DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-10, in the reply filed on 10/14/2025 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement (IDS) filed 3/22/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not provide a copy of the partial translation of a search report for PCT/KR2021/005703. It has been placed in the application file, but the information referred to therein has not been considered with regards to this reference.
To the extent that applicant states that copies of the cited references were previously supplied with the IDS dated 4/25/2022, the examiner notes that a copy/partial translation of the search report for PCT/JP2011/051885 was provided with the 4/25/2022 IDS. Applicant did not previously supply a copy of the document for PCT/KR2021/005703.
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.
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 1-10 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.
Regarding claim 1: The scope of the phrase “vinyl chloride-based monomers” is unclear. Under a first interpretation, the phrase could be interpreted to refer to vinyl chloride and compounds that are derived from vinyl chloride. Alternatively, the phrase could be interpreted to refer to a monomer mixture comprising vinyl chloride. In the latter instance, it is further unclear whether “vinyl chloride-based” would be intended to implicitly require that vinyl chloride is present in some minimum amount (and if so, what that minimum value is) or if it is intended to read on a monomer mixture comprising vinyl chloride in any amount.
Regarding claims 2-6: Claims 2 to 6 all recite the phrase “vinyl chloride-based monomers” and are therefore indefinite per the same rationale as outlined above with respect to claim 1.
Regarding claims 7-10: Claims 7 to 10 depend from claim 1 and do not correct the deficiency outlined above. The claims are therefore indefinite per the same rationale as claim 1.
Claims 4 and 5 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.
Regarding claim 4: Claim 4 depends from claim 1 and states that the polyvinyl alcohol (PVOH) is added after recovering unreacted vinyl chloride-based monomers. Note, however, that claim 1 states that the PVOH is added in at least one of the bulk polymerization step or the step of recovering unreacted monomers (see claim 1: lines 7-8). Furthermore, the independent claim states that the recovery step is done after bulk polymerization is complete (see claim 1: lines 4-5). The process of the independent claim therefore requires that the PVOH is added either during the recovery step or before it during the bulk polymerization step; it does not allow for the PVOH to be added after the recovery step. Claim 4 therefore impermissibly broadens the scope of the parent claim to include processes wherein the PVOH is not added in the bulk polymerization step or the recovery step.
Regarding claim 5: Claim 5 depends from claim 1 and states that the PVOH is added after recovery of unreacted vinyl chloride-based monomers and before the post-treatment. Similar to the discussion in the previous paragraph with respect to claim 4, claim 5 impermissibly broadens the scope of the parent claim to read on processes wherein the PVOH is added in steps other than the bulk polymerization step or the recovery step.
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
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.
Claims 1, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Durand et al, US3855162.
Durand discloses a process of preparing a polyvinyl chloride (PVC) composition, wherein said process comprises the steps of (co)polymerization of vinyl chloride under bulk polymerization conditions (Column 2 line 66 to Column 3, line 3), corresponding to the claimed bulk polymerization step (for claim 1); and removal of unreacted monomer via distillation (see Example 1: Column 6, lines 19-20), corresponding to the claimed recovering of unreacted monomers (for claim 1); and obtaining the polymerized PVC (for claim 1). Said bulk polymerization is performed in the presence of a siliceous filler and an organic compound having an alcohol functionality such as PVOH (for claim 1) (Column 2, lines 26-31 and 48). The prior art process therefore corresponds to the claimed process wherein PVOH is added to the bulk polymerization step (for claim 1).
Regarding the amount of PVOH: Durand teaches that
the amount of organic compound is 0.05 to 15 wt% relative to the siliceous filler (Column 2, lines 31-34), and
the amount of siliceous filler is 40 to 70 g per 1 liter of liquid monomer (Column 4, lines 34-37).
Based on these teachings, it is calculated that the amount of PVOH present during the bulk polymerization step per 1 liter of monomer can be in the range of (0.05% × 40) to (15% × 70)-i.e., 0.02 to 10.5 g per 1 liter of monomer. Furthermore, the density of liquid vinyl chloride monomer (about 0.91 g/cm3); 1 liter of vinyl chloride therefore has a mass of about 910 g. The prior art process is therefore performed using 0.02 to 10.5 g PVOH per 910 g vinyl chloride monomer-i.e., about 0.002 to 1.15 part PVOH per 100 parts vinyl chloride, overlapping the claimed range (for claim 1).
Regarding claim 6: "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). Note that Durand does not contain any teachings that the PVOH must be dissolved in a solvent prior to its use in the prior art process. One of ordinary skill in the art would therefore reasonably infer that the PVOH can be used as a solid without dissolving it first.
Durand does not specifically teach a process wherein the amount of PVOH is in the range of 0.003 to 0.500 parts per 100 parts monomer.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
The prior art range overlaps the range for the amount of PVOH added to the polymerization. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art at the time the invention was made to perform the process of Durand using PVOH in the claimed amount.
Regarding claim 10: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed in the preceding paragraphs, Durand renders obvious a process wherein vinyl chloride is subjected to bulk polymerization in the presence of PVOH, wherein the vinyl chloride and PVOH are present in the same ratio as in the claimed process. Because the prior art process appears to be the same as the claimed process, it is reasonably expected that PVOH would have the same interactions with the polymerized PVC as in the claimed process and thus at least a portion of the PVOH would adsorb onto the PVC. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art process (for claim 10).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Durand et al, US3855162, as applied to claims 1, 6, and 10 above, and further in view of Ahn et al, US2018/0355078.
As discussed earlier in this Action, Durand discloses a process of making a polyvinyl chloride composition, wherein said process comprises the steps of
bulk polymerizing vinyl chloride in the presence of 0.002 to 1.15 part PVOH per 100 parts vinyl chloride,
recovering unreacted vinyl chloride monomer, and
obtaining the polymerized polymer.
Durand is silent regarding the claimed process wherein the bulk polymerization is a multistage polymerization process.
Ahn discloses a method of polymerizing vinyl chloride via bulk polymerization, wherein said process comprises the steps of 1) a first bulk polymerization step in the presence of an initiator to prepare nuclear particles, corresponding to the claimed preliminary step (for claim 2); and 2) a second step of bulk polymerizing the nuclear particles, the unreacted monomer from the first step, and a second addition of monomer, corresponding to the claimed main polymerization (for claims 2, 3), wherein a phosphite is added in the first step (abstract; ¶0015-0016). Ahn teaches that vinyl chloride polymerized via such a process is characterized by improved thermal stability (¶0006).
Durand and Ahn are both directed towards the preparation of polyvinyl chloride compositions via bulk polymerization methods. As taught by Ahn, it was known in the art that performing said bulk polymerization as a multistage process comprising a first step of polymerization to form nuclear particles and a second step of polymerization of unreacted monomer and freshly added monomer in the presence of said nuclear particles and phosphite resulted in a final polymer having improved thermal stability. It therefore would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the process of Durand by performing the bulk polymerization as a multistep polymerization reaction, as taught by Ahn, with the reasonable expectation of obtaining a polyvinyl chloride composition having improved thermal stability.
Allowable Subject Matter
Claims 7-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The following references are relevant to the patentability of the instant claims.
Durand et al, US3855162: As discussed earlier in this Action, Durand teaches a process comprising the steps of bulk polymerization of vinyl chloride in the presence of 0.002 to 1.15 part PVOH per 100 parts vinyl chloride and recovery of unreacted monomers. Durand does not provide any information regarding the degree of hydrolysis (for claim 7), viscosity (for claim 8) or degree of polymerization (for claim 9) of the PVOH used in the prior art process. Furthermore, there is no evidence in the record that provide a reasonable basis for expecting any of these properties to be inherently met by the prior art.
Ahn et al, US2018/0355078: Ahn discloses comparative example 1-3 (¶0053-0054) in which two PVOH having a degree of hydration of 78.5% and 40.7% are added to the polymerization of vinyl chloride. Note that the process used in the comparative example is a suspension polymerization method in which the PVOH is used as a dispersing agent to stabilize the vinyl chloride monomer in water. Ahn does not include any teachings that would provide a motivation to use PVOH as an additive during the bulk polymerization of vinyl chloride.
Kato et al, US2011/0130504: Kato discloses the addition of 0.005 to 5 parts PVOH having a degree of saponification of 30 to less than 75 mol% and a degree of polymerization less than 300 to PVC as a thermal stabilizer. Kato teaches that the PVC is made via suspension polymerization (¶0040). Furthermore, Kato teaches away from adding the PVOH during the polymerization process, disclosing that doing so results in the concentration of PVOH in the final composition being too low to obtain the desired thermal stabilization (¶0056).
Kato, 2011/0213063: Kato discloses the addition of 0.005 to 5 parts PVOH having a degree of saponification of 30 to 99.9mol% and a degree of polymerization of 1000 or less to PVC as a thermal stabilizer. Kato teaches that the PVC is made via suspension polymerization (¶0045). Furthermore, Kato teaches away from adding the PVOH during the polymerization process, disclosing that doing so results in the concentration of PVOH in the final composition being too low to obtain the desired thermal stabilization (¶0067).
The cited references do not disclose a process of bulk polymerization of vinyl chloride wherein PVOH having the recited properties of hydrolysis, viscosity, or degree of polymerization is added either during the step of bulk polymerization or during the recovery of unreacted monomers as recited in the instant claims. Furthermore, no reference has been found that would provide an ordinary artisan with motivation to modify the process of Durand by using a PVOH having the properties recited in the instant claims.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765