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.
Election/Restrictions
The applicant has elected Group I (claims 1-6) and the species of 1,2,6,7-tetramercapto-4-thiaheptane without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-6 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4 and 8-9 of copending Application No. 18/030847. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘847 (claims 1-4 and 8-9) meets instant claims 1-6, 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, 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).
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) 1-6 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Omagawa et al. (US 20180127549).
As to claims 1-6, 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.
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced phenol of bis(β-epithiopropyl)sulfide in Ex. 13 and 17-19 with 1,3- or 1,4-bis(β-epithiopropylthio)benzene because of their equivalent functionality as episulfide compounds for producing plastic lens having excellent light and heat resistance. These conditions appear to equally apply to both productions using similar phenoplast raw materials. This adaptation would have obviously yielded instantly claimed compositions of claims 1-6.
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