DETAILED ACTION
The present application is a national stage entry of PCT/JP2022/016427, filed 31 March 2022, which claims foreign priority to JP2021-061023, filed 31 March 2021.
The preliminary amendment filed 28 September 2023 is acknowledged. Claims 1-12 are pending in the current application and are examined on the merits herein.
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(b)
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 10 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.
The recitation “wherein the content of water and/or hydrophilic solvent” in claim 10 lacks antecedent basis from claim 1. While claim 1 recites “forms a physical gel upon absorption of water”, nowhere is water a physical and required limitation of the resin of claim 1. Nowhere is a solvent positively recited. Thus, the limitations of claim 10 lack antecedent basis.
Claim Rejections - 35 USC § 102
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 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, 2, 5-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lawal et al. (European Polymer Journal, 2009, vol. 45, pp. 3399-3408, cited in PTO-892).
Lawal et al. disclose crosslinking carboxymethyl starch to prepare hydrogels that have a large water absorption capacity (title, abstract, p.3399, first para). The hydrogels can be used in personal care products, including diapers, incontinence articles, sanitary products for fluid absorption, etc. (p.3399, first para). Lawal et al. disclose substituting starch with anionic carboxymethyl groups improves hydrophilicity, thus facilitating water absorbance (p.3400, second para). The crosslinked carboxymethyl starch had an absorption under load of 16-28 g/g in deionized water, and 12-20 g/g in saline (figs. 6 and 7, respectively). It also had a free swelling capacity of 50-80 g/g in deionized water, and 40-70 g/g in saline (fig. 9 and 10, respectively). Thus, Lawal et al. was able to prepare a hydrogel using cheap, readily available and renewable resource, having diverse technical applications, particularly where moderate swelling/water absorption is required (p.3408).
Thus, Lawal et al. disclose a water-absorbing resin, which is a crosslinked starch, with an acidic group (carboxymethyl) introduced therein.
The recitation “wherein when the water-absorbing resin is suspending…” in claim 2 is a latent property of the water-absorbing resin of claim 1. The same rational applies to the characteristics recited in present claims 8 and 9.
Thus, the disclosure of Lawal et al. anticipates claims 1, 2, 5-10 and 12 of the present application.
Claim(s) 1, 2 and 5-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mohamood et al. (Chemistry Central Journal, 2018, vol. 12, 10 pages, cited in PTO-892).
Mohamood et al. disclose preparing carboxymethyl starch, and crosslinking it with acetic acid (abstract). However, Mohamood et al. also teach crosslinking can be established by change in pH, radiation, heat or pressure (p.2, first para). Crosslinking increases chemical bond strength and thermal stability. Carboxymethyl starch is known to have water absorption properties. Carboxylic acid groups are added to starch to enable the starch to increase its absorption capacity (p.2, second para). The degree of swelling increased the most when the crosslinked carboxymethyl starch was treated with 1.0 M NaOH, to a value of 23.64 g/g in PBS (i.e. subjected to alkali treatment), (see fig. 7). The optimum crosslinking temperature was 60 °C.
Thus, Mohamood et al. disclose a water-absorbing resin, which is a crosslinked starch, with an acidic group (carboxymethyl) introduced therein. The resin is subsequently subjected to alkali treatment as required by present claim 11.
The recitation “wherein when the water-absorbing resin is suspending…” in claim 2 is a latent property of the water-absorbing resin of claim 1. The same rational applies to the characteristics recited in present claims 8 and 9.
Thus, the disclosure of Lawal et al. anticipates claims 1, 2 and 5-12 of the present application.
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5-10 and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Bolduc et al. (US Patent No. 8,461,129, cited in PTO-892).
Bolduc et al. disclose a superabsorbent material comprising a particle formed of a carboxylated polysaccharide, said interior is absorbent, and the surface is treated with a non-crosslinking acid in the presence of an organic solvent (claim 1). Bolduc et al. disclose a hygiene article comprising the carboxylated polysaccharide particle (claims 15-17). The carboxylated polysaccharide is carboxymethyl starch (claim 12). Bolduc et al. disclose internal crosslinking is optional (col. 2:60-62). Bolduc et al. found surface treating the polysaccharide with non-crosslinking acids did not produce ester linkages (col. 13:22-30). The surface-treated carboxylated polysaccharides form discrete gel particles once swollen (col.13:46-54).
Thus, Bolduc et al. disclose a water-absorbing resin, which is a crosslinked starch, with an acidic group (carboxymethyl) introduced therein.
The recitation “wherein when the water-absorbing resin is suspending…” in claim 2 is a latent property of the water-absorbing resin of claim 1. The same rational applies to the characteristics recited in present claims 8 and 9.
Thus, the disclosure of Lawal et al. anticipates claims 1-10 and 12 of the present application.
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.
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) 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bolduc et al. (cited above) in view of Fujii et al. (US Patent No. 6,723,797, cited in PTO-892).
Bolduc et al. teach as discussed above.
While Bolduc et al. teach modifying the surface of superabsorbent carboxymethyl starch, and that internal crosslinking is optional, Bolduc et al. do not expressly disclose a surface-crosslinked starch having no internal crosslinking (present claims 3 and 4).
Fujii et al. teach increasing the crosslinking density using an inner crosslinking agent is a known technique to increase the water absorbing capacity of a water-absorbing resin (col.1:29-37). However, a high crosslinking density decreases the water absorbing capacity of the resin under no load. To solve this problem, the surface of water-absorbing resins can be crosslinked instead, while maintaining a low density of crosslinking inside the particles (col.1:38-53). The surface crosslinking agents are prepared from a halohydrin (col.2:60 to col.3:55). Fujii et al. expressly teach that while the crosslinking agent can be used as an inner crosslinking agent, it is preferably used to effect surface-crosslinking of water absorbing resin (col.13-14, bridging para). In example 1, Fujii et al. describe preparing an acrylic acid-based resin by polymerization. The resin particles were placed in a double-arm type kneader, and with stirring, the aqueous solution comprising a crosslinking agent was sprayed thereon, and the mixture was mixed thoroughly (col.18-19). The water was heated to 105 °C for 30 min to give surface-crosslinked particles of water absorbing resin.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to surface-crosslink carboxymethyl starch water-absorbing resin.
Starting from Bolduc et al., one having ordinary skill in the art would have looked to the teaching of Fujii et al., because they are both concerned with improving the absorbance of a water-absorbing resin by modifying its surface. Both Bolduc et al. and Fujii et al. teach internally crosslinking the water-absorbing resin is optional, and Fujii et al. further teach internal crosslinking is not desirable because it results in a product having an inferior water-absorbing property under no load.
The ordinary artisan would have been motivated to surface-crosslink the carboxymethyl starch water-absorbing resin, because surface-crosslinking is a known technique to improve similar products (water-absorbing resins).
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bolduc et al. and Fujii et al. as applied to claims 1-10 and 12 above, and further in view of Mohamood et al. (Chemistry Central Journal, 2018, vol. 12, 10 pages, cited in PTO-892).
Bolduc et al. teach as discussed above.
Bolduc et al. do not expressly disclose subjecting the water-absorbing resin to alkali treatment (present claim 11).
Fujii et al. teach as discussed above.
Mohamood et al. teach preparing crosslinked carboxymethyl starch, with pendant carboxylic groups (abstract). Carboxymethyl starch is known to have water absorption properties. Carboxylic acid groups are added to starch to enable the starch to increase its absorption capacity (p.2, second para). The degree of swelling increased the most when the crosslinked carboxymethyl starch was treated with 1.0 M NaOH, to a value of 23.64 g/g in PBS (i.e. subjected to alkali treatment), (see fig. 7). The pendant group of the anionic hydrogel, carboxyl groups, COO_ are ionized in higher pH, causing the swelling of the hydrogel (p.7, first para).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to subject a crosslinked carboxymethyl starch to alkali treatment, because Mohamood et al. found crosslinked carboxymethyl starch swelled the most when it was subsequently treated with 1.0 M NaOH.
The ordinary artisan would have had a reasonable expectation of success in swelling the carboxymethyl starch of Bolduc et al., because Mohamood et al. teach the pendant group of the anionic hydrogel, carboxyl groups, COO_ are ionized in higher pH, causing the swelling of the hydrogel.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Claim(s) 1-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. (Carbohydrate Polymers, 2006, vol. 64, pp. 345-349, cited in PTO-892) in view of Fujii et al. (cited above).
Yoshimura et al. teach modifying starch with succinic anhydride, followed by neutralization (abstract). Yoshimura et al. describe the starch carboxylate as a superabsorbent hydrogel:
PNG
media_image1.png
84
316
media_image1.png
Greyscale
(p.346, 2.4. Preparation of superabsorbent hydrogels in water). The final hydrogel products did not dissolve but swelled in water without distinct crosslinking process (p.347, 3.1). The water absorbency of the product ranged from 50 g/g to 70 g/g (p.348, 3.2. Water absorbency and biodegradability). The maximum absorbency in pure water was about 120 g water/g dry gel (p.349, last para). Yoshimura et al. teach higher degree of substitution leads to higher absorbency (abstract).
Yoshimura et al. do not expressly disclose crosslinking the surface of the starch, with no internal crosslinking (present claims 3 and 4).
Fujii et al. teach as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to surface-crosslink carboxymethyl starch water-absorbing resin.
Starting from Yoshimura et al., one having ordinary skill in the art would have looked to the teaching of Fujii et al., because they are both concerned with improving the absorbance of a water-absorbing starch by chemical modification that does not rely on internal crosslinking. Fujii et al. further teach internal crosslinking is not desirable because it results in a product having an inferior water-absorbing property under no load. The ordinary artisan would have been motivated to surface-crosslink the carboxymethyl starch water-absorbing resin, because surface-crosslinking is a known technique to improve water absorbency under no load of similar products (water-absorbing resins).
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshimura et al. and Fujii et al. as applied to claims 1-10 and 12 above, and further in view of Mohamood et al. (Chemistry Central Journal, 2018, vol. 12, 10 pages, cited in PTO-892).
Yoshimura et al. teach as discussed above.
Yoshimura et al. do not expressly disclose subjecting the water-absorbing resin to alkali treatment (present claim 11).
Fujii et al. teach as discussed above.
Mohamood et al. teach as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to subject a crosslinked carboxymethyl starch to alkali treatment, because Mohamood et al. found crosslinked carboxymethyl starch swelled the most when it was subsequently treated with 1.0 M NaOH.
The ordinary artisan would have had a reasonable expectation of success in swelling the carboxymethyl starch of Yoshimura et al., because Mohamood et al. teach the pendant group of the anionic hydrogel, carboxyl groups, COO_ are ionized in higher pH, causing the swelling of the hydrogel.
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
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 claims 1-16 of copending Application No. 18/552,847 in view of Fujii et al. (cited above).
The claims of the reference application are drawn towards a method of preparing a partially degraded starch and introducing an acidic group, including carboxymethyl or carboxyethyl. While claim 1 involves a crosslinking step, claim 8 is silent. Claim 6 specifies subjecting the resin to alkali treatment.
The claims of the reference application do not expressly disclose surface crosslinking (i.e. no internal crosslinks).
Fujii et al. teach as discussed above.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to surface-crosslink carboxymethyl starch water-absorbing resin.
The ordinary artisan would have been motivated to surface-crosslink the carboxymethyl starch water-absorbing resin, because surface-crosslinking is a known technique to improve water absorbency under no load of similar products (water-absorbing resins).
Thus, the claimed invention as a whole is prima facie obvious over the combined teaching of the prior art.
This is a provisional nonstatutory double patenting rejection.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAHAR A CRAIGO whose telephone number is (571)270-1326. The examiner can normally be reached M-F: Noon-8pm ET.
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, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699