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 .
Claims filed 10/25/2023 are made of record. Claims 1-19 are currently pending in the application.
Information Disclosure Statement
It is noted that IDS filed 2/20/2024 is a duplicate of IDS filed on 1/23/2024. Hence, a line is put through the listing of references in IDS filed 2/20/2024 and considering only those that are listed in IDS filed 1/23/2024.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to methyl methacrylate-containing composition, classified in C07C67/62.
II. Claims 18-19, drawn to method of producing a methyl methacrylate polymer, classified in C08F120/14.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, methyl methacrylate-containing composition of group I can be used as a reactant in the presence of polymer to form a graft or block copolymer.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries); and (c) the prior art applicable to one invention would not likely be applicable to another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Toyomi Ohara on 4/27/2026 a provisional election was made with traverse to prosecute the invention of group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 102/103
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Loversidge et al (US 3,356,663).
Regarding claims 1 and 13, Loversidge et al disclose stabilization of acrylic or methacrylic esters using a 4-alkoxyphenol and carrying substituents on one or both of 2 and 6 positions, a secondary or tertiary alkyl group containing at least 4 carbon atoms (col. 1, lines 14-18). The preferred 4-alkoxyphenols include 2-secondary-butyl-4-methoxyphenol (col. 2, lines 8-11) which reads on component A of formula I, wherein R1 = hydroxy group, R4 = alkoxy group, R6 = an alkyl group, and R7 = hydrogen atom in present claim 1. The substituted 4-alkoxyphenols are especially advantageous when the monomer is methyl methacrylate (col. 2, lines 52-54) which reads on the composition comprising methyl methacrylate in present claim 1.
Loversidge et al fail to disclose a composition comprising presently claimed amount of methyl methacrylate.
However, Loversidge et al teach that proportion of the stabilizer to be used is in a range of 0.25 to 100 parts by weight per million parts by weight of the monomer (i.e., about 0.00025 to 0.1% by weight). Proportions below the said range may provide a useful improvement in stability in some cases. Proportions above the said range may be used when extremely high storage stability is required (col. 2, lines 41-47). Therefore, it is the Office’s position that amount of methyl methacrylate of about 99.9 mass% in the composition is implicit based on the amount of stabilizer (i.e., reads on the amount of methyl methacrylate in present claims 1 and 13) or alternatively it would have been obvious to one skilled in art prior to the filing of present application to optimize the amount of stabilizer and consequently the amount of methyl methacrylate depending on the storage stability desired based on the teachings in Loversidge et al.
Regarding claim 4, it is noted that 2-secondary-butyl-4-methoxyphenol has a molecular weight of about 180 g/mol (i.e., reads on the molecular weight of component A in present claim 4).
Regarding claim 14, methyl methacrylate composition of Loversidge et al does not include diacetyl (i.e., reads on concentration of 55 μmol/L or less which incldues zero).
Regarding claims 15-17, Loversidge et al teach that preferred 4-alkoxyphenols include 2-secondary-butyl-4-methoxyphenol (col. 2, lines 8-11) which reads on component A of formula I, wherein R1 = hydroxy group, R4 = C1-alkoxy group, R6 = C1-alkyl group, and R7 = hydrogen atom in present claims 15 and 16; R1 = hydroxy group, R4 = methoxy group, R6 = methyl group, and R7 = hydrogen atom in present claim 17.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Loversidge et al (US 3,356,663).
The discussion with respect to Loversidge et al in paragraph 18 above is incorporated here by reference.
Loversidge et al are silent with respect to the concentration of component A.
However, Loversidge et al teach that proportion of the stabilizer to be used is in a range of 0.25 to 100 parts by weight per million parts by weight of the monomer (i.e., about 0.00025 to 0.1% by weight). Proportions below the said range may provide a useful improvement in stability in some cases. Proportions above the said range may be used when extremely high storage stability is required (col. 2, lines 41-47). Therefore, it would have been obvious to one skilled in art prior to the filing of present application to optimize the stabilizer amount to any value including a concentration of 1 to 10,000 μmol/L as in present claim 2 and 10 to 5,000 μmol/L as in present claim 3, absent evidence to the contrary.
Claims 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Loversidge et al (US 3,356,663) in view of Martan et al (US 2004/0236143 A1).
The discussion with respect to Loversidge et al in paragraph 18 above are incorporated herein by reference.
Loversidge et al are silent with respect to species of inhibitor; concentration of polymerization inhibitor (component B), MB/MA (concentration of the component B / concentration of the component A).
However, regarding species of inhibitor, Martan in the same field of endeavor teach a method for producing methacrylic acid ester in the presence of at least one polymerization inhibitor (abstract) which reads on the polymerization inhibitor in present claim 5. Examples of inhibitors include 6-tert-butyl-2,4-dimethylphenol, 2,6-di-tert-butyl-4-methyl phenol (i.e., read on the phenolic inhibitor in present clams 10, 11, and 12) N,N-diphenylamine (i.e., reads on the amine compound in present claims 10, 11 and 12), and triphenyl phosphite (paragraph 0088) which reads on the phosphorus-containing compound in present claims 10, 11 and 12. Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, in light of the teachings in Martan et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to include the polymerization inhibitor, of Martan et al, in the methyl methacrylate composition of Loversidge et al, for inhibiting polymerization, absent evidence to the contrary.
Regarding concentration of polymerization inhibitor (component B), Martan et al teach that stabilizer is used in amounts of 10 to 1000 ppm (paragraph 0090) which is equivalent to 0.001 to 0.1% by weight. Therefore, in light of the teachings in Martan et al wherein the concentration of polymerization inhibitor is in a broad range, it would have been obvious to one skilled in art prior to the filing of present application to include polymerization inhibitor in the methyl methacrylate composition, of Loversidge et al, in presently claimed concentrations (such as 1 to 7,000 μmol/L of present claim 8 and 10 to 5,000 μmol/L). Alternatively, it is the examiner’s position that concentration of polymerization inhibitor is a result-effective variable (MPEP 2144.5) since the amount used clearly impacts pre-mature polymerization. Hence, the choice of a particular concentration of polymerization inhibitor (such as the amount in present claims) is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Regarding MB/MA (concentration of the component B / concentration of the component A), Loversidge et al teach that proportion of the stabilizer to be used is in a range of 0.25 to 100 parts by weight per million parts by weight of the monomer (i.e., about 0.00025 to 0.1% by weight). Martan et al teach that stabilizer is used in amounts of 10 to 1000 ppm (paragraph 0090) which is equivalent to 0.001 to 0.1% by weight. Therefore, in light of the teachings in Loversidge et al and Martan et al, it would have been obvious to one skilled in art prior to the filing of present application to use the component A and component B in overlapping concentrations, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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