Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prior Art Rejections
2. 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.
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.
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.
3. Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/168419 A1 ( US 2020/0223975 A1 being an English language equivalent).
WO 2018/168419 A1 discloses a polymerizable composition suitable for producing an optical material of high transparency comprising a polythiol compound, corresponding to that claims 1, 2, and 6 (see abstract and paragraph [0029] within US 2020/0223975 A1, wherein disclosed 1,2-bis(2-mercaptoethylthio)-3-mercaptopropane corresponds to Chemical Formula 1 of instant claim 2); an isocyanate compound (see abstract within WO 2018/168419 A1); and a benzyl halide compound, corresponding to that of claims 1, 3, 4, 6, 7, and 8 (see abstract and paragraphs [0034]-[0037] within US 2020/0223975 A1). Furthermore, within Example 1 (see paragraph [0066] within US 2020/0223975 A1), a composition comprising 11.2 parts by mass of bis(2-mercaptoethyl)sulfide, xylylene diisocyanate, and 0.01 part by mass of xylylene dichloride, which calculates to approximately 893 ppm, based on the weight of polythiol is disclosed, thereby meeting claims 1 and 3-10.
4. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/168419 A1 ( US 2020/0223975 A1 being an English language equivalent) in view of WO 2018/003059 A1.
WO 2018/168419 A1 discloses a polymerizable composition suitable for producing an optical material of high transparency comprising a polythiol compound, corresponding to that claim 2 (see abstract and paragraph [0029] within US 2020/0223975 A1, wherein disclosed 1,2-bis(2-mercaptoethylthio)-3-mercaptopropane corresponds to Chemical Formula 1 of instant claim 2); an isocyanate compound (see abstract within WO 2018/168419 A1); and a benzyl halide compound, corresponding to that of claim 1 (see abstract and paragraphs [0034]-[0037] within US 2020/0223975 A1). Furthermore, within Example 1 (see paragraph [0066] within US 2020/0223975 A1), a composition comprising 11.2 parts by mass of bis(2-mercaptoethyl)sulfide, xylylene diisocyanate, and 0.01 part by mass of xylylene dichloride, which calculates to approximately 893 ppm, based on the weight of polythiol, is disclosed.
5. Though the primary reference fails to disclose polythiol compounds corresponding to Chemical Formula 2-1, Chemical Formula 2-2, and Chemical Formula 2-3 of instant claim 2, these compounds were known polythiol reactants for producing optical compositions through reaction with polyisocyanates. See structures (4)-(7) within the abstract; the last three paragraphs of page 7 of the English translation, and the first three paragraphs of page 8 of the English translation. Since the primary reference establishes within paragraph [0029] the equivalency of the polythiol used in the cited example and 1,2-bis(2-mercaptoethylthio)-3-mercaptopropane, corresponding to Chemical Formula 1 of instant claim 2, and since the secondary reference establishes the equivalency of instant Chemical Formula 1 (structure 4 within abstract) to Chemical Formula 2-1, Chemical Formula 2-2, and Chemical Formula 2-3 (structures 5-7 within abstract), the position is taken that it would have been obvious to use these polythiols for their art recognized purpose within the benzyl halide-containing compositions of the primary reference and further to incorporate the polythiols and benzyl halide in amounts corresponding to that of the example, such that the claimed quantity would have been realized and articles having improved optical properties would have been obtained.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765