DETAILED ACTION
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 .
Priority
This application is a 371 of PCT/KR2021/011694 which claims the benefit of KR 10-2020-0165577 and KR 10-2020-0111005 with an effective filing date of 01 September 2020 as reflected in the filing receipt mailed on 07 March 2024.
Status of the Claims
Claims 1, 5, and 8-14 are pending.
Claims 1, 5, 8, and 10-13 are currently amended.
Claims 2-4, 6, 7, and 15 are currently cancelled.
Response to Amendments
Applicant’s amendments filed 12 March 2026 are acknowledged.
Claim Objections
Applicant’s cancellation of claim 2 is sufficient to overcome the objection of the claim. The objection is withdrawn.
Claim Rejections - 35 USC § 112
Applicant’s amendments to claims 1, 11, and 13 and cancellation of claims 2-4 and 7 are sufficient to overcome the rejection of claims 1-4, 7, 11, 13, and 14 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 regards as the invention. Claims 1, 11, and 13 have been amended to remove the parentheticals. The rejection is withdrawn.
Applicant’s amendments to claims 1, 11, and 13 and cancellation of claim 7 are sufficient to overcome the rejection of claims 1, 7, 11, and 13 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 regards as the invention. Claims 1, 11, and 13 have been amended to recite “a peak area ratio”. The rejection is withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s amendments to claim 5 adding the sub-polythiol having a greater molecular weight or function than the tetrafunctional polythiol and C13 and C15 sub-polythiol formulas of 2-1 and 2-2, and amendments to claim 12 adding C13 and C15 sub-polythiol formulas of 2-1 and 2-2 not specifically taught by Koichi; and, the cancellation of claim 15 are sufficient to overcome the rejection of claims 5, 8-10, 12, and 15 under 35 U.S.C. 102(a)(1) as being anticipated by Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi).
The rejection is withdrawn; and, due to the amendments to the claims and cancellation of a claim, new ground(s) of rejection is/are provided below.
Claim Rejections - 35 USC § 103
Applicant’s amendments to claims 1, 11, and 13 adding C13 and C15 sub-polythiol formulas of 2-1 and 2-2 not specifically taught by Koichi and Shim; and, the cancellation of claims 2, 6, and 7 are sufficient to overcome the rejections of:
Claims 6 and 7 under 35 U.S.C. 103 as being unpatentable over Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi) in view Shim et al. (US20190225755, hereinafter Shim); and,
Claims 1, 2, 11, 13, and 14 under 35 U.S.C. 103 as being unpatentable over Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi) in view Shim et al. (US20190225755, hereinafter Shim).
The rejections are withdrawn; and, due to the amendments to the claims and cancellation of claims, new ground(s) of rejection is/are provided below.
Applicant’s cancellation of claims 3 and 4 is sufficient to overcome the rejection of claims 3 and 4 under 35 U.S.C. 103 as being unpatentable over Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi) in view Shim et al. (US20190225755, hereinafter Shim), as applied to claims 1, 2, 11, 13, and 14 in the 35 USC 103 rejection above, in further view of Geun (KR102122703, published 26 June 2020, see machine translation). The rejection is withdrawn.
Double Patenting
Applicant’s amendments to claim 5 adding the sub-polythiol having a greater molecular weight or function than the tetrafunctional polythiol and C13 and C15 sub-polythiol formulas of 2-1 and 2-2, amendments to claims 1 and 11-13 adding C13 and C15 sub-polythiol formulas of 2-1 and 2-2 not present in the claims of Pai; and, the cancellation of claims 2-4, 6, 7, and 15 are sufficient to overcome the rejections of:
Claims 1, 2, and 5-15 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 9, 10, and 12-14 of copending Application No. 18254774 to Pai et al. (hereinafter Pai) in view of Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi) and Shim et al. (US20190225755, hereinafter Shim); and,
Claims 3 and 4 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, and 9 of copending Application No. 18254774 to Pai et al. (hereinafter Pai) in view of Koichi et al. (WO2018173820, see machine translation, hereinafter Koichi) and Shim et al. (US20190225755, hereinafter Shim), as applied to claims 1, 2, and 4-15 in the nonstatutory double patenting rejection above, in further view of Geun (KR102122703, published 26 June 2020, see machine translation).
Response to Arguments
Applicant’s arguments filed 12 March 2026 have been fully considered but they are not persuasive or moot.
Applicant’s argue that Koichi, Shim, and Geun do not disclose the limitations as recited in amended claims 1, 5, and 11-13. These arguments have been considered but are not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
In response to applications arguments on pages 16-21 and 28-29 of the remarks filed on 12 March 2026 that “[t]he range disclosed by Koichi (0.70 or less) does not overlap the claimed range (0.75 to 1.45)”, “Koichi does not disclose the absorbance range (0.75 to 1.45) of the present invention”, and “Koichi affirmatively teaches away from the claimed metal sulfide absorbance range by disclosing only ranges above or below the claimed range”. “[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close”, see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 and MPEP 2144.05 I.
In this case, Koichi’s obtained analytical results are shown in Table 1, Para. [0085]. Patents are part of the literature of the prior art, relevant for all they contain, and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments, see MPEP 2123, and Koichi teaches Comparative Example 1 with 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 0.718 is used, Comparative Example 2 with a 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 1.507 is used, and Comparative Example 3 with 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 1.853 is used as compared to embodiments that use a sodium sulfide absorbance of 0.70 or less at a wavelength of 350 nm by preparing a 17.3 wt % aqueous solution and measuring in a quartz cell with an optical path length of 50 mm, see Paras. [0016];[0080]-[0083], Table 1.
The Koichi Comparative Example 2 has substantially the same 17.3% aqueous sodium sulfide solution absorbance at 350 nm of 1.5 as instant specification Example 3 at 1.45, see instant specification Paras. [00158]-[00163];[00220], Table 1. As stated above, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05 I. Koichi teaches the sodium sulfide “preferably has an absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm of 0.70 or less”, see Para. [0018], and washing/purification of the sodium sulfide in order “to bring the absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm into the optimal range”, see Para. [0021]; therefore, Koichi does not teach away from a variation in the absorbance because Koichi does not “criticize, discredit, or otherwise discourage” the use of differing absorbances to obtain the optimal 17.3 wt % aqueous solution of sodium sulfide absorbance at a wavelength of 350 nm. On the contrary, Koichi teaches variations of the absorbance within a range “thereby making it possible to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Koichi, Para. [0013] and MPEP 2145 X.D.1.
As a result, one of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to predictably determine the optimal 17.3 wt % aqueous solution of sodium sulfide absorbance at a wavelength of 350 nm within a specific range, such as 0.7 to 1.9 or 0.75 to 1.45, “to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Koichi, Para. [0013].
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 21-22 and 29 of the remarks filed on 12 March 2026 that “Examples 1 to 3 of the present invention which satisfy the claimed metal sulfide absorbance range during manufacture, the liquid refractive index is 1.6465 or less, and no stria or white turbidity is observed” which “are different in kind from those of Koichi” “including improved optical properties and suppression of yellowing, stria, and white turbidity”. It is noted, refractive index, yellowing, stria, and white turbidity are not instantly claimed. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As indicated by the instant specification Table 1, the refractive index, yellowing, stria, and white turbidity are substantially the same for Example 1 with an absorbance of 0.75 and for Examples 5 and 6 with absorbances of 0.83 and 0.88, respectively, after washing to obtain values inside the claimed absorbance range. In addition, the refractive index is outside of the above argued range of 1.6465 or less in Examples 5 and 6; while, the absorbances of Examples 5 and 6 are within the instantly claimed range. The refractive index, yellowing, stria, and white turbidity are also substantially the same for Example 4 with an absorbance of 1.94 outside the claimed absorbance range as compared to Examples 2 and 3 with absorbances of 1.12 and 1.45, respectively, which are inside the claimed absorbance range. In addition, Example 4 with an absorbance of 1.94 outside the claimed absorbance range has the exact same refractive index of 1.6468 as Example 6 with an absorbance of 0.88 which is within the instantly claimed absorbance range. Therefore, the instant specification Table 1 indicates an absorbance outside the claimed range achieves substantially the same optical properties, washing is employed to achieve the optimal absorbance range to obtain the optimal optical properties, and an absorbance inside or outside the claimed range is not related to the refractive index. Since Applicant’s have not provided a proper comparison to the closest prior art regarding the refractive index, yellowing, stria, and white turbidity as relating to the absorbance range; and, Table 1 indicates the absorbance inside or outside of the claimed absorbance range leads to substantially the same refractive index, yellowing, stria, and white turbidity, the instant specification does not provide support for the argument of improved, surprising, and unexpected results relating to the absorbance, see MPEP 716.02(e).
As established above, it is obvious to one of ordinary skill in the art to adjust the absorbance range of Koichi to between 0.75 to 1.45, and Koichi teaches washing/purification of the sodium sulfide in order “to bring the absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm into the optimal range”, see Para. [0021], “thereby making it possible to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Para. [0013].
Therefore, a person or ordinary skill in the art, at the time the invention was made, relying on the washing and optimal range absorbance teachings of Koichi would naturally follow these suggestions to modify and obtain an absorbances of the 17.3 wt % aqueous solution of sodium sulfide within differing ranges to produce the desired optical quality of the resultant product, such as improved optical properties by the suppression of yellowing, stria, and white turbidity.
For the reasons indicated above, applicant’s above arguments are not persuasive.
In response to applications arguments on pages 25-29 of the remarks filed on 12 March 2026 that “there is no teaching or suggestion in the prior art to specifically control the sub-polythiol ratio within the range of 1% to 5% to achieve the synergistic effect of simultaneously suppressing both white turbidity and stria”. As stated above, it is noted, stria and white turbidity are not instantly claimed. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious, see Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As indicated by the instant specification Table 1, the stria and white turbidity are the same for Examples 1-8 and Examples 1-8 all have an Equation 1 ratio within the instantly claimed range of 1% to 5%. In regard to the functional limitation of “wherein a peak area ratio of the sub-polythiol compound represented by Equation 1 below ranges from 1% to 5%, [Equation 1] Sub-polythiol compound peak area ratio = 100% x [(Peak region (%) of C13H28S9) + (Peak region (%) of C15H32S10)]/(Peak region of tetrafunctional polythiol compound (%)), in Equation 1, each peak region (%) refers to the corresponding peak area (%) measured for the tetrafunctional polythiol compound and for the sub-polythiol compounds represented by C13H28S9 and C15H32S10 respectively in a high performance liquid chromatography (HPLC) analysis graph obtained at a wavelength of 230 nm”. As stated on pages 11-12 of the previous office action dated 12 December 2025, “Koichi’s obtained analytical results are shown in Table 1, Para. [0085]. Since patents are part of the literature of the prior art, relevant for all they contain, see MPEP 2123, and Koichi teaches Comparative Example 2 with a 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 1.507 is used as compared to embodiments that use a sodium sulfide absorbance of 0.70 or less at a wavelength of 350 nm by preparing a 17.3 wt % aqueous solution and measuring in a quartz cell with an optical path length of 50 mm, see Paras. [0016];[0080];[0082], Table 1. The Koichi Comparative Example 2 has substantially the same 17.3% aqueous sodium sulfide solution absorbance at 350 nm of 1.5 as instant specification Example 3, see instant specification Paras. [00158]-[00163];[00220], Table 1, and as established above the Koichi Examples are made by substantially the same process as the instant specification. “Products of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01. Instant specification Table 1, Example 3 shows a Ratio in Equation 1 (%) of 3.8 which as stated in instant specification Paras. [0071]-[0080] the claimed ratio is directly related to the absorbance and dosage of the metal sulfide. Therefore, the Koichi Comparative Example 2 teaching of substantially the same process, metal sulfide dosage, and metal sulfide solution absorbance at 350 nm would naturally lead a person of ordinary skill in the art to the reasonable expectation, given all other parameters remaining the same, that the Koichi synthesis of the identical chemical composition as instantly claimed leads to the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, which are not expressly shown by Koichi; however, they are necessarily and predictably present within the instantly claimed range, see MPEP 2111 and 2112”.
Furthermore, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103”, see MPEP 2112 III. In this case, Koichi synthesis of the identical chemical composition as instantly claimed leads to the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, which are not expressly shown by Koichi; however, they are necessarily and predictably present within the instantly claimed obvious Equation 1 ratio range, see MPEP 2111 and 2112.
Therefore, a person or ordinary skill in the art, at the time the invention was made, relying on the teachings of Koichi would naturally understand the HPLC quantification of the Koichi product by the instantly claimed Equation 1 would lead to the instantly claimed peak area ratio range.
For the reasons indicated above, applicant’s above arguments are not persuasive.
Double Patenting
In response to applications arguments on page 30 of the remarks filed on 12 March 2026 regarding the nonstatutory double patenting rejections over copending Application No. 18254774 to Pai et al. (hereinafter Pai), as stated above, the rejections are withdrawn; therefore, applicant’s arguments are moot.
New Rejections Based on Amendments to the Claims in the reply filed on
12 March 2026
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.
Claims 5 and 8-10 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 regards as the invention.
Claim 5 recite “a ratio” in line 14 and “the ratio” in line 17 and does not recite a unit basis for the ratio. The “ratio” in the claim is interpreted as “peak area ratio”.
Claims 8-10 depend from base claim 5 and are included in this rejection as they do not correct the informalities identified in base claim 5.
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
For clarity between the new and previous rejections, the specific new rejections below are in italics.
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, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5, and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Koichi et al. (WO2018173820, published 27 September 2018, see machine translation, hereinafter Koichi) in view Geun (KR102122703, published 26 June 2020, see machine translation) in further view of Shim et al. (US20190225755, published 25 July 2019, hereinafter Shim).
Koichi is in the known prior art field of “producing a polythiol compound comprises a step for reacting a compound represented by general formula (3) with sodium sulfide to give a polyalcohol compound represented by formula (4), and a step
for reacting the polyalcohol compound represented by formula (4) thus obtained with a thia agent to give a polythiol compound”, see Abstract, where the absorbance of a 17.3 wt % aqueous solution of sodium sulfide is within a range to “thereby making it possible to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Koichi, Paras. [0012]-[0013].
Koichi teaches the instant application claims 1, 11, 13, and 14 limitations of an optical plastic lens polythiol composition prepared by mixing an isocyanate, such as m-xylylene diisocyanate, with a resulting polythiol compound mainly composed of the isomers 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, see Paras. [0059];[0067]-[0070];[0078], the structures of the main components are 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-1, a pentafunctional structure, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-2, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-3, see Abstract; Para. [0012] in Original and Translation, and Paras. [0070];[0077];[0080]-[0083], meeting:
The composition, optical composition, tetrafunctional polythiol compound, formulas, isocyanate compound, optical product, and Formulas 1-1, 1-2, and 1-3 in instant application claim 1, in instant application claim 11, and in instant application claim 13;
Koichi mixes water, triethylamine, and 2-mercaptoethanol in a reactor and cools the mixture, then epichlorohydrin is added dropwise at a temperature of under 15 ◦C, then stirred at what appears to be room temperature, see Paras. [0077];[0081]-[0083]. Next, a 17.3 wt % aqueous solution of sodium sulfide having an absorbance at 350 nm is added dropwise followed by stirring, then hydrochloric acid and thiourea are added, stirred, and refluxed to carry out the reaction of thiouronium salt, see Paras. [0077];[0081]-[0083]. After cooling, toluene and a basic compound, such as sodium hydroxide or ammonia, is added and a hydrolysis is performed yielding a toluene solution of polythiol, see Paras. [0049];[0077];[0081]-[0083]. Then hydrochloric acid is added to the toluene solution to perform an acid water and water washing, then the residue is filtered through a PTFE-type membrane filter to obtain 254.1 parts by weight of a polythiol compound containing 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components, see Paras. [0077];[0081]-[0083].
The preparation of Koichi is substantially the same as the preparation detailed in Paras. [00149]-[00154] of the instant specification. Therefore, a prima facie case of either anticipation or obviousness has been established, see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), in the composition of Koichi prepared by substantially the same process inherently having the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products which are not expressly shown by Koichi, but are necessarily and predictably present, see MPEP 2111, meeting:
The sub-polythiol compound and formulas in instant application claim 1, in instant application claim 11, and in instant application claim 13; and,
The polymerizable composition containing the polythiol compound and polyiso(thio)cyanate compound obtained as described above, and optionally other polythiol compounds, additives, modifiers, etc., can be cured to obtain a resin, and depending on the purpose, various substances such as chain extenders, crosslinking agents, light stabilizers, ultraviolet absorbers, antioxidants, internal mold release agents, bluing agents, oil-soluble dyes, and fillers may be added, as in known molding methods, see Paras. [0066]-[0067], meeting the additives in instant application claim 14.
Koichi teaches the instant application claims 5, 8, and 9 limitations of a method of making a polythiol composition by mixing water, triethylamine, and 2-mercaptoethanol aka a polyol compound in a reactor and cooling the mixture, then epichlorohydrin is added dropwise at a temperature of under 15 ◦C over a period of time, then stirred at what appears to be room temperature, see Paras. [0080];[0082], specifically Comparative Example 2, which generates preliminary polyol compound (3), see Para. [0012] in Original and Translation, meeting:
A preliminary polyol compound in instant application claim 5;
Next, preliminary polyol compound (3) is reacted with a 17.3 wt % aqueous solution of sodium sulfide having an absorbance at 350 nm of 1.507 and stirred, see Paras. [0080];[0082], which generates the polyol intermediate of formula (4), wherein sodium sulfide is dissolved in degassed water/distilled water to a concentration of 17.3 wt %, and the aqueous solution is then placed in a quartz cell with an optical path length of 50 mm, and the absorbance at a wavelength of 350 nm was measured using a spectrophotometer, see Para. [0012] in Original and Translation and Paras. [0021];[0075], meeting:
Generating a polyol intermediate, the metal sulfide, and within the weight range and specifics of the metal sulfide absorbance in instant application claim 5;
The specific metal sulfide in instant application claim 9;
Then the polyol intermediate of formula (4) is reacted with hydrochloric acid and thiourea, then stirred and refluxed to carry out the reaction of thiouronium salt, see Paras. [0080];[0082], after washing, the residue is filtered through a PTFE-type membrane filter to obtain 254.1 parts by weight of a polythiol compound containing 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components, see Paras. [0080];[0082], meeting:
The method of preparation of a polythiol composition and converting to a polythiol based compound in instant application claim 5; and,
If the absorbance of the sodium sulfide used is outside the preferred range when measured by the above-mentioned measurement method, or if the absorbance of sodium sulfide after aging falls outside the preferred range, the sodium sulfide is purified to bring the absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm by dissolving in a solvent, such as distilled water, then purified by crystallization/drying, then absorption until the sodium sulfide is within the preferred absorbance range of about 0.7, 0.718, 1.507, or 1.853, see Paras. [0018];[0021];[0075];[0081]-[0083], meeting washing in instant application claim 8;
A resulting polythiol compound mainly composed of the isomers 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, see Paras. [0059];[0067]-[0070];[0078], the structures of the main components are 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-1, a pentafunctional structure, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-2, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-3, see Abstract; Para. [0012] in Original and Translation, and Paras. [0070];[0077];[0080]-[0083], meeting the tetrafunctional polythiol compound, the sub-polythiol compound, and Formulas 1-1, 1-2, and 1-3 in instant application claim 5.
Koichi mixes water, triethylamine, and 2-mercaptoethanol in a reactor and cools the mixture, then epichlorohydrin is added dropwise at a temperature of under 15 ◦C, then stirred at what appears to be room temperature, see Paras. [0077];[0081]-[0083]. Next, a 17.3 wt % aqueous solution of sodium sulfide having an absorbance at 350 nm is added dropwise followed by stirring, then hydrochloric acid and thiourea are added, stirred, and refluxed to carry out the reaction of thiouronium salt, see Paras. [0077];[0081]-[0083]. After cooling, toluene and a basic compound, such as sodium hydroxide or ammonia, is added and a hydrolysis is performed yielding a toluene solution of polythiol, see Paras. [0049];[0077];[0081]-[0083]. Then hydrochloric acid is added to the toluene solution to perform an acid water and water washing, then the residue is filtered through a PTFE-type membrane filter to obtain 254.1 parts by weight of a polythiol compound containing 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components, see Paras. [0077];[0081]-[0083].
The preparation of Koichi is substantially the same as the preparation detailed in Paras. [00149]-[00154] of the instant specification. Therefore, a prima facie case of either anticipation or obviousness has been established, see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), in the composition of Koichi prepared by substantially the same process inherently having the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products which are not expressly shown by Koichi, but are necessarily and predictably present, see MPEP 2111, meeting:
The sub-polythiol compound and formulas in instant application claim 5.
Koichi teaches the instant application claim 12 limitations of a method of preparing an optical composition, such as plastic lenses, see Para. [0078], by mixing a polythiol compound containing mainly 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components prepared by the method as specifically detailed above with an isocyanate, such as m-xylylene diisocyanate, see Paras. [0012];[0021];[0075];[0078];[0080];[0082], meeting:
The method, polythiol-based compound, preparation of the polythiol-based compound, and within the range and specifics of the metal sulfide absorbance in instant application claim 12;
A resulting polythiol compound mainly composed of the isomers 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, see Paras. [0059];[0067]-[0070];[0078], the structures of the main components are 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-1, a pentafunctional structure, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-2, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane
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aka instantly claimed tetrafunctional polythiol of Formula 1-3, see Abstract; Para. [0012] in Original and Translation, and Paras. [0070];[0077];[0080]-[0083], meeting the tetrafunctional polythiol compound, the sub-polythiol compound, and Formulas 1-1, 1-2, and 1-3 in instant application claim 12.
Koichi mixes water, triethylamine, and 2-mercaptoethanol in a reactor and cools the mixture, then epichlorohydrin is added dropwise at a temperature of under 15 ◦C, then stirred at what appears to be room temperature, see Paras. [0077];[0081]-[0083]. Next, a 17.3 wt % aqueous solution of sodium sulfide having an absorbance at 350 nm is added dropwise followed by stirring, then hydrochloric acid and thiourea are added, stirred, and refluxed to carry out the reaction of thiouronium salt, see Paras. [0077];[0081]-[0083]. After cooling, toluene and a basic compound, such as sodium hydroxide or ammonia, is added and a hydrolysis is performed yielding a toluene solution of polythiol, see Paras. [0049];[0077];[0081]-[0083]. Then hydrochloric acid is added to the toluene solution to perform an acid water and water washing, then the residue is filtered through a PTFE-type membrane filter to obtain 254.1 parts by weight of a polythiol compound containing 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, and 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components, see Paras. [0077];[0081]-[0083].
The preparation of Koichi is substantially the same as the preparation detailed in Paras. [00149]-[00154] of the instant specification. Therefore, a prima facie case of either anticipation or obviousness has been established, see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), in the composition of Koichi prepared by substantially the same process inherently having the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products which are not expressly shown by Koichi, but are necessarily and predictably present, see MPEP 2111, meeting:
The sub-polythiol compound and formulas in instant application claim 12.
Koichi does not specifically teach:
The instant application claims 1, 5, and 11-13 C13 and C15 sub-polythiol formulas of 2-1 and 2-2.
Geun relating to thiol-based compositions for optical materials, see Abstract, teaches thiol compounds with various structures are known, where when a thiol compound is synthesized using a radical reaction of a compound containing a double unsaturated carbon bond and then produced by a thiourea reaction, a thiol compound with a relatively high yield (87%) can be obtained, see Para. [0005]. The method comprises the steps of reacting 2-mercaptoethanol and epichlorohydrin as in the following reaction scheme 1 to obtain a diol compound, substituting the obtained compound with hydrogen sulfide salt to react the obtained compound with epichlorohydrin to obtain a polyalcohol compound, and reacting the obtained polyalcohol compound with thiourea and hydrogen chloride to produce an isothiuronium salt, and hydrolyzing the isothiuronium salt with ammonia water to produce a polythiol compound of the following reaction scheme 1 having a uniform molecular weight and a low polyol content, see Para. [0012], where compound isomers such as Formula 1
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and Formula 2
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are produced, see Paras. [0022];[0025] of the Original and Paras. [0012]-[0028] of the Translation.
The Geun Formula 1 structure is a homolog to both of the specific formulas in instant application claims 3 and 4. Compounds which are analogs or “homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).”, see MPEP 2144.09 and the examiners following annotations,
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. The addition of 1 aka C3H8S at the arrow 1, meets the C15 structure in instant application claim 1, in instant application claim 5, in instant application claim 11, in instant application claim 12, and in instant application claim 13, and the addition of 1 aka C3H8S at the arrow 1 along with the removal of CH2CH2SH at arrow 2 meets the C13 structure in instant application claim 1, in instant application claim 5, in instant application claim 11, in instant application claim 12, and in instant application claim 13.
Koichi does not specifically teach:
The instant application claims 5, 8, 10, and 12 limitations of wherein the metal sulfide has an absorbance of 0.75 to 1.45; and,
The functional peak area ratio range limitations in instant application claims 1, 5, and 11-13.
In regard to the functional limitations in claims 1, 5, and 11-13 of “wherein a peak area ratio of the sub-polythiol compound represented by Equation 1 below ranges from 1% to 5%, [Equation 1] Sub-polythiol compound peak area ratio = 100% x [(Peak region (%) of C13H28S9) + (Peak region (%) of C15H32S10)]/(Peak region of tetrafunctional polythiol compound (%)), in Equation 1, each peak region (%) refers to the corresponding peak area (%) measured for the tetrafunctional polythiol compound and for the sub-polythiol compounds represented by C13H28S9 and C15H32S10 respectively in a high performance liquid chromatography (HPLC) analysis graph obtained at a wavelength of 230 nm”.
Koichi’s obtained analytical results are shown in Table 1, Para. [0085]. Patents are part of the literature of the prior art, relevant for all they contain, and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments, see MPEP 2123, and Koichi teaches Comparative Example 1 with 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 0.718 is used, Comparative Example 2 with a 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 1.507 is used, and Comparative Example 3 with 17.3% aqueous sodium sulfide solution with an absorbance at 350 nm of 1.853 is used as compared to embodiments that use a sodium sulfide absorbance of 0.70 or less at a wavelength of 350 nm by preparing a 17.3 wt % aqueous solution and measuring in a quartz cell with an optical path length of 50 mm, see Paras. [0016];[0080]-[0083], Table 1.
The Koichi Comparative Example 2 has substantially the same 17.3% aqueous sodium sulfide solution absorbance at 350 nm of 1.5 as instant specification Example 3 at 1.45, see instant specification Paras. [00158]-[00163];[00220], Table 1. “[A] prima facie case of obviousness exists” where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” and where the claimed ranges or amounts do not overlap with the prior art but are merely close, see MPEP 2144.05. Koichi teaches the sodium sulfide “preferably has an absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm of 0.70 or less”, see Para. [0018], and washing/purification of the sodium sulfide in order “to bring the absorbance of a 17.3 wt % aqueous sodium sulfide solution at a wavelength of 350 nm into the optimal range”, see Para. [0021]; therefore, Koichi does not teach away from a variation in the absorbance because Koichi does not “criticize, discredit, or otherwise discourage” the use of differing absorbances to obtain the optimal 17.3 wt % aqueous solution of sodium sulfide absorbance at a wavelength of 350 nm. On the contrary, Koichi teaches variations of the absorbance “within a range “thereby making it possible to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Koichi, Para. [0013] and MPEP 2145 X.D.1.
As a result, one of ordinary skill in the art, before the effective filing date of the claimed invention, would be able to predictably determine the optimal 17.3 wt % aqueous solution of sodium sulfide absorbance at a wavelength of 350 nm within a specific range, such as 0.7 to 1.9 or 0.75 to 1.45, “to improve the hue and other aspects of the polythiol compound and further improve the appearance, such as the hue, of a molded product obtained from the polythiol compound”, see Koichi, Para. [0013], meeting within the range of the metal sulfide has an absorbance of 0.75 to 1.45 in instant application claim 5, in instant application claim 8, in instant application claim 10, and in instant application claim 12.
As established above, it is obvious to one of ordinary skill in the art to adjust the absorbance range of Koichi to between 0.75 to 1.45 and the Koichi Examples are made by substantially the same process as the instant specification. “Products of identical chemical composition can not have mutually exclusive properties,” see In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2112.01. Instant specification Table 1, Example 3 shows a Ratio in Equation 1 (%) of 3.8 which as stated in instant specification Paras. [0071]-[0080] the claimed ratio is directly related to the absorbance and dosage of the metal sulfide. Therefore, the Koichi Comparative Example 2 teaching of substantially the same process, metal sulfide dosage, and metal sulfide solution absorbance at 350 nm would naturally lead a person of ordinary skill in the art to the reasonable expectation, given all other parameters remaining the same, that the Koichi synthesis of the identical chemical composition as instantly claimed leads to the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, which are not expressly shown by Koichi; however, they are necessarily and predictably present within the instantly claimed obvious Equation 1 ratio range, see MPEP 2111 and 2112, meeting:
Within the Equation 1 ratio range in instant application claim 1, in instant application claim 5, in instant application claim 11, in instant application claim 12, and in instant application claim 13.
In addition, “[t]he discovery of a previously unappreciated property of a prior art composition,” such as a the identification and quantification of intermediate compounds that are necessarily present in substantially the same process to obtain the same product composition, “or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer” and the claiming of a new use, new function or unknown property, such as Equation 1, which is inherently present in the prior art does not necessarily make the claim patentable, see MPEP 2112 I.
Koichi does not specifically teach:
The presence of polythiol reaction oligomers and by-products suggested by instant application claims 1, 5, and 11-13; and,
The instant application claim 5 limitation of the sub-polythiol having a greater molecular weight or function than the tetrafunctional polythiol.
Shim relating to the production of polythiols for optical lenses, see Abstract; Paras. [0032]-[0043];[0061]-[0066], teaches a reaction scheme creates Formulas 1, 2, 3, 4, and 5, see Paras. [0032]-[0043] and below,
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, meeting the formulas in instant application claim 1, where the polythiol composition thus obtained contained 86.0% by weight of the polythiol compounds (a first polythiol compound) represented by Formula 1, 2, and 3, 3.5% by weight of the polythiol compound represented by Formula 5 (a second polythiol compound), and 10.5% by weight of oligomeric compounds other than the Formula 1 to 5, the above Formula 1, 2, and 3 are tetrafunctional structural isomers, see Paras. [0068]-[0075], meeting:
The reaction creates polythiol reaction oligomers and by-products suggested by instant application claim 1, in instant application claim 5, in instant application claim 11, in instant application claim 12, and in instant application claim 13; and,
The sub-polythiol having a greater molecular weight or function than the tetrafunctional polythiol in instant application claim 5.
In reference to the above claims, an “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, see MPEP 2145 X.B. Since Koichi does not teach away, or otherwise discourage, or discredit the use of differing absorbances to obtain the optimal 17.3 wt % aqueous solution of sodium sulfide absorbance at a wavelength of 350 nm to impart the desired optical quality of the resultant product, the prior art contains “detailed enabling methodology, a suggestion to modify the prior art to produce the claimed invention, and evidence suggesting the modification would be successful”, see MPEP 2145 X.B.; therefore, it would have been obvious for one of ordinary skill in the art at the time the invention was made to try the differing absorbances of the 17.3 wt % aqueous solution of sodium sulfide within the ranges of 0.7 to 1.9 to obtain the desired optical quality of the resultant product.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, for a person or ordinary skill in the art to recognize that the Koichi synthesis and Shim synthesis of substantially identical processes will produce substantially identical chemical compositions as instantly claimed leading to a variety of sub-polythiol synthesis reaction intermediate compounds, oligomers, and/or by-products, such as the additional polythiols Formulas 4 and 5, and additional oligomers as taught by Shim with a reasonable predictability of success for the purpose of efficiently producing a polythiol composition having a first polythiol compound having mercapto groups only as a hydrogen-bondable functional group, a second polythiol compound having mercapto groups as a hydrogen-bondable functional group and a hydrogen-bondable functional group other than a mercapto group, and oligomeric compounds in an appropriate amount for controlling physical properties of the polythiol composition, such as viscosity, the generation of striae, bubbles, and the like, see Shim, Paras. [0014];[0072];[0075];[0088]-[0089], Table 1.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art, relevant for all they contain, see MPEP 2123, and both Koichi and Shim teach producing the same polythiols for use in optical devices, such as lenses, a person of ordinary skill in the art has good reason to prepare homologs, isomers, and oligomers of polythiols by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a polythiol composition having a first polythiol compound having mercapto groups only as a hydrogen-bondable functional group, a second polythiol compound having mercapto groups as a hydrogen-bondable functional group and a hydrogen-bondable functional group other than a mercapto group, and oligomeric compounds in an appropriate amount for controlling physical properties of the polythiol composition, such as viscosity, the generation of striae, bubbles, and the like, see Shim, Paras. [0014];[0072];[0075];[0088]-[0089], Table 1 and MPEP 2141.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, for a person or ordinary skill in the art to recognize the Koichi synthesis and Geun synthesis of the substantially identical processes will produce substantially identical chemical compositions as instantly claimed having a variety of instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, such as the homologs as taught by Geun, with a reasonable predictability of success for the purpose of efficiently producing a polythiol composition of desired structural composition having a uniform molecular weight; while also recognizing the compounds that vary from the uniform molecular weight, in order to produce the desired structured polythiol with a low polyol content, at high yield, high purity, and with reduced by-products that cause yellowing, see Geun, Paras. [0005];[0012];[0028];[0036].
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art, relevant for all they contain, see MPEP 2123, and both Koichi and Geun teach producing substantially the same polythiols for use in optical devices, such as lenses, a person of ordinary skill in the art has good reason to prepare homologs, isomers, and oligomers of polythiols by pursuing the known options within their technical grasp before the effective filing date of the claimed invention for the benefit of efficiently producing a polythiol composition of desired structural composition having a uniform molecular weight; while also recognizing the compounds that vary from the uniform molecular weight, in order to produce the desired structured polythiol with a low polyol content, at high yield, high purity, and with reduced by-products that cause yellowing, see Geun, Paras. [0005];[0012];[0028];[0036] and MPEP 2141.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
“The discovery of a previously unappreciated property of a prior art composition,” such as the quantification and identification of synthesis reaction intermediate compounds and/or by-products, “or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer” and the claiming of a new use, new function or unknown property, such as the quantification and identification of synthesis reaction intermediate compounds and/or by-products, which is inherently present in the prior art does not necessarily make the claim patentable, see MPEP 2112 I.
In addition, “[i]t is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree,” such as the optimal absorbance of the sodium sulfide aqueous solution, “or the substitution of equivalents doing the same thing as the original invention, by substantially the same means,” such as the optimal absorbance of the sodium sulfide aqueous solution and the variety of instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, “is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
Furthermore, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103”, see MPEP 2112 III. In this case, Koichi synthesis of the identical chemical composition as instantly claimed leads to the instantly claimed C13 and C15 sub-polythiol synthesis reaction intermediate compounds and/or by-products, which are not expressly shown by Koichi; however, they are necessarily and predictably present within the instantly claimed obvious Equation 1 ratio range, see MPEP 2111 and 2112.
Conclusion
No claims are allowed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
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