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 .
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-7, is acknowledged. The applicant argued the special technical feature is not met by prior arts. The examiner disagrees and asserts the requirement. See below rejections.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 1-7 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 fails to define the claimed formula and R groups on the formula, so the claimed organo-polysulfide is uncertain. Claim 1 fails to define “pre-determined temperature” and “pre-determined ratio”.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claim(s) 1-3 and 6-7 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Frost et al. (US 2272265).
As to claims, Frost (abs., examples, claims, Ex.4) discloses a process of producing preparing an organo-polysulfide comprising mixing 325g elemental sulfur with 400g methylene chloride, heating at 38 °C for 3 hours to obtain a heated solid mass; washing said cooled solid mass with water. Water would inherently cool solid mass. Ethylene chloride is also used as an equivalent chlorinated monomer in Ex. 3.
Frost is silent on drying said wet mass at a second pre-determined temperature to obtain organo-polysulfide. However, one of ordain skill in the art would obviously recognize to dry said mass at 100 °C (the bp of water) to move water to obtain dry organo-polysulfide solid. The claimed “by-products….” in claim 2 is a product-by-process limitation embedded in a process claim, the disclosed . Ethylene chloride and methylene chloride appear to have no chemical and material difference. Determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113.
Claim(s) 1-7 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 5432257).
As to claims, Lee (abs., examples, claims, 4:35-45, Ex.1) discloses a process of producing of producing preparing an organo-polysulfide comprising mixing 120g chlorinated hydrocarbon from factory waste comprising trichloroethane and dichloroethane and 41.6g elemental sulfur (2.88:1), heating at 105 °C for 5 hours to obtain a heated solid mass; washing said cooled solid mass with water. Water would inherently cool solid mass.
Lee is silent on direct mixing sulfur with chlorinated hydrocarbon. However, Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Lee is silent on drying said wet mass at a second pre-determined temperature to obtain organo-polysulfide. However, one of ordain skill in the art would obviously recognize to dry said mass at 100 °C (the bp of water) to move water to obtain dry organo-polysulfide solid. As to claim 5, one of ordain skill in the art would obviously recognize to raise the reaction temperature above 105 °C (overlapping with the claimed range) to accelerating the reaction and reduce reaction time. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766