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 .
Election/Restrictions
Claims 16-25, 29, and 31-32 are directed to a product and method of making which are free from the art. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 26-28 and 30, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 4/6/2026 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Status
Claims 16-24 were amended and claims 31-32 were newly added in the response filed 9/17/2026. Claims 16-32 are pending and under examination.
Withdrawn Claim Objections and Rejections
The amendments to the claims are persuasive to overcome the claim objections and 35 USC 112(b) rejections of record on p. 3-4 of the OA dated 5/18/2026.
The Applicant amended independent claim 16 to recite that “the at least one aromatic peroxide is present in the composition at a concentration ranging from 70 to 99.9%”. This amendment is persuasive to overcome the 35 USC 102 and/or 35 USC 103 rejection over:
Blumbergs (US 3248336, published on 4/26/1966, of record in the IDS filed on 10/4/2023);
Arkema (Materials Safety and Data Sheet (MSDS), issued 1/2/2007, of record in the IDS filed on 10/4/2023 as NPL Cite. No. 1); and
Harris (US 3214496, published on 10/26/1965) in combination with Marks (US 2109595, published on 3/1/1938, of record in the IDS filed on 10/4/2023)
On p. 4-14 of the OA dated 5/18/2026.
The references teach or suggest the weight ratio of the hydrogen peroxide to the aromatic peroxide comprised between 1:20000 and 1:40. However, the references only teach dilute concentrations of aromatic peroxide which do not fall close to the claimed concentration range of 70 to 99.9%. Blumbergs teaches a concentration of 1.22 to 11.27 wt%; Arkema teaches a concentration of 44%; Harris teaches a catalyst system comprising 0.005-0.01 part by weight of hydrogen peroxide; 0.01-0.1 part by weight of a peroxy compound having a half-life of at least 10 hours in benzene at 100° 0.05-1 part by weight of a monocarboxylic acid having a dissociation constant not higher than 1.0 x 10-4 at 25°C in 100 parts by weight of a polymerizable material; and Marks teaches the mixture of the present invention when the mixture includes benzoyl peroxide from 0.05 to 0.5 part together with hydrogen peroxide from 1.5 to 0.5 part in 100 parts of a monomer, and 200 to 2000 parts of water. Also see p. 8-11 of the response. Nor does there appear to be motivation to modify the prior art compositions to arrive at that claimed. Therefore, the claimed compositions appear to be free from the prior art.
The amendments to claim 1 are also persuasive to overcome the provisional non-statutory double patenting rejection over co-pending application number 18/295733 (‘733) on p. 15-16 of the OA dated 5/18/2026. Therefore, this rejection is withdrawn.
Maintained Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-36 of co-pending Application No. 18/285720 (‘720, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they claim a composition which shares significant overlap with that claimed. Claims 19-25 require an aromatic peroxide of claims 16-21 and ketone peroxide of claim 23 and claim 28 of ‘720 further requires hydrogen peroxide. Further regarding claims 22 and 24, see claims 29-30 of ‘720. Regarding claims 25 and 29, claim 31 of ‘720 further teaches a method of preparation analogous to that claimed and claim 35 of ‘720 teaches that the composition is for improving the colour stability and/or decreasing the APHA value of one aromatic peroxide, the same intended use as claimed. Though the claims of ‘720 do not explicitly recite the claimed weight ratio of hydrogen peroxide to aromatic peroxide, the claimed ratio falls within the broader range of ‘720 as evidenced by p. 16-18 of the ‘720 specification. Further, independent claim 1 recites that compositions comprising 70-99.9% of aromatic peroxide and hydroxide peroxide can possess the claimed weight ratios. See MPEP 804(II)(B)(1) and MPEP 2144.05. Further regarding claims 26-28 and 30, see claims 32-24 and 36 of ‘720.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Though the rejection over ‘720 is a provisional rejection and the only rejection remaining the application, the instant application and ‘720 share the same patent term filing date (4/7/2022). Therefore, “if both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome”. See MPEP 804(I)(B)(1)(b)(ii).
Response to Arguments on p. 12 of the OA dated 9/17/2026
The Applicant argues that claims 19-36 of the ‘720 application fail to teach that the aromatic peroxide is present in the composition at a concentration range from 70 to 99.9% by weight. This argument has been fully considered but is not persuasive. Claim 19 of ‘720 recites that the “aromatic peroxide is present in said composition at a concentration ranging from 30 to 99.9% by weight relative to the total weight of the composition”. The range of 30-99.9% encompasses the range of 70-99.9%. Therefore, the claims of ‘720 render the instant claims prima facie obvious. Also see MPEP 2144.05.
Subject Matter free from the Prior Art
Claims 16-32 appear to be free from the prior art. The closest prior art is that of record and the claims are distinguished from the closest prior art for the reasons set forth above.
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 AMY C BONAPARTE whose telephone number is (571)272-7307. The examiner can normally be reached 11-7.
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, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMY C BONAPARTE/ Primary Examiner, Art Unit 1692
Prosecution Insights