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 .
Claim Interpretation
In the claims, different ranges are presented as alternatives, which technically does not constitute a 112, but the broadest range is the only one considered for purposes of continued examination.
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.
Claim 12 is 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 12 further defines optional monomers that are not present in claim 1. This constitutes a lack of antecedent bass for the claimed limitations.
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.
Claim(s) 1-3, 7-8, 10-11, 13, and 15 are rejected under 35 U.S.C. 102a1 as being anticipated by Lai et al, EP 0264649 A1 (already of record).
Regarding claim 1, Lai teaches a method for producing a vinylamine-containing polymer comprising:
- providing a vinylcarboxamide-containing polymer (page 3 lines 9-23);
- adding the vinylcarboxamide-containing polymer to an aqueous medium (page 3 line 25);
- adding acid(s), or base(s) to the aqueous medium to hydrolyze the vinylcarboxamide-containing polymer (page 3 line 34 and page 5 lines 23-25 and Example 1), thus producing an aqueous solution of vinylamine-containing polymer (see claims and abstract); and
- optionally adjusting the pH of the vinylamine-containing polymer solution.
Regarding claim 2, Lai further teaches that the N-vinylcarboxamide monomer of Formula I is taught (see page 3 liens 15-26 and Example 1).
Regarding claim 3, Lai further teaches that the polymer in question includes a polymer or copolymer of N-vinylformamide (see page 6 lines 30-37 and Example 1).
Regarding claim 7, Lai teaches that the polymerization takes place in a temperature of 40-60 (page 5 line 15).
Regarding claim 8, Lai further teaches the addition of the materials either simultaneously, premixed, or sequential in any order (see examples). It is also noted that the range of options cover all possible manners in which the ingredients can be entered.
Regarding claim 10, Lai further teaches a molecular weight of 3-15 x 106 (see claim 5 and abstract).
Regarding claim 11, Lai further teaches the use of a N-vinylacetamide (page 6 line 46)
Regarding claim 13, Lai further teaches adding the suspension to a pulp at 0.5% consistency (page 11 line 32).
Regarding claim 15, Lai further teaches the addition of the material to a papermaking pulp for the claimed reasons (see example 21)
Claim Rejections - 35 USC § 102/103
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 –
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) 4-6, 9, and 12 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lai et al, EP 0264649 A1 (already of record).
Regarding claim 4, Lai teaches the use of producing the polymer and hydrolyzing the polymer is different steps of the process. Lai also implicitly teaches the transfer of the materials into the hydrolyzing vessel (see examples and descriptions on pages 5-6). While the different locations are directly discussed, under broadest reasonable interpretations the addition of the material to a different reaction vessel would at the very least be considered a different location within the same plant or overall apparatus. Therefore, the teaching of adding the polymer to a reaction vessel provides an implicit teaching of hydrolyzing at a different location.
In the alternative, it would have been obvious to one of ordinary skill in the art at the time of the invention to transport a starting polymer or chemical from where it is made to where it is used. The act of transporting the materials for use is the standard for all products and chemicals on the industrial scale and as this would not affect the abilities of the polymer and reactions it would have been found to be obvious.
Regarding claim 5, Lai further teaches that the composition contains 10-90% of a homopolymer of an N-vinylamine as claimed. While this range encompasses the 0.25-45% as claimed there is sufficient overlap to find it obvious in view of one of ordinary skill in the art.
Regarding claim 6, the Examiner is considering all of the different ways to measure the degree of hydrolysis to be presented as alternatives to each other and not a requirement that each of the claimed methods are required to be done together. With this in mind, Lai teaches the act of measuring the viscosity (see examples and claim 20). Alternatively, the manner in which the value is measured does not affect the value itself and as long as the same values are taught the method of discovering that value would be obvious to the average artisan.
Regarding claim 9, the limitations further limit an optional limitation. Additionally, Lai teaches that examples 17-21 include pH adjustments to about 6.
Regarding claim 12, all of the limitations are further limiting optional components. Additionally, Lai teaches the claims acids on page 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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