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
Response to Amendment
The previous 103 rejection has been overcome by the amendment supported by the original claims.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and ODP rejections have been maintained, but the position has been modified due to the amendment.
The examiner urges filing a terminal disclaimer to overcome the ODP rejection.
Claim Rejections - Double Patenting
Claim(s) 1-2 and 4-6 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of US 12486352 ( 18/030847).
‘352 (claims 1-15) meets instant claims 1-2 and 4-6, because it discloses a composition comprising a polythiol, such as 1,2,6,7-tetramercapto-4-thiaheptane (out of 12 candidates), and 20-80 wt% (meets the loading of claim 5) of
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that meets the formulae of claims 1-4. One having ordinary skill in the art would obviously recognize to prepare the claimed composition by selecting 1,2,6,7-tetramercapto-4-thiaheptane as the polythiol and m=3, because although many compositions are disclosed in the reference and therefore anticipation does not appear to be present, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combination less obvious (Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989).
Allowable Subject Matter
The following is an examiner's statement of reasons for allowance:
Claim(s) 1-2 and 4-6 is(are) provisionally allowable over the closest prior art: Imagawa et al. (US 20180127549).
As to claims 1-2 and 4-6, Omagawa (abs., claims, examples) discloses a composition for producing plastic lens (1) having excellent light and heat resistance (117, 124) comprising a polythiol of 1,2,6,7-tetramercapto-4-thiaheptane (the elected species of claim 6) and bis(β-epithiopropyl)sulfide (Ex.13 and 17-19, Table 1) at about 56 wt% (meets the range of claim 5) of the total mass of the composition. Omagawa (26-34) discloses bis(β-epithiopropyl)sulfide and 1,3- and 1,4-bis(β-epithiopropylthio)benzene (both meet the formulae in claims 1-4) are functionally equivalent episulfide compounds for producing plastic lens (1) having excellent light and heat resistance.
However, Imagawa fails to teach the claimed formula of claim 1 requiring m=3.
Therefore, claims 1-2 and 4-6 is(are) allowable in proviso the above ODP issue is resolved.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s argument pertaining to the ODP rejection is erroneous, because ODP is an obviousness type of rejection, and the case law cited, Merck & Co. v. Biocraft Laboratories, can be applied for the rejection. The examiner asserts the rejection has merely cited the claims of US 12486352 for the rejection, not the specification thereof.
Therefore, the previous restriction and ODP rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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
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