DETAILED ACTION
The communication dated 12/02/2025 has been entered and fully considered. Claims 9-20 are withdrawn. Claims 2 and 3 are amended. Claims 21-27 are new. Claims 1-8 and 21-27 are considered and pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 1-8) in the reply filed on 12/02/2025 is acknowledged.
Response to Arguments
Applicant argues that the prior art, VALKEALAAKSO, does not teach the claim 1 composition.
Applicant’s arguments, see REMARKS, filed 2/23/2026, with respect to Claim 1 have been fully considered and are persuasive. The rejection of 12/23/2025 has been withdrawn.
Applicant argues that amendment of claim 3 overcomes prior indefiniteness rejection.
Applicant’s arguments, see REMARKS, filed 2/23/2026, with respect to Claim 3 have been fully considered and are persuasive. The rejection of 12/23/2025 has been withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5-8, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over LU (US 20150144282 A1) in view of HIETANIEMI (US 20170284028 A1).
For claim 1, LU teaches a composition for use in papermaking with enhancing drainage properties [0018]. LU teaches the composition is aqueous [0017]. The examiner understands language before the composition is the preamble of the claim and holds no inventive features. This teaches the limitation of “A drainage-optimized additive composition for papermaking, comprising: an aqueous media”. LU teaches the composition uses a glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This teaches the limitation of “a glyoxalated polyacrylamide (GPAM) resin” and “a cationic monomer content of at least about 4 mol%;”. LU teaches the composition uses an anionic polyacrylamide (APAM) with a molecular weight of 100,000 to 500,000 Daltons (equivalent to 0.1 MPa to 0.5 MPa) [0030]. The APAM molecular weight overlaps instant claim range of “and an anionic polyacrylamide (APAM) resin having a weight average molecular weight (Mw) of at least about 0.25 MDa”. LU also teaches the GPAM and APAM are used in combination at about 1:1 [0028]. This value is within the range of the instant claim of “wherein the APAM resin and the GPAM resin are utilized in a wt/wt ratio of from about 1:99 to about 1:2 (APAM:GPAM), based on the total weight of the APAM resin and the GPAM resin”.
LU does not teach the GPAM with a molecular weight within the claimed range or the molar percentages of the anionic polymer used. HIETANIEMI teaches a similar composition with anionic polyacrylamide [0043 and 0045]. HIETANIEMI also teaches the composition has a cationic polymer with a molecular weight of 200,000 to 6,000,000 g/mol (equivalent to 0.2 to 6 MDa) [0047]. This range overlaps the GPAM instant claim range of “having a weight average molecular weight (Mw) of at least about 5 MDa”. HIETANIEMI also teaches the anion used has a similar molecular weight to LU (greater than 0.5 MDa) and an anionicity between 4 and 35 mol% [0015]. This range overlaps the instant range of “and an anionic monomer content of up to about 25 mol%,”. HIETANIEMI teaches the advantage of the invention is an improvement to strength of the final paper product [0066]. It would be obvious to one skilled in the arts at the time of invention to substitute the GPAM and APAM of HIETANIEMI into the composition of LU to produce an effective paper product. One would be motivated to combine the art based on the advantage improved strength as taught by HIETANIEMI.
For claim 2, LU and HIETANIEMI teach the additive composition of claim 1, as above. LU teaches the composition is aqueous [0017]. This teaches the limitation of “wherein the glyoxalated polyacrylamide GPAM resin comprises the reaction product of (A) a cationic acrylamide (CPAM) prepolymer and (B) glyoxal in an aqueous media”. LU also teaches the cationic acrylamide monomer (CPAM) is present at 30-80% of the total GPAM [0024] (equivalent to 30:70 to 80:20). This range overlaps the instant claim range of “wherein the CPAM prepolymer (A) and the glyoxal (B) are reacted in a dry weight (w/w) ratio of from about 75:25 to about 95:5 (A):(B)”.
For claim 3, LU and HIETANIEMI teach the additive composition of claim 2, as above. LU teaches the CPAM can be the product of a cationic monomer and acrylamide [0024 and 0025]. This teaches the limitation of “wherein the CPAM prepolymer (A) comprises the reaction product of:(Al) an acrylamide (AM) monomer;(A2) a cationic monomer; and (A3) optionally, one or more additional ethylenically unsaturated monomer(s)”. The examiner understands the claim language of “optional” are taught if other claim limitations are taught. LU teaches the composition uses a combination of glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This value is within the instant claim range of “and wherein the CPAM prepolymer (A) comprises at least about 10 mol% of cationic monomer units derived from the cationic monomer (A2)”.
For claim 5, LU and HIETANIEMI teach the additive composition of claim 3, as above. LU teaches the base polymer of the CPAM is acrylamide and cationic monomers [0023]. The cationic monomer can be diallyldimethylammonium chloride (DADMAC) [0026]. The examiner notes the limitation (iv) allows for any combination of (i)-(iii) which allows a combination of (i) and (ii) alone to teach the entire claim. This teaches the limitation of “wherein: (i) the AM monomer (Al) comprises acrylamide;(ii) the cationic monomer (A2) comprises diallyldimethylammonium chloride (DADMAC);(iii) the one or more additional ethylenically unsaturated monomer(s) (A3), when present, are selected from styrenes, alkyl acrylates, and vinyl acetates; or (iv) any combination of (i)-(iii)”.
For claim 6, LU and HIETANIEMI teach the additive composition of claim 1, as above. HIETANIEMI also teaches the composition has a cationic polymer with a molecular weight of 200,000 to 6,000,000 g/mol (equivalent to 0.2 to 6 MDa) [0047]. This range overlaps the instant claim range of “wherein the glyoxalated polyacrylamide (GPAM) resin comprises:(i) a weight average molecular weight (Mw) of at least about 6 MDa;”. LU teaches the composition uses a glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This values is within the instant claim range of “(ii) a cationic monomer content of at least about 12 mol%; or (iii) both (i) and (ii)”.
For claim 7, LU and HIETANIEMI teach the additive composition of claim 1, as above. HIETANIEMI teaches the anion used has a similar molecular weight to LU (greater than 0.5 MDa) [0015]. This range matches the instant claim range of “wherein the anionic polyacrylamide (APAM) resin comprises:(i) a weight average molecular weight (Mw) of at least about 0.5 MDa;”. HIETANIEMI teaches the anion has anionicity between 4 and 35 mol% [0015]. This range overlaps the instant range of “(ii) an anionic monomer content of less than about 20 mol%; or (iii) both (i) and (ii)”.
For claim 8, LU and HIETANIEMI teach the additive composition of claim 1, as above. LU teaches a composition for use in papermaking with enhancing drainage properties [0018]. LU teaches the composition is optimized based on the ratio of GPAM/APAM and the GPAM properties as compared to compositions without it [0064]. This teaches the limitation of “wherein the additive composition is optimized for drainage performance by selecting the relative proportion of the APAM resin and the GPAM resin utilized based on:(i) the weight average molecular weight (Mw) of the glyoxalated polyacrylamide (GPAM) resin;(ii) the cationic monomer content of the glyoxalated polyacrylamide (GPAM) resin;(iii) the weight average molecular weight (Mw) of the anionic polyacrylamide (APAM) resin;(iv) the anionic monomer content of the anionic polyacrylamide (APAM) resin; or (v) any combination of (i)-(iv), such that the additive composition exhibits a drainage performance greater than that of the APAM resin used alone, and substantially no less than the drainage performance exhibited without the use of either of the APAM resin and the GPAM resin, as determined under substantially the same conditions via vacuum drainage test performed after application to a cellulosic pulp suspension”.
For claim 21, LU and HIETANIEMI teach the additive composition of claim 1, as above. LU teaches the composition uses a glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This value is within the range of the instant claim of “wherein: the GPAM resin has a cationic monomer content of at least about 10 mol%”. LU teaches the composition uses an anionic polyacrylamide (APAM) with a molecular weight of 100,000 to 500,000 Daltons (equivalent to 0.1 MDa to 0.5 MDa) [0030]. This range closely encompasses the instant claim range of “and the APAM resin has a weight average molecular weight of from about 0.25 MDa to about 5 MDa”. See MPEP 2144.05(I).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus.
For claim 22, LU and HIETANIEMI teach the additive composition of claim 21, as above. LU teaches the GPAM and APAM are used in combination at about 0.1:1 to 1:0.1 [0028]. This range encompasses the instant claim range of “wherein the APAM resin and the GPAM resin are utilized in a wt/wt ratio of from about 1:30 to about 1:3 (APAM:GPAM), based on the total weight of the APAM resin and the GPAM resin”. See MPEP 2144.05(I).
For claim 23, LU and HIETANIEMI teach the additive composition of claim 22, as above. HIETANIEMI also teaches the composition has a cationic polymer with a molecular weight of 200,000 to 6,000,000 g/mol (equivalent to 0.2 to 6 MDa) [0047]. This range abuts the instant claim range of “wherein the GPAM resin has a weight average molecular weight of at least about 6 MDa”.
For claim 24, LU and HIETANIEMI teach the additive composition of claim 23, as above. HIETANIEMI teaches the anion has anionicity between 4 and 35 mol% [0015]. This range overlaps the instant range of “wherein the APAM resin has an anionic monomer content of less than about 20 mol%”.
For claim 25, LU and HIETANIEMI teach the additive composition of claim 24, as above. LU teaches the GPAM and APAM are used in combination at about 1:1 [0028]. LU teaches the additive aqueous composition has at least 10% by weight of GPAM and APAM together (equivalent to at least 5% GPAM) [0031]. This range overlaps the instant claim range of “wherein the GPAM resin is present in an amount of from about 1.2% to about 6%, as % solids based on the aqueous media”.
For claim 26, LU and HIETANIEMI teach the additive composition of claim 1, as above. LU teaches the composition uses a glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This value is within the instant claim range of “wherein: the glyoxalated polyacrylamide (GPAM) resin has a cationic monomer content of at least about 12 mol%”. LU teaches the composition uses an anionic polyacrylamide (APAM) with a molecular weight of 100,000 to 500,000 Daltons (equivalent to 0.1 MPa to 0.5 MPa) [0030]. This range abuts the instant claim range of “the anionic polyacrylamide (APAM) resin has a weight average molecular weight of from about 0.5 MDa to about 4 MDa”. LU teaches the GPAM and APAM are used in combination at about 0.1:1 to 1:0.1 [0028]. This range encompasses the instant claim range of “and the APAM resin and the GPAM resin are utilized in a wt/wt ratio of from about 1:20 to about 1:5 (APAM:GPAM), based on the total weight of the APAM resin and the GPAM resin”. See MPEP 2144.05(I).
For claim 27, LU and HIETANIEMI teach the additive composition of claim 26, as above. HIETANIEMI also teaches the composition has a cationic polymer with a molecular weight of 200,000 to 6,000,000 g/mol (equivalent to 0.2 to 6 MDa) [0047]. The examiner notes the language of “about” includes values close to the target value. This range abuts the GPAM instant claim range of “wherein: the GPAM resin has a weight average molecular weight of at least about 7.5 MDa;”. See MPEP 2144.05(I).
In the case where the 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)
LU teaches the composition uses a glyoxalated polyacrylamide (GPAM) with a cationic polymer content of about 42 mol% [Table 1]. This value is within the instant claim range of “the GPAM resin has a cationic monomer content of at least about 15 mol%”. HIETANIEMI also teaches the anion used has a similar molecular weight to LU (greater than 0.5 MDa) and an anionicity between 4 and 35 mol% [0015]. This range overlaps the instant range of “and the APAM resin has an anionic monomer content of less than about 15 mol%”.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over LU (US 20150144282 A1) and HIETANIEMI (US 20170284028 A1) in view of LUO (US 20210002827 A1).
For claim 4, LU and HIETANIEMI teach the additive composition of claim 3, as above. LU is silent to the use of chain transfer agent in the formation of the polymer agent. LUO teaches a similar polyacrylamide based drainage agent [abstract]. LUO further teaches the use of a chain linking agent in the formation of the polymer from acrylamide (AM) and cationic polymer (glyoxal) [abstract]. This teaches the limitation of “wherein the AM monomer (Al), the cationic monomer (A2), and optionally the additional ethylenically unsaturated monomer(s) (A3) are reacted in the presence of a chain transfer agent”. LUO teaches the advantage of the invention is the greater dosage without over-flocculating the fiber stock and maintaining high retention [0070]. It would be obvious to one skilled in the arts to substitute the chain linking agent of LUO into the polymer composition of LU to produce a more effective additive. One would be motivated to modify the art based on the advantage of maintaining the high drainage without retention loss as taught by LUO.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
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, Abbas Rashid can be reached at (571) 270-7457. 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.
/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
Prosecution Insights