQ, and DMAEM.MSQ [table 1 and col. 3 lines 64-65].
As for claim 11, BHATT discloses 10 to 50% cationic monomer units which falls within the claimed range [col. 3 lines 57-60]
As for claim 12, there is 0.2 to 10% parts aluminum sulfate octahydryate per part cationic polymer [claim 1]
0.2 to 10 parts Alum (Al2(SO4)3)⸱18 H2O * 1 mole Alum (Al2(SO4)3)⸱18 H2O/666.4 g * (2 moles Aluminum hydroxide (Al(OH)3)/ 1 mol Alum (Al2(SO4)3⸱18 H2O) * (78 g /1 mole Aluminum hydroxide (Al(OH)3)) = 0.09 parts -2.3 parts aluminum hydroxide per part polymer which falls within the claimed range.
Claims 7 and 13 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. 5,215,668 BHATTACHARYYA et al., hereinafter BHATT.
As for claim 7, BHATT discloses about 8.6 [col. 7 line 61] which the Examiner interprets to fall within the range of about 6 to about 8.5 sufficient for anticipation. Alternatively BHATT discloses a pH of 8 to 9 which overlaps with the instant claimed range [col. 7 line 62] making a prima facie case of obviousness.
As for claim 13, BHATT discloses 1 to 10 % anionic units which overlaps with sufficient specificity to the instant claimed range or in the alternative makes a prima facie case of obviousness [col. 3 lines 60-61]. The anionic unit can be acrylic acid [Table 2] which comprises a carboxyl group.
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 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,766,485 LIND et al., hereinafter LIND, in view of U.S. 3,578,587 KEMMER, hereinafter KEMMER.
As for claims 4 and 5, LIND teaches the features as per supra and an anionic polyacrylamide [claim 6]. LIND does not disclose the MW or the percent acrylic groups. LIND discloses at least 10% acrylic acid [col. 2 lines 47-50] monomers which overlaps the instant claimed range and the specific point of 30% acrylic acid (acrylate) in the anionic polyacrylamide [col. 2 lines 60-63]. LIND discloses at least 10 kDA, and at least 1,000 kDa for the anionic polymer both of which overlap with the instant claimed range [col. 2 lines 30-39].
At the time of the invention it would be obvious to substitute one known anionic acrylamide for another known anionic acrylamide intended for the same purpose of removing color. The person of ordinary skill in the art would expect success as both remove color from pulping waste waters.
As for claim 6, the Examiner interprets polymers with only 10 kDa as micropolymers until the applicant shows otherwise.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,766,485 LIND et al., hereinafter LIND, in view of U.S. 2022/0234923 BACKMAN et al., hereinafter BACKMAN.
As for claims 9 and 10, LIND teaches the features as per supra including a cationic polymer. LIND does not disclose the specific polymers of the claim. In the same art of water treatment BACKMAN discloses that the cationic polymer can comprise DADMAC, MAPTAC copolymerized with meth-acrylamide [0030]. BACKMAN discloses polyethyleneimine and polyvinyl amine [0030]. At the time of the invention it would be obvious to substitute one known cationic polymer for another known cationic polymer absent evidence of unexpected results. The person of ordinary skill in the art would expect success as both BACKMAN and LIND treat water with cationic, anionic polymers with alum.
Conclusion
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.
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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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