Office Action 2: Final Rejection (2025-04-17)
Rejection types: 103 - Obviousness, 112 - Written Description/Enablement

CLAIMS:
Amendments to the Claims

This listing of claims will replace all prior versions, and listings, of claims in the application:

Listing of Claims:

Attorney Docket: 1128OUS

1\. (Currently amended) A method of processing a solution of vinylamine-containing polymers comprising;SVG {EMBED HERE} 0.1470.793SVG {EMBED HERE} 0.156.373SVG {EMBED HERE} 0.154.443SVG {EMBED HERE} 0.153.867SVG {EMBED HERE} 0.1431.033SVG {EMBED HERE} 0.156.357SVG {EMBED HERE} 0.154.863SVG {EMBED HERE} 0.1330.423SVG {EMBED HERE} 0.0970.683- providing the solution of vinylamine-containing polymer,\_wherei - circulating the solution through a nanofiltration membrane and/or an ultrafiltration membrane a...()- collecting the vinylamine-containing polymer retentate -aire-
2\. (Cancelled)SVG {EMBED HERE} 0.156.36
3\. (Cancelled)SVG {EMBED HERE} 0.1174.02
4\. (Currently amended) The method according to The method according to SVG {EMBED HERE} 0.1130.053j, wherein the salts and/or by- products are permeable molecules, unwanted reaction salts, small proteins, organic and/or inorganic solvents, residual monomers, monomeric impurities, monomer decomposition byproducts, monomer stabilizers, and byproducts from initiator decomposition, and/or

impurities coming from cationizing and/or alkylating agent containing amine or amide functionality.

5\. (Original) The method according to claim 4, wherein the salts and/or by-products are monomeric impurities.
6\. (Currently amended) The method according to claim H, wherein the salts and by- products are impurities from reactions involving N-vinylformamide polymerization and copolymerization with other functional monomers, hydrolysis of polyvinylformamide by acid or caustic treatment, and post polymerization modification of vinylamine-containing polymers with functional monomers.SVG {EMBED HERE} 0.080.04
7\. (Currently amended) The method of claim 1, wherein collecting the vinylamine- containing polymer retentate comprises thevinylamine-containing polymer retentate having a higher concentration of vinylamine-containing polymer than the solution prior to circulating through the nanofiltration membrane and/or an ultrafiltration membrane.SVG {EMBED HERE} 0.151.277
8\. (Currently amended) The method according to claim 1, wherein the nanofiltration membrane and/or an ultrafiltration membrane has a molecular weight cut-off of i:=wf-SVG {EMBED HERE} 0.1276.374-999-SVG {EMBED HERE} 0.1170.97 800 Da.SVG {EMBED HERE} 0.1130.64

9\. (Original) A method of improving drainage in a papermaking process comprising adding the retentate according to claim 1, to a papermaking furnish.
10\. (Currently amended) A method of preparing a solution of high molecular weight vinylamine-containing polymers comprising,- providing a solution of vinylamine-containing polymer SVG {EMBED HERE} 0.1131.143
SVG {EMBED HERE} 0.154.357 comprising a low molecular weight vinylamine polymer component and a high molecular weight vinylamine polymer component;- circulating the solution through a nanofiltration and/or ultrafiltration membrane havingamolecularweightcut-offofSVG {EMBED HERE} 0.1170.30about\_\_\_99SVG {EMBED HERE} 0.1372.027thereby separating a fraction of low molecular weight vinylamine-containing polymer from a SVG {EMBED HERE} 0.1130.503SVG {EMBED HERE} 0.0870.557 of high molecular weight vinylamine-containing polymer; andcollecting the ofthe higher molecular vinylamine-containing
11\. (Cancelled)SVG {EMBED HERE} 0.156.347
12\. (Original) The method according to claim 11, wherein the weight average molecular weight of the collected fraction of vinylamine-containing polymer retentate is from about 20,000 to about 750,000 Da.SVG {EMBED HERE} 0.155.633

13\. (Original) The method according to claim 12, wherein the weight average molecular weight of the collected fraction of vinylamine-containing polymer retentate is from about 50,000 to about 400,000 Da.

14\. (Original) The method according to claim 13, wherein the weight average molecular weight of the collected fraction of vinylamine-containing polymer retentate is from about 100,000 to about 250,000 Da.

OFFICE ACTION:
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 .
Response to Arguments
Applicant’s amendments and arguments, filed 3/28/2025, have overcome the rejections based on 35 U.S.C. 102.  Said rejections have been withdrawn.  All rejections of Claims 2-3 and 11 have also been withdrawn due to cancellation of the claims.  The remaining rejections over the prior art have been modified to address the amendments to the claims and in view of newly cited prior art.
Applicant’s arguments have been carefully considered, but they are not convincing.
Regarding the argument that the prior art uses the filtered polymers for a different purpose, Applicant recognizes that Decker et al discloses using ultrafiltration with a membrane having a cut-off value as low as 1,000 Daltons, and that the instant claims recite a cut-off value of about 500 Daltons to 1,000 Daltons. One of ordinary skill in the art would have found no significant difference in the process between using a cut-off of 1,000 Daltons or slightly above 1,000 Daltons and a cut off of slightly lower than 1,000 Daltons.  Applicants have not provided convincing evidence of the criticality of the claimed range of about 500 daltons to 1000 Daltons.  Absent convincing evidence of such criticality and/or unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to select an ultrafiltration membrane having a cut-off of 1,000 Daltons or slightly above 1,000 Daltons for the ultrafiltration with a reasonable expectation of obtaining a retentate comprising a suitable polymer solution that has a reduced amount of salts compared to the solution prior to circulating through the ultrafiltration membrane.
Regarding the argument that Decker et al does not disclose circulating the polymer through membranes having the claimed cut-off values, the issue is addressed in the modified rejections detailed herein.
Regarding the assertion that It was only found through the careful selection of the membrane that removal of impurities could be accomplished with no loss of functional polymer or degradation of the polymer, Applicants have not provided convincing evidence commensurate in scope with the claims of the criticality of the claimed range of about 500 daltons to 1000 Daltons.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA  35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA  35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12-14 are rejected under 35 U.S.C. 112(d) or pre-AIA  35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.  Claims 12-14 depend from a cancelled claim, and therefore, fail to reference a claim previously set forth and then specify a further limitation of the subject matter claimed.  Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA  35 U.S.C. 102 and 103 (or as subject to pre-AIA  35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA  to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 4-10 and 12-14 are rejected under 35 U.S.C. 103 as being anticipated by Decker et al US 6,716,311 in view of Bennett et al (US 2006/0065599).
Bridging paragraph of col. 5-6 of the US 311 teaches that polymers containing vinylamine units are preferably used in salt-free form. Salt-free aqueous solutions of polymer containing vinylamine units can be prepared, for example, from the salt- containing polymer solutions with the aid of dialysis or ultrafiltration through suitable membranes with cut-offs of, for example, from 1,000 to 500,000 Daltons, which overlays or touches the upper end of the claimed range.  One of ordinary skill in the art would have found no significant difference in the ultrafiltration between using a cut-off of 1000 Daltons or slightly above 1000 Daltons and a cut off of slightly lower than 1000 Daltons.
Applicants have not provided convincing evidence of the criticality of the claimed range of about 500 daltons to 1000 Daltons.  Absent convincing evidence of such criticality and/or unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to select an ultrafiltration membrane having a cut-off of 1,000 Daltons for the ultrafiltration with a reasonable expectation of obtaining a retentate comprising a suitable polymer solution that is salt-free or, at least, has a reduced amount of salts compared to the solution prior to circulating through the ultrafiltration membrane.
Other polymers containing amino and/or ammonium groups can also be obtained in salt-free form with the aid of dialysis or ultrafiltration. In the ultrafiltration through a membrane having the abovementioned cut-off, fractionation of the polymer resulting in polymer having a relatively narrow molar mass distribution Mw /Mn is achieved in addition to removal of salts which are formed. The fractions of polymers having a narrow distribution are obtained as retentate in the ultrafiltration.
Decker et al discloses molar masses of polymers containing vinylamine units from 1,000 to 10 million Daltons (col 5, lines 55-57), which significantly overlays the claimed ranges or, at least, obtaining vinylamine-containing polymers having a claimed molecular weight would have been obvious absent convincing evidence of unexpected results commensurate in scope with the claims.
Decker et al does not disclose circulating the through circulating the solution through a nanofiltration membrane and/or an ultrafiltration membrane having a molecular cut-off from about 500 Dalton to 1,000 Dalton.
In the same field of endeavor, Bennett et al discloses a process for reducing the content of water-soluble salts of aqueous solutions of polymers containing vinylamine groups by ultrafiltration to achieve a desired reduced salt content.  Bennett et al discloses the theory of ultrafiltration, which is generally known to those of ordinary skill in the art, as follows ([0015]-[0019]);
“The theory of ultrafiltration states that during diafiltration, micro solutes (ions and low molecular weight polymers) freely permeate through the membranes and maintain the same concentration on both sides of the membrane. The concentration of membrane permeable species (sodium formate) remaining in the feed solution can be calculated by the following:
PNG
media_image1.png
35
148
media_image1.png
Greyscale
where:
PNG
media_image2.png
136
393
media_image2.png
Greyscale
Vd/Vo is the number of wash volumes (cycles or recirculation  that have been completed. One wash cycle (or wash volume) means the addition of an equivalent amount of fresh water to the starting solution volume and removal of the same amount of permeate solution. According to the equation, 95% of the initial sodium formate is removed after 3 wash volumes and 98% of the initial formate is removed after 4 wash volumes have been completed.”
Bennett et al shows that circulating the solution through the ultrafiltration membrane more than once may be necessary to achieve the desired reduction in salts and by-products.  To achieve the desired degree of purity for this process 4-5 wash cycles are normally required.  Therefore, the number of cycles, or the number of times the solution is circulated through the ultrafiltration membrane, is a result effective variable.
It would have been obvious to one of ordinary skill in the art to circulate the solution through the ultrafiltration membrane multiple times to obtain a desired reduction in salts and by-products.  Collecting the obtained vinylamine-containing polymer retentate would have been obvious as a purpose for performing the ultrafiltration.
Regarding claim 4, as noted above the salts are removed through filtration.
Regarding claim 5, the impurities include monomeric salts from which the polymers are made (col. 5, lines 5-61).
Regarding claim 6, the polymers are made from hydrolysis from polyvinyl formamide (col. 5, lines 5-61).
Regarding claim 7, it would be inherent that the retentate would have a high concentration of polymers once it is screened through the membrane that filters out such polymer.
Regarding claim 8, Bennett et al discloses that the cut-off value of the ultrafiltration or nanofiltration membrane can be as low as 400 Daltons and up to 10,000 Daltons, depending on the k-value (which is related to the molecular weight) of the polymer being filtered to achieve the [0039].  Therefore, the cut-off value for the membrane is also a result effective variable and it would have been obvious to one of ordinary skill in the art to determine the claimed cut-off value depending on the molecular weight of the polymer being filtered and the desired molecular weight to be obtained.
Regarding claim 9, the abstract of Decker et al teaches that the polymers can be used as fixing agents in papermaking stock, therefore adding the retentate to a papermaking furnish would have been obvious.
Regarding claim 10, as noted previously in Decker et al, the membrane collects the higher molecular weight polymer fraction in the retentate from the ultrafiltration, while polymers of low molecular weights are separated in the permeate from the ultrafiltration.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.

APPLICANT REBUTTAL: REMARKS/ARGUMENTSClaims 1-14 were pending in the application, claims 1-14 have been rejected. Claims 1, 6-8, and 10, have been amended and claims 2, 3, and 11 cancelled. Therefore, claims 1, 4-10, and 12-14, are pending and under consideration. No new matter has been added.CLAIM REJECTION UNDER 35 USC § 102 Claims 1-14 are rejected under 35 U.S.C. 102(a) ((1) as being anticipated by US Patent 6,716,311 (hereinafter referred to as "Decker").Applicants teach the use of activated media to filter these salts, by-products, and low molecular weight vinylamine-containing polymers while retaining the functional, higher molecular weight polymers that provide desired product performance, but it was not practical on a commercial scale due to pressure drop, yield loss and efficacy (pg. 1, para. [0003]). Decker teaches novel polymers which are effective asfixing agents in papermaking. Decker found that this object is achieved, according to the invention, by modified cationic polymers which are obtainable by reacting...(col. 1 lines 54 to col. 2, lines 14).Although Decker teaches some aspects of the present invention, their objective is clearly different. Decker fails to teach certain critical aspects of the present technology, i.e., circulating the vinylamine-containing polymer through membranes having cut-offs below 1,000 Da. Although Decker discloses membranes for example, 1,000 to 500,000 Da, Decker teaches cut-offs of preferably 10,000 to 300,000 Dalton, which is not claimed for the current technology (col. 6, lines 1-3, emphasis added). More relevant, Decker does not teach circulating the polymer through membranes having cut-offs offrom about 500 Da to 1,000 Da. In fact, Applicants teach in claim 8, that the cut-off is 800 Da.Applicants have amended claims 1 and 10, to clarify that the vinylamine- containing polymer comprises one or more of a salt or a by-product formed during vinylamine-containing polymer synthesis and/or modification of vinylamine containing polymer (pg. 4, para. [0014] and claim 2). In addition, the claims were amended to clarify that the nanofiltration membrane and/or an ultrafiltration membrane having a molecular cutoff of from about 500 Dalton to 1,000 Dalton (pg. 5, para. [0018]), thereby separating a retentate of the vinylamine-containing polymer from at least a portion of the salts and/or by-product (pg. 4, para. [0013] - [0014], claim 2).Finally, claims 1 and 10, were amended to clarify that the collected retentate has a reduced amount of salts and/or a by-product as compared to the solution prior to circulating through the nanofiltration membrane and/or an ultrafiltration membrane (pg.4, para. [0015]).It was only found through the careful selection of the membrane that removal of impurities could be accomplished with no loss of functional polymer or degradation of the polymer (pg. 5, para. [0021]).As the Examiner is likely aware, "[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). As pointed out above, Decker does not teach cut-off lines of between 500 Da. and 1000 Da. and certainly not 800 Da as required from claim 8.Based on the teachings of Decker, one of ordinary skill in the art would use filtration cut-offs of at least 1,000 Da. or higher (col. 6, lines 1-3).CONCLUSIONIn view of Applicants' amendments and remarks, it is respectfully submitted that Examiner's rejections of claims 1-14, have been overcome. Accordingly, Applicants respectfully submit that the application, as amended, is now in condition for allowance, and such allowance is therefore earnestly requested. Should the Examiner have any questions or wish to further discuss this application and amended claims, Applicants request that the Examiner contact the Applicants' attorneys at 480-361-0466.No fees are believed to be due with this response. However, if there are any other fees required to have this amendment entered or to keep the application pending, the Commissioner is hereby authorized to charge Deposit Account No. 502091 for any fee which may be due.Respectfully submitted,

NEXT OFFICE ACTION: 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection.  Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.  Applicant's submission filed on 7/17/2025 has been entered.
Response to Arguments
Applicant’s amendments and arguments, filed 7/17/2025, have been fully considered and are persuasive. All rejections have been withdrawn.
Examiner’s Amendment
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Authorization for this examiner’s amendment was given in an interview with MICHAEL J. HERMAN on 7/22/2025.
The application has been amended as follows:
In Claim 1, 4th line from the end, the word “the” following the word “collecting” has been deleted and the word  --a--  inserted therefor.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: Decker et al and Bennett et al are the nearest prior art.  Decker et al discloses ultrafiltration of solutions of polymer containing vinylamine units through a membrane having a cut-off value from 1,000 to 500,000 Da, which touches the upper limit of the claimed range of about 500 Da to 1,000 Da. Decker et al prefers a cut-off from 10,000 to 300,000 Da.  Bennett et al discloses a cut-off preferably at least 2,000 or at least 4,000, such as from 9,000 to 100,000, with the cut-off dependent on the K value of the polymer. One of ordinary skill in the art would have been led to use a membrane cut-off significantly above the claimed range.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee.  Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion

CITED REFERENCE SUMMARIES: Ref US20060065599A1: [content unavailable]
Ref US20060065599: Claims:
1. A process for reducing a content of water-soluble salts of an aqueous solution of a polymer containing vinylamine groups by ultrafiltration to achieve a residual salt content of 1 to 10% by weight based on total solution solids in the polymer solution, which comprises a step of feeding an aqueous salt-containing solution of a vinylamine group containing polymer at a polymer concentration of at least 7% by weight to an ultrafiltration unit and removing the water-soluble salts with a permeate from the feed solution by adding thereto less than 4 parts by weight of water per one part by weight of the feed solution, wherein the efficiency of the ultrafiltration unit, which is defined as the passage of salt across the membrane, is greater than 100%.
2. A process for reducing a content of water-soluble salts of an aqueous solution of a polymer containing vinylamine groups by ultrafiltration to achieve a residual salt content of 1 to 10% by weight based on total solution solids in the polymer solution, which comprises feeding an aqueous salt-containing solution of a vinylamine group containing polymer at a polymer concentration of at least 7% by weight to an ultrafiltration unit and removing the water-soluble salts with a permeate from the feed solution by adding thereto less than 4 parts by weight of water per one part by weight of the feed solution, wherein the ultrafiltration unit comprises spiral wound polymer membranes or vibratory shear membranes.
3. The process of claim 1 wherein no more than three parts by weight of water are added to one part by weight of the feed.
4. The process of claim 1 wherein the ultrafiltration unit comprises vibratory shear membranes.
5. The process of claim 4 wherein the ultrafiltration unit comprises vibratory shear membranes having a molecular weight cut off of at least 300.
6. The process of claim 1 wherein the membranes of the ultrafiltration unit have a molecular weight cut off of at least 2,000.
7. The process of claim 1 wherein the membranes of the ultrafiltration unit have a molecular cut off of at least 4,000.
8. The process of claim 1 wherein the membranes of the ultrafiltration unit have a molecular weight cut off of from 9,000 to 100,000.
9. The process of claim 1 wherein the water-soluble salts are selected from the group consisting of alkali metal salts, ammonium salts, and alkali earth metal salts.
10. The process of claim 9 wherein the water-soluble salts are selected from the group consisting of sodium formate and sodium chloride.
11. The process of claim 1 wherein the polymer containing vinylamine groups arc is obtained by hydrolysis of a homo or a copolymer of N-vinylformamide.
12. (canceled)
13. The process of claim 2 wherein no more than three parts by weight of water are added to one part by weight of the feed.
14. The process of claim 2 wherein the ultrafiltration unit comprises vibratory shear membranes.
15. The process of claim 2 wherein the ultrafiltration unit comprises vibratory shear membranes having a molecular weight cut off of at least 300.
16. The process of claim 2 wherein the membranes of the ultrafiltration unit have a molecular weight cut off of at least 2,000.
17. The process of claim 2 wherein the membranes of the ultrafiltration unit have a molecular cut off of at least 4,000.
18. The process of claim 2 wherein the membranes of the ultrafiltration unit have a molecular weight cut off of from 9,000 to 100,000.
19. The process of claim 2 wherein the water-soluble salts are selected from the group consisting of alkali metal salts, ammonium salts, and alkali earth metal salts.
20. The process of claim 19 wherein the water-soluble salts are selected from the group consisting of sodium formate and sodium chloride.
21. The process of claim 2 wherein the polymer containing vinylamine groups is obtained by hydrolysis of a homo or a copolymer of N-vinylformamide.
22. A multicomponent superabsorbent polymer comprising a basic water-absorbing resin prepared according to the method of claim 1.
23. A multicomponent superabsorbent polymer comprising a basic water-absorbing resin prepared according to the method of claim 2.
24. A polymer containing vinylamine groups prepared by the method of claim 1.
25. A polymer containing vinylamine groups prepared by the method of claim 2.
Ref US6716311I: [content unavailable]