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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the elected claims.
Election/Restrictions
The applicant has elected Group I (claims 5-6) without indicating traverse, and no argument has been submitted. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). To facilitate the prosecution, the examiner withdraws the restriction of claims 7-9 and groups them with claims 5-6.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 5 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pyon et al. (US 20180208686).
As to claim 5, Pyon (abs., 3-4, 70, ) discloses a composition for producing optical materials (4) comprising a polymer produced by inverse vulcanization (5, 15) via reacting sulfur with an epoxide monomer (out of 10 candidates, 40, 79, claim 192) in presence of a nucleophilic activator (in one embodiment, 26, 46, 163), which solubilizes element sulfur and modifies the solubility or miscibility of reaction intermediates (3, 12, 177), the same function of the claimed compatibilising agent as described in instant pgpub [0018]. The disclosed nucleophilic activator would inherently be capable of performed the claimed intended use of “compatibilising”.
In light of this, one of ordinary skill would at once envisage selecting the aforementioned epoxy to anticipate claim 5, because a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member ” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
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) 6 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Pyon et al. (US 20180208686) in view of Tsutsumi et al. (US 20160160040).
Disclosure of Pyon is adequately set forth in ¶1 and is incorporated herein by reference.
Pyon silent on the claimed bisphenol F. Pyon discloses using bisphenol A as an exemplary epoxy (Fig. 8).
In the same area of producing epoxy based optical materials having superior handling property, transparency and crack resistance (abs., claims, examples), Tsutsumi (abs., claims) discloses bisphenol A and bisphenol F are functionally equivalent epoxies for producing such optical materials.
Therefore, as to claim 6, it would have been obvious to one of ordinary skill in the art to have replaced bisphenol A of Pyon with bisphenol F of Tsutsumi because of their equivalent functionality as primary epoxies for producing epoxy based optical materials having superior handling property, transparency and crack resistance. These conditions appear to equally apply to both productions using similar optical materials. This adaptation would have obviously yielded instantly claimed invention.
Claim(s) 7-9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Pyon et al. (US 20180208686) in view of Tsutsumi et al. (US 20160160040 ) in further view of Wu et al. (US 20210324147, eff. f/d=09/12/18).
Disclosure of Pyon and Tsutsumi is adequately set forth in ¶1-2 and is incorporated herein by reference. Pyon further discloses using vinyl monomers such as acrylates and divinyl monomers (81-82). Pyon discloses copolymerization at 110-130 °C (99) or 120 °C and 2.5 hours (Ex.11), falling within the range of claim 8. Pyon discloses sulfur is 5-95 wt% and epoxide can be 1:50 wt% (claim 192), which would yield a weight ratio of sulfur to epoxide 0.1-95, overlapping with the range of claim 9. 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.
They are silent on the claimed sodium diethyldithiocarbamate and its loading of claim 9.
Solving the same problem of producing a sulfur- based polymer by inverse vulcanization (161, 290), Wu (abs., claims, examples) discloses reacting sulfur with vinyl monomers (Fig.1A-1E,examples) in presence of a nucleophilic activator/accelerator, such as sodium diethyldithiocarbamate trihydrate (290, Table 8, an equivalent of sodium diethyldithiocarbamate), at an exemplary loading of 5 wt% or 10 wt% of the vinyl monomers, meets the range of instant claim 9) to balance the mobility of the reactants and the color of the resultant polymer.
Therefore, as to claim7-9, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Pyon and Tsutsumi and replaced the nucleophilic activator with sodium diethyldithiocarbamate at 5 wt% or 10 wt% in view of Wu, because the resultant composition would yield balanced mobility of the reactants and the color of the resultant polymer.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766