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/Restriction
Applicant’s election without traverse of Species A, component A1 having formula (1) encompassed by Claims 1-33 in the reply filed on 06/11/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
On page 62, Table 2 is unclear and blurry where part of the text is illegible.
Appropriate correction is required.
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 1-33 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 1-6, 14-18, 24-28, 30 and 31, recite “concentration” ranges of the methyl methacrylate, MA1, MA2, MA3 and/or MB. However, it is unclear what the concentration ranges are calculated with respect to. For example, it is unclear whether the concentration of the methyl methacrylate is calculated with respect to the total parts of all the components in the composition or with respect to the amount of methyl methacrylate in either components A1 and/or component B?
From the Applicant’s examples, it appears that the concentrations of methyl methacrylate are with respect to the total composition and the two different MA and/or MB components (A1) and (B) are calculated with respect of component (A1) containing methyl methacrylate + an unsaturated carbonyl compound and component (B) containing methyl methacrylate + polymerization initiator.
Claims 7-13, 19-23, 29, 32 and 33, are dependent claims which fail to alleviate the issues above.
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.
Claims 1-9, 11-33, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of copending Application No. 19/190,532 (App. No. 19/190,532).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/190,532 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-9, 11-33, App. No. 19/190,532 teaches a composition comprising a methyl methacrylate, a compound (component A) having the formula
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or
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(claim 1), wherein A1 is in a concentration of 10-5000 ppm by mass (claims 2-3) a MW of 200 or less (claim 4), wherein A1 is methyl crotonate (claim 14), and the composition further contains a polymerization inhibitor (component B1) (claim 20), in a concentration of 1-1000 ppm by mass (claim 21), and XB1/XA3 is 0.005 to 1000 (claim 24), the polymerization inhibitor is phenol-based, (claim 25),, and the amount of methyl methacrylate in the composition is 85 mass% or more, (claim 36), and further includes styrene. (claim 38-40).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-11, 14, 15, 26-33, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2000-309601 A to Hinagata et al. (hereinafter Hinagata’601).
Regarding claims 1-11, 14, 15, 26-33, Hinagata’601 teaches a method of producing a methyl methacrylate syrup comprising mixing methyl methacrylate, a chain transfer agent, a (meth)acrylic acid monomer, a polymerization initiator, and polymerizing and adding a hindered phenol-based polymerization inhibitor at the end of polymerization/heating, (See abstract and para 13), wherein the methyl methacrylate is in an amount range of 90-100 wt%, and the (meth)acrylic acid is in an amount range of 0-10 wt% (para 16), which meets the claimed concentration of the MA. Hinagata teaches a mixture of (415+1312=) 1727 g of methyl methacrylate (density 0.936 g/mL), 4.8 g of acrylic acid (72 g/mol), 0.8 g of methacrylic acid (86 g/mol), and 0.60 g of 6-butyl-2,4-dimethylphenol (BX, 178 g/mol), which is polymerized to form the methyl methacrylate syrup. (See Table 1). The above correlates to 99.6 wt% of methyl methacrylate (1.6 L), 0.076 mol of (meth)acrylic acid, and 0.0034 mol of polymerization inhibitor, which further correlates to a concentration of 47500 µmol/L for MA1, 2125 µmol/L of MB.
Claim(s) 1-11, 14, 15, 26-33, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2001-151827 A to Hinagata et al. (hereinafter Hinagata’827).
Regarding claims 1-11, 14, 15, 26-33, Hinagata’827 teaches a method of producing an acrylic syrup comprising mixing methyl methacrylate, a chain transfer agent, a (meth)acrylic acid monomer, a polymerization initiator, and polymerizing and adding a hindered phenol-based polymerization inhibitor at a time when the polymerization/heating is finished, (See abstract and para 16), wherein the methyl methacrylate is in an amount range of 90-100 wt%, and the (meth)acrylic acid is in an amount range of 0-10 wt% (para 16), which meets the claimed concentration of the MA. Hinagata teaches a mixture of (339 g + 849 g + 790 g =) 1978 g of methyl methacrylate, 6 g of acrylic acid, 4 g of methacrylic acid, and 0.60 g of 6-butyl-2,4-dimethylphenol, which is polymerized to form an acrylic syrup. (para 36, See Table 1). The above correlates to a methyl methacrylate solution of 1978 g of methyl methacrylate (density 0.936 g/mL) and 10 g of acrylic acid (72 g/mol) and methacrylic acid (86 g/mol), which is 99.5 wt % of methyl methacrylate (MMA), which meets the concentration of the claimed MMA, and the 0.60 g of 6-butyl-2,4-dimethylphenol (178 g/mol), (polymerization inhibitor), is 3371 µmol in 1.85 L of MMA, (1978 g MMA x 0.936 g/mL = 1.85 L), or a concentration of 1822 µmol/L for MB. Hinagata further teaches the polymerization inhibitor is 2,6-di-t-butyl-4-methylphenol (para 36), which meets claim 10.
Claim(s) 1-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-035947 A to Sumida et al. (hereinafter Sumida).
Regarding claims 1-33, Sumida teaches mixing a mixture of 98.718 wt% methyl methacrylate and 0.908 wt% methacrylate with a mixture of 99.520 wt% methyl methacrylate and 0.480 wt% of 2,4-dimethyl-6tert-butylphenol polymerization inhibitor (para 84), in a weight ratio of 79:1 (para 89). The above correlates to a total composition of (77.99+0.9952=) 78.99 parts of methyl methacrylate, 0.717 parts of methacrylate (85 g/mol), and 0.0048 parts of 2,4-dimethyl-6-tert-butylphenol (178 g/mol) polymerization inhibitor, or 99.1 wt% of methyl methacrylate, which meets the claimed concentration. Sumida further teaches the raw monomer mixture is the alkyl methacrylate is in an amount of 80 wt% or more and the vinyl monomer is 20 wt% or less (para 32), which meets the claimed concentration of MA, and the polymerization inhibitor is in an amount of 10-500 ppm of the polymerization inhibitor containing liquid (para 51), which meets the concentration of MB. The alkyl methacrylate may also be a mixture of 2 or more (para 32).
Claim(s) 1-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,448,354 B1 to Hieda et al. (hereinafter Hieda).
Regarding claims 1-33, Hieda teaches a methyl methacrylate syrup obtained by first mixing an initial charge of 415 g of methyl methacrylate, and 4.8 g of acrylic acid (72 g/mol) (Example 4, Table 1), heating, and then an additional charge of 1312 g of methyl methacrylate, 0.8 g of methacrylic acid (86 g/mol), and 1.5 g of 6-t-butyl-2,4-dimethylphenol (178 g/mol) polymerization inhibitor (See Example 4, Table 1), which correlates to 1727 g (99.7 wt%, 1.63 L) of MMA, 5.6 g (0.32 wt%, 0.0157 mols) of (meth)acrylic acid, and 1.5 g (0.087 wt%, 0.0084 mols) of polymerization inhibitor, which correlates to an MA1 of 9632 µmol/L and a MB of 5153 µmol/L and a MB/MA1 of 0.534, which meets the claimed concentration amounts. Hieda further teaches comonomer used may specifically be methacrylate (Example 9, Table 2), which meets formula (2). Hieda further teaches the syrup is 90 wt% of methyl methacrylate, 10 wt% of a monomer mixture of mainly methyl methacrylate and a monomer, and 0.001-1 wt% of polymerization inhibitor, which meets the claimed concentrations.
Conclusion
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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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