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 .
Claim Status
Claims 1, 7, and 12 have been amended. Support for the amendments to claims 1 and 12 can be found on p. 42 of the specification as filed. The amendment to claim 7 overcomes the previous rejection to claim 7 under 35 U.S.C. 112(b). Claims 1-20 are pending.
The nonstatutory double patenting rejection of claims 1, 4-6, 9-13, and 15 as being unpatentable over claims 1, 4-6, 9-13, 15, 24, and 25 of U.S. Patent No. 11,466,125 (Appl. No. 16/721,349) has been overcome by amendment. The double patenting rejection has been withdrawn.
Response to Arguments
Applicant's arguments filed 08/26/2025, regarding the rejection of claim 13 under 35 U.S.C. 112(b) for improper Markush grouping have been fully considered but they are not persuasive.
Applicant argues the rejection of claim 13 under 35 U.S.C. § 112. Section 2173.05(h) of the MPEP clearly states that "A Markush grouping may include a large number of alternatives, and as a result a Markush claim may encompass a large number of alternative members or embodiments, but a claim is not necessarily indefinite under 35 U.S.C. §112(b) for such breadth.
Claim 13 stands rejected on the basis that it contains an improper Markush grouping of alternatives. A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group comprising” or the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
Applicant's arguments filed 08/26/2025, regarding the rejection of claims 1-20 under 35 U.S.C. 103 over Sawant et al (US 2004/0247792 Al) have been fully considered but they are not persuasive.
Applicants argue there is no disclosure in Sawant of polythioether prepolymer "formed from a reaction mixture comprising 0.1 mol% to 12 mol% of a polyfunctionalizing agent, 15 mol% to 55 mol% of a linear dialkenyl monomer and/or adduct, and 15 mol% to 65 mol% of a linear dithiol monomer and/or adduct, where mol% is based on the total moles of the monomers and adducts used to form the polythioether prepolymer," as is recited in amended claim 1 and in amended claim 12.
The examiner agrees there is no explicit disclosure in Sawant et al regarding the general ranges of the individual monomers of the reaction mixture Sawant uses to prepare the polythioether. However, Sawant exemplifies the preparation of a polythioether prepolymer in example 1 wherein the amount of each monomer in the reaction mixture falls within the claimed ranges, as shown below.
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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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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
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766