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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16 and 20, drawn to a method preparing a disintegrating polyacrylamide granule, classified in B29B9/16.
II. Claims 17-19, drawn to a polyacrylamide composition, classified in C08J3/128.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the composition of invention II can be made by a process wherein the binding agent was incorporated with polyacrylamide before the polyacrylamide was provided as a powder.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search. See MPEP section 808.02.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Michael Herman on September 03, 2026, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16 and 20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 8 is objected to because of the following informalities: the claim recites “drying the polyacrylamide granules are dried at a temperature of form about 50 ℃ to about 100 ℃”. The term “are dried” should be removed. Appropriate correction is required.
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 1-16 and 20 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “alkali earth” in claim 1 includes such metal as “zinc” as listed in dependent claim 9. However, “zinc” is not considered to be an “alkali earth” metal but a transition metal. The term is indefinite because the specification does not clearly redefine the term.
Claim 2 recites the limitation "the step of cooling and/or drying". There is insufficient antecedent basis for this limitation in the claim. This limitation should be amended to recite “a step of cooling and/or drying”.
Claim 3 recites the limitation "the step of classifying and collecting". There is insufficient antecedent basis for this limitation in the claim. This limitation should be amended to recite “a step of classifying and collecting”.
Claim 6 recites the limitation "the step of crushing". There is insufficient antecedent basis for this limitation in the claim. This limitation should be amended to recite “a step of crushing”.
Claim 8 recites the limitation "the step of drying". There is insufficient antecedent basis for this limitation in the claim. This limitation should be amended to recite “a step of drying”.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation of a melting point from about 20 ℃ to about 90 ℃, and the claim also recites a melting point from about 30 ℃ to about 60 ℃ which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 12 requires that the binding agent was a melting point from about 20 ℃ to 90 ℃ however, parent claim 1 discloses that the binding agent includes alkali earth metal halides and nitrates which don’t have melting points in the claimed range. The only alkali earth metal halides and nitrates which would have a melting point in the required range are hexahydrates and tetrahydrates of alkali earth metal halides. Therefore, claim 12 is indefinite because the claims does not require hexahydrate or tetrahydrates of the alkali earth metal halides.
Claim 14 recites the limitation "the liquid binding agent". There is insufficient antecedent basis for this limitation in the claim.
Claim 20 is indefinite because the claim requires a use of the polyacrylamide granules according to claim 1 but does not disclose any active steps or processes for how the granules are to be used. Therefore, it is not clear how the polyacrylamide granules are to be used in water-treatment, mining, petroleum exploration and recovery processes. See MPEP section 2173.05(q).
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.
Claims 1-5, 7, 9-11, 14, 16 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (U.S. Patent # 7,927,655).
In the case of claim 1, Lee teaches a method for preparing a disintegrating granule in the form of a dehumidifying element comprised of a superabsorbent polymer (SAP) mixed with an inorganic salt particle (Abstract). Lee teaches that the SAP included polyacrylamide (Column 2 Lines 50-53) and that the inorganic salt/binding agent included halides/chlorides of alkali earth metal in the form of magnesium, calcium and zinc (Column 2 Lines 54-56).
The method of Lee combining the SAP/polyacrylamide powder/particles and the inorganic salt/binding agent by mixing the SAP particles with particles of the inorganic salt followed by exposing the mixture to a high humidity environment wherein the SAP particles absorbed inorganic salt causing an ion exchange therebetween (Column 2 Lines 13-43 and Column 4 Lines 19-38). Furthermore, Lee teaches that the SAP particle had a size prior to ion exchange, and therefore prior to combining, of 10 to 100 microns (Column 3 Lines 1-4) and therefore the polyacrylamide powders had an average particle size (D90) of less than 500 microns.
Lee does not specifically teach that the formed granule/dehumidifying element had an average granule size greater than the average particle size of the polyacrylamide powder. However, the examiner takes the position that this size increase would have been inherent to the process of Lee because Lee taught the same preparation process as claimed and the SAP/acrylamide powder absorbed the inorganic salt/binding agent thereby increasing the mass of the combined particles which would increase the size of the particles.
As for claim 2, Lee teaches that the granules were dried (Column 2 Lines 43-49).
As for claim 3, Lee teaches that the granules/elements were collected and classified to have hygroscopic properties (Column 5 Lines 3-9).
As for claim 4, Lee teaches that the binding agent/inorganic salt was provided as a solid in the form of a particle and that the binding agent and SAP powder were heated by exposing the mixture to a highly humid environment (Column 2 Lines 31-42).
As for claim 5, Lee does not teach that the polyacrylamide granule would dissolve in water at room temperature in less than about 600 seconds. However, the examiner takes the position that the polyacrylamide granules/dehumidifying elements of Lee would inherently have this property since they were formed by the same process required by the claims using the same materials.
As for claim 7, Lee teaches having crushed the granules/elements (Column 4 Line 66 through Column 7 Line 2).
As for claim 9-11, Lee teaches that the binding agent/inorganic salt included magnesium chloride or calcium chloride (Column 2 Lines 54-56).
As for claim 14, as was discussed previously, the binding agent of Lee was either calcium or magnesium chloride which both have melting point above 90 ℃ and therefore would solidify in the temperature range of about 25 ℃ to about 90 ℃.
As for claim 16, Lee does not teach that the polyacrylamide granule would disintegrate or dissociate into polyacrylamide particles of the same size of the particles of the powder from which the granule was made. However, the examiner takes the position that the granules/elements of Lee would inherently have this property since they were formed by the same method required by the claims using the same materials.
As for claim 20, Lee teaches that the granules/elements were used in water treatment/water vapor removal (Column 1 Lines 19-26).
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.
Claims 1, 5, 6, 9-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Roa-Espinosa (U.S. Patent # 8,076,391).
In the case of claim 1, Roa-Espinosa teaches a composition for water clarification/treatment comprised of polyacrylamide combined with at least one inorganic salt (Abstract). The method of Roa-Espinosa comprised providing a polyacrylamide powder/bead having a diameter/size of 0.5 to 3 mm or 500 to 3000 microns and providing a binding agent in the form of calcium nitrate tetrahydrate which were mixed together to form the composition/granule (Column 3 Line 50 through Column 4 Line 22).
The examiner takes the position that the taught diameter size of 500 to 3000 microns would overlap with the claimed polyacrylamide average particle size of less than about 500 microns. 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). See section 2144.05.I of the MPEP.
Furthermore, Roa-Espinosa does not specifically teach that the formed granule/composition had an average granule size greater than the average particle size of the polyacrylamide powder/bead. However, the examiner takes the position that this size increase would have been inherent to the process of Roa-Espinosa because Roa-Espinosa taught the same preparation process as claimed and the mixing of the polyacrylamide and inorganic salt formed a copolymer.
As for claim 5, Roa-Espinosa does not teach that the polyacrylamide granule would dissolve in water at room temperature in less than about 600 seconds. However, the examiner takes the position that the polyacrylamide granules/composition of Roa-Espinosa would inherently have this property since they were formed by the same process required by the claims using the same materials.
As for claim 6, Roa-Espinosa teaches an embodiment wherein the granules/composition was further molded (Column 8 Lines 20-34).
As for claims 9-12 and 14, as was discussed previously, the binding agent of Roa-Espinosa was calcium nitrate tetrahydrate which has a melting point of 43 ℃ and would also solidify in the temperature range of about 25 to about 90 ℃.
As for claim 13, Roa-Espinosa teaches an embodiment wherein the binding agent/in organic salt was an aqueous liquid (Column 5 Line 25 through Column 6 Line 3).
As for claim 15, Roa-Espinosa teaches that an additional additive in the form of ammoniacal nitrogen was combined with the polyacrylamide and inorganic salt (Column 3 Lines 30-35 and Column 4 Lines 3-16).
As for claim 16, Roa-Espinosa does not teach that the polyacrylamide granule would disintegrate or dissociate into polyacrylamide particles of the same size of the particles of the powder from which the granule was made. However, the examiner takes the position that the granules/composition of Roa-Espinosa would inherently have this property since they were formed by the same method required by the claims using the same materials.
As for claim 20, as was discussed previously, the granules/composition of Roa-Espinosa was used in water-treatment.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lee.
The teachings of Lee as it applies to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 8, through Lee teaches having further dried the granules/elements Lee does not teach that the drying was done at about 50 to about 100 ℃. However, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP section 2144.05.II.A.
Furthermore, as was discussed previously, the drying of the granules/elements of Lee was to remove any residual moisture from the exposure to the high humidity environment.
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined an optimal drying temperature for the drying step of Lee in order to remove any residual moisture from the formed granules/elements.
Conclusion
Claims 1 through 16 and 20 have been rejected. Claims 17 through 19 have been withdrawn. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 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, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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