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 .
Priority
The instant application claims priority as follows:
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Receipt of amendments and arguments filed on May 21, 2026 is acknowledged. Claims 1-10 are currently pending.
Claims 6-10 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 12/05/2025.
Claims 1-5 are the subject of this Office action. The claim amendments necessitated the new grounds of rejection presented in this Final Office action.
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) 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakawaki et al. (JPH07118251A- cited by Applicant-Google translation provided by the examiner).
The prior art teaches a method for reducing the content of a quaternary ammonium salt to 1ppm or less in a composition containing glycidyl acrylate or glycidyl (meth)acrylate and a phenolic polymerization inhibitor.
The glycidyl (meth)acrylate produced in the process of the reference contains a quaternary ammonium salt, epichlorohydrin, 1,3-dichloro-2-propanol by-product, and a phenolic polymerization inhibitor. See whole document, particularly paragraph [0007]. Nakawaki disclosed that the distillation of the reaction mixture does not sufficiently remove the quaternary ammonium salt catalyst, causing an expoxy exchange reaction between 1,3-dichloro-2-propanol and the product glycidyl (meth)acrylate, thereby producing epichlorohydrin. However, the reference describes that the remaining quaternary ammonium salt can be removed with a silica-alumina adsorbent. See paragraph [0007] translated with Google lens:
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Thus, in one of the aspects of the reference, (1) after the reaction is complete, excess epichlorohydrin is removed by distillation, followed by a silica-alumina adsorbent treatment to remove the quaternary ammonium salt, and (2) a distillation step. See at least paragraphs [0008-0011] and the examples where removal achieved 1ppm or less.
By reducing the content of the quaternary ammonium salt to 1ppm or less it is possible to suppress the deactivation of the phenolic polymerization inhibitor. This is disclosed in at least paragraph [0038] of this application.
Regarding claims 2 and 3, the prior art teaches that the quaternary ammonium salts used as the catalyst are tetramethylammonium chloride, tetraethylammonium chloride, tetrabutylammonium chloride, trimethyethyllammonium chloride, trimethylbenzylammonium chloride, triethylmethylammonium chloride, and triethylbenzylammonium chloride (see para [0013]).
Regarding claim 4, the prior art teaches that the polymerization inhibitor is phenothiazine, hydroquinone, hydroquinone monomethyl ether, N,N’diphenylparaphenylenediamine, and the like (see para [0014]).
Applicant’s arguments were carefully considered but were found unpersuasive.
Applicant argues that the claim method has been amended to further recite “combining a crude glycidyl (meth)acrylate containing 1,3-dichloropropanol with a quaternary ammonium salt to obtain a purified glycidyl (meth)acrylate composition” and that Nakawaki does not disclose this. The examiner cannot agree. In the rejection above the examiner has explained how Nakawaki discloses what is currently claimed.
Applicant argued that the removal of the 1,3-dichloropropanol impurity from crude glycidyl (meth)acrylate is important because its presence causes problems. In response, this was also taught by Nakawaki as above.
Applicant states the following:
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In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the reason why Nakawaki included a step of treatment with a silica-alumina adsorbent was to prevent the inclusion of epichlorohydrin in the product. Applicant states that in Nakawaki, the quaternary ammonium salt is removed prior to the distillation step; allegedly, before refining the crude glycidyl (meth)acrylate. The examiner cannot agree because, the reference discloses that, (1) after the reaction is complete, excess epichlorohydrin is removed by distillation, followed by a silica-alumina adsorbent treatment to remove the quaternary ammonium salt, and (2) a distillation step. See at least paragraphs [0008-0009].
Applicant finally argues that amended claim 1 recites adding the salt while Nakawaki requires its removal. In response, the claims recite combining a crude glycidyl (meth)acrylate containing 1,3-dichloropropanol, with a quaternary ammonium salt; which combination occurs during Nakawaki’s production method of glycidyl (meth)acrylate. The claims do not recite addition of the quaternary ammonium salt in the purification step.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 1-5 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.
Claim 1 now recites “combining a crude glycidyl (meth)acrylate containing 1,3-dichloropropanol, with a quaternary ammonium salt, to obtain a purified glycidyl (meth)acrylate composition”, and adjusting a content “in the purified glycidyl (meth)acrylate composition”. It is unclear what is encompassed by the claim because no purification appears to be required, however, the claim subsequently refers to “the purified glycidyl (meth)acrylate composition”. A purification step was not included in the claim. Purification in chemistry is a process used to isolate and refine components of a mixture. The combination of materials in a composition does not bring about purification.
Claims 2-5 are rejected for containing the same issue.
Conclusion
Claims 1-5 are rejected. No claim is in condition for allowance.
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 VALERIE RODRIGUEZ-GARCIA whose telephone number is (571)270-5865. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VALERIE RODRIGUEZ-GARCIA/ Primary Examiner, Art Unit 1621
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