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 Interpretation
While it is noted that “strong” in “strong acid salt” is a relative term, the originally filed specification at paragraph 30 defines strong acid salt as an acid salt that can suppress deactivation of the phenolic polymerization inhibitor.
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.
Claims 8 and 18 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.
Claims 8 and 18 contain the trademark/trade name Tropanol A. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe (2-(tert-butyl)-4,6-dimethyphenol) and, accordingly, the identification/description is indefinite. While there is a compound in parenthesis, it is still unclear whether the chemical is an example or the same.
Replacing “Topanol A ((2-(tert-butyl)-4,6-dimethyphenol)” with “(2-(tert-butyl)-4,6-dimethyphenol” will overcome the instant rejection.
Claim Rejections - 35 USC § 102
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) 1-4, 6-14 and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,527,927 (herein Kurokawa).
As to claims 11-14 and 16-20, Kurokawa discloses a glycidyl (meth)acrylate composition comprising a glycidyl (meth)acrylate composition comprising glycidyl (meth)acrylate, polymerization inhibitor, a catalyst of a quaternary ammonium salt of formula II of Kurokawa and catalyst deactivator SB salt, wherein S is an acid such as sulfonic acid and B is an alkali metal. See abstract, col. 3, line 20 through col. 4, line 46 and examples. Specifically see example 4 wherein the composition comprises glycidyl methacrylate (note that this is prepared in the first step), p-methoxyphenol (phenolic polymerization inhibitor of claim 18), tetraethylammonium chloride (reading on the quaternary ammonium salt of claims 16-17) in 8.5 mmol and sodium p-toluenesulfonate (reading on the strong acid salt of claims 12-14) in 51 mmol. Note that the strong acid salt is present in 6 equivalents, which is greater than the 0.5 equivalents or more of claim 19).
As to claims 1-4 and 6-10, Kurokawa discloses a method of adding a strong acid salt (SB of Kurokawa) to a glycidyl (meth)acrylate composition as discloses above for claim 11. See abstract, col. 3, line 20 through col. 4, line 46 and examples. Specifically, Kurokawa discloses a glycidyl (meth)acrylate composition comprising a glycidyl (meth)acrylate composition comprising glycidyl (meth)acrylate, polymerization inhibitor, a catalyst of a quaternary ammonium salt of formula II of Kurokawa and catalyst deactivator SB salt, wherein S is an acid such as sulfonic acid and B is an alkali metal. See abstract, col. 3, line 20 through col. 4, line 46 and examples. Specifically see example 4 wherein the composition comprises glycidyl methacrylate (note that this is prepared in the first step), p-methoxyphenol (phenolic polymerization inhibitor of claim 18), tetraethylammonium chloride (reading on the quaternary ammonium salt of claims 16-17) in 8.5 mmol and sodium p-toluenesulfonate (reading on the strong acid salt of claims 12-14) in 51 mmol. Note that the strong acid salt is added in 6 equivalents, which is greater than the 0.5 equivalents or more of claim 19).
While Kurokawa does not explicitly state that the strong acid salt suppresses deactivation of the inhibitor, the inhibitor is the same (p-methoxyphenol) and the strong acid salt is the same (e.g. sodium p-toluenesulfonate), which is added in the same amounts as claimed (more than 0.50 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) 1-4, 6-7, 9-14, 16-17, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 19-20, 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.
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.
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 (more than 0.50 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.
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.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764