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 .
Response to Amendment
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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112
Claims 1-5 and 11-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 has been amended to recite “wherein an amount of the acidity adjusting agent is from 300 ppm to 4,000 ppm, thereby adjusting the acidity and the chlorine content of the xylylene diisocyanate composition”. The claim provides acidity and chlorine contents in ppm and later recites the acidity and chlorine contents are “adjusted” via a ppm quantity of acidity adjusting agent. It is unclear whether the limitation means to indicate the 100-1,000 ppm acidity and 10-286 ppm chlorine ranges are the actual amounts present within the composition or are starting points that are adjusted via addition of adjusting agent.
As claims 2-5 and 11-13 depend from claim 1, they are rejected for the same issue discussed above.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 13 recites “wherein the additive includes at least one selected from the group consisting of a releasing agent, a reaction catalyst, a thermal stabilizer, an ultraviolet absorber, and a bluing agent”. Claim 11 explicitly requires the additive is at least one selected from the group consisting of a releasing agent, a reaction catalyst, a thermal stabilizer, an ultraviolet absorber, and a bluing agent. Therefore, claim 13 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 Kousaka (US 2018/0037722 A1) as evidenced by as evidenced by Chembook. 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 1-3, 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.
With respect to chlorine content, 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. Accordingly, Kawaguchi is suggestive of overlapping chlorine contents. 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 ranges. 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 phosphate additives are not described. Kousaka teaches phosphoric acid ester compounds added to isocyanate compositions such as bis(isocyanatomethyl)benzene (Abstract; ¶ 26), synonymous with xylylene diisocyanate. Kousaka teaches the phosphates provides polyisocyanates with excellent storage stability (¶ 7-10). It would have been obvious to one of ordinary skill in the art to utilize the phosphate stabilizers of Kousaka within the isocyanate compositions of Kawaguchi because doing so would further impart storage stability as taught by Kousaka. Given the compounds of Kousaka are acid esters, they would intrinsically function as an “acidity adjusting agent”. Kousaka teaches examples where (di)butoxyethyl acid phosphate is used (¶ 115). While it is acknowledged Kousaka does not report boiling points, it is known in the art (di)butyl acid phosphate boils in excess of 110 degrees C as evidenced by Chembook. Since the compounds taught by Kousaka are of even greater molar mass, the position is taken that the boiling points of such compounds is intrinsically within the scope of the claims in the absence of evidence to the contrary.
Kousaka teaches 1-25,000 ppm of phosphate added (Abstract), which 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 Kousaka suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kousaka. See MPEP 2123. Since the phosphates are acidic and do not possess an identical chlorine content to the composition of which it is added to, the addition of such is seen to intrinsically adjust acidity/chlorine contents.
Regarding Claims 4 and 5, 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, Kousaka indicates the phosphate compounds were known to give colorless/transparent isocyanate compositions for 6 months (¶ 47; 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 Claims 11 and 13, 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, with respect to chlorine content, 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. Accordingly, Kawaguchi is suggestive of overlapping chlorine contents. 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 ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Kawaguchi. See MPEP 2123.
Response to Arguments
Applicant's arguments filed 3/9/2026 have been fully considered but they are not persuasive.
Applicant argues the specification indicates the acid/chlorine values are final (i.e. after addition of adjusting agent). This is not found persuasive as limitations from the specification are not read into the claims. Claim 1 indicates the amount of adjusting agent adjusts “the acidity and the chlorine content of the xylylene diisocyanate composition”. When given its plain and ordinary meaning, the claim can be construed as either the listed acidity/chlorine contents are the initial values or the final values. The above issue can be resolved by simply removing “thereby adjusting the acidity and the chlorine content of the xylylene diisocyanate composition”.
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 argues Kousaka describes two different phosphoric acid esters, which are different from those described within the specification. This is not found persuasive as the phosphoric acid esters of Kousaka meet all limitations claimed and limitations from the specification are not read into the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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