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 .
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 8-16, 18, 19, and 32 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2000122291).
The reference discloses the compounds 3-iodo-4-hydroxystyrene and 3-iodo-4-tert-butoxycarbonyl oxystyrene (0036). The reference also discloses a random copolymer of 3-iodo-4-hydroxystyrene/4-hydroxystyrene [0070], and tert-butoxycarbonyl oxystyrene/3-iodo-4-hydroxystyrene [0073]. The copolymer mixtures disclosed by the reference do not include any of the impurities recited in the instant claims. The copolymer compositions are used to form a coating film that generates an acid upon irradiation, thereby making the units from the compounds a highly sensitive resist material [0060]. This disclose anticipates the instant claims.
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.
Claim(s) 20-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000122291 in view of Mowry et al. (Central Research Laboratories, 1946) in view of Pearson et al. (Vanderbilt University, 1958).
The instant claims are drawn to a method for producing an iodine-containing vinyl monomer, by dehydration of an iodine-containing alcohols substrate; reduction of a ketone substrate to the alcohol-containing substrate; an iodine introduction step of introducing an iodine atom to the alcohol or ketone substrate; a step comprising an acylation reaction.
The ’291 reference teaches iodine-containing styrene derivatives; however, the reference does not teach the claimed method for making such derivatives (i.e., vinyl compounds). However, Mowry et al. teach a process for producing vinyl aromatic compounds, i.e., styrenes, by first, acetylation of alkylbenzene to produce an aryl methyl ketone; reduction of the ketone to product an aromatic carbinol; dehydration of the carbinol to produce a corresponding vinyl aromatic compound (pages 1107-1108).
Pearson et al. teach the nuclear halogenation of aromatic aldehydes and ketones. Specifically, Pearson et al. teach that aromatic ketones may undergo iodination using iodine monochloride with aluminum chloride, specifically producing m-iodoketones (p. 1414).
The instant claims are rendered obvious in view of the combined reference teachings, as the process steps recited in the claims are a combination of steps, known in the art for making halogenated vinyl aromatic compounds, combined in a manner that produces predictable results.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claim 31 is drawn to a method for preparing an iodine-containing vinyl monomer comprising a series of steps and reagents not taught or fairly suggested by prior art.
Claims 6 and 7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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