DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 11/20/2023. Following entry of the concurrently filed preliminary amendment, claims 1-16, 18-20, 25, and 27-28 remain pending and under examination 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 . However, 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 a 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.
Information Disclosure Statement
The information disclosure statement (IDS) accompanying the application papers is substantially in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits, apart from Cite No. 15, which has not been considered as no legible copy thereof has been provided. See MPEP 609.04(a)(II). An initialed copy of the IDS is included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objection – Claims
Claims 12 and 14 are objected to because of the following informalities: referring to line 1 of each claim, first word “The” should be amended to –A--, there being no precedent for “formula (I) monomer” or “bio-sourced dimethylaminoethyl (meth) acrylate,” respectively, in these independent claims (cf., independent claim 11, line 1).
Claim 19 is objected to because of the following informalities: referring to line 3, the abbreviation “ATBS” should be preceded by the corresponding name of “the second monomer” (cf., line 4 thereof).
Appropriate correction of the above-noted claims is required.
Warning – Duplicate Claims
Applicant is advised that should claim 11 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In particular, claim 13 recites: A bio-sourced dimethylaminoethyl (meth)acrylate with a bio-sourced carbon content ranging between 45wt% and 100wt% relative to the total carbon weight in said bio-sourced dimethylaminoethyl (meth)acrylate, the bio-sourced carbon content being measured according to ASTM D6866-21 Method B. The claim term “bio-sourced” refers to the recited range for bio-sourced carbon content of the dimethylaminoethyl (meth)acrylate, relative to total carbon weight therein; and the term “(meth)acrylate” is understood to encompass methacrylate and acrylate moieties. As such, claim 13 expresses in words the same monomer depicted structurally in claim 11 by formula (I), with R2 being a hydrogen atom or a CH3 group, and with both claims reciting identical ranges for bio-sourced carbon content (“between 45 wt.% and 100 wt.%”) and the same test standard (ASTM D6866-21 Method B) for measuring the bio-sourced carbon content. Accordingly, the two claims are deemed coextensive in scope, with respect to the mutually claimed monomer compound.
Claim Rejections – 35 U.S.C. 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6, 12, 14, 18, and 27 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.
Regarding Claim 6, the claim is indefinite due to dependency on itself (i.e., “6. … The method according to claim 6 …”). For purposes of substantive examination, claim 6 will be treated as if dependent upon claim 5; however, clarification and appropriate correction are required.
Regarding Claims 12, 14, and 18; each claim contains a broad recitation of a particular range or limitation followed by one or more of the linking terms "preferably," “preferentially,” and "more preferentially,” and then narrower recitation(s) of the corresponding range or limitation (see Cl. 12, lines 4, 8; Cl. 14, lines 3, 7; and Cl. 18, lines 3 and 7). A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP§ 2173.05(d). More specifically, it is unclear whether the features introduced by such linking term(s) are intended to be restrictive to the corresponding broader recitation(s), or merely exemplary of the remainder of the claims, and therefore not required. For purposes of substantive examination, the features introduced by the aforementioned linking terms are being treated as merely exemplary of the corresponding broader recitations, in accordance with the principal of giving the broadest reasonable interpretation to pending claims. See MPEP § 2173.01(1). However, clarification and appropriate correction are required.
Regarding Claim 27, the claim is to a method for “making a sheet of paper or a cardboard” but the recited method step applies only to “forming said sheet”; i.e., “before forming said sheet, at least one polymer is added to a fiber suspension … according to claim 16” (see lines 2-3). Where the product of the claimed method is “a carboard,” it is unclear whether the same polymer according to claim 16 is to be added to the fiber suspension. For purposes of substantive examination, it is presumed that such is intended; however, clarification and appropriate correction (e.g., by inserting –or cardboard-- after “sheet” in line 2) are required.
Claims 5-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 5, the claim depends upon claim 1, which is drawn to a method for obtaining a formula (I) monomer, depicted as
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. However, insofar as claim 5 recites a method “wherein the formula (I) is … quaternized with an alkylating agent,” the resulting quaternized compound is structurally distinct from the recited formula (I) as evidenced by Gozzelino, et al, wherein a quaternary dimethylaminoethyl methacrylate ammonium monomer (QAM) is depicted as
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(cf., p. 22, Fig. 1). Because a quaternized dimethylaminoethyl (meth)acrylate monomer falls outside the literal scope of the formula (I) monomer obtained as per claim 1, claim 5 is properly rejected for failing to include all the limitations of the claim upon which it depends. Claim 6 is subsumed under this rejection given its presumed intended dependency upon claim 5, as discussed above.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
With respect to claim 1, it is noted the specification at page 5 defines “renewable and non-fossil” as designating the origin of a chemical compound derived from biomass or from synthesis gas (syngas). Consistent with this definition, the Office is construing the claim recitation “the dimethylaminoethanol is at least partially renewable and non-fossil” as inclusive of dimethylaminoethanol in which any arbitrary amount or fraction is derived from biomass or from syngas.
Common Inventorship Notice
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 Rejections – 35 U.S.C. 102/103
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.
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.
Claims 1-2, 7-10, 12, and 14 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 JP H0479889A (hereinafter, ‘JP ‘889’), alone, or in view of Pelckmans, et al (Angewandt Chemie International Ed. 2017, 56(46): 14540-14544).
At the outset, it is noted that all references below to JP ‘889 are to the corresponding machine-generated English translation (furnished herewith).
Regarding Claim 1, JP ‘889 is directed to a method for producing an alkylaminoalkyl ester of (meth)acrylic acid by a transesterification reaction between a lower ester of acrylic or methacrylic acid represented by general formula (I) and an alkylamino alcohol represented by general formula (II), wherein an enzyme or microorganism is used to advance the reaction by asymmetric hydrolysis of the ester (see page 3). Upon completion of the reaction, the unreacted lower ester of acrylic acid or methacrylic acid in first removed from the reaction solution under reduced pressure to obtain the target product, an alkylaminoalkyl ester of acrylic acid or methacrylic acid, which was then purified by distillation or other methods and confirmed by gas chromatograph (see page 5). Example 1 thereof details the transesterification reaction between methyl acrylate (1.0 g) and dimethylaminoethanol (0.9 g) promoted by enzyme 10 shown in Table 2 to generate dimethylaminoethyl acrylate. The generated product and the methyl acrylate precursor are respectively species under instant formulae (I) and (II) where R2 is a hydrogen atom. And although JP ‘889 is silent as to origin of the dimethylaminoethanol (i.e., whether bio-sourced or fossil-derived), the claim language “dimethylaminoethanol is at least partially renewable and non-fossil …” is so broad as to encompass use of a dimethylaminoethanol with a such a minute renewable content, including even trace level amounts, as to be indistinguishable from the dimethylaminoethanol used in the method of JP ‘889, especially in terms of a clear technical characteristic not necessarily possessed by the latter. On this basis, JP ‘889 is deemed anticipative of present claim 1.
Alternatively, even if it can be shown that JP ‘889 does not fully meet claim 1, a dimethylaminoethanol of exclusively renewable origin is known from Pelckmans, et al, which describes a synthetic route to short amines, including dimethylaminoethanol (DMAE), by direct conversion of carbohydrates in the presence of industrially available amines, such as monomethylamine (MMA) and dimethylamine (DMA) (see Figure 1, compound DMAE; page 14540, lines 21-23 of left column; and page 14544, final paragraph of left column). Pelckmans, et al further teach that since no CO2 is produced during C-C cleavage in the described synthesis, the bio-based C2-amines are formed with a “greener” carbon efficiency than that of the bioethanol route (see page 14540, second full sentence of right column). And given the recognized corrosion and environmental issues attendant the manufacture of ethanolamines and ethylenediamines from fossil-based ethylene (see id., first paragraph of left column), practitioners of ordinary skill would have had ample inventive to select a bio-sourced DMAE when practicing the method of JP ‘889. Accordingly, at the time of effective filing, it would have been obvious to one of ordinary skill in the art to modify the method of JP ‘889 by utilizing as the alkylaminoalkyl alcohol reactant, a bio-sourced and non-fossil dimethylaminoethanol as per Pelckmans, et al., with a reasonable expectation of success.
Regarding Claims 2, 12 and 14, the proposed modification of JP ‘889 supra would expectedly result in claimed method for producing a formula (I) monomer (dimethylaminoethyl acrylate) by reaction between a compound of formula (II) (methyl acrylate) and dimethylaminoethanol, wherein the latter is exclusively bio-sourced, hence non-fossil in origin, from carbohydrates as per Pelckmans, et al. Therefore, it is implicit that such dimethylaminoethanol would have a bio-sourced carbon content within the claimed range, namely 100 wt% relative to the total C weight in the dimethylaminoethanol, when measured according the recited ASTM standard. Further, as per JP ‘889 (pp. 5-6, Example 1; Claims, page 2), the reaction proceeds via a biological method carried out in the presence of a hydrolase enzyme according to preferred/preferential biological methods of claims 12 and 14, respectively.
Regarding Claims 7/8, JP ‘889 further teaches that the enzyme used in the disclosed method is derived from a microorganism belonging to the genera Rhizopus, Mucor, Aspergillus, Candida, Pseudonmonas, Alcaligenes, Achromobacter, and Bacillus (see Claims, page 2); wherein Rhizopus, Mucor, Aspergillus, Candida, Pseudonmonas and Alcaligenes are all free-form species of microorganism as recited in claim 8 and embraced by parent claim 7. Given the extensive overlap between disclosed and claimed enzyme species, it would have been obvious to one of ordinary skill in the art to undertake the method of JP ‘889 in the presence of a hydrolase enzyme as claimed.
Regarding Claims 9 and 10, it is firstly noted that the claim terms “partially or totally segregated” and “partially or totally derived by a recycling method” refer respectively to a treatment of the dimethylaminoethanol and/or the formula (II) compound obtained from a recycling method, and to a method of obtaining the dimethylaminoethanol and/or the formula (II) compound (see, Spec., page 15, line 14 et seq. and page 16, lines 7-10). However, claims 9-10 are not to a process of preparing dimethylaminoethanol and/or the formula (II) compound, but to a method for obtaining a formula (I) monomer in which dimethylaminoethanol and a formula (II) compound are precursor reactants defined in part by the process by which one or both was prepared. In other words, the claims may be viewed as drawn to a method of using a product (reactant) defined in product-by-process format to obtain a formula (I) monomer. As so construed, their patentability depends on the novelty and unobviousness of the claimed use of the respective precursors. Cf. In re Brown, 173 USPQ 685, 688 (CCPA 1972) and see MPEP § 2113. As far as the present record shows, the manner in which dimethylaminoethanol and/or the formula (II) compound is treated (partially or totally segregated) or obtained (derived from recycling method) does not distinguish either in any unobvious respect over the compositionally identical dimethylaminoethanol and methyl acrylate of JP ‘889, taken alone or as modified by Pelckmans, et al, as discussed above.
Claim Rejections – 35 U.S.C. 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 3-4, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘889 in view of Pelckmans, et al, and Fauconet, et al (US 2013/0165690 A1).
Regarding Claim 3, JP ‘889 in view of Pelckmans, et al renders obvious the method according to claim 1 as discussed above. Neither reference teaches wherein the formula (II) compound (e.g., acrylic acid) has a bio-sourced carbon content of between 25 wt% and 100 wt% relative to the total carbon weight in the formula (II) compound, the bio-sourced carbon content being measured according to the standard ASTM D6866-21 Method B. However, a bioresourced acrylic acid of polymer grade, produced from glycerol starting material and having a content by weight of 14C such that the 14C/12C ratio is greater than 0.8 x 10-12, is known from Fauconet, et al, see paragraphs [0002], [0028]-[0033] and [0122]. Fauconet, et al suggest use of the bioresourced acrylic acid derivatized to the ester or amide form in the manufacture polymers or copolymers (see ¶ [0097]). JP ‘889 similarly contemplates utility of polymers obtained by (co)polymerizing the target alkylaminoalkyl esters of (meth)acrylic acid in various practical applications (see page 2, lines 1-7). Fauconet, et al further note the importance of reducing the emission of greenhouse gases by manufacturing novel products based on renewable starting materials to reduce environmental effects (see ¶ [0009]). Toward that end, it would have been obvious to one of ordinary skill in the art to further modify the method of JP ‘889 by carrying out the transesterification reaction with a lower ester of a bioresourced acrylic acid, such as methyl acrylate, manufactured as per Fauconet, et al, with a reasonable expectation of success. And given that the acrylic acid product of Example 6 of Fauconet, et al is characterized by a content by weight of 14C corresponding to a proportion of bioresourced product/fossil product of greater than 99% (see ¶ [0122]), one would have expected the lower ester derivative thereof to have a bio-sourced carbon content within the claimed range, when measured according the recited ASTM standard.
Regarding Claims 4, 11 and 13, JP ‘889 in view of Pelckmans, et al and Fauconet, et al renders obvious modification of the method of JP ‘889 such that the transesterification reaction is performed with a lower ester of a bioresourced acrylic acid, such as methyl acrylate, manufactured as per Fauconet, et al. The resulting product is a formula (I) monomer as defined in claims 4/1 and 11, or a bio-sourced dimethylaminoethyl (meth)acrylate as defined in claim 13. The cited documents are silent as to bio-sourced carbon content of the reaction product as measured according to ASTM D6866-21 Method B. Nevertheless, as both precursor reactants--dimethylaminoethanol and acrylic acid ester--are exclusively bio-sourced and non-fossil in origin according to Pelckmans, et al and Fauconet, et al, respectively, it is plausible to infer that the reaction product will implicitly satisfy the claim requirement for bio-sourced carbon content ranging between 45wt% and 100wt% relative to the total carbon weight in the formula (I) monomer or the bio-sourced dimethylaminoethyl (meth)acrylate, when measured according to the recited ASTM standard.
Claims 5-6, 15-16, 20 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘889 in view of Pelckmans, et al, and Favaro, et al (WO 2020/094960 A1; citing infra to US 2021/0355258 A1 as an English language equivalent).
Regarding Claims 5, 15-16 and 25, JP ‘889 in view of Pelckmans, et al renders obvious the method according to claim 1 as discussed above. Neither reference teaches wherein the formula (II) monomer is either salified or quaternized with an alkylating agent (claim 5, 15); or a polymer obtained by polymerization of at least one monomer according to the method according to claim 1, wherein the polymer is a copolymer of: at least a first monomer obtained by a method according to claim 1, and at least a second monomer different from the first monomer, said second monomer selected from the group consisting of nonionic monomers, anionic monomers, cationic monomers, zwitterionic monomers, monomers comprising a hydrophobic moiety, and mixtures thereof (claim 16); or use of the polymer according to claim 16 in a method for hydraulic fracturing of subterranean oil and/or gas reservoirs (claim 25). JP ‘889 does, however, contemplate the usefulness of polymers obtained by (co)polymerizing its target product of alkylaminoalkyl esters of (meth)acrylic acid in various practical applications (see page 2, lines 1-7).
Furthermore, the utility of dimethylaminoethyl (meth)acrylate in preparing an auto-invertible, inverse polymer emulsion for use in subterranean oil and gas reservoirs is well-known as taught by Favaro, et al (see ¶¶ [0001]-[0002], [0018] and [0032]). Thus, Favaro, et al broadly disclose an auto-invertible inverse emulsion comprising: an oil, some water, at least one water-in-oil surfactant, at least one polymer containing monomer units of at least one water-soluble monomer and at least one LCST (lower critical solution temperature) macromonomer (¶¶ [0011]-[0015]); the water-soluble monomer being preferably selected from nonionic, anionic and cationic monomers ( [0029]). Favaro, et al mention quaternized or salified dimethylaminoethyl acrylate (ADAME) and quaternized or salified dimethylaminoethyl methacrylate (MADAME) [per claim 5, 15] in a finite list of exemplary cationic monomers (¶ [0032]) and generally teach ADAME and MADAME as alternative equivalents to various listed species of nonionic and anionic monomers, including acrylamide and 2-acrylamido 2-methylpropanesulfonic acid (ATBS), the particular nonionic and cationic monomers used in the exemplary Synthesis of Polymers in Inverse Emulsion EM (¶¶ [0189]-[0196]). As such, an ordinarily skilled artisan would have expected a dimethylaminoethyl acrylate of renewable origin as obtained according to JP ‘889 as modified by Pelckmans, et al to perform equivalently as water-soluble monomer for the purposes of Favaro, et al, and provide an inverse emulsion suitable for use in the disclosed fracturing method as set out in paragraphs [0128]-[0133], wherein described steps aa)/bb)/cc) and dd)/ee) are encompassed by claimed steps a. and b., respectively [per claim 25].
Moreover, given the widely recognized importance of reducing the environmental effects of greenhouse gas emissions, those of ordinary skill would have had ample incentive to select such a bio-sourced cationic monomer when practicing the method of Favaro, et al. Accordingly, it would have been obvious to one of ordinary skill in the art to utilize a bio-sourced dimethylaminoethyl acrylate obtained by the method of present claim 1, as disclosed by JP ‘889 as modified by Pelckmans, et al, and a nonionic monomer such as acrylamide or ATBS (used in aforementioned Synthesis example of Favaro, et al) as second monomer, to prepare the inverse emulsion of Favaro, et al, comprising a polymer as per claim 16, and to further form a fracturing fluid therefrom to carry out the disclosed fracturing method.
Regarding Claim 6, the claimed method wherein the formula (II) monomer is either salified or quaternized with an alkylating agent is rendered obvious by Favaro, et al as discussed above. It is acknowledged that none of the applied references directly discloses wherein the alkylating agent has a bio-sourced carbon content of between 50wt% and 100wt% relative to the total carbon weight in said alkylating agent, as claimed; however, claim 6 is generic to the salified formula (II) monomer recited as an alternative embodiment in parent claim 5, and this alternative is rendered obvious by Favaro, et al as detailed above.
Regarding Claim 20, JP ‘889 in view of Pelckmans, et al, and Favaro, et al renders obvious the polymer of claim 16 as discussed above. None of the applied references directly discloses the bio-sourced carbon content of the polymer. However, Favaro, et al does teach an advantageous embodiment wherein the molar percentage of units (monomer units) derived from LCST macromonomers in the polymer is between 10-5 and 5 mol % (≥10-5 mol % and ≤5 mol %) relative to the total number of moles of monomer units of water-soluble monomer(s) and LCST macromonomer(s), preferably between 10-4 and 1 mol % (¶ [0022]). Favaro, et al thus imply the polymer may comprise a molar percentage of monomer units of the water-soluble monomer(s) of >5 mol % to as high as 95 or 99 mol%. Favaro, et al further teach that, in general, the amount of monomer units of a monomer (monomer or macromonomer) corresponds to the amount of this monomer used in the preparation of the polymer (¶ [0023]). In light of such teachings, it would have been obvious to one of ordinary skill in the art to prepare the inverse emulsion of Favaro, et al from the bio-sourced dimethylaminoethyl acrylate of JP ‘889 as modified by Pelckmans, et al, in an amount sufficiently high that one would expect the proportion of corresponding polymerized units in the obtained polymer emulsion to afford a bio-sourced carbon content within the claimed range, especially given the breadth of that range (i.e., “between 5wt% and 100wt% relative to the total carbon weight in said polymer”).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘889 in view of Pelckmans, et al, and Favaro, et al (WO 2020/094960 A1) as applied to claim 16 above, and further in view of Fauconet, et al (US 2013/0165690 A1).
Regarding Claims 18/19, JP ‘889 in view of Pelckmans, et al, and Favaro, et al renders obvious the polymer according to claim 16 as discussed above. Favaro, et al further implies the inverse emulsion polymer may comprise a molar percentage of monomer units of the water-soluble monomer(s) of >5 mol % to as high as 95 or even 99 mol% (¶ [0022]), as discussed above. This implicitly disclosed range substantially overlaps the ranges recited in claim 18 for mol% of the first and second monomers, and it has consistently been held that even a slight overlap in ranges establishes a prima facie case of obviousness (see MPEP 2144.05). Favaro, et al also mention acrylic acid in a finite list of exemplary anionic monomers (¶ [0031]) and generally teach acrylic acid as an alternative equivalent to various listed species of nonionic and anionic monomers, including acrylamide and 2-acrylamido 2-methylpropanesulfonic acid (ATBS), the particular cationic monomer used in the exemplary Synthesis of Polymers in Inverse Emulsion EM (¶¶ [0189]-[0196]).
Bioresourced acrylic acid of polymer grade, produced from glycerol starting material and having a content by weight of 14C such that the 14C/12C ratio is greater than 0.8 x 10-12, is known from Fauconet, et al (see ¶¶ [0002], [0028]-[0033] and [0122]), wherein its intended utility as a monomer or comonomer in the manufacture of (co)polymers is explicitly taught (see ¶ [0003]). Moreover, given the importance of reducing the emission of greenhouse gases by manufacturing novel products based on renewable starting materials to reduce environmental effects as recognized in Fauconet, at al (see ¶ [0009]), it would have been obvious to one of ordinary skill in the art to further modify Favaro, et al by preparing their inverse emulsion from both the bio-sourced dimethylaminoethyl acrylate of JP ‘889 as modified by Pelckmans, et al, and a bio-based acrylic acid as per Fauconet, et al, in lieu of ATBS [per claim 19]. Furthermore, given that the acrylic acid product of Fauconet, et al is characterized by a content by weight of 14C corresponding to a proportion of bioresourced product/fossil product of greater than 99% (see ¶ [0122], Example 6), one would have expected the resulting polymer to be a copolymer of a second monomer comprising a bio-sourced carbon content within the claimed range when measured according the recited ASTM standard, especially given the breadth of that range (“between 5 wt% and 100 wt%”).
Claims 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘889 in view of Pelckmans, et al, and Favaro, et al (WO 2020/094960 A1) as applied to claim 16 above, and further in view of Hietaniemi, et al (WO 2017/162920 A1) or Millard, et al (WO 2013/153004 A1).
Regarding Claim 27, JP ‘889 in view of Pelckmans, et al, and Favaro, et al renders obvious the polymer according to claim 16 as discussed above. Neither JP ‘889 nor Pelckmans, et al nor Favaro, et al directly disclose claimed method for making a sheet of paper or a carboard, whereby before forming said sheet, at least one polymer is added to a fiber suspension at one or more injection points according to claim 16. However, Favaro, et al does explicitly suggest use of their inverse polymer emulsion in paper manufacturing (see ¶ [0002]); while JP ‘889 contemplates the usefulness of polymers obtained by (co)polymerizing its target product of alkylaminoalkyl esters of (meth)acrylic acid in various practical applications, including as paper strength enhancers (see page 2, lines 1-7).
In this latter regard, Hietaniemi, et al disclose a three-component system for use in paper or board manufacturing for increasing paper strength properties, the system comprising amphoteric polyacrylamide with inorganic microparticles and a high-charged cationic coagulant selected from an aluminum-based coagulant, organic polymers and mixtures thereof (see page 3, lines 10-20). The system is indicated to be especially suitable for use in treating a fibre stock comprising fibres originating from old corrugated cartons (OCC), mixed waste recycled fibre, unbleached kraft pulp and/or unbleached semichemical pulp (id., lines 21-29). Hietaniemi et al generally teach that before dewatering, the fibre stock is treated with the combination of amphoteric polyacrylamide, microparticles of inorganic material and a high-charged, cationic coagulant selected from an aluminum-based coagulant, organic polymers and mixtures thereof (see id., line 33 et seq.). Such treatment may involve adding the high-charged, cationic coagulant to the fibre stock at any suitable wet end location; e.g., at such time points or locations before or after refining of the fibre stock (see pp. 12-13, bridging para; emphasis added). Hietaniemi et al further teach that the amphoteric polymer is obtained by polymerization of cationic, anionic and non-ionic monomers; preferably, by copolymerization of acrylamide together with both anionic and cationic monomers (see page 5, lines 1-4). Among concrete examples of the amphoteric polyacrylamide, Hietaniemi et al teaches a net cationic amphoteric polymer obtained from a monomer solution comprising acrylamide and ADAM-Cl (2-(dimethylamino)ethyl acrylate chloride) as cationic monomer, and acrylic acid as anionic monomer (see page 16, lines 1-17 and page 17, Table 1: EXP 1). As such, the teachings of Hietaniemi et al would have led an ordinarily skilled artisan to expect the polymer of present claim 16, as suggested by the combination of JP ‘889, Pelckmans, et al and Favaro, et al, to be similarly utile in the manufacture of a sheet of paper or a cardboard. Accordingly, at the time of effective filing, it would have been obvious to one of ordinary skill in the art to practice the method of Hietaniemi et al by adding such polymer to a fiber suspension before forming a sheet of paper at one or more injection points as per the claimed invention, with a reasonable expectation of success.
Regarding Claim 28, JP ‘889 in view of Pelckmans, et al, and Favaro, et al renders obvious the polymer according to claim 16 as discussed above. Neither JP ‘889 nor Pelckmans, et al nor Favaro, et al directly disclose claimed method for treating municipal and industrial water comprising adding into said municipal or industrial water at least one polymer according to claim 16. However, Favaro, et al does explicitly suggest use of their inverse polymer emulsion in water treatment (see ¶ [0002]). Further, in related art directed to clarification and purification of industrial and municipal water, Millard, et al broadly teach water-soluble cationic polymers derived from N-vinyl amide monomers and ethylenically unsaturated compounds bearing cationic group as flocculants of suspended matter in such water (see page 2, lines 4-15). Such copolymers may be produced by inverse emulsion polymerization (see page 11, line 18 et seq.) as in Favaro, et al, and Millard, et al concretely describe cationic copolymers derived from vinyl formamide and dimethylaminoethyl acrylate methyl chloride via inverse emulsion polymerization (see pages 26-27, Examples 9-10). Inasmuch as vinyl formamide and dimethylaminoethyl acrylate (quaternized or salified) fall within the scope of water-soluble monomers used to make the inverse emulsion of Favaro, et al (cf., ¶¶ [0030], [0032]), an ordinarily skilled artisan would have reasonably expected the polymer of present claim 16, as suggested by the combination of JP ‘889, Pelckmans, et al and Favaro, et al, to possess similar flocculant utility in treatment of industrial and municipal water as per Millard, et al. Accordingly, at the time of effective filing, it would have been obvious to one of ordinary skill in the art to practice the treatment of Millard, et al by adding such polymer into industrial or municipal water as per the claimed invention, with a reasonable expectation of success in terms of realizing water purification and clarification benefits.
Conclusion
Claims 1-16, 18-20, 25, and 27-28 are rejected. No claims are in condition for allowance at this time.
Correspondence
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/07-28-26
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