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 .
Claim Status
Claims 1 and 4-10 are pending.
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shumann et al (US 2012/0115998 A1).
Schumann is directed at a one or two component adhesive that comprises a binding agent having reactive isocyanate groups [abstract]. Shumann teaches embodiments wherein compounds having more than one H-acid functional group, for example OH, SH, NH, or COOH groups, are reacted with isocyanate species to obtain a urethane prepolymer [p. 0018, example 1]. Shumann teaches 3,4’-diphenylmethane diisocyanate (MDI) and xylylene diisocyanate (XDI) as useful diisocyanate species [p. 0030]. Shumann exemplifies the production of a urethane prepolymer prepared from raw materials including 1.5 g toluenesulfonyl isocyanate (PTSI) and 115.0 g MDI [example 1], and a urethane oligomer prepared from raw materials including 1.5 g PTSI and 188.9 g MDI [example 3]. The proportion of PTSI relative to the total mass of PTSI and MDI in examples 1 and 3 is 12,876 ppm and 7,878 ppm, respectively.
Shumann fails to exemplify a composition prepared from PTSI and XDI, however, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Shumann with XDI instead of MDI, as Shumann teaches XDI as a suitable diisocyanate for manufacturing the polyurethane prepolymers [p. 0029-0030], and they are taught as functional equivalents. Furthermore, it would have been obvious to prepare this composition at the ratio of monoisocyanate to total isocyanate that Shumann exemplifies, which lies inside the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In addition, the recitation “for optical use has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Regarding claim 7; Shumann teaches after application to a substrate, hardening of the one-component systems occurs by reaction with atmospheric moisture, and that of the two-component systems by reaction of the reaction partners from the two components [p. 0091].
Claims 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shumann et al (US 2012/0115998 A1) in further view of Kuma (US 2019/0106529 A1).
The disclosure of Shumann is above and is applied here as such.
Regarding claim 6; Shumann teaches the adhesive prepared from the composition is utilized preferably for adhesive bonding of components in the context of the manufacture or repair of vehicles. It is suitable in particular for bonding in windows in the context of direct glass bonding [p. 0093]. Shumann teaches embodiments composition wherein compounds having more than one H-acid functional group, for example OH, SH, NH, or COOH groups, are reacted with isocyanate species to obtain a urethane prepolymer [p. 0018]. However, Shumann is silent with respect to specific polythiol compounds.
Kuma is directed at a resin prepared from xylylene diisocyanate and a polyol and/or a polythiol component [p. 0011]. Kuma teaches the xylylene diisocyanate component as the essential component of the composition [p. 0087]. Kuma teaches, in view of production of an optical material, the reaction product of the xylylene diisocyanate with a polythiol is preferred [p. 0086]. Kuma teaches examples of the thioalcoholic mercapto group containing polythiols include aliphatic polythiols, such as pentaerythritoltetrakis(2-mercaptopropionate) [p. 126], as well as aromatic polythiols and heterocyclic polyols [p. 125]. Kuma teaches the resins obtained from these compositions have excellent yellowing resistance and excellent production efficiency [p. 0016].
In light of this, it would have been obvious to one having ordinary skill in the art to select a polythiol taught by Kuma when preparing the composition of Shumann with XDI as Shumann teaches the composition is suitable for direct glass to glass bonding, and Kuma teaches compositions prepared with these polythiols and XDI have excellent yellowing resistance and are preferred to polyols when producing an optical material.
Claims 1, 4, 7, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al (WO 2017/135618 A1; all citations directed toward English machine translation).
Chung discloses a flexible poly(lactic) acid resin composition [abstract]. In example 5, Chung et al exemplifies the preparation of the production of a polyurethane polyol from poly(1,3-propanediol) PTSI and HDI [table 1]:
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In example 5, the ratio of PTSI to the total mass of PTSI and HDI is 1,585 ppm. Although Chung does not exemplify the use of XDI, Chung teaches XDI as a suitable diisocyanate for the preparation of the composition [p. 0045]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of example 5 of Chung using XDI as the diisocyanate.
Chung teaches the polylactic acid resin prepared from the polylactic acid resin composition exhibits improved flexibility and excellent transparency, and may be used as a packaging material [p. 0019]. Chung teaches the polylactic acid resin may be molded or extruded [p. 0058].
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al (WO 2017/135618 A1; all citations directed toward English machine translation) in further view of Kuma (US 2019/0106529 A1).
The disclosure of Chung is above and is applied here as such.
Chung teaches that the resin composition has a molar ratio of terminal hydroxy groups of the polyol to the isocyanate groups is 1:0.5 to 1:0.9 [p. 0042]. Chung teaches the resin may be molded and has good transparency but is silent with respect to the use of the molded article as an optical element or lens.
Kuma teaches in the production of an optical material, the polyisocyanate component and the polyol component and/or the polythiol component are formulated (mixed) so that the equivalent ratio of the isocyanate group in the polyisocyanate component with respect to the hydroxyl group and the mercapto group in the polyol component and/or the polythiol component (isocyanate group (NCO)/hydroxyl group (OH) and/or mercapto group (SH)) is, for example, 0.75 or more and preferably 1.3 or less, to be then subjected to curing reaction at [p. 0156-0157]. Kuma further teaches the optical material is suitable for use as an optical lens [p. 0012-0013].
In light of this, a skilled artisan would appreciate that the composition of Chung is obviously capable of forming a molded article in the form of an optical material as Kuma teaches a composition that is capable of forming an adhesive as well as an optical material/lens. Furthermore, it would be obvious for one having ordinary skill in the art at the time the invention was filed to prepare a molded optical material in the form of a lens from the composition of Chung, as Kuma teaches a preferred ratio of NCO-group containing compounds to H-active compounds for the preparation of an optical material/lens, and said ratio lies within the range taught by Chung.
Conclusion
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766