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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/21/2026 has been entered.
Claim Status
Claims 1-20 currently are pending. Claims 1, 12, and 13 are amended, support can be found in the claims as filed.
Response to Arguments
Applicant’s arguments, see p. 10, filed 05/21/2026, with respect to the rejection of claim 13 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. The rejection of claim 13 under 35 U.S.C. § 112(b) has been withdrawn.
Applicant's arguments filed 05/21/2026 have been fully considered but they are not persuasive.
(p. 11) Applicants argue, “The polythioether prepolymers recited in claim 1 and claim 12 do not comprise pendent hydroxyl groups directly bonded to the backbone of the prepolymer. The claimed polythioether prepolymers can have pendent hydroxyl groups such as a hydroxyl-substituted C1-6 alkyl group, but these hydroxyl groups are not bonded directly to the polythioether prepolymer backbone.
Therefore, because the claimed polythioether prepolymers have a different chemical
structure than the polythioether prepolymers disclosed by Sawant, and because Sawant does not disclose that the polythioether prepolymers have greater than 10 mol% of non-linear segments having pendent groups, the amended claims are patentable over Sawant.”
In claim 1, applicants recite – each R1 is independently selected from substituted C1-10 alkanediyl; each R is independently selected from substituted C1-16 alkyl; each R2 is independently selected from substituted C2-10 alkanediyl; each R3 is independently selected from substituted C1-10 alkanediyl. A similar recitation is found in claim 12.
Applicants’ specification recites – “Substituted” refers to a group in which one or more hydrogen atoms are each independently replaced with the same or different substituent(s). A substituent can be —OH [p. 0093, all references drawn to PG-Pu].
In light of this, the examiner respectfully disagrees with the argument that the claimed polythioethers have a different chemical structure than those disclosed by Sawant.
Furthermore, applicants’ specification recites pendent groups are bonded to the backbone of the prepolymer such as to a repeating segment of the prepolymer backbone [p. 0340]. The specification refers to allyl glycidyl ether (AGE) as a suitable thiol-reactive monomer which generates a hydroxyl pendent group upon reaction with a thiol group, as disclosed in Examples 1 and 2 [p. 0344, all references drawn to PG-Pub].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sawant et al (US 20040247792 A1).
Regarding claims 1-8 and 12-20, Sawant et al teaches polythioether polymers, processes for producing polythioether polymers, curable compositions of polythioether polymers, and the use of polythioether polymers in aviation and aerospace sealants, wherein the polythioether polymers and curable compositions are liquid at a temperature of 20 °C [p. 0012].
Sawant exemplifies the preparation of a polythioether prepolymer comprising: 2,2′-(Ethylenedioxy)diethanethiol (DMDO), 2,2′-Thiodiethanethiol (DMDS), allyl glycidyl ether (AGE), triallyl cyanurate (TAC), and di(ethylene glycol) divinyl ether (DEG-DVE) [example 1]. Wherein, DMDO and DMDS read over C2-C10 heteroalkanediyl derivatives of instant formula (4); DEG-DVE reads over C2-C10 heteroalkanediyl derivatives of instant formula (7); and TAC reads over instant formula 8 [example 1, p. 0043-0044, 0045-0049]. The reacted residue of AGE, after the alkene and polythiol reaction, reads over instant formula (10), wherein a=3 and a=2.
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221
574
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The polythioether prepolymer of Sawant et al is prepared from the reaction mixture shown in the table above [example 1]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Sawant et al teaches the number of repeat units of the polythioether prepolymer is selected in order for the polymer to have a molecular weight between 500 and 20,000 Da, and in certain embodiments from 2,000 and 5,000 Da [p. 0026, 0039, 0053]. However, Sawant et al fails to teach the number of repeat units (n) in the prepolymer or the final molecular weight of the polymer of example 1. Considering the relative abundance of the monomers shown in the table above, the average molecular weight of the repeat units of the polymer of Sawant et al is 164.9 Da. A skilled artisan would appreciate that to satisfy the range of 500 to 20,000 Da as taught by Sawant et al, the polymer would have a number of repeat units (n) of n=3 to n=121. In light of this, the general teachings of Sawant et al appear to obviously embrace polymers of n=1 to n=60 as claimed. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 9, Sawant et al teaches the polythioether prepolymers have functionalities of 2.05 to 3.0[p. 0067, 0095, claim 25]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 10, Example 1 of Sawant et al has a sulfur content of 26 wt. % based on the total weight of the polythioether prepolymer. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 11, The molar ratio of residues of non-linear monomers (AGE) to adducts from linear dithiol and dialkenyl monomers in the polythioether prepolymer is 0.13:1 in example 1 of Sawant et al In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Conclusion
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
