DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/4/26. In particular, claims 1 and 11 have been amended to require the quaternary ammonium salt to be present in 30 ppm or less and the ratio of strong acid salt to quaternary ammonium salt to be 0.5 to 3.
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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 § 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) 1-4, 6-7, 9-14, 16-17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 20061933449 (herein Atsushi).
In setting forth the instant rejection, a machine translation has been relied upon.
Note that the JP document was supplied with the IDS filed 10/12/23 and the machine translation is supplied with the instant action.
As to claim 11-14, 16-17 and 20, Atsushi discloses a glycidyl methacrylate (GMA) composition. See abstract, paragraph 11-13 and examples. The composition comprises glycidyl methacrylate (GMA) that is prepared, a polymerization inhibitor (phenol such as inhibitor 2,2'-methylenebis(6-t-butyl-4-methylphenol), which are phenolic, see paragraph 14, 31 and examples), a quaternary ammonium salt such as tetramethylammonium chloride (see paragraph 12 and examples), and a strong acid salt, specifically sodium p-toluenesulfonate thereto (see paragraph 9, 26 and examples). The sodium p-toluenesulfonate is present in 0.4 g and the tetramethylammonium chloride is present in 0.2 g in example 1. Since the molecular weight of the two are 194 and 109 respectively, the molar ratio is about 1.1 (0.002/0.0018) and within the claimed range. Further, the broader disclosure teaches that the ratio is 1 to 3 equivalents. See paragraph 26.
The quaternary ammonium salts are present in 0.001 to 1% per crude GMA (glycidyl methacrylate), and lower amounts are preferred for economic reasons. See paragraph 17. The range of 0.001 to 1% correlates to 10 ppm to 10,000 ppm, which overlaps the claimed range of 30 ppm or less. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further, one would have been motivated to use to lower end of the range (e.g. below 30 ppm) as to reduce cost. See paragraph 17.
As to claims 1-4, 6-7 and 9-10, as elucidated above, Atsushi discloses the same composition. Further, the examples of Atsushi show a method of adding a strong acid salt (sodium p-toluenesulfonate) to a glycidyl (meth)acrylate composition comprising the same quaternary salt (tetramethylammonium chloride). See example 1. The sodium p-toluenesulfonate is present in 0.4 g and the tetramethylammonium chloride is present in 0.2 g in example 1. Since the molecular weight of the two are 194 and 109 respectively, the molar ratio is about 1.1 (0.002/0.0018) and within the claimed range. Further, the broader disclosure teaches that the ratio is 1 to 3 equivalents. See paragraph 26.
The quaternary ammonium salts are present in 0.001 to 1% per crude GMA (glycidyl methacrylate), and lower amounts are preferred for economic reasons. See paragraph 17. The range of 0.001 to 1% correlates to 10 ppm to 10,000 ppm, which overlaps the claimed range of 30 ppm or less. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further, one would have been motivated to use to lower end of the range (e.g. below 30 ppm) as to reduce cost. See paragraph 17.
While Atsushi does not explicitly state that the strong acid salt suppresses deactivation of the inhibitor, a phenolic polymerization inhibitor and the strong acid salt is the same (e.g. sodium p-toluenesulfonate), which is added in the same amounts as claimed (1 to 3 equivalents). See examples. Therefore, it is reasonable to conclude that the same chemicals would have the same properties and suppression, since the suppressing deactivation of the phenolic polymerization inhibitor would naturally flow from having the same inhibitor and strong acid salt in the same amounts.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 20061933449 (herein Atsushi) in view of US 5,527,927 (herein Kurokawa).
The discussion set-forth above with respect to Atsushi is incorporated herein by reference.
As to claims 8 and 18, Atsushi discloses that the inhibitors are phenolic. See paragraph 14.
Kurokawa discloses similar methods and compositions. See abstract and examples. Kurokawa discloses that the inhibitor is p-methoxyphenol (phenolic polymerization inhibitor). See examples.
It would have been obvious at the time of the invention to have modified the process/composition of Atsushi with the specific inhibitor p-methoxyphenol as taught by Kurokawa because one would want to utilize typical inhibitors taught as suitable for similar processes and compositions.
Allowable Subject Matter
Claims 5 and 15 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.
Response to Arguments
Applicant's arguments filed fully considered but they are not persuasive.
First, note that the rejections over Atsushi have been amended to reflect the amendments. Specifically, Atsushi teaches a range that overlaps the claimed range.
Applicant argues that Atsushi are composition refining a crude GMA and that the compositions do not enable stable storage for a long period.
In response, the compositions and method are identical. The claim does not exclude crude GMA, storing the composition is not claimed, and any deactivation suppression would naturally flow from the Atsushi composition/method.
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 MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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