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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/1/2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Election/Restrictions
Applicant’s amendment to exclude the previously found species is noted. Per the protocol of MPEP 803.02, examination of the claims was extended and, as a result, prior art that either anticipates and/or obviates alternative species was found. The prior art search was not extended unnecessarily to cover all nonelected species. Accordingly, prior art rejections pertaining to the newly found species are presented below with any claims not readable on the found species being withdrawn from further consideration.
Claim Rejections - 35 USC § 103
Claim(s) 1-5 and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawaguchi (WO 2021/256417 A1) in view of Shin (US 2018/0334428 A1). As the cited WO document is in a non-English language, the English equivalent, US 2023/0166883 A1 has been utilized in place of the WO document. All citations are made with respect to the above-mentioned US document.
Regarding Claims 1, 2, and 5, Kawaguchi teaches xylylene-diisocyanate compositions for optical lens (Abstract; ¶ 86; Examples) with an acid content of 3000 ppm or less (¶ 43). While not providing examples where acidity lies between 100-1000 ppm, Kawaguchi nevertheless overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Kawaguchi suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kawaguchi. See MPEP 2123.
Kawaguchi is concerned with polyisocyanate stabilization/storage (¶ 4-5), but differs from the subject matter claimed in that particular acidity adjusting agents of claim 1 are not described. Shin teaches xylylene diisocyanate compositions can have improved stability via incorporating chlorine compounds such that the resulting chlorine content is 100-1,000 ppm (Abstract). Shin teaches benzoyl chloride can be used (¶ 35). Kawaguchi teaches the purity of the XDI used is preferably 99.5 wt% or more or 100 wt% or less, whereby the impurities present relate to chlorine impurities and hydrolysable chlorine (¶ 39-42). Zero to 0.5 wt% of impurities is equivalent to 0-5,000 ppm. 100-1,000 ppm of chlorine is equivalent to roughly 397-3,965 ppm of benzoyl chloride. It would have been obvious to one of ordinary skill in the art to utilize benzoyl chloride to adjust the chlorine content of the compositions of Kawaguchi, such as by using 300-4,000 ppm of benzoyl chloride where necessary, thereby improving long term stability characteristics as taught by Shin. The 100-1,000 chlorine content overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Shin suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Shin. See MPEP 2123.
While Kawaguchi does not probe the specified stability characteristics, Kawaguchi teaches identical acidity contents and emphasizes the particular storage stability characteristics of the compositions when stored for months/years (Figures 2-7; ¶ 2-5). Moreover, Shin indicates the chloride compounds give colorless/transparent isocyanate compositions after 6 months (Table 1). Accordingly, there would be an expectation that the stability/transparency characteristics claimed would necessarily flow from the combination of references in the absence of evidence to the contrary.
Regarding Claim 3, while the 100-1,000 ppm range of Shin lies just outside the 10-95 ppm range claimed, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close to the extent the same properties can be expected. MPEP 2144.05(I). In this case, Shin teaches 100-1,000 ppm give favorable storage characteristics, which deteriorate upon chlorine contents of 60 ppm (Table 1). Shin teaches the associated range constitutes “about” 100-1,000 ppm (¶ 23). Thus, it would have been obvious to one of ordinary skill in the art that chlorine contents approaching the 100 ppm end-point of Shin, such as 95 ppm, could be used to the extent that similar favorable storage characteristics would be expected.
Regarding Claim 11, Kawaguchi teaches the creation of polymerizable compositions comprising the XDI compositions, polythiol compound, and catalyst, release agent, and UV absorber additives (¶ 173-176). Kawaguchi describes embodiments where 36.4 pbw xylylene diisocyanate composition, 33.6 pbw of trifunctional polythiol compound, and 0.121 pbw of additives is used (¶ 174), equivalent to 51.9 wt% xylylene diisocyanate composition, 47.9 wt% of polythiol compound, and 0.2 wt% additives.
Regarding Claim 12, the 100-1,000 chlorine content of Shin overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Shin suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Shin. See MPEP 2123.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
Applicant acknowledges Kawaguchi describes acid/chlorine contents overlapping the ranges claimed, but argues Kawaguchi uses such contents for a different purpose. This is not found persuasive. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144(IV).
Applicant’s arguments with respect to Kousaka have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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