DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant's election with traverse of Group I, and species of 3-
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in the reply filed on April 1, 2026 is acknowledged. The traversal is on the ground(s) that the claims are linked by a special technical feature, which is the mixture of claim 16. This argument has been considered, however, it is not found to be persuasive. Claim 16 is generic to a core structure of 3-pyrazole and also to a polymerizable compound. Moreover, the claims were rejected under prior art in this office action.
The requirement is still deemed proper and is therefore made FINAL.
3. Examination followed guidelines provided by MPEP 803.02. The elected species was obvious over the prior art. Therefore, the Markush claims were rejected and nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species.
4. Claims 27-30 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter. Applicant timely traversed the restriction (election) requirement in the reply filed on January 8, 2026.
Status of Claims
5. Claims 16-30 are pending. Claims 16-26 are elected. Claim 16 is independent.
Priority
6. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
7. The information disclosure statements (dated November 3, 2023 and November 21, 2023) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
8. Claim(s) 16-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2007063031 (see also machine translation of the reference). The reference has a publication date of 2007 which antedates the present claims having an effective filing date of April 11, 2022 and priority claim to foreign application dated April 20, 2021.
Determining the scope and contents of the prior art
The reference teaches mixtures of polymerizable compounds and stabilizers that inhibit polymerization. Paragraph [0003] of machine translation. The reference teaches that these inhibitors are, for example, acrylic acid and methacrylic acid as their esters. Paragraph [0007] machine translation. The polymerizable compounds are ethylene-unsaturated compounds or mixtures thereof, including the compounds of structure
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, wherein W, X and Y are H, NR1R2, OR3, C1-20 alkyl, C2-20 alkenyl, halogen. Machine translation paragraph [0006], abstract.
Specific embodiments include various compounds such as
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(Example 6, page 19) which correspond to the core structure of the present claims of 4-hydroxy pyrazole and variable R5 of alkyl of the present claims.
Specific embodiments include various compounds such as
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(Example 11, page 21) which corresponds to variable R1 being C1-6 alkyl of the present claims.
Specific embodiments include various compounds such as
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(Example 19, page 24) which corresponds to variable R2 of alkyl of the present claims.
Ascertaining the differences between the prior art and the claims at issue
The difference between the prior art and the present claims including the elected species is the specific substituent to the pyrazole ring.
Resolving the level of ordinary skill in the pertinent art - considering objective evidence present in the application indicating obviousness
MPEP 2143 B provides basic requirements of prima facie case of obviousness including examples of rationale of the simple substitution of one known element for another to obtain predictable results. To reject a claim based on this rationale the following is considered below and applied to the present claims:
A finding that the prior art method differs from claimed method by the substitution of some component with another component
WO2007063031 does not teach the specific substituents of the elected species.
A finding that the substituted components and their functions were known in the art
WO2007063031 teaches generically the claimed substituent corresponding to the elected species of R1=methyl, R2=ethyl; R3=methyl; 4-hydroxy; R5=methyl. The reference further teaches specific embodiments containing these substitutions.
a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable
One of ordinary skill has the knowledge that the variables to the core pyrazole ring are substituents that predictably lead to the compounds that are polymerization inhibitors.
Paragraph [0098] teach total amount of inhibitor compound that is 0.1% of the weight based on the total amount of polymerizable compounds – corresponding to claim 21.
Moreover, the optimization of amounts is within routine experimentation – corresponding to claims 22, 24, and 26.
For the reasons provided above, the present claims to the elected species are found to be prima facie obvious over the prior art.
Double Patenting
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.
9. Claims 16-26 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14, 17-23 and 27-32 of copending Application No. 17,780,573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons provided below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Determination of Scope and Contents of the Copending Application
The claims are drawn to a mixture comprising one or more compounds of general formula (II)
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Embodiments of the compounds of Formula II include, for example,
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(page 64)
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(page 66).
Ascertaining the differences between claims of patent and claims at issue
The difference between the claims of the copending application and the present claims including the elected species is the specific substituent to the pyrazole ring.
Resolving the level of ordinary skill in the pertinent art - Prima Facie Case of
Obviousness
MPEP 2144.08.11.A.4(c) states "...consider teachings of a preferred species within the
genus. If such a species is structurally similar to that claimed, its disclosure may
motivate on of ordinary skill in the art to choose the claimed species or subgenus from
the genus, based on the reasonable expectation that structurally similar species usually
have similar properties." This is a "Genus-Species Guidelines” for the examination
based on 35 USC 103. An analogous guideline was followed here for the analysis of
obviousness type double patenting, moreover, the following guidelines of MPEP 2143 B.
MPEP 2143 B provides basic requirements of prima facie case of obviousness including examples of rationale of the simple substitution of one known element for another to obtain predictable results. To reject a claim based on this rationale the following is considered below and applied to the present claims:
A finding that the prior art method differs from claimed method by the substitution of some component with another component
The specific embodiments of the copending application does not teach the specific substituents of the elected species.
A finding that the substituted components and their functions were known in the art
The copending application generically the claimed substituent corresponding to the elected species of R1=methyl, R2=ethyl; R3=methyl; 4-hydroxy; R5=methyl. The copending application further teaches specific embodiments containing these substitutions.
a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable
One of ordinary skill has the knowledge that the variables to the core pyrazole ring are substituents that predictably lead to the compounds that are polymerization inhibitors.
Claims 18-21 are directed to the amount of inhibitor corresponding to claims 21, 22, 24, and 26.
For the reasons provided above, the present claims to the elected species are prima facie obvious over the claims of the copending application.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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