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 allowance. 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on Jul. 31, 2026 has been entered.
Claim Rejections – 35 U.S.C. § 103
Claims 17, 20, 22-24, 26, 28, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2015/0232590 A1 (herein “Tartarin”), and in the alternative as being unpatentable over Tartarin in view of US 2002/0128312 A1 (herein “Hei”) and EP 3 730 546 (herein “Wormland”). A computer-generated English translation of Wormland is attached to the Office action mailed on Mar. 5, 2025.
As to claims 17, 20, 22-24, and 26: Tartarin describes aqueous organic peroxide emulsions (see the abstract). The emulsions include an organic peroxide chosen from peroxyesters, peroxydicarbonates and diacyl peroxides (see ¶¶ [0058]-[0060]), such as tert-amyl peroxypivalate among others (see ¶ [0058]). Tartarin further discloses that the emulsions include 10 to 65%, preferably greater than 30% and more preferably greater than 45%, by weight of the organic peroxide (see ¶ [0058]), and these amounts overlap the presently recited range of 40 to 80% by weight.
The emulsions further include 0.01 to 10 wt% (see ¶ [0025]) of an emulsifier (see ¶¶ [0063]-[0069]), such as an alkoxylated fatty alcohol (see ¶ [0065]). According to a preferred embodiment, the emulsifier according to the invention is an alkoxylated fatty acid or an alkoxylated (hydrogenated or nonhydrogenated) vegetable/animal oil (see ¶ [0066]), corresponding to the presently recited nonionic surfactant comprising a fatty chain.
The emulsions further include from 2% to 25% by weight of at least one anti-freeze agent (see ¶ [0024]), and this range of amounts overlaps the presently recited amounts of antifreezes (9 to 26.5 wt% in combination). In order to be able to be stored at temperatures of less than -10 °C, preferably of less than -20 °C, the emulsions include an antifreeze and more particularly a mixture of antifreezes (see ¶ [0061]) such as monoalcohols selected from methanol, ethanol, isopropanol, and n-propanol; diols; triols; mixtures of one of light alcohol type and the other of heavy alcohol type; and advantageously a mixture of methanol and propane-1,2-diol (see ¶ [0062]).
Tartarin does not specifically disclose the presently recited combination of antifreezes, the first of which comprises ethanol and is present in an amount of 6 to 9.5 wt%, and the second of which is present in an amount of 3 to 17 wt%.
In light of Tartarin’s disclosure of a suitable range of amounts of antifreeze agents, and in light of Tartarin’s disclosure of mixtures of alcohols, one of ordinary skill in the art would have been motivated by ordinary creativity to use any amount within the disclosed ranges of each of the disclosed alcohols to make Tartarin’s mixture of alcohols. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any combination of amounts of the alcohols in Tartarin’s antifreeze agent.
Case law has established that it is prima facie obvious to combine prior art elements according to known methods to obtain predictable results or to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationales (A) and (B), respectively.
In the present case, it is evident from the discussion above that Tartarin describes each of the presently recited antifreeze compounds, including ethanol, and the difference between the claimed invention and Tartarin’s disclosure is the lack of a combination of ethanol with the mixture of alcohols described therein, or the substitution of ethanol for the methanol or the other light alcohols described therein. One of ordinary skill in the art could have combined ethanol with Tartarin’s mixture of alcohols or could have substituted ethanol for the methanol in Tartarin’s mixture of alcohols by ordinary mixing, and the results of the combination or substitution (alternative antifreeze compositions) would have been predictable.
In light of this discussion, it is apparent that the presently claimed invention is arrived at by combining prior art elements according to known methods or by simple substitution of one known element for another to obtain predictable results. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined ethanol with Tartarin’s mixture of alcohols or to have substituted ethanol for the methanol in Tartarin’s mixture of alcohols, thereby arriving at the presently claimed invention.
In the alternative: it is well known that methanol is toxic. For instance, Wormland discloses aqueous emulsions of organic peroxides comprising an antifreeze agent (see the abstract), and Wormland discloses that methanol is toxic (see ¶ [0013] of the translation). Hei discloses stabilized compositions of peroxycarboxylic acid esters including an alcohol (see the abstract and ¶ [0004]), and Hei discloses that a preferred C2 or higher alcohol is less toxic than methanol (see ¶ [0031]).
In light of Wormland and Hei, it is evident that one of ordinary skill in the art would have been apprised of the toxicity of methanol, and therefore one of ordinary skill in the art would have been motivated to make Tartarin’s compositions without methanol in order to reduce their toxicity. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined ethanol with Tartarin’s mixture of alcohols or to have substituted ethanol for the methanol in Tartarin’s mixture of alcohols, thereby arriving at the presently claimed invention.
As to claim 28: Tartarin further discloses that the emulsions do not include a partially hydrolyzed polyvinyl acetate (see ¶ [0071]).
As to claim 30: Tartarin’s emulsions are made by mixing the components and emulsifying them (see ¶¶ [0052]-[0055]).
Allowable Subject Matter
Claim 29 is objected to as being dependent upon a rejected base claim, but it would be allowable if written in independent form.
Response to Arguments
Applicant's arguments filed Jul. 31, 2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (bottom of p. 6 of Remarks) that a composition comprising 9.5 wt% ethanol has a smaller droplet size (1.5 microns) than does a comparative composition including 9.5 wt% methanol (4.5 microns).
Allegations of unexpected results must be supported by evidence that establishes that the differences in results are of both statistical and practical significance. MPEP 716.02(b).
In the present case, Applicant does not present any evidence directed to the practical significance of the argued droplet sizes. The present submission does not establish any unexpected superiority or benefit associated with the inventive composition (having an average particle size of 1.5 microns) in comparison to the comparative composition (having an average particle size of 4.5 microns).
Allegations of unexpected results must be supported by evidence that is commensurate in scope with the claimed invention. MPEP 716.02(d).
The present claims are generic with respect to the average particle size of the droplets of the emulsion. The present submission does not explain why the present compositions would inherently have any particular particle average droplet diameter, whether that be 1.5 microns or otherwise.
The presently argued inventive example which has a smaller average droplet size than does a comparative emulsion (made with methanol) is therefore not commensurate in scope with the claims.
The presently argued comparative example is distinguishable from Tartarin’s Examples 7 and 8, and the distinction weighs against a finding that the argued evidence of commensurate in scope with the claims.
Examples 7 and 8 of Tartarin are reported to have an average particle size (d50) of 3.3 and 3.4 microns, respectively, and a maximum particle size (d100) of 8.7 microns. In contrast, the presently submitted comparative example with a substantially similar composition has an average particle size (d50) of 4.5 microns and a maximum particle size (d100) of 13.2 microns, and these values are larger than the values disclosed in Tartarin. This distinction in particle sizes illustrates that similar compositions can be made to have different particle sizes; or, put differently, that the compositions do not necessarily possess a singular particle size by virtue of having similar compositions.
This distinction weighs against a conclusion that the presently claimed emulsions are limited to any particular particle size; and similarly, against a conclusion that the claims would be commensurate in scope with any results that depend upon such a particle size.
Applicant argues (pp. 6-7 of Remarks) that the inventive composition including ethanol showed improved stability relative to the comparative composition including methanol.
The composition including ethanol has an initial average particle size of 1.5 microns and an average particle size after 6 months of storage of 2.5 microns. The comparative composition including methanol has an initial average particle size of 4.5 microns and an average particle size after 6 months of storage of 4.7 microns.
The inventive composition thus experiences a much greater change in average particle size than does the comparative example. The inventive example therefore does not have improved stability based of the presented average particle sizes.
Applicant argues (first full paragraph on p. 7 of Remarks) that small, stable peroxide droplet size is critical regarding sedimentation, creaming, Ostwald ripening, agglomeration, and phase separation and destabilization during storage and transport.
Allegations of unexpected results must be supported by evidence that is comparative to the closest prior art. MPEP 716.02(e).
This argument is unpersuasive because it is not supported by evidence drawn to the argued properties by way of comparison to Tartarin. MPEP 716.02(e).
Applicant argues (second full paragraph on p. 7 of Remarks) that the comparative example’s maximum droplet size is larger than an average droplet size that is identified in the present specification “for acceptable emulsion quality”.
Applicant does not point to any particular portion of the specification to support this assertion.
The examiner has located portions of the specification that state the following: “Particularly advantageously, the emulsion according to the invention has an average droplet size of less than or equal to 10 μm, preferably less than or equal to 3 μm” (Spec. p. 19, ll. 12-14) and “The average droplet size of the emulsion is preferably less than or equal to 10 μm, more preferably less than or equal to 3 μm” (Spec. p. 21, ll. 20-21).
These portions of the specification do not state that other particle sizes do not lead to “acceptable emulsion quality” as is argued.
The argument is additionally unpersuasive because it does not explain the pertinence of a comparison of a maximum droplet size (as for the submitted comparative example) to an average droplet size (as for the disclosure in the specification).
Furthermore, as noted above, Tartarin’s Examples 7 and 8 (including methanol) are reported to have an average particle size (d50) of 3.3 and 3.4 microns, respectively, and a maximum particle size (d100) of 8.7 microns (see Tartarin Table 3), each of which is smaller than the argued average droplet size of 10 microns that is mentioned in the present specification.
Allegations of unexpected results must be supported by evidence that is commensurate in scope with the claimed invention. MPEP 716.02(d).
Present claim 1 recites a first antifreeze that is present in an amount of 6 to 9.5 wt% and that comprises ethanol. This limitation encompasses very small amounts of ethanol, including amounts approaching zero.
The example Emulsions Nos. 4, 5, 7, 12-14, and 17 include ethanol in amounts varying from 9.0 to 9.5 wt%. The application does not include examples of emulsions including less than 9.0 wt% of ethanol. The example emulsions in the application are not adequately commensurate in scope with the claimed amounts of ethanol which encompasses very small amounts of ethanol, including amounts approaching zero.
The evidence of record does not establish any unexpected superiority of emulsions including such small amounts of ethanol.
Additionally, the present claims have been amended such that two surfactants are recited in the alternative, one having a fatty chain and other being a protective colloidal agent.
The present evidence is drawn to emulsions including a surfactant that includes a fatty chain (ethoxylated castor oil), but it is not directed to compositions including a protective colloidal agent.
In light of the amendment of claim 1, the rejection over Tartarin that was set forth in the Office action mailed on Jan. 30, 2026 has been reintroduced. Additionally, secondary references to Hei and Wormland have been included in the alternative for further motivation to use ethanol in place of methanol.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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