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 Amendments and Arguments
Applicant’s amendments and arguments, filed 22 September 2025, with respect to the rejection of claim 6 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. Applicant has cancelled the claim. Accordingly, the rejection under 35 U.S.C. § 112(b) of claim 6 has been withdrawn.
Applicant’s amendments and arguments, filed 22 September 2025, with respect to the rejection(s) of claim(s) 1-5, 8, and 9 under 35 U.S.C. § 102 in view of Kawada have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. Applicant has amended the claim to further recite 50-1000ppm of the antioxidant and additionally limited the antioxidant to the previous antioxidants of claim 3 which was not rejected under 35 U.S.C.§ 102 in view of Kawada. However, upon further consideration, a new ground(s) of rejection is made in view of Kawada and Schnabel under 35 U.S.C. § 103 for all claims and also Iida et al under 35 U.S.C. § 102 for all claims.
Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive.
Applicant argues that Schnabel teaches antioxidants in agrochemical surfactants and not as solvent compositions. However, Schnabel is relied upon only for the teaching of equivalence between antioxidants and not for the solvent composition which is taught by Kawada. Further, Schnabel teaches the presence of solvents [0076].
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 and 9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Iida et al. (US Patent #11,822,250, hereinafter referred to as “Iida”).
As to Claim 1: Iida teaches a solution comprising propylene glycol monomethyl ether as a solvent and 100 ppm of a-tocopherol as an antioxidant (Table 1, Example 3). Iida additionally teaches that the antioxidant tocopherol can be dl-a-tocopherol (Col 5, Lines 45-55)and further teaches that after one month the composition has 0.1 mmol/g (i.,e., less than 20 ppm) of peroxide (Table 5).
Iida does not expressly teach the APHA color index of the solvent composition is less than 25. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Iida. However, Iida teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there is no special step or compound which results in the claimed property. Therefore, the claimed effects and physical properties, i.e. the APHA color index of the solvent composition is less than 25, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
As to Claim 2: Iida teaches the solvent composition of claim 1 (supra). Iida further teaches that the solvent can be dipropylene glycol monomethyl ether (Col. 4, Lines 1-5).
As to Claims 3 and 4:Iida teaches the solvent composition of claim 1 (supra). Iida further teaches that the antioxidant tocopherol can be dl-a-tocopherol (Col 5, Lines 45-55).
As to Claim 5: Iida teaches the solvent composition of claim 1 (supra). Iida further teaches that after one month the composition has 0.1 mmol/g (i.,e., less than 10 ppm) of peroxide (Table 5).
As to Claim 9: Iida teaches a solution comprising propylene glycol monomethyl ether as a solvent and 100 ppm of a-tocopherol as an antioxidant (Table 1, Example 3) and further teaches that after one month the composition has 0.1 mmol/g (i.,e., less than 20 ppm) of peroxide (Table 5).
Iida does not expressly teach the APHA color index of the solvent composition is less than 25. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Iida. However, Iida teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there is no special step or compound which results in the claimed property. Therefore, the claimed effects and physical properties, i.e. the APHA color index of the solvent composition is less than 25, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 8 is rejected under 35 U.S.C. 102(a)(2) as being anticipted by Iida et al. (US Patent #11,822,250, hereinafter referred to as “Iida”).
As to Claim 8: Iida teaches a solution comprising propylene glycol monomethyl ether as a solvent and 100 ppm of a-tocopherol as an antioxidant (Table 1, Example 3). Iida additionally teaches that the antioxidant tocopherol can be dl-a-tocopherol (Col 5, Lines 45-55) and further teaches that after one month the composition has 0.1 mmol/g (i.,e., less than 20 ppm) of peroxide (Table 5).
Iida does not expressly teach the APHA color index of the solvent composition is less than 25. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Iida. However, Iida teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there is no special step or compound which results in the claimed property. Therefore, the claimed effects and physical properties, i.e. the APHA color index of the solvent composition is less than 25, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
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.
Claims 1-5 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al. (US 2019/0171102, hereinafter referred to as “Kawada”) in view of Schnabel et al. (US 2016/0015028, hereinafter referred to as “Schnabel”).
As to Claims 1-5, and 9: Kawada teaches a solution comprising an organic solvent such as dipropylene glycol monomethyl ether [0018], and an antioxidant such as dibutyl hydroxytoluene (i.e., a hindered phenol) [0024] wherein the antioxidant is present in an amount of 50 mass ppm [0016]. Kawada further teaches that the content of peroxide is 0.1 to 10 mass ppm [0028] and the solvent is present in an amount equal to 98.00% by mass or more [0062].
Kawada does not teach that the antioxidant is d,l-alpha-tocopherol.
However, Schnabel teaches that d,l-alpha-tocopherol and butylated hydroxytoluene are known antioxidant compounds [0094]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use the d,l-alpha-tocopherol of Schnabel in place of the butylated hydroxytoluene in the composition of Kawada because Schnabel teaches that these two compounds are functional equivalents for the purposes of antioxidants [0094].
Kawada does not expressly teach the APHA color index of the solvent composition is less than 25. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Kawada. However, Kawada teaches a product prepared with all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, there is no special step or compound which results in the claimed property. Therefore, the claimed effects and physical properties, i.e. the APHA color index of the solvent composition is less than 25, would naturally flow from a composition with all the claimed ingredients in the claimed amounts prepared by a similar process. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kawada et al. (US 2019/0171102, hereinafter referred to as “Kawada”) in view of Schnabel et al. (US 2016/0015028, hereinafter referred to as “Schnabel”).
As to Claim 8: Kawada teaches a solution comprising an organic solvent such as dipropylene glycol monomethyl ether [0018], and an antioxidant such as dibutyl hydroxytoluene (i.e., a hindered phenol) [0024] wherein the antioxidant is present in an amount of 50 mass ppm [0016]. Kawada further teaches that the content of peroxide is 0.1 to 10 mass ppm [0028] and the solvent is present in an amount equal to 98.00% by mass or more [0062]. Kawada further teaches that the solvent and the antioxidant are mixed [0050].
Kawada does not teach that the antioxidant is d,l-alpha-tocopherol.
However, Schnabel teaches that d,l-alpha-tocopherol and butylated hydroxytoluene are known antioxidant compounds [0094]. At the time of filing, it would have been obvious to a person having ordinary skill in the art to use the d,l-alpha-tocopherol of Schnabel in place of the butylated hydroxytoluene in the composition of Kawada because Schnabel teaches that these two compounds are functional equivalents for the purposes of antioxidants [0094].
Kawada does not expressly teach the APHA color index of the solvent composition is less than 25. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by Kawada. However, Kawada teaches a process using the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. According to the original specification, there is no special step or compound which results in the claimed property. Therefore, the claimed effects and physical properties, i.e. the APHA color index of the solvent composition is less than 25, would naturally flow from a process employing the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts. See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is the applicant's position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure as to how to obtain the claimed properties by carrying out a process with only the claimed steps, claimed processing conditions, and the claimed ingredients in the claimed amounts.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J OYER whose telephone number is (571)270-0347. The examiner can normally be reached 9AM-6PM EST M-F.
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/Andrew J. Oyer/Primary Examiner, Art Unit 1767
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