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 .
DETAILED ACTION
DRAWING OBJECTION
The FIG.6A is objected since the recited “Dic 1” should be “Die 1” as shown in the FIG. 6B and upper portions of “Cross-sectional area” are missing. Submission of a clear FIG. 6A is needed.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a pelletization of SAP after drying and after curing, does not reasonably provide enablement for the pelletization of SAP before drying. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. The SAP before drying would be in a state of a polymer solution as recited in claim 11 and the pelletization of the polymer solution would be impossible since the pelletization would require the SAP as a solid or at least a gel. In re Wand analysis would not be needed since one skilled in the art would know that the pelletization of the polymer solution would be impossible.
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 2-10 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.
The recited preamble “The extruded superabsorbent material” lacks an antecedent basis in claim 1.
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.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Savich (US 2021/0039068 A1, Feb. 11, 2021) in view of Phan et al. (US 5,338,766).
Savich teaches a superabsorbent polymer (SAP) formed from a non-crosslinked polysaccharide having carboxylic groups ([0031]) and a molecular weight to 400,000 to 1,000,000 ([0033]). Savich teaches utilization of N’N-methylenebisacrylamide as a crosslinker in [0083].
The instant invention further recites non-reactive crosslinking agent (i.e., a latent crosslinker) such as glycerol (claim 5) and an external surface area to volume ratio of about 3.2 or greater over Savich.
Savich further teaches a latent crosslinker such as glycerin (i.e., glycerol) ([0034]) and thus further utilization of the glycerin in example 1 of Savich would have been obvious. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Further regarding the recited external surface area to volume ratio of about 3.2 or greater, the instant specification teaches utilization of a blowing agent to obtain such property.
Phan et al. teach utilization of a blowing agent to obtain the superabsorbent polymer foam having open cells and a relatively high surface area to mass ratio in claim 1 and abstract and a preferred glycerol external crosslinking agent in lines 35-38 of col. 24.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the glycerin in example 1 of Savich since Savich teaches the glycerin as a crosslinker in [0083] and further to utilize the art well known blowing agent taught by Phan et al. in the example 1 of Savich to obtain the SAP having open cells and a relatively high surface area to mass ratio which would yield a higher absorption of liquid absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, Savich teaches flakes, particles, granules, fibers and films in [0026] and gel extrudates in [0046] meeting claim 2.
Regarding claim 3, Savich teaches a molecular weight to 400,000 to 1,000,000 in [0033] meeting claim 3.
Regarding claim 4, Savich teaches polysaccharide which is biopolymer.
Regarding claim 5, the SAP of Savich or Savich and Phan et al. teaches the recited components of claim 5 and thus it would meet claim 5 or make claim 5 obvious.
Regarding claim 6, Savich teaches various properties of the SAP in examples which would be expected to have the recited average cross-sectional dimension which is also known as taught by claim 1 and Figures 1 and 2 with a scale of Phan et al.
Regarding claims 7 and 8, the SAP of Savich or Savich and Phan et al. would meet the recited components of claim 1 which would be expected to meet the recited properties measured the recited specific parameters inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of Savich or Savich and Phan et al. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding claim 10, the SAP of Savich would be expected to have open cells (i.e., interconnected micropores) for a high absorption of liquid and Phan et al. teach the superabsorbent polymer foam having open cells in claim 1.
Claims 9, 11, 15-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Savich (US 2021/0039068 A1, Feb. 11, 2021) in view of Phan et al. (US 5,338,766) as applied to claims 1-8 and 10 above, and further in view of WO 99/34041 (July 8, 1999).
Regarding claim 9, WO teaches the SAP precursor polymer (i.e., before crosslinked) having a molecular weight of 500,000 to 4,000,000 in lines 1-5 of page 13.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known SAP precursor polymer (i.e., before crosslinked) having a molecular weight of 500,000 to 4,000,000 taught by WO in Savich and Phan et al. since a higher molecular weight would be expected to yield a higher pore volume absent showing otherwise.
Regarding claim 11, Savich teaches a method of making the SAP in claims 1 and 22 and [0033-0034] and [0042-0043].
The instant claim 11 further recites (i) an aqueous polymer solution comprising about 20% solids or greater and neutralizing agent, (ii) subjecting the polymer solution to one or more higher pressure processes through at least one orifice, (iii) a non-reactive crosslinking agent is maintained below a reaction temperature prior to a curing step and (iv) raising the reaction temperature during the curing step over Savich.
Savich teaches utilizing sodium hydroxide to neutralize carboxylic acid groups in [0088] meeting the above (i). WO teaches a polymer solution having 26% solids utilization of a die (i.e., orifice) in lines 1-27 of page 27 which would make the above (ii) obvious, especially Savich teaches obtaining fibers in a lower section of [0053].. Savich teaches raising the temperature to 172oF for crosslinking in [0092] meeting the above (iii) and (iv).
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known polymer solution having 26% solids taught by WO in the method of making the SAP taught by Savich and Phan et al. since utilization of a dye to obtaining dried SAP particles is well known as taught by WO absent showing otherwise.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claims 15 and 16, WO teaches the instant molecular weight and % solids falling within scope of claims 11 and 16 and thus claims 15 and 16 would have been at least obvious.
Regarding claim 18, Savich teaches blending a polymer precursor with a crosslinking agent and crosslinking thereafter in claim 22 and thus the recited 100oC or less before curing would have been obvious.
Regarding claim 19, raising a temperature for the curing would have been obvious and thus one skilled in the art would have been able to find a proper temperature including the recited temperature for the curing would be expected to a routine practice.
Regarding claim 20, Savich teaches various properties of the SAP in examples which would be expected to have the recited average cross-sectional dimension which is also known as taught by claim 1 of Phan et al. Further the SAP material would be expected have a porosity of at least 5% inherently.
Claims 12-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Savich (US 2021/0039068 A1, Feb. 11, 2021) in view of Phan et al. (US 5,338,766), and further in view of WO 99/34041 (July 8, 1999) as applied to claims 1-11, 15-16 and 18-20 above, and further in view of Braun et al. (US 2017/0065739 A1) and RU 2715533 C1 (Feb. 28, 2020) with Machine translation.
Regarding claim 13, Braun et al. teach various die shapes such as star-shaped in [0054] and thus utilization of such die in Savich, Phan et al. and WO thereof would have been obvious.
Regarding claim 12, the star-shaped SAP would meet claim 12 since the star would have a large surface area inherently as further evidenced by Fig. 11 of RU. Further, Fig. 12 of RU showing six-pointed wings like a snowflake.
Regarding claim 14, Braun et al. further teach a drying step yielding a moisture content of less than 10% by weight in claim 1. Thus, further utilization of the drying step yielding a moisture content of less than 10% taught by Braun et al in Savich, Phan et al. and WO thereof would have been obvious.
Regarding claim 17, Braun et al. further teach the pelletization of the polymer gel exiting the hole of orifices in the [0054] and thus further utilization of the pelletization taught by Braun et al in Savich, Phan et al. and WO thereof would have been obvious.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Savich (US 2021/0039068 A1, Feb. 11, 2021) in view of Phan et al. (US 5,338,766), and further in view of Furman et al. (US 2008/0128101 A1).
Regarding an alternative ammonium zirconium carbonate crosslinker of claim 5, Furman et al. teach ammonium zirconium carbonate crosslinker for obtaining SAP in [0049] and [0072].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the known ammonium zirconium carbonate crosslinker taught by Furman et al. in Savich and Phan et al. thereof since Savich teaches utilization of a crosslinker in [0083] absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11, 15 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/692,027 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches a superabsorbent material formed from a linear water-soluble absorbent polymer having a molecular weight of about 500,000 g/mol and non-reactive crosslinking agent having an internal surface area to volume ratio of about 7.5 or greater in claim 1. The copending application further teaches an internal surface area to volume ratio of about 3.2 or greater in claim 12 meeting the instant claim 1 and instant SAP would be reversible, swell when it wet and shrink when it is dry.
Regarding claim 2, see claim 2 of the copending application.
Regarding claims 3 and 4, see claim 9 of the copending application.
Regarding claim 5, see claim 5 of the copending application.
Regarding claim 6, see claim 5 of the copending application.
Regarding claim 7, see claims 7, 11 and 13 of the copending application.
Regarding claim 8, see claim 1 of the copending application.
Regarding claim 9, see claim 10 of the copending application.
Regarding claim 10, see claim 6 of the copending application.
Regarding claim 11, see claim 15 of the copending application.
Regarding claim 15, see claim 20 of the copending application.
Regarding claim 17, see claim 17 of the copending application.
Regarding claims 18 and 19, see claims 18 and 19 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11, 16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application No. 18/692,089 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches a method for forming a biodegradable superabsorbent material formed from an queous polymer solution containing about 30 wt.% solids or greater of a linear water-soluble absorbent polymer having a molecular weight of about 500,000 g/mol and non-reactive crosslinking agent in claims 1 and 17 which would meet the instant claim 11.
Regarding claim 16, a molecular weight of 1,000,000 g/mol or greater recited in claim 6 of the copending application would meet claim 16.
Regarding claim 18, see claim 5 of the copending application.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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