Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claims 1-5 and 10-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Despite applicants’ remarks, the examiner has not found support for the amendment to claims 1, 11, and 12 specifying the total 100 parts by mass basis as it pertains to the claimed catalyst amount. Though applicants have stated that original claim 7 provides support for the amendment, it has not been established that the basis therein is equivalent to the amended bases of the rejected claims.
Prior Art Rejection
4. 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
5. Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over . Kamura et al. (US2014/0357835 A1) in view of Tsukada et al. (US 2017/0015777 A1).
Kamura et al. disclose an optical resin composition and lens produced by cast molding the composition, wherein the composition comprises multiple reactants including an episulfide and a thiol, and further comprises an organometallic catalyst in an amount that is considered to meet that claimed. The reactants are reacted to form a prepolymer, which is subsequently cured. See abstract and paragraphs [0020], [0023], [0025], [0035], [0036], [0040], and [0048]. Regarding claims 1-5 and 10-17, though it is noted that within paragraphs [0036] and [0044], different processes and mixing sequences are disclosed, the position is taken that applicants’ methods of combining reactants would have been obvious in view of these disclosures. The curable compositions possess viscosities that correspond to those claimed, and it is noted that the viscosities are measured in the same manner as relied upon by applicants. See paragraph [0050] and Table 1 for the viscosity values. Regarding claim 17, it is noted that the reference discloses that the produced lens has substantially no striae, and the position is further taken that controlling the nitrogen content would have been within the abilities of the skilled artisan since the reference provides great latitude with respect to component selection.
6. Though Kamura et al. fail to disclose applicants’ specifically claimed polythiol compounds, the position is taken that these compounds were well known reactants to be used within optical resins also employing episulfide reactants. This position is supported by the teachings of Tsukada et al. within paragraphs [0046], [0168], [0171], and [0172]. It is further noted that within paragraph [0171], Tsukada et al. disclose applicants’ claimed compounds with such compounds as pentaerythritol tetrakis(mercaptoacetate) and pentaerythritol tetrakis(mercaptopropionate), thereby establishing the equivalency of the instantly claimed compounds with these pentaerythritol-based polythiols, which are also disclosed within paragraph [0029] of the primary reference. Accordingly, the position is taken that it would have been obvious to utilize these known equivalent polythiol reactants within the optical compositions of the primary reference, so as to arrive at the instant invention. It has been held that it is prima facie obvious to use a known compound for its known function.
7. The examiner has considered applicants’ remarks concerning their amendment; however, given that the primary reference discloses the use of higher functional polythiol compounds that are equivalent to those claimed, the examiner cannot agree that the reference serves to teach away from the use of such reactants. Furthermore, one understanding from the disclosure of the primary reference that viscosity elevation can be a problem would have understood how to employ these higher functional polythiols, while controlling viscosity elevation through such means as also employing lower functionality thiols.
Conclusion
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)272-1079. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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