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 without traverse of Group I in the reply filed on 10/15/2025 is acknowledged.
Applicant has amended claims 9 and 10 to be dependent on claim 1 and therefore will be considered part of the elected Group I. The currently examined claims are claims 1-12.
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 9 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.
In claim 9, the recitation "wherein one or more additional ethylenically unsaturated monomer" should be changed to "wherein the one or more additional ethylenically unsaturated monomer".
In claim 9, the recitation "the cationic comonomer". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1, 7-9 and 11 are rejected under 35 U.S.C. 102a1 as being anticipated by Steeg et al, US Patent Publication 2004/0231816.
Regarding claim 1, Steeg teaches a cationic polyacrylamide (cPAM) (see abstract and claim 1), comprising the radical polymerization reaction [0038] product of:
an acrylamide (AM) monomer [0038] (see claim 1);
a cationic monomer (see claim 1 and [0038]) comprising a quaternary ammonium alkylation product of an aminoalkylacrylamide or aminoalkylacrylate precursor ([0038] teaches the co polymerization of with quaternizing agents with aminoalkylacrylates or aminoalkylacrylamides); and
optionally, one or more additional ethylenically unsaturated monomer (DADMAC, [0039]).
Regarding claim 7, Steeg remains as applied above and further teaches that the monomer comprises acrylamide [0038].
Regarding claims 8-9, Steeg remains as applied above and further teaches that the additional ethylenically unsaturated monomer is DADMAC [0039].
Regarding claim 11, Steeg teaches the use of DADMAC and APTAC, but also teaches alternatives to their use leaving the polyacrylamide free of repeating units of these two components [0039].
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.
Claim(s) 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Steeg et al, US Patent Publication 2004/0231816 in view of Bigorra Llosas et al, US Patent Publication 2010/0078364.
Regarding claim 2. Steeg remains as applied above and further teaches that diallyldialkylammonium salt monomers are utilized as the cationic monomer, but is silent on the specific use of an N,N-dialkylaminoalkylacrylamide or N,N-dialkylaminoalkylacrylate, and wherein the cationic monomer is further defined as a quaternary ammonium alkylation product of the N,N-dialkylaminoalkylacrylamide or ,N-dialkylaminoalkylacrylate and an alkylation agent.
The average artisan would have been motivated to look to see what are conventional types of diallyldialkylammonium salt monomers in the same field of endeavor as Steeg is merely silent on which ones can be utilized.
In the same field of endeavor, Bigorra Llosas teaches that quaternary ammonium compounds and quaternized N,N-dialkylaminoalkylamines are preferred cationic surfactant to be utilized as Co-collectors in the treatment process for a floatation and surfactant action [0014-0021] with alkylating agents [0013].
It would have been obvious to one of ordinary skill in the art at the time of then invention to utilize the specific use of Bigorra Llosas’s “most preferred cationic co-collectors, however, encompass the group of quaternised N,N-dialkylaminoalkylamides” [0028] for the benefit of utilizing a known and preferred quaternized diallyldialkylammonium in a conventional manner as Steeg merely does not provide any specifics to the precursor only the final products.
Regarding claims 3-5, Steeg and Bigorra Llosas remain as applied above and Bigorra Llosas further teaches that the alkylation agent is further defined as an electrophilic alkylation agent having the formula X-R-Y, where X is a leaving group, R is a substituted or unsubstituted hydrocarbon linking group, and Y is a functional group selected from amines, esters, anhydrides, carboxylic acids, hydroxyl, sulfates, amides, sulfamides, imides, and aldehydes (described in [0028-0031] with halides as the preferred Y unit [0029 and 0031], a 1-4 carbon alkylene group [0031] with a sulfate ion in the functional group [0031].
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Steeg et al, US Patent Publication 2004/0231816 in view of Bigorra Llosas et al, US Patent Publication 2010/0078364 in further view of A.G. Pierce, Jr et al, USP 3,567,360.
Regarding claim 6, Steeg and Bigorra Llosas remain as applied above and are silent on the use of the specific alkylation agent of 2-chloroacetamide.
In the same field of endeavor, Pierce teaches that the use of adding 2-chloroacetamide as an alkylation agent has been known in the papermaking industry as a known treatment for acrylamide modification in the process (see column 2) and that 2-chloroacetamide is listed as a preferred agent (see claim 4 and column 2).
It would have been obvious to one of ordinary skill in the art at the time of the invention to perform a simple substitution of one known element for another to select a conventionally known agent such as 2-chloroacetamide as it has been shown to be utilized in the industry by the prior art.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Steeg et al, US Patent Publication 2004/0231816 in view of Ringold et al, US Patent Publication 2016/0115315.
Regarding claim 10, Steeg remains as applied above but is silent to the use of crosslinking agents in the cationic polyacrylamide.
In the same field of endeavor of utilizing cationic polyacrylamides, Ringold teaches that the cationic polyacrylamide [0106] can be treated with additional monomers such as DADMAC [0106] and other reactions. It is further taught that the preferred crosslinking agent is MBA [0040-0060].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilizes the crosslinking actions that provides an improved viscosity and physical properties [0011] as taught by Ringold in the Steeg refence for the benefit of improving the viscosity and other strength properties of the polyacrylamide.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Steeg et al, US Patent Publication 2004/0231816 in view of Bigorra Llosas et al, US Patent Publication 2010/0078364 and in further view of Klein et al, US Patent Publication 2011/0168344.
Regarding claim 12, Steeg remains as applied above but is silent on a Michael adduct from the conjugate addition reaction in the monomers.
In the same field of endeavor of forming cationic polyacrylamide compositions for papermaking, Klein teaches that the quarternized acrylamides [0026] can include a reaction produce obtained by reacting Michael adducts [0040] as they are conventional reaction products to the industry [0040].
It would have been obvious to one of ordinary skill in the art at the time of the invention to include the known action of utilizing Michael adducts of the reaction products of the cationic polyacrylamides as taught by Klein in the Steeg as it would be a simple substitution of one known reaction/grafting for another that would have been obvious to the average artisan.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/023,807 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are mostly identical except the copending application includes additional options for what the precursor could include. All of the instant applications claimed limitations are met by the copending application.
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 JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/ Primary Examiner, Art Unit 1748