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 .
DETAILED ACTION
Claims 1-5 and 8-22 of T. Souda et al., US 17/600,307 (Mar. 12, 2020) are pending. Claims 1-5 and 8-10 are withdrawn as directed to non-elected groups (I)-(III). Claims 11-22 are under examinations on the merits and are rejected.
Election/Restrictions
Applicant previously elected Group (IV) (per the previous Office action, claims 11-20), directed to a method of manufacturing the copolymer, with traverse, in the reply filed on August 5, 2025. New claims 21 and 22 are added to elected Gropu (IV). Claims 1-5 and 8-10 are withdrawn as directed to non-elected groups (I)-(III). The restriction requirement is maintained as FINAL.
Claim Interpretation
Examination requires claim terms first be construed in terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. See, MPEP § 2111. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification. MPEP § 2111.
Subject Matter of Independent Claim 11
Claim 11, as recently amended, recites as follows:
11. A method of manufacturing a copolymer of:
(a1) an unsaturated monomer having a carbosiloxane dendrimer structure having a radically polymerizable organic group; and
(a2) an unsaturated monomer having a radically polymerizable vinyl group, which is different from component (a1);
wherein the amount of
unreacted unsaturated monomers (a1) and
saturated monomers derived from the unreacted unsaturated monomers (a1)
is 2500 ppm or less relative to the copolymer;
the method comprising the following steps:
step (0) adding a polymerization initiator to components (a1) and (a2) to perform a radical polymerization reaction thereby forming a reaction intermediate copolymer having unsaturated monomers (a1);
then after addition of the polymerization initiator is complete in step (0), holding the reaction intermediate copolymer for a period of at least two hours where no further polymerization initiator is added; and then
step (I) comprising step (Ia): further adding the same or different polymerization initiator to the reaction intermediate copolymer threby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or lest relative to the copolymer.
The specification teaches that there is concern about the irritating properties of radically polymerizable unsaturated monomers, and there is a demand for a copolymer and copolymer composition with a small amount of unreacted monomers. Specification at page 1, [0003].
The specification teaches that an object of the invention is significantly reducing the amount of a monomer having a carbosiloxane dendrimer structure for implementation of the claimed polymer in cosmetic composition. Specification at page 3, [0007].
The specification teaches that that the amount of monomers having a carbosiloxane dendrimer structure can be significantly reduced by introducing a polymerization initiator in two stages by providing a difference in introduction times in a radical copolymerization reaction between an unsaturated monomer having a carbosiloxane dendrimer structure and another unsaturated monomer. Specification at page 3, [0008].
Specification Example 1 is schematically summarized by the Examiner below:
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Specification at pages 60-61.
In specification Reference Example 2, the above Example 1 procedure was repeated (same identities and amounts of monomers, (A-1), and solvent) except that a second portion of V-601 was not added. In Reference Example 2 the result was that 11,000 ppm of carbosiloxane dendrimer monomer (A-1) remained after a reaction time of about 9 hours followed by GPC analysis and HPLC analysis. Specification at page 62, [0141]. In specification Reference Example 3, the above Example 1 procedure was repeated (same identities and amounts of monomers, (A-1), and solvent) except that: (1) the initial loading of V-401 was 4.4 wt. %; and (2) a second portion of V-601 was not added. In Reference Example 3 the result was that 2,250 ppm of carbosiloxane dendrimer monomer (A-1) remained after a reaction time of about 9 hours followed by GPC analysis and HPLC analysis. Specification at page 62, [0142].
In summary of the above discussion, the gist is that in the claim 11 co-polymerization of (a1) and (a2):
Claim 11 . . . (a1) an unsaturated monomer having a carbosiloxane dendrimer structure having a radically polymerizable organic group; and
(a2) an unsaturated monomer having a radically polymerizable vinyl group, which is different from component (a1) . . .
practice of the claim 11 steps of:
Claim 11 . . . then after addition of the polymerization initiator is complete in step (0), holding the reaction intermediate copolymer for a period of at least two hours where no further polymerization initiator is added; and then
step (I) comprising step (Ia): further adding the same or different polymerization initiator to the reaction intermediate copolymer. . .
results (at least at some point in view of the open-ended transitional phrase “comprising”) in the claim 11 desired result of:
claim 11 . . . thereby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or lest relative to the copolymer.
Maintained Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). A claim is indefinite when it contains words or phrases whose meaning is unclear. MPEP § 2173.05(e) (citing In re Packard, 751 F.3d 1307, 1314, 110 USPQ2d 1785, 1789 (Fed. Cir. 2014)).
Unclear Structural Elements in Claim 19
Claims 19 and 20 are rejected under 35 U.S.C. 112(b) as indefinite because it is unclear to one of skill in the art what unsaturated monomers are encompassed by claim 19 formula (1). In response to this rejection, Applicant has not made any substantive amendments to claim 19, but rather maintains the same chemical structures of the previous claim set.
Claim 19 as amended recites as follows:
Claim 19 The method of manufacturing a copolymer according to claim 11, wherein component (a1) is an unsaturated monomer having a carbosiloxane dendrimer structure of the following formula (1):
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where
Z is a divalent organic group;
P is 0 or 1;
each of R1 and R2 independently represents an alkyl group, an aryl group, or an aralkyl group, having 1 to 10 carbon atoms; and
L1 is a silylalkyl group, in the case of i = 1, represented by the following formula (2):
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where:
Z and p are the same as defined above;
R1 and R2 are the same as defined above;
i is an integer ranging from 1 to 10, which specifies the total number of generations of silylalkyl group;
ai is an integer ranging from 0 to 3; and
Li+1 is a group selected from the group consisting of a hydrogen atom, alkyl, aryl, and aralkyl groups, having 1 to 10 carbon atoms and the silylalkyl group;
with the proviso that when i = c, where c is an integer ranging from 1 to 10, and specifies generation of the silylalkyl group,
Li+1 is a hydrogen atom, an alkyl, aryl, or an aralkyl group, having 1 to 10 carbon atoms;
and in the case of i < c, Li+1 is the silyalkyl grup.
Per the specification, the claim 19 carbosiloxane dendrimer structure represented by formula (1) can have an extended (highly branched) hierarchical structure. Specification at page 7, [0018] et seq.
A first issue is that the following bolded claim 19 recitation is unclear.
Claim 19 . . . L1 is a silylalkyl group, in the case of i = 1, represented by the following formula (2)
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. . .
i is an integer ranging from 1 to 10, which specifies the total number of generations of the silylalkyl group;
ai is an integer ranging from 0 to 3 . . .
The plain meaning of “silylalkyl group” is just silicon and alkyl (i.e., no oxygen or other elements), the specification does not give an alternative meaning. So, claim 19 is reasonably interpreted such that formula (2) is an alternative identity for variable L1, but not that formula (2) is itself a “silylalkyl group”. This being said, claim 19 is indefinite because it is unclear “in the case of i = 1”, whereby L1 of formula (1) is defined as formula (2), whether or not variable “i” retains its value of 1 in formula (2).
Further, because claim 19 recites “ai is an integer ranging from 0 to 3”, it is confusing how to congruently choose values for variables “ai” and “i”, because claim 19 does not give a separate definition for variable “a” itself. If “i”, per claim 19, “specifies the total number of generations of the silylalkyl group”, then “ai” can be reasonably interpreted to be “a” with successive “i” generations. So, it seems that the claim 19 phrase “ai is an integer ranging from 0 to 3” should be amended to recite “a is an integer ranging from 0 to 3”. Otherwise, the claim 19 phrase “ai is an integer ranging from 0 to 3” is unclear.
A further issue is that claim 19 recites:
claim 19 . . . L1 is a silylalkyl group, in the case of i = 1, represented by the following formula (2):
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. . . i is an integer ranging from 1 to 10, which specifies the total number of generations of silylalkyl group . . .
with the proviso that when i = c, where c is an integer ranging from 1 to 10, and specifies generation of the silylalkyl group [then] Li+1 is a hydrogen atom, an alkyl, aryl, or an aralkyl group, having 1 to 10 carbon atoms;
and in the case of i < c, Li+1 is the silyalkyl group.
but variable “c” is not recited in any of the chemical structures or anywhere else in the claim 19 text. It is unclear to one of skill under what circumstances “i < c” because c and i have identical meanings as “1 to 10”. It is also unclear to one of skill when “c . . . specifies generation of the silylalkyl group”. The practice and effect of this proviso is unclear to one of skill.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under AIA 35 U.S.C. 103(a) 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.
Claims 11-22 are rejected under 35 U.S.C. 103 as obvious over T. Iimura et al., US 9,260,607 (2016) (“Iimura”) in view of K. Matyjaszewski, et al, Handbook of radical polymerization, Chapter 3 General Chemistry of Radical Polymerization, 117-186 (New York: Wiley-Interscience, 2002) (“Matyjaszewski”) and/or L. Androvič et al., 42 Research on Chemical Intermediates, 5133-5145 (2016) (“Androvič”).
T. Iimura et al., US 9,260,607 (2016) (“Iimura”)
Iimura teaches a surface-treatment agent of powders for use in cosmetics comprising a polymer having a carbosiloxane dendrimer structure presented by the following formula (1). Iimura at col. 2, line 33 to col. 3, line 10. Iimura teaches preparation of the polymer by copolymerization of: (A) an unsaturated monomer having a carbosiloxane dendrimer structure presented by the following formula (1), with (B) an unsaturated monomer having at least one silicon bonding alkoxy group; and where polymer may be a product obtained by copolymerizing the aforementioned monomers further with (C) at least one unsaturated monomer having no silicon bonding alkoxy group. Iimura at col. 3, line 11 – col. 3, line 36. Significantly, Iimura formula (1), with slight differences in wording, is essentially identical to the formula (1) defined in instant claim 19.
Iimura teaches Synthesis Examples 1-9. Iimura at cols. 38-41. Iimura Synthesis Examples 1 and 7 are summarized by the Examiner below.
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Iimura at col. 38, line 50 to col. 39, line 17 (Synthesis Example 1).
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Iimura at col. 41, lines 14-36 (Synthesis Example 7).
Iimura’s Example 1 and Example 7 reactants and products meet each and every chemical structure limitation of claims 11-22. That is, Iimura formula A meets each and every structural limitation of claim 11 component (a1) as well as claim 19 formula (1).
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And any of Iimura’s methyl methacrylate, n-butyl acrylate, or methacryloxy-propyltriethoxysilane meet claim 11 component (a2)
(a2) an unsaturated monomer having a radically polymerizable vinyl group, which is different from component (a1);
Iimura clearly teaches the claim 11 limitation of:
Claim 11 . . . step (0) adding a polymerization initiator to components (a1) and (a2) to perform a radical polymerization reaction thereby forming a reaction intermediate copolymer having unsaturated monomers (a1);
then after addition of the polymerization initiator is complete in step (0), holding the reaction intermediate copolymer for a period of at least two hours where no further polymerization initiator is added . . .
With respect to low monomer content in the final copolymer (per claim 11, “2500 ppm or less relative to the copolymer”), Iimura teaches
After the polymerization, purification can be carried out by means of a method in which the remaining unreacted vinyl based monomers are removed by heating under reduced pressure or a method in which a deodorant treatment due to a hydrogenation reaction without a solvent or with a solvent is carried out and light components are removed by distillation by contacting with a nitrogen gas under reduced pressure. In particular, in the case of using as an agent for external use in which reduction of odors and miscibility with other cosmetic components are needed, a purified product obtained as described above is preferably used. In the aforementioned hydrogenation reaction and stripping step, solvents, reaction conditions, reducing pressure conditions and the like used in the purification of the publicly known organopolysiloxane copolymers can be used without any restrictions and can be freely selected.
Iimura at col. 19, lines 47-62. Thus, Iimura purports to teach complete removal of unsaturated monomers, thereby meeting the claim 11 limitation of
Claim 11 . . . wherein the amount of unreacted unsaturated monomers (a1) and saturated monomers derived from the unreacted unsaturated monomers (a1) is 2500 ppm or less relative to the copolymer . . .
Or at least Iimura motivates one of ordinary skill to remove unreacted unsaturated/vinyl monomers to a level of 2500 ppm or less because a purified product is preferably used for its intended cosmetic purpose.
Differences between Iimura and Claims 11 and 19
As stated above, Iimura’s Example 1 and Example 7 reactants and products meet each and every chemical structure limitation of independent claims 11and 19 as well as the dependent claims, which do not limit the initially recited chemical structures.
Iimura differs from independent claims 11 and 19 only in that this reference does not teach the claim 11 limitation of:
Claim 11 . . . step (I) comprising step (Ia): further adding the same or different polymerization initiator to the reaction intermediate copolymer thereby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or lest relative to the copolymer.
K. Matyjaszewski, et al, Handbook of radical polymerization, Chapter 3 General Chemistry of Radical Polymerization, 117-186 (New York: Wiley-Interscience, 2002) (“Matyjaszewski”)
Matyjaszewski teaches that the initiator-derived free radicals that initiate polymerization are generated by thermal or photochemical homolytic cleavage of covalent bonds, or by a redox process, which add to carbon-carbon double bonds of monomer resulting in primary propagating radicals that in turn propagate further. Matyjaszewski at page 118.
Matyjaszewski teaches that azo Initiators generate carbon-centered and oxygen-centered radicals by the homolysis of the C-N (dialkyl diazenes) and O-N (dialkyl hyponitrites) bonds, where a major driving force for the dissociation is the formation of the stable nitrogen molecule. Matyjaszewski at page 118. Matyjaszewski teaches substituted alkyl radicals generated on decomposition are usually resonance stabilized tertiary radicals to facilitate initiator decomposition and some of the most commonly used include 2,2' -azobisisobutyronitrile [AIBN(1)], dimethyl 2,2' -azobisisobutyrate (MAIB), 1,1'-azobis(l-cyclohexanenitrile) (2),2,2' -azobis(2,4,4-trimethylpentane), and azobis-2,4-dimethylvaleronitrile. Matyjaszewski at page 118.
Matyjaszewski teaches that termination refers to the bimolecular reaction of propagating radicals by combination or disproportionation that leads to the deactivation of propagating radical chain ends. Matyjaszewski at page 162. Matyjaszewski teaches that primary radical termination, the reaction between a primary radical and a propagating species, may also contribute to the loss of propagating radicals. Matyjaszewski at page 162.
Matyjaszewski teaches that initiator concentration is a result effective variable. Matyjaszewski at page 166 (“the rate of polymerization is proportional to the square root of the initiator concentration”).
L. Androvič et al., 42 Research on Chemical Intermediates, 5133-5145 (2016) (“Androvič”)
Androvič teaches that azo initiators represent a long-known group of chemical intermediates adopted as initiators of radical reactions, in particular radical polymerizations. Androvič teaches that the decomposition half-life of azobisisobutyronitrile, AIBN is 17 h at the temperature of 60 °C, and 1.1 h at the temperature of 80 °C where AIBN splits off of a nitrogen molecule gives radical 1b.
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Androvič at page 5135 (see Scheme 2).
Obviousness Rational
One of ordinary skill is motivated to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the range. MPEP § 2144.05; see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (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); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (explaining that, in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, "the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range").
Claims 11 and 19 are obvious in view of the cited art for the following reasons. One of ordinary skill, informed by Iimura that after the polymerization, there may be remaining unreacted vinyl based monomers (Iimura at col. 19, lines 47-49) and informed by Matyjaszewski and/or Androvič that the Iimura’s azo radical initiator 2,2′-azobis(2-methylbutyronitrile) is consumed/decomposed during the Iimura’s radical copolymerization, is motivated to monitor and replenish the radical initiator, during the course of Iimura’s radical polymerization to ensure complete reaction of the monomers. One of ordinary skill is therefore motived to practice the claim 11 limitations of:
Claim 11 . . . then after addition of the polymerization initiator is complete in step (0), holding the reaction intermediate copolymer for a period of at least two hours where no further polymerization initiator is added; and then
step (I) comprising step (Ia): further adding the same or different polymerization initiator to the reaction intermediate copolymer thereby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or less relative to the copolymer.
Stated differently, one of ordinary skill is motivated to monitor and optimize the concentration of radical initiator during the course of Iimura’s reaction in view Matyjaszewski and/or Androvič that the Iimura’s azo radical initiator is consumed during the process. In this regard, Matyjaszewski teaches that initiator concentration is a result-effective variable. Matyjaszewski at page 166 (“the rate of polymerization is proportional to the square root of the initiator concentration”). One of ordinary skill would be motivated to add additional aliquots of Iimura’s azo radical initiator, for example, per claim 11 after “holding the reaction intermediate copolymer for a period of at least two hours” during the course of Iimura’s six-hour process; for example, after two and one half, three, four or six hours, to ensure complete monomer reaction. MPEP § 2144.05 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955) (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).
One of ordinary skill is motivated to practice additional radical initiator addition to achieve the claim 11 result of “thereby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or less relative to the copolymer” because Iimura teaches that a purified product obtained as described above is preferably used. Iimura at col. 19, lines 47-62.
Claim 12 is obvious for the following reasons. Claim 12 further limits step (I)0 of claim 11 by requiring adding an unsaturated monomer (a2’) that is different from unsaturated monomer (a2), at the time that additional polymerization initiator is added. Specification at page 57, [0131]. Iimura Example 1 adds 36 g of methyl methacrylate (which, per the specification, corresponds to claim 12 component (a2’)). Specification at page 56, [0129]. One of ordinary skill, informed by Iimura that after the polymerization, there may be remaining unreacted vinyl based monomers (Iimura at col. 19, lines 47-49) and informed by Matyjaszewski and/or Androvič that the Iimura’s azo radical initiator 2,2′-azobis(2-methylbutyronitrile) is consumed/decomposed during the Iimura’s radical copolymerization, is motivated to monitor and replenish the radical initiator, during the course of Iimura’s radical polymerization to ensure complete reaction of the monomers and also add methyl methacrylate at the same time that the additional radical initiator is added. One of ordinary skill is so motivated to ensure complete reaction of the carbosiloxane dendrimer monomer represented by formula (A):
Claims 13, 14 and 16 are obvious because one of ordinary skill is motivated to perform the additional steps of:
claim 13 . . . step (II): distilling off unreacted unsaturated monomers or saturated monomers remaining in the system at ambient pressure or under reduced pressure after step (I)
Claims 14 and 16 . . . step (III): performing a hydrogenation reaction on an unreacted unsaturated monomer remaining in the system to convert the unsaturated monomer to a saturated monomer.
per Iimura’s teaching that:
After the polymerization, purification can be carried out by means of a method in which the remaining unreacted vinyl based monomers are removed by heating under reduced pressure or a method in which a deodorant treatment due to a hydrogenation reaction without a solvent or with a solvent is carried out and light components are removed by distillation by contacting with a nitrogen gas under reduced pressure.
In particular, in the case of using as an agent for external use in which reduction of odors and miscibility with other cosmetic components are needed, a purified product obtained as described above is preferably used.
In the aforementioned hydrogenation reaction and stripping step, solvents, reaction conditions, reducing pressure conditions and the like used in the purification of the publicly known organopolysiloxane copolymers can be used without any restrictions and can be freely selected.
Iimura at col. 19, lines 47-62.
Claims 15 and 17 are obvious because one of ordinary skill is motivated to perform the claim 15/17 step of:
Claims 15 and 17. . . step (IV): adding one or more types of (C) alcohols and/or one or more types of (D) oil agents in the system and removing a reaction solvent for a radical polymerization reaction.
In order to prepare a cosmetic as taught by Iimura. Iimura at col. 4, lines 37 to 47. Iimura teaches that “The cosmetic of the present invention can further comprise an oil agent or agents”. Iimura at col. 4, lines 42-43; Id. at col. 22, lines 42 et seq. Iimura teaches formulating the Example 1 or Example 7 copolymer product with oils and/or alcohols. Iimura col. 25, lines 4 – col. 26, line 45.
Claims 18 and 20 are obvious because one of ordinary skill is motivated to optimize the concentration of “mass% of component (a1) . . . relative to the total mass of components (a1) and (a2).”. MPEP § 2144.05; In re Aller, 220 F.2d 454, 456 (CCPA 1955) (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). Iimura Example 1 employs 40 g of formula (A) (which is claimed component (a1)) and 14 g of n-butyl acrylate (which is claimed component (a2)) where the mass component of (a1) is 14g/14 g + 40 g= 26%, which meets the claim 18 and 20 limitation of “the mass% of component (a1) is 20 mass% or more relative to the total mass of components (a1) and (a2)”.
New claim 21 is obvious under the same reasoning given above for claim 11. New claim 21 recites:
21. The method of manufacturing a copolymer according to claim 11, wherein after addition of the polymerization initiator is complete in step (0), and prior to step (I), the reaction intermediate copolymer is held for a period of at least two and a half hours where no further polymerization initiator is added.
Claim 21 requires holding for two and a half hours versus the two-hour time period of claim 11. No patentable distinction appears because as stated above, one of ordinary skill is motivated to add additional aliquots of Iimura’s azo radical initiator, for example, per claim 11 after “holding the reaction intermediate copolymer for a period of at least two hours” during the course of Iimura’s six-hour process; for example, after two and one half, three, four or six hours, to ensure complete monomer reaction. MPEP § 2144.05 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)/
Claim 22 is obvious because one of ordinary skill is motivated to practice additional radical initiator addition to achieve the claim 11 result of “thereby forming the copolymer and lowering the unreacted monomers (a1) to 2000 ppm or less relative to the copolymer” because Iimura teaches that a purified product obtained as described above is preferably used. Iimura at col. 19, lines 47-62. Alternatively, one of ordinary skill is motivated to remove unreacted unsaturated/saturated monomers (a1) from either of Iimura’s Example 1 or 7 polymer products (if there is even any such remaining (a1) in Iimura’s polymer product) in order to obtain a purer product for Iimura’s intended use in cosmetic formulations. Iimura at col. 1, lines 5-15. One of ordinary skill is motivated to achieve unsaturated/saturated monomers (a1) in an amount of 2000 ppm or less relative to the copolymer, for example, per Iimura’s teaching that that these are undesirable in the final copolymer product and can be removed by subsequent purification techniques. Iimura at col. 19, lines 47-62 (emphasis added). This claim 22 limitation does no distinguish over the cited art for the following additional reason.
In both Iimura Examples 1 and 7, the following GC and GPC analyses are performed.
The reaction product after stirring was subjected to analysis of the polymerization addition rate by means of gas chromatography. As a result, the addition rate of polymerization was 97%, and it was confirmed that a vinyl-based polymer was obtained. Toluene was added to the aforementioned vinyl-based polymer So as to adjust the solid content to 40%. The weight average molecular weight thereof on the basis of polystyrene standard by means of GPC was 30,000.
See e.g., Iimura at col. 39, lines 11-17 (Example 1). Here, either of Iimura’s GC or GPC analyses would result in complete separation of the product polymer from any unreacted unsaturated/saturated monomers (a1) and the GC and GPC polymer fractions would meet the claim 11 limitation of where the unsaturated/saturated monomers (a1) are “2000 ppm or less relative to the copolymer
Applicant’s Argument
Applicant argues that the claimed minimum threshold of 2 hours is a pause or gap in reaction, which is different from that suggested in the NPL documents. Reply at 12. Applicant argues that the NPL documents teach half-life for azobis-based compounds, and as such, rather than the claimed 2-hour period, one of skill would have been motivated to steadily add additional azobis-based compounds over time to maintain a concentration as a result-effective variable. Id. In sum, Applicant argues that, while one of ordinary skill may be motivated to add more radical initiator (perhaps in a steady fashion), the cited art does not motivate one of skill the specific claim 11 holding time as bolded below:
Claim 11 . . . then after addition of the polymerization initiator is complete in step (0), holding the reaction intermediate copolymer for a period of at least two hours where no further polymerization initiator is added; and then
step (I) comprising step (Ia): further adding the same or different polymerization initiator to the reaction intermediate copolymer thereby forming the copolymer and lowering the unreacted monomers (a1) to 2500 ppm or less relative to the copolymer.
Applicant argues that finding this limitation in the cited art is impermissible hindsight.
This argument is not persuasive for the following reasons. Here, in view Matyjaszewski’s and/or Androvič’s teaching that the Iimura’s azo radical initiator is consumed during the process and Matyjaszewski’s teaching that initiator concentration is a result-effective variable, where “the rate of polymerization is proportional to the square root of the initiator concentration”, one of ordinary skill would be motivated to add additional aliquots of Iimura’s azo radical initiator. The claimed time period does not impart patentability, because the specification teaches no criticality regarding the “period of at least two hours”. Specification at page 56, [0130]. One of ordinary skill is motivated to develop workable or optimum ranges for result-effective parameters, where Applicant can rebut a prima facie case of obviousness by showing the criticality (unexpected result) of the claimed range. MPEP § 2144.05; see also, In re Boesch, 617 F.2d 272,276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Here, gist is that one of ordinary skill is motivated to add additional radical initiator, really at any time point (whether 1, 2, or 4 hours) because the cited art teaches that it is consumed and because it is necessary for the reaction to proceed. One of ordinary skill is motivated to monitor (using routing methods) and replenish the radical initiator, during the course of Iimura’s radical polymerization, as needed, to ensure complete reaction of the monomers. One of ordinary skill can certainly determine optimal or workable times for such radical-initiator replenishment. Absent the Applicant’s demonstration of criticality regarding the claimed “period of at least two hours”, it at best represents an optimal time period discoverable by one of ordinary skill, using routine methods, in view of Matyjaszewski and/or Androvič. Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. MPEP § 2145(X)(A).
Here, the § 103 rational takes into account only subject matter described in the prior art. As noted above, the gist is that one of ordinary skill is motivated to add additional radical initiator, really at any time point (whether after 1, 2, or 4 hours) because the cited art teaches that it is consumed and because it is necessary for the reaction to proceed. The Examiner has not selected a period of least 2.5 hours before the first addition of fresh radical initiator simply to reject the claims; rather, absent a showing of criticality, the cited art suggests determining optimal or workable ranges, whereby one of ordinary skill would have arrived at this claimed holding time. For example, there is no proffered result that adding fresh radical initiator only after 2.5 hours gives unexpected results or advantages versus steady radical initiator addition or addition after only one hour. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
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.
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ALEXANDER R. PAGANO
Examiner
Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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