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 Status
The Preliminary Amendment filed on 16 November 2023 has been entered; claims 2-25 remain pending.
Claim Objections
Claim 12 is objected to because of the following informalities: claim 12 has an extraneous “p” after the period. Appropriate correction is required.
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.
Claims 25 and its dependent claims 2-24 are 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.
With respect to claim 25, the limitations “wherein the polymer is obtained by a process of polymerizing…adding a base to the aqueous solution after termination of the acrylic acid feed…” (lines 6-17) and “wherein the acrylic acid, the aqueous free radical starter solution…to within ± 0.5 and is in a range from 0.8 to 2” (lines 19-23), as well as the limitations of claims 9-16, 18, and 19, and the limitations of claims 23, and 24 which are similar to those quoted in claim 25, these limitations render the claims indefinite, as it is unclear what, if any, effect the particular polymerisation details recited have on the resulting acrylic acid polymers. For the purposes of examination, the Examiner will first not give weight to the polymerization details in a first set of art rejections, where Moore is applied alone to provide a teaching of acrylic acid polymers having a molecular weight of 1,500 and 2,000 Daltons and no more than 30 wt% of comonomers, and then in the alternative, will give weight to the polymerisation details recited in the interest of compact prosecution by modifying the teachings of Moore with Barth in the 103 rejections below.
Regarding claims 2 and 3, the limitations are recited as “intended use” limitations in a confusing format, as they depend from claim 25, a method of desalinating, while claims 2 and 3 recite “for inhibiting scale formation”. It is unclear whether scale inhibition is actively required.
With respect to claim 4, the limitation “high temperature” desalination systems contains a relative term which is not defined by the claims or Specification. For the purposes of examination, the Examiner will interpret these limitations as referring generally to thermal desalination systems, including “multi-effect distillation” and “multi stage flash” desalination systems, as consistent with claims 6 and 7.
With respect to claim 5, the limitations recite that the desalination system is “run at a temperature which is at least 10% higher than the standard mean temperature adopted for that desalination system” renders the claim indefinite, as the standard mean temperature adopted for a particular desalination system is a variable quantity, which can change based on manufacturer’s guidelines, current and future scale inhibition programs that may allow for operation at higher temperature ranges, time of operation of the desalination system, jurisdiction, and other considerations. For the purposes of examination, the Examiner will consider the limitations as being met if temperatures of desalination operation are consistent with the temperature ranges recited in claims 6 and 7.
Regarding claims 6-8, 17, and 20-22, they are rejected for being dependent on a rejected base claim.
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.
Claims 25, 2-4, 8-21, 23, and 24, are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO 2014/062487) or Moore et al. (WO 2014/062487) in view of Barth et al. (WO 2017/134128; English counterpart U.S. Patent Publication # 2020/0299426 relied upon as translation), hereinafter “Moore” and “Barth”.
With respect to claims 25, 2, 3, 8, 23, and 24, Moore teaches a process of desalinating water in a desalination system comprising a reverse osmosis desalination system or a thermal desalination system (Paragraph [0026]), comprising adding a polyacrylic acid homopolymer or polyacrylic acid copolymer having acid units of 70 mol% or more (“wherein the comonomer content does not exceed 30 wt.% based on the total monomer content”), wherein the polyacrylic acid homopolymer or copolymer has a molecular weight range of 1000 to 4000 Daltons (see Paragraph [0018]).
Moore teaches Example embodiments where the polyacrylic acid polymers have a molecular weight of about 1,500 Daltons and 2,000 Dalton (discrete embodiments within “1000 to 3000 g/mol” as recited in claim 25, and “1000 to 2500 g/mol” as recited in claims 23 and 24), and is added to the desalination system as a 1000 ppm solution (see the polyacrylic acid polymers prepared in Examples 1 and 3, Paragraphs [0029, 0031] and used in Example 4, Paragraph [0032]), wherein the acrylic acid polymers inhibits the formation of calcium carbonate and/or calcium sulfate scale (Paragraphs [0003, 0004]). It would have been obvious to consult the example embodiments of Moore when selecting the molecular weight for the polyacrylic acid polymers.
Moore teaches “molecular weight” and not specifically “weight average molecular mass”; however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
With respect to the limitations “wherein the polymer is obtained by a process of polymerizing…adding a base to the aqueous solution after termination of the acrylic acid feed…” (lines 6-17) and “wherein the acrylic acid, the aqueous free radical starter solution…to within ± 0.5 and is in a range from 0.8 to 2” (lines 19-23), as well as the limitations of claims 9-16, 18, 23, and 24, these limitations pertain to the polymerization of the recited acrylic acid polymer, which are not assigned patentable weight as the acrylic acid homopolymer or copolymer of Moore is patentably indistinguishable from the recited acrylic acid polymer both with respect to comonomer content and molecular weight.
With respect to claim 4, Moore teaches that the desalination system can comprise thermal desalination systems, which is considered to be consistent with “high temperature” desalination systems according to the interpretation made in the 112(b) rejection of claim 4 set forth above.
With respect to claim 17, Moore teaches that the acrylic acid copolymer can comprise comonomers embodied as methacrylic acid, maleic acid, maleic anhydride, allyl sulfonic acid, and 2-acrylamido-2- methyl propane sulfonic acid (see Paragraph [0023]).
With respect to claim 19, Moore teaches that the acrylic acid copolymer can comprise vinyl phosphonic acid and/or allyl phosphonic acid monomers (“phosphonate groups bound in the polymer chain” or “polymer chain end”) (see Paragraph [0023]).
With respect to claim 20, Moore teaches two polyacrylic acid polymers that are consistent with the limitations pertaining to comonomer content and molecular weight, as discussed above; it is submitted that the recited “K value” is necessarily met as an inherent property. It has been held that if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." (MPEP 2112.01 [R-3] (I)).
With respect to claim 21, Moore is silent with respect to inorganic phosphorus content, considered to be consistent with “the amount of dissolved inorganic salts of phosphorus based on the content of the polymer is ≤ 0.5%”.
With respect to claims 23 and 24, Moore teaches the limitations of these claims that are in common with those recited in claim 25, and additionally teaches wherein the polymers include 1,500 Daltons and 2,000 Daltons, discrete embodiments within “1000 to 2500 g/mol”).
Moore teaches “molecular weight” and not specifically “weight average molecular mass”; however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
In the alternative, now giving patentable weight to all limitations recited in claims 25 as well as claims 9-16 and 18 that pertain to the polymerization of the acrylic acid polymer. With respect to claims 25, 2, 3, 10, Barth teaches acrylic acid polymers is obtained by a process of polymerising acrylic acid in a feed operation with a free radical starter in the presence of a hypophosphite in water as a solvent, which comprises (see Paragraphs [0021-0025]):
initially charging water and optionally acrylic acid in acidic, unneutralized form, optionally one or more ethylenicaliy unsaturated comonomers, optionally aqueous hypophosphite solution and optionally initiator (Paragraph [0023]), consistent with claim 10, wherein step i) does not include any acrylic acid or any ethylenically unsaturated comonomer,
adding acrylic acid, optionally one or more ethylenically unsaturated comonomers, aqueous free-radical starter solution and aqueous hypophosphite solution (Paragraph [0024]),
adding a base to the aqueous solution after termination of the acrylic acid feed (Paragraph [0024]),
wherein the comonomer content does not exceed 30 wt % based on the total monomer content, wherein the acrylic acid, the aqueous free-radical starter solution and the aqueous hypophosphite solution are added such that a molar ratio x of acrylic acid to free-radically abstractable, phosphorus-bound hydrogen [AA]/[P-H] over a time period in which at least 75% of the acrylic acid is converted has a value x which is constant to within ±0.5 and is in the range from 0.8 to 2 (Paragraph [0025]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the polyacrylic acid polymer of Moore with the polyacrylic acid polymer prepared by the process disclosed by Barth because both references are directed to addition of similar polyacrylic polymers (even including molecular weight and comonomer content, see Barth: Paragraphs [0073, 0077]) in membrane and thermal desalination systems (see Moore: Paragraph [0026], and see Barth: Paragraphs [0083, 0085]) to inhibit the same type of scaling, calcium sulfate and calcium carbonate (see Moore: Paragraph [0003], and see Barth: Paragraph [0083]). Barth also teaches that the disclosed polymers can be prepared as powders, granules, or slurries (Paragraph [0080]), lending flexibility to transporting the acrylic acid polymers to the points of use (the desalination systems of Moore).
With respect to claim 4, Moore teaches that the desalination system can comprise thermal desalination systems, which is considered to be consistent with “high temperature” desalination systems according to the interpretation made in the 112(b) rejection of claim 4 set forth above.
With respect to claim 8, Moore in view of Barth teaches reverse osmosis desalination system or a thermal desalination system (see Moore: Paragraph [0026]).
With respect to claim 9, Moore in view of Barth teaches an initiator (see Barth: Paragraph [0020]).
With respect to claim 11, Moore in view of Barth teaches wherein said process of polymerising acrylic acid comprises adding continuously at a constant or varying dosing rate or discontinuously [[the]] a total amount m1 of acrylic acid over a time period (t1-t1.0), a total amount m2 of free radical starter solution over a time period (t2-t2.0), and a total amount m3 of aqueous hypophosphite solution over a time period (t3-t3.0) and the polymerisation takes place in a time period (t4-t4.0), wherein time points t1.0, t2.0, and t3.0 determine a start of the respective feeds and t4.0 determines commencement of the polymerization (see Barth: Paragraph [0019]).
With respect to claim 12, Moore in view of Barth teaches wherein a time average dosing time point for the hypophosphite solution is 0.3 to 0.47 times a total feed time for the acrylic acid (t1-t1.0) according to the recited formula (see Barth: Paragraphs [0033-0035] and [0040]).
With respect to claim 13, Moore in view of Barth teaches wherein the molar ratio X of acrylic acid to phosphorus-bound hydrogen [AA]/[P-H] over a time period in which at least 75% of the acrylic acid is converted is 1.0 ± 0.5 (Paragraphs [0025-0027]).
With respect to claim 14, Moore in view of Barth teaches wherein the total feed time for the hypophosphite solution t3-t3.0 is 80 to 500 min (see Barth: Paragraph [0049]).
With respect to claim 15, Moore in view of Barth teaches wherein all feeds commenced simultaneously (see Barth: Paragraph [0050, 0053]).
With respect to claim 16, Moore in view of Barth teaches wherein a total amount of hypophosphite solution added during the process of polymerising the acrylic acid is ranges from 0.5 to 10 wt % (overlapping “at least 7.5%”) based on the dry weight of hypophosphite on a dry weight of acrylic acid (see Barth: Paragraph [0055]).
Moore in view of Barth and the claims differ in that Barth does not teach the exact same proportions for the total amount of hypophosphite solution based on the dry weight of acrylic acid monomers as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the compositional proportions taught by Barth overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Barth, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
With respect to claim 17, Moore teaches that the acrylic acid copolymer can comprise comonomers embodied as methacrylic acid, maleic acid, maleic anhydride, allyl sulfonic acid, and 2-acrylamido-2- methyl propane sulfonic acid (see Paragraph [0023]).
With respect to claim 18, Moore in view of Barth teaches wherein the polymerising takes place under inert atmosphere (see Barth: Paragraph [0062]).
With respect to claim 19, Moore in view of Barth teaches that the aqueous solutions of acrylic acid polymers obtainable in accordance with the invention have a total phosphorus content of organically and possibly inorganically bound phosphorus, wherein (a) a first part of the phosphorus is present in the form of phosphinate groups bound in the polymer chain, (b) a second part of the phosphorus is present in the form of phosphinate and/or phosphonate groups bound at the polymer chain-end, (c) possibly a third part of the phosphorus is present in the form of dissolved inorganic salts of phosphorus, wherein generally at least 86% of the total phosphorus content is present in the form of phosphinate or phosphonate groups bound in the polymer chain or at the polymer chain-end (see Barth: Paragraphs [0064, 0065, 0069]).
With respect to claim 20, Moore teaches two polyacrylic acid polymers that are consistent with the limitations pertaining to comonomer content and molecular weight, as discussed above; it is submitted that the recited “K value” is necessarily met as an inherent property. It has been held that if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." (MPEP 2112.01 [R-3] (I)).
With respect to claim 21, Moore is silent with respect to inorganic phosphorus content, considered to be consistent with “the amount of dissolved inorganic salts of phosphorus based on the content of the polymer is ≤ 0.5%”.
With respect to claims 23 and 24, Moore in view of Barth teaches the limitations of these claims that are in common with those recited in claim 25, and additionally teaches wherein the weight-average molecular weight ranges from 1000 to 20,000 g/mol (see Barth: Paragraph [0073]), which includes the range “1000 to 2500 g/mol”).
Moore in view of Barth and the claims differ in that Barth does not teach the exact same proportions for the molecular weight of the acrylic acid polymers as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range in molecular weight taught by Barth overlaps the instantly claimed proportions and therefore is considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Barth, particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Moore in view of Barth teaches wherein the molar ratio of acrylic acid to phosphorus-bound hydrogen [AA]/[P-H] over a time period in which at least 80% of the acrylic acid is converted is 1.5±0.25, which encompasses “at least 75%” as well as “0.9 to 1.1” as recited in claim 23 and “1.0” as recited in claim 24.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO 2014/062487) or Moore et al. (WO 2014/062487) in view of Barth et al. (WO 2017/134128; English counterpart U.S. Patent Publication # 2020/0299426 relied upon as translation) as applied to claim 25, and further in view of Dave et al. (U.S. Patent Publication # 2008/0169243), hereinafter “Moore”, “Barth”, and “Dave”.
With respect to claims 6 and 7, Moore teaches that the desalination system comprises thermal desalination systems, but does not specifically teach multi-effect distillation or multi-stage flash.
Dave teaches that thermal desalination systems comprise multi-effect distillation and multi-stage flash systems (Paragraph [0016]), wherein the thermal desalination processes are operated from about 80-120°C or 120-160°C (see Paragraph [0029]), consistent with “at least 120°C” and “at least 80°C”.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the teaching of thermal desalination systems according to Moore with multi-effect distillation or multi-stage flash as taught by Dave, as both references are directed to scale inhibition in desalination systems which also comprise reverse osmosis systems in addition to thermal desalination systems (see Moore: Paragraph [0026], and see Dave: Paragraph [0016]). Additionally, both references teach polyacrylic acid scale inhibiting polymers (see Dave: Paragraphs [0030, 0031]); therefore, the ordinary artisan would have an expectation of success in carrying out the method of Moore with the multi-effect distillation or multi-stage flash thermal desalination systems of Dave.
Regarding claim 5, the limitations are considered to be met by the above combination of Moore in view of Dave, as Dave teaches thermal desalination systems operated using temperatures that exceed 80°C and up to 160°C (see Paragraph [0029] of Dave), as consistent with the interpretation made in the corresponding 112(b) rejection of claim 5 set forth above.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Moore et al. (WO 2014/062487) (and Barth in the alternative) as applied to claim 25, and further in view of Barth et al. (WO #2017/134128), wherein English counterpart U.S. Patent Publication # 2020/0299426 is relied upon in the rejection below), hereinafter “Moore” and “Barth”.
With respect to claim 22, Moore does not specifically teach that the disclosed polyacrylic acid polymer comprises the recite polydispersity index.
Barth teaches a polyacrylic acid polymer having a polydispersity index of less than or equal to 2.3, preferably 1.5 to 2.1, and for example 1.7 (Paragraph [0076]), a discrete embodiment within “≤ 2.0”.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the polyacrylic acid polymer of Moore with the polyacrylic acid polymer having a polydispersity index of 1.7 as taught by Barth because both references are directed to addition of similar polyacrylic polymers in membrane and thermal desalination systems (see Moore: Paragraph [0026], and see Barth: Paragraphs [0083, 0085]) to inhibit the same type of scaling, calcium sulfate and calcium carbonate (see Moore: Paragraph [0003], and see Barth: Paragraph [0083]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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, Bob Ramdhanie can be reached at (571) 270-3240. 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.
/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 06 March 2026