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 .
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.
Priority
This application has PRO 63/486,203 02/21/2023.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 07/11/24 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Claim Objections
Claim 4 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim 3. See MPEP § 608.01(n). Accordingly, the claim 4 has not been further treated on the merits.
Claim 6 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4. See MPEP § 608.01(n). Accordingly, the claim 6 has not been further treated on the merits.
Claim 8 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6. See MPEP § 608.01(n). Accordingly, the claim 8 has not been further treated on the merits.
Claim 10 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8. See MPEP § 608.01(n). Accordingly, the claim 10 has not been further treated on the merits.
Claim 11 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10. See MPEP § 608.01(n). Accordingly, the claim 11 has not been further treated on the merits.
Claim 12 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-11. See MPEP § 608.01(n). Accordingly, the claim 12 has not been further treated on the merits.
Claim 14 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12. See MPEP § 608.01(n). Accordingly, the claim 14 has not been further treated on the merits.
Claim 15 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12. See MPEP § 608.01(n). Accordingly, the claim 15 has not been further treated on the merits.
Claim 16 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12, 14-15. See MPEP § 608.01(n). Accordingly, the claim 16 has not been further treated on the merits.
Claim 17 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12, 14-16. See MPEP § 608.01(n). Accordingly, the claim 17 has not been further treated on the merits.
Claim 18 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12, 14-17. See MPEP § 608.01(n). Accordingly, the claim 18 has not been further treated on the merits.
Claim 19 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12, 14-18. See MPEP § 608.01(n). Accordingly, the claim 18 has not been further treated on the merits.
Claim 20 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claims 3-4, 6, 8, 10-12, 14-19. See MPEP § 608.01(n). Accordingly, the claim 18 has not been further treated on the merits.
Claims 5, 7, 9, 13 depends from objected claims.
Claim 9 is objected to because of the following informalities: “mol% mol%” in line 9. Applicants are suggested to delete one “mol%.” Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3, 9, 13, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koichi (JPH07188347).
Regarding claims 1, 3, 9, 13, Koichi discloses a formulation for cellulosic material such as in Example 1 a sizing agent for paper that comprises a polymer of vinyl alcohol (98 mol% hydrolysis) modified with 2.0 mol % N-tert.-octylacrylamide, a hydrophobic comonomer, and 1.0 mol% of maleic acid, a hydrophilic comonomer that results of the hydrolysis of monomethyl maleate. In Comparative Example 3 Koichi describes a different polymer for a sizing agent for paper that comprises a polyvinyl alcohol modified with 3.0 mol % VeoVa 10 and 1.0 mol% itaconic acid. These polymers are identical to the polymers of present claims 1, 3 and 9, 13.
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 1, 3, 5, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hashemzadeh (US 2021/0122839).
Regarding claims 1, 3, 5, 13, Hashemzadeh discloses copolymer (para [0010]; read on terpolymer) composition comprising 80 to 99 mol% of vinyl alcohol monomer (para [0011]), 0.5 to 10 mol% of hydrophobic monomers such as vinyl neodecanoate VeoVa10® (para [0012], [0016]), encompassing claim 1 range of about 1 to about 5 mol% or claim 13 range of about 1 to about 4 mol%, and 0.5 to 10 mol% of hydrophilic monomers such as 2-acrylamido-2-methylpropanesulfonic acid (para [0013], [0017]-[0018]), encompassing claim 1 range of about 1 to about 10 mol% or claim 5 range of about 2 to about 6 mol%, and having a degree of hydrolysis of 80 to 100 mol% (para [0041]-[0043]), encompassing claimed range of about 92 to about 98%.
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh discloses the copolymer composition comprising 0.5 to 10 mol% of hydrophobic monomers such as vinyl neodecanoate VeoVa10®, and 0.5 to 10 mol% of hydrophilic monomers such as 2-acrylamido-2-methylpropanesulfonic acid, and having a degree of hydrolysis of 80 to 100 mol%, encompassing the requirement of claims 1, 5, 13. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
In claim 1, the recitation “a formulation for cellulosic materials” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
In the instant case, the preamble in claim 1 merely recites the intended use of the composition, wherein the prior art can meet this future limitation by merely being capable of such intended use.
25. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Koichi as applied to claim 1 above, and further in view of Hiroshi (JPS58186696).
Koichi includes the features of claim 1 above.
Regarding claims 2, Koichi does not disclose the polymer is grafted with 0.25 to 2.0 mol % of a sizing agent.
However, Hiroshi discloses a sizing agent for papermaking comprising grafting polyvinyl alcohol with the size agent such as aminoalkyl methacrylate in an amount 0.01 to 10 mol%, encompassing the claimed range of about 0.25 to about 2 mol% to provide excellent paper strength enhancement, waste yield improvement, and sizing effects (page 2, lines 1-2, page 7, lines 19-, page 8, lines -3).
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Koichi by grafting polyvinyl alcohol with the size agent such as aminoalkyl methacrylate in an amount 0.01 to 10 mol%, as taught by Hiroshi. The rationale to do so would have been motivation provided by of Hiroshi that to do so would provide excellent paper strength enhancement, waste yield improvement, and sizing effects.
A prima facie case of obviousness exists for the copolymer composition, wherein Hiroshi discloses the size agent in an amount 0.01 to 10 mol%, encompassing the requirement of claim 2. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hashemzadeh as applied to claim 1 above, and further in view of Mathauer (US 2007/0056900).
Hashemzadeh includes the features of claim 1 above.
Regarding claim 7, Hashemzadeh discloses 0.5 to 10 mol% of hydrophilic monomers such as 2-acrylamido-2-methylpropanesulfonic acid but does not disclose N-vinyl-2-pyrrolidone.
However, Mathauer discloses a polymer composition for paper making, the composition comprises hydrophilic monomers such as 2-acrylamido-2-methylpropanesulfonic acid and functionally equivalent N-vinyl-2-pyrrolidone.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the N-vinyl-2-pyrrolidone of the claims in the composition of Hashemzadeh because Mathauer teaches that the claimed N-vinyl-2-pyrrolidone and the 2-acrylamido-2-methylpropanesulfonic acid of Hashemzadeh are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
A prima facie case of obviousness exists for the copolymer composition, wherein Hashemzadeh discloses the 0.5 to 10 mol% of hydrophilic monomers encompassing the claim 7 amount of 2 to about 6 mol%. It is well-settled that where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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