DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: In line 11, please replace “the range” with “a range”.
Claim 1 is objected to because of the following informalities: In line 13, delete “meanwhile” and replace “shall be” with “are”.
Claim 2 is objected to because of the following informalities: In line 1, delete “the” which precedes “R1”.
Claim 2 is objected to because of the following informalities: In line 3, please replace “the range” with “a range”.
Claim 3 is objected to because of the following informalities: In line 1, delete “the” which precedes “R2”.
Claim 6 is objected to because of the following informalities: In line 4, please replace “2-Iodo-” with “2-iodo-”.
Claim 6 is objected to because of the following informalities: In line 4, the nomenclature of compound “2-iodo-2-phenylacetate” is incomplete.
Claim 7 is objected to because of the following informalities: In line 2, please replace “the weight” with “a weight”.
Claim 7 is objected to because of the following informalities: In line 2, the phrase “in the ratio of” is superfluous and may be deleted.
Claim 8 is objected to because of the following informalities: In lines 2, 3, and 4, please replace “presented” with “present” (three occurrences).
Claim 8 is objected to because of the following informalities: In line 5, please replace “all based on the total” with “based on a total”.
Claim 9 is objected to because of the following informalities: In line 3, delete “the” which precedes “monomers”.
Claim 10 is objected to because of the following informalities: In line 1, replace “method of use” with “method of using” so that the preamble is consistent with that written in claim 9.
Claim 10 is objected to because of the following informalities: In line 4, delete “i.e.,”.
Claim 10 is objected to because of the following informalities: In line 8, please replace “ispropylstyrene” with “isopropylstyrene”.
Claim 11 is objected to because of the following informalities: In line 1, replace “method of use” with “method of using” so that the preamble is consistent with that written in claim 9.
Claim 11 is objected to because of the following informalities: In line 3, please replace “the total” with “a total”.
Claim 12 is objected to because of the following informalities: In line 1, replace “method of use” with “method of using” so that the preamble is consistent with that written in claim 9.
Claim 12 is objected to because of the following informalities: In line 2, please replace “presented” with “present”.
Claim 12 is objected to because of the following informalities: In line 3, delete “of” which precedes “based”.
Claim 13 is objected to because of the following informalities: In line 1, replace “method of use” with “method of using” so that the preamble is consistent with that written in claim 9.
Claim 13 is objected to because of the following informalities: In line 2, please replace “presented” with “present”.
Claim 13 is objected to because of the following informalities: In line 2, delete “of” which precedes “based”.
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.
Claims 9-13 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. Claims 9-13 (line 1 of each claim and line 2 of claim 11) are drawn to a method of using a composition comprising using the composition in an emulsion polymerization. Claims provides for “using” the composition but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyajima et al. (WO 2018180547; equivalent US 2021/0070687 relied upon for translation).
Miyajima et al. discloses a composition comprising a compound represented by Chemical Formula 1, shown below, wherein R1 is COOX, CONR4R5, and X is hydrogen, an alkali metal, an alkaline earth metal, and organic ammonium or ammonium.
PNG
media_image1.png
124
136
media_image1.png
Greyscale
The compounds 2-iodoacetic acid, 2-iodopropionic acid, 2-iodopropionic acid amide, 2-iodo-2-methylpropionic acid, sodium 2-iodo-2-methylpropionate, ammonium 2-iodo-2-methylproprionate, 2-iodopentanoic acid, sodium 2-iodo-2-phenylacetate, calcium 2-iodo-2-phenylacetate, sodium 2-iodo-2-phenylacetate, ammonium 2-iodo-2-phenylacetate, and 2-hydroxyethyl-2-iodo-2-phenylacetate are representative (paragraph [0036]). Claims 4 and 5, and the latter portion of claim 6 are rejected as they merely recite an optional component.
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato et al. (JP 2017-226791).
Example 5 of Sato et al. discloses polymerizing 2-hydroxyethyl methacrylate in the presence of a composition comprising 0.090 g of 2-iodoisobutryic acid and 0.15 g of tetrabutylammonium iodide. The 2-iodoisobutryic acid is present in amount to of 37.5 wt % and tetrabutylammonium iodide is present in an amount of 62.5 wt %, based on the weight of both components. Claim 5 and the latter portion of claim 6 are rejected as they merely recite an optional component.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Pouraiimdy et al. (EP 0 947 527).
Pouraiimdy et al. teaches a process for carrying out controlled free radical polymerization in the presence of monoiodide reagents of formula R1R2CZI shown below, left. The preferred monoiodide reagents are iodotoluic acid and 2-iodopropionic acid, shown below, right.
PNG
media_image2.png
80
78
media_image2.png
Greyscale
PNG
media_image3.png
76
182
media_image3.png
Greyscale
PNG
media_image4.png
96
108
media_image4.png
Greyscale
Example 1 discloses emulsion polymerization of n-butyl acrylate in the presence of initiator and iodotoluic acid, wherein iodotoluic acid is present in an amount of 1.6 wt % based on the weight of n-butyl acrylate. While the example shows polymerization with iodotoluic acid, one of ordinary skill in the art would have found it obvious to carry out the polymerization in the presence of the other preferred compound, 2-iodopropionic acid, and he would have expected this embodiment to work with a reasonable expectation of success. One of ordinary skill in the art would have found it obvious from the disclosure that the polymerization is a living free-radical polymerization (paragraph [0004]).
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda et al. (JP 11-140127).
Ueda et al. teaches a process for carrying out living polymerization (paragraph [0029]) of n-butyl acrylate in the presence of initiator and iodoacetic acid, wherein the iodoacetic acid is present in an amount of 2.0 wt % based on the weight of n-butyl acrylate (paragraph [0031]). While exemplary reaction is carried out in solution, one of ordinary skill in the art would have found it obvious to carry out the polymerization under emulsion polymerization conditions (paragraph [0022]).
Claim 7 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten to overcome claim objections, supra, and if rewritten in independent form including all limitations of the base claim and any intervening claims. None of cited references teaches a composition comprising components A), B), and C) in the weight ratio set forth in claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rip A. Lee whose telephone number is (571)272-1104. The examiner can be reached on Monday through Friday from 9:00 AM - 5:00 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones, can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RIP A LEE/Primary Examiner, Art Unit 1762
September 1, 2026
Prosecution Insights