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 .
Claim Objections
Claim 11 and the claims dependent therefrom are objected to for the reason that the subject matter in the body of claim 1 does not define the polymeric composite but, rather, a composite-forming composition where all the materials are precursors from which the composite is derived. As evidence, Applicant is referred to method claim 16 where a method of making the composite is disclosed. Applicant will note that the final step of that method is a crosslinking step where the crosslinking agent is reacted with the styrene/maleic acid copolymer, and possibly the biopolymer. Because the crosslinking agent has been reacted, it no longer exists independently of the polymer components and the hydroxyl groups will have been consumed in the reaction.
Should Applicant amend claim 11 in the manner suggested, defining the invention as a “composite-forming composition”, than claim 16 will likewise need to be tweaked to define a process of making a biodegradable polymeric composite derived from the composition of claim 11, this as opposed to reciting a method for making the composite of claim 11 insofar as claim 11 is not actually directed to the composite insofar as the polymer(s) and crosslinking agent are not said to exist in a crosslinked relationship.
Applicant should also consider the impact of any changes to claim 11 on claims 20 and 21.
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.
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Claims 11, 13, 14, 15, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/3, 4, 5, 6, 9, and 10 respectively of U.S. Patent No. 12,128,144. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 11 recites an invention overlapping in scope with that recited in patent claims 1 and 3 where the patented biodegradable polymeric composite is {[SMAC(-)D(+)]S}W and D correlates with the counterion (patent claim 3). Claim 11 discloses an invention of greater breadth where {[SMAC(-)D(+)]S}W is concerned because patent claim 1 stipulates that either of the two embodiments of a polymeric composite delineated therein must have an absorbency under load above a certain threshold whereas the claimed polymer composite is not so constrained. Instant claim 11 is also encompassing of all the biopolymer permutations set forth in patent claim 1.
Patent claims 4-6 further limit patent claim 1 in the same manner as instant claims 13-15 are further limiting of instant claim 11.
The lone distinction between patent claim 9 and instant claim 16 is that the former mentions a step of forming a basic sodium hydroxide solution preceding the neutralization step whereas the latter only mentions a neutralization operation, step (d). However, one of ordinary skill will immediately infer from step (d), since it references a base solution, that said solution must first be prepared prior to carrying out step (d).
Allowable Subject Matter
Claims 11 and 13-15 are directed to a composite-forming composition comprising a styrene-maleic acid copolymer and a biopolymer, and a crosslinking agent. Claims 16 and 21 recite similar approaches for making composites derived from the same and claim 20 discloses an article of manufacture that incorporates the composite material.
The Examiner encountered at least several disclosures that taught combinations of a biopolymer polystyrene/maleic anhydride copolymer in either the similar context of formulating materials exhibiting water-absorbing properties or as adhesive materials or binders. See, for instance, EP 2880116 and U.S. 2017/0051190 which mention the employment of these in admixture with polyols to make adhesives/binders for ligocellulosics among other substrates/bonded materials. U.S. 6,833,488 teaches the production of water-absorbent hybrid materials comprising “natural” water-soluble polymers, and polystyrene-co-maleic anhydride copolymers. This latter disclosure is silent as to the presence/utilization of polyols like those recited in association with the claimed coating agents. Indeed, page 11 expressly mentions the intentional omission of small molecule crosslinkers. WO 2019/195271, likewise, teaches very similarly-constituted absorbent materials where polyol crosslinkers are expressly excluded.
WO 2009/049105 teaches a superabsorbent composite used to create a sensation of satiation in humans to prevent/treat obesity comprising a styrene maleic acid copolymer in acid form in combination with a gelatin. The disclosure indicates that crosslinking between the polymers is carried out, but in the absence of a polyhydric alcohol.
Other references of interest are U.S. 10,851,214 (references polyols as “molecular spacers” in the context of a hydrogel comprising ionic and non-ionic polymers to increase absorption but the mechanism by which this occurs is not divulged), U.S. 7,300,965 (directed to mixtures of biopolymers and water-soluble synthetic polymers plus a crosslinking agent but both the biopolymer and synthetic polymer are different than those claimed), U.S. 6,583,225, (directed to maleic acid copolymers crosslinked with polyols/polyamines but no mention of styrene/maleic acid copolymers and there is no indication of the benefits of using these particular crosslinkers), EP 317106 (provides useful background on the benefits of crosslinking an absorbent polymer’s surface with polyols specifically as a means of creating balance between absorbency, rate of absorbance, and drawing force), and U.S. 8,906,824 (documents improvement in the absorption of SAPs under pressure when crosslinked and teaches a method comparable to that in claim 8 in column 2, lines 45+ but the SAPs under consideration are copolymers of methacrylic acid instead of maleic acid). One final reference worthy of note is U.S. 2023/0338207, which indicates that styrene-maleic acid absorbent materials are ordinarily employed in the preparation of low AUL Bio-SAPs.
The Examiner had given some consideration to combining the teachings of WO 2009/049105 and EP 317106 to form a basis for rejection of at least claim 11 but it was not clear how the benefits of surface crosslinking espoused by EP ‘106 (balance between absorbency, rate of absorbance, and drawing force) would apply to the polymer mixtures of WO ‘105 given the quite different environments in/applications for which they are used.
These references, alone or in combination, fail to even render obvious the instant invention as set forth in claim 1. Accordingly, claims 11 and 13-21 are allowable over the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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March 6, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765