CTNF 18/881,846 CTNF 94140 Detailed Office Action The communication dated 1/7/2025 has been entered and fully considered. Claims 1-10 are pending. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Objections 07-29-01 AIA Claim s 4, 7, and 9 are objected to because of the following informalities: Claim 4, last line: delete the extra full stop point. Claim 7, line 6: replace “clay” with “the clay”. Claim 9, line 8: replace “super absorbent polymer” with “the super absorbent polymer” . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-10 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. Claim 1, in lines 13 and 14 (two occurrences), recites the limitation “a polymerization time”. However, this limitation is already recited in line 11. Therefore, it is not clear that these two limitations are the same as the one in line 11 or different ones. Claims 2-10 are dependent on claim 1 and are rejected as well. For the purpose of examination, the Examiner interprets them as the same. Claim 2, in line 3, recites the limitation “a polymerization reaction”. However, this limitation is already recited in claim 1, line 7. Therefore, it is not clear that this limitation is the same as that in claim 1 or a different one. For the purpose of examination, the Examiner interprets it as the same. Claim 7, in line 4, recites the limitation “a crosslinking agent”, “a carbonated-based blowing agent”, and “a polymerization initiator”. However, these limitations are already recited in claim 1, line 4. Therefore, it is not clear that these limitations are the same as those in claim 1 or different ones. For the purpose of examination, the Examiner interprets them as the same. Double Patenting 08-33 AIA 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. 08-35 AIA Claim s 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-10 of copending Application No. 18/592,898 (reference application), hereinafter APPL898 . Although the claims at issue are not identical, they are not patentably distinct from each other because : Instant claims 1 and 7 are claimed by claims 1 and 8 of APPL898. Instant claims 2, 3, 4, 5, and 6 are claimed by claims 2, 3, 4, 5, and 6 of APPL898, respectively. Instant claim 8 is claimed by claim 9 of APPL898. Instant claim 9 is claimed by claim 10 of APPL898. Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/592,898 in view of LEE (US-2018/0037686), hereinafter LEE. Regarding claim 10, APPL898 claims all the limitations of claim 1 as discussed above. APPL898 further claims irradiating heat and/or light to the monomer composition of claim 1 to polymerize, thus preparing a hydrogel polymer (see claim 1). APPL898, however, does not claim the limitations of “drying, grinding and classifying the hydrogel polymer to form a base resin; and forming a surface crosslink layer on a surface of the base resin, in the presence of a surface crosslinking solution comprising a surface crosslinking agent and a solvent”. In the same filed of endeavor that is related to super absorbent polymers, LEE discloses drying, grinding and classifying the hydrogel polymer to form a base resin; and forming a surface crosslink layer on a surface of the base resin, in the presence of a surface crosslinking solution comprising a surface crosslinking agent and a solvent { [abstract] }. At the effective filing date of the instant invention, it would have been obvious to one ordinary skill in the art to have incorporated the teachings of LEE in the invention of APPL898. As disclosed by LEE the advantage of these steps are to prepare a gel with excellent absorption rate { [abstract] } . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The Examiner notes that APPL898 has the same inventors but different assignee. Currently, 37 CFR 1.321(d) limits the ability of parties to a joint research agreement to file a terminal disclaimer to overcome a nonstatutory double patenting rejection to instances where the reference application or patent had previously been applied as prior art or was available as prior art against the subject application or patent and the reference application publication or patent had been excepted or disqualified respectively as prior art under 37 CFR 1.104(c)(4)(ii) or (c)(5)(ii). See Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,70 FR 54259, 54262 (Sept. 14, 2005). 37 CFR 1.321(d) does not provide for the filing of such a terminal disclaimer where the reference is not prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e) and therefore cannot be excepted or disqualified as prior art as set forth in 37 CFR 1.104(c)(4)(ii) or (c)(5)(ii). For example, a reference is not prior art where the effective filing date of the claimed invention in the subject application or patent is the same as or before the effectively filed date of the reference. Because of this limitation, the USPTO has granted a number of petitions requesting a waiver of the prior art requirement in 37 CFR 1.321(d).” See:https://www.federalregister.gov/documents/2020/12/30/2020-27676/disclaimer-practice-in-patents-and-patent applications#:~:text=Currently%2C%2037%20CFR%201.321(d,37%20CFR%201.321(d Conclusion 07-96 The prior arts made of record and not relied upon is considered pertinent to applicant's disclosure. KAMPHUS (EP-3391960-A1), hereinafter KAMPHUS, discloses a monomer composition for preparing a super absorbent polymer { [abstract] }, the monomer composition comprising: acrylic acid-based monomers having acid groups, at least a part of said acid groups being neutralized; a crosslinking agent; clay; a carbonate-based blowing agent; and a polymerization initiator { [0012] , [0030] , [0033] , [0083] , [0085] note salts of acrylic acid indicating being neutralized, [0091] note sodium carbonate}. KAMPHUS also discloses irradiating heat and/or light to the monomer composition { [0095] }. However, KAMPHUS is silent on wherein, when irradiating heat and/or light to the monomer composition for preparing superabsorbent polymer to progress a polymerization reaction, a normalized gel point represented by the following Formula 1 is 0.01 to 0.1: [Formula 1] Normalized gel point = gel point(second) / total polymerization time(second) in the Formula 1. As discussed in the instant specification, pages 7-8, this range is very important in maintaining a good mixing and bubble stabilization. KAMPHUS, never, discusses bubble stabilization in the super absorbent polymer. Regarding the determination of gel point or the limitation “a gel point is a polymerization time at the intersection point of a storage modulus graph of the monomer composition for preparing superabsorbent polymer according to a polymerization time, and a loss modulus graph of the monomer composition for preparing superabsorbent polymer according to a polymerization time”, as evidenced by ZHANG (US-2024/0110070), this determination method is known { [0098] }. Additionally, LEE discloses a monomer composition for preparing a super absorbent polymer { [abstract] }, the monomer composition comprising: acrylic acid-based monomers having acid groups, at least a part of said acid groups being neutralized; a crosslinking agent; clay; a carbonate-based blowing agent; and a polymerization initiator { [0012] , [0025] , [0048] , [0080] }. LEE also discloses irradiating heat and/or light to the monomer composition { [0127] }. However, LEE is silent on wherein, when irradiating heat and/or light to the monomer composition for preparing superabsorbent polymer to progress a polymerization reaction, a normalized gel point represented by the following Formula 1 is 0.01 to 0.1: [Formula 1] Normalized gel point = gel point(second) / total polymerization time(second) in the Formula 1. LEE achieves bubble stabilization by addition of a surfactant { [abstract] }. As discussed in the instant specification, pages 23-24, the inventive method avoids using surfactant to prevent a decrease in surface tension of the polymer. As discussed above, bubble stabilization in this inventive method is achieved by not exceeding the ratio of 0.1 in the formula above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00. 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. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748 Application/Control Number: 18/881,846 Page 2 Art Unit: 1748 Application/Control Number: 18/881,846 Page 3 Art Unit: 1748 Application/Control Number: 18/881,846 Page 4 Art Unit: 1748 Application/Control Number: 18/881,846 Page 5 Art Unit: 1748 Application/Control Number: 18/881,846 Page 6 Art Unit: 1748 Application/Control Number: 18/881,846 Page 7 Art Unit: 1748 Application/Control Number: 18/881,846 Page 8 Art Unit: 1748 Application/Control Number: 18/881,846 Page 9 Art Unit: 1748 Application/Control Number: 18/881,846 Page 10 Art Unit: 1748
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