DETAILED ACTION
The examiner assigned to the current application has been changed. The new examiner's name and contact information are stated at the end of this 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
Applicant’s election of Group I, claims 1-15 and 20, in the reply filed on Jun. 10, 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on Jun. 10, 2026.
Claim Rejections – 35 U.S.C § 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.
Claims 1-13, 15, and 20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 and 20 recite methods “for reducing” the formation of polymer in a composition. The term “reducing” is a relative term because it requires a comparison to another method composition which produces a different amount of polymer. However, the claim does not provide such a point of comparison by which to judge the scope of the term. Because the claims do not set forth what the formation of polymer is reduced relative to, the claims do not set forth the scope of the recited “reducing” with reasonable clarity.
Claims 2-13 are ultimately dependent on independent claim 1, and they are indefinite for the same reason.
Claim 6 recites “The method of claim 5, claims wherein formula … “ at the beginning of the claim. The claim does not set forth the meaning of the second instance of the word “claims” with reasonable clarity.
Claim 6 recites four Markush groups of hydroxylamine compounds, each containing mutually exclusive chemical structures. The recited Markush groups are not recited in the alternative, and therefore the claim requires that the hydroxylamine compound be according to all of the four mutually exclusive groups of compounds. Because the recited hydroxylamine compounds cannot have multiple and mutually exclusive structures simultaneously, the claim does not set forth the scope of the recited hydroxylamine compounds with reasonable clarity.
Claim 12 refers to the method of claim 11 and includes a reference to “the one or more hydrocarbons”. Base claim 11 recites “one or more hydrocarbon components”.
Because the cited limitation of claim 12 refers to a hydrocarbon rather than to the hydrocarbon component that is recited in base claim 11, the cited limitation of claim 12 lacks proper antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 15 recites limitations directed to percentages by which polymerization is reduced, which are the broader recitations, and the claim also recites the limitation “such as up to about 90 % or greater” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by the narrower “such as” language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claim 6 depends upon claim 5 which in turn requires a moiety that comprises an aryl group. Claim 6 recites the following chemical names:
N,N-bis(6-hexyl-propyl)- hydroxylamine;
N-(6-hexyl2-hydroxyl--propyl)-hydroxylamine; and
N,N-bis(6-hexyl2- hydroxyl--propyl)-hydroxylamine.
None of these three chemical names includes an aryl group, and therefore these chemical names do not specify a further limitation of the subject matter claimed in base claim 5. Claim 6 thereby fails to comply with the first sentence of 35 U.S.C. § 112(d).
Claim Rejections – 35 U.S.C. § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7, 10, 14-15, and 20 are rejected under 35 U.S.C. §§ 102(a)(1) and 102(a)(2) as being anticipated by US 6,706,209 B1 (herein “Scharf”).
As to claims 1-4, 7, 10, 14-15, and 20: Scharf describes a method (see Comparison Example 2 at col. 8, ll. 51-61) comprising adding 500 ppm of N,N-diethylhydroxylamine and 500 ppm of 2-methyl-1,4-naphthoquinone to 2-hydroxyethyl acrylate (see col. 8, l. 21). The composition is subjected to distillation (see col. 8, ll. 20-21 and 58).
Because Scharf’s composition includes the same components that are presently recited and disclosed as being inhibitors, there is a reasonable basis to conclude that it results in a reduction in the formation of polymer relative to a (hypothetical) composition that does not include these inhibitors for the same reason that the inhibitors result in a reduction in the formation of polymer in the presently disclosed method.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 1-4, 7-9, 13-15, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2023/0151221 A1 (herein “Kumru”).
As to claims 1-4, 7, 14-15, and 20: Kumru describes resin systems comprising a resin component and a hardener component; the resin component contains at least one radically curable compound (see ¶ [0040]). The resin component also contains an inhibitor both for the storage stability of the reaction resin and the resin component and for adjusting the gel time (see ¶ [0095]). The inhibitors are preferably selected from phenolic compounds and non-phenolic compounds (see ¶ [0096]). The combination of the phenolic and the non-phenolic inhibitors allows a synergistic effect (see ¶ [0103]).
Kumru discloses several examples of phenolic inhibitors (see ¶ [0097]) including naphthoquinone (see the end of ¶ [0097]) among others, and Kumru discloses several examples of non-phenolic inhibitors (see ¶¶ [0098]-[0102]) including diethylhydroxylamine (see ¶ [0099]) among others.
Kumru does not specifically disclose an embodiment that includes both naphthoquinone and diethylhydroxylamine.
In light of Kumru’s disclosure that a combination of phenolic and non-phenolic inhibitors allows a synergistic effect, one of ordinary skill in the art would have been motivated to use one of Kumru’s phenolic inhibitors in combination with one of non-phenolic inhibitors to achieve a synergistic effect. In light of Kumru’s disclosures of suitable phenolic and non-phenolic inhibitors, one of ordinary skill in the art would have been motivated to use any of Kumru’s suitable phenolic and non-phenolic inhibitors, including naphthoquinone and diethylhydroxylamine. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added both of the inhibitors naphthoquinone and diethylhydroxylamine to Kumru’s resin systems.
As to claim 8: Kumru further discloses several polymerizable monomers including acrylic acid, styrene, and others (see ¶¶ [0055] and [0065]).
As to claim 9: Kumru further discloses several additives (see ¶ [0085]) including non-reactive diluents (solvents) such as xylenes or toluene. Kumru does not specifically disclose an embodiment of a composition including xylenes or toluene.
In light of Kumru’s disclosure of suitable additives including non-reactive diluents, one of ordinary skill in the art would have been motivated to make Kumru’s compositions including any of the disclosed non-reactive diluents, including xylenes or toluene. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made Kumru’s compositions including xylenes or toluene.
As to claim 13: As set forth above, Kumru discloses that the resin component contains an inhibitor both for the storage stability of the reaction resin (see ¶ [0095]). Kumru does not specifically disclose an embodiment comprising storing the composition.
In light of the disclosure in Kumru that the resin component contains an inhibitor both for the storage stability of the reaction resin, one of ordinary skill in the art would have been motivated to include the inhibitor and stored the reaction resin. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have performed a step of storing Kumru’s compositions that include inhibitors.
Claims 1, 5-8, 13-15, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over the Dissertation “Hydroxylamine-based inhibitors of auto-initiated styrene polymerization” (herein “Baldassarri”) in view of US 2020/0102408 A1 (herein “Masere” or US 2023/0151221 (herein “Kumru”).
A copy of Baldassarri is attached to the Information Disclosure Statement submitted on Oct. 21, 2024.
As to claims 1, 5-8, 14-15, and 20: Baldassarri describes the inhibition mechanism of a mixture of N,N-dibenzylhydroxylamine (DBHA) and 2,5-di-tert-butyl-1,4-benzoquinone (2,5-DTBBQ) towards auto-initiated styrene polymerisation. The DBHA/2,5-DTBBQ mixture shows synergism (see the first two paragraphs of the abstract and section 6.2, and see Fig. 6.1).
Baldassarri does not disclose the presently recited naphthoquinone.
Masere describes compositions for inhibiting polymerization of a monomer composition (see the abstract). Masere describes several aminated quinone antipolymerants including 2-amino,1,4-naphthoquinone, among others (see ¶ [0044]) and several polymerizable monomers including acrylic acid, among others (see ¶ [0067]).
Kumru describes resin systems comprising a resin component, a hardener component; and an inhibitor both for the storage stability of the reaction resin and the resin component and for adjusting the gel time (see ¶ [0095]). The inhibitors are preferably selected from phenolic compounds and non-phenolic compounds (see ¶ [0096]). The combination of the phenolic and the non-phenolic inhibitors allows a synergistic effect (see ¶ [0103]). Kumru discloses several examples of phenolic inhibitors (see ¶ [0097]) including naphthoquinone (see the end of ¶ [0097]) among others.
Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B).
In the present case, it is evident from the discussion above that Baldassarri describes a method which differs from the claimed method by the substitution of the presently recited naphthoquinone for the benzoquinone compound described in Baldassarri. In light of either of Masere or Kumru, it is evident that the substituted components (naphthoquinones) and their functions as polymerization inhibitors were known in the art. One of ordinary skill in the art could have substituted any of the naphthoquinone compounds of either of Masere or Kumru into the compositions of Baldassarri by ordinary substitution and mixing according to the procedure of Baldassarri, and the results of the substitution (an alternative inhibitor composition) would have been predictable.
In light of this discussion, it is apparent that the presently claimed invention is arrived at by simple substitution of one known element for another to obtain predictable results. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have substituted any of the naphthoquinone compounds of either of Masere or Kumru for the benzoquinone compound in the Baldassarri, thereby arriving at the presently claimed invention.
As to claim 10: The examiner has calculated that Baldassarri’s compositions (section 6.2 at the bottom of p. 162) include about 220 ppm by weight of the benzoquinone inhibitor and about 280 ppm by weight of the hydroxylamine inhibitor. As set forth above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted any of the naphthoquinone compounds of either of Masere or Kumru for the benzoquinone compound in the Baldassarri.
As to claim 13: Baldassarri further discloses holding the composition at 110 °C (section 6.2 at the bottom of p. 162), and this is a step of storing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
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