DETAILED ACTION
This communication responds to the Amendment filed January 28, 2026. Claims 20-38 are currently pending. Claims 20-36 and 38 are under examination.
The objection to claim 22 set forth in the Office Action dated October 1, 2025 is WITHDRAWN due to Applicant’s responsive amendment.
The rejections of claims 20-36 under 35 USC 112 set forth in the October 1 Office Action are WITHDRAWN due to Applicant’s responsive amendments.
The rejections of claims 20-36 under 35 USC 102 or 103 set forth in the October 1 Office Action are WITHDRAWN due to Applicant’s amendments. The examiner agrees with Applicant that the relied-upon prior art reference does not explicitly disclose water in the amount of 50 to 90 weight percent.
Claims 20-36 are newly REJECTED for the reasons set forth below. New claim 38 is also rejected.
The new rejections are necessitated by amendment. Therefore, this action is final.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 20-36 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasaki et al. (JP H07252308A).
Regarding claims 20, 25-30, 35, and 36, Iwasaki teaches a process for forming a composition of organic peroxides comprising diluting 3-hydroxy-1,1-dimethylbutylperoxyneodecanoate and one or more peroxydicarbonates in water. (paras. [0005], [0010]; para. [0019], Table 1.) The peroxide mixture is then contacted with vinyl chloride monomer. (Exs., para. [0014].)
As Applicant points out in its Remarks, Iwasaki’s only disclosure as to the amount of water present in its composition is in its Examples, and that the water is present in amounts greater than 50 to 90 wt.%. (See Remarks, pp. 7-8.) However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("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."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amount of water to produce a composition with the desired stability and concentration of polymerization initiators.
Regarding claims 21-24, Iwasaki teaches that a preferred peroxydicarbonate is di-2-ethylhexyl-peroxydicarbonate. (para. [0018]; para. [0019], Table 1.)
Regarding claims 31 and 32, Iwasaki teaches the addition of polyvinyl alcohol (an emulsifier) to the aqueous peroxide mixture (see Exs., para. [0014]), thereby forming an aqueous emulsion.
Regarding claim 33, Iwasaki is silent as to the temperature of preparing the peroxide mixture. A person of ordinary skill would infer that the temperature is room temperature, or ~20°C, absent any teaching otherwise.
Regarding claim 34, Iwasaki teaches all of the limitations of claim 20. (See paragraph 10 above, which is incorporated by reference herein.)
The difference between Iwasaki and claim 34 is that Iwasaki teaches that the peroxide mixture is added to the reactor, then the monomer is added, rather than the recited process in which the peroxide is added to a reactor already containing monomer. However, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. (In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (selection of any order of mixing ingredients is prima facie obvious.).) Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed the process steps of Iwasaki in the order recited in claim 34.
Regarding claim 38, Iwasaki teaches a general ratio of peroxyester to peroxydicarbonate of 5/1 to 1/5, which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Iwasaki.
Response to Arguments
Applicant’s arguments with respect to the rejections of claims 20-36 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new rejections are set forth above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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