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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/31/26 has been entered.
Response to Amendment
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 amendment, which merely combines previously field claim 5 with claim 1, is supported.
The previous restriction and 102/103 rejections have been maintained and repeated.
Claim Rejections - 35 USC § 102
Claim(s) 1-4, 6-12, and 16 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Denton et al. (WO2015123552, machine translation provided).
As to claims 1-4, 6-12, and 16, Denton (claims, abs., figures, examples, 122-124) discloses the claimed radical polymerization process of producing a sulfur copolymer comprising melting sulfur (50 wt%) at 180 °C (enables thermal activation of scission of dynamic S-S bond and forming sulfur radicals) with addition of propylenedioxythiophenes (40wt%) (would inherently form a prepolymer) followed by further heating at 180 °C of the prepolymer (would inherently enables thermal activation of scission of dynamic S-S bond and forming sulfur radicals in the molten prepolymer) with further addition of 1 ,3-diisopropenyl benzene (10 wt%, enables branching):
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Denton teaches a process of making and raw materials that are indistinguishable from the instant process recited in claims 1-4, 6-12, and 16. In light of this, it appears that the adduct would have inherently possessed the claimed properties such as tunability, enabled miscibility, solubility., thiol-ene or other related process, improved processability, etc.. See MPEP § 2112.
Regarding the amendment of claim 1, the disclosed two temperatures, both at 180 °C, meet the claimed first and second temperatures. It is duly notified the claimed first and second temperatures can be identical, e.g., 140 ° C, recited in instant claims 13 and 16.
Claim Rejections - 35 USC § 103
Claim(s) 13 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Denton et al. (WO2015123552, machine translation provided).
Disclosure of Denton is adequately set forth in ¶1 and is incorporated herein by reference.
As to claim 13, the sulfur can be heated at 120 to 230 °C (claims 117-119) for copolymerization, overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s attack (7-8) on Denton for not teaching the claimed adding the second comonomer to the molten sulfur prepolymer appears erroneous, because Denton teaches further heating at 180 °C of the prepolymer before adding 1,3-diisopropenyl benzene. The heating temperature (180 °C) meets the claimed range (second temperature) of instant claim 16, so the heating condition would inherently enable thermal activation of scission of dynamic S-S bond and forming sulfur radicals in the molten prepolymer. Denton teaches a process of making and raw materials that are indistinguishable from the instant process recited in claims 1-4, 6-12, and 16. In light of this, it appears that the heating condition would inherently enable thermal activation of scission of dynamic S-S bond and forming sulfur radicals in the molten prepolymer. See MPEP § 2112. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Applicant’s attack (8-9) on Denton for not teaching the claimed two step polymerization appears erroneous, because Denton teaches the claimed two step polymerizations. Denton (claims, abs., figures, examples, 122-124) discloses the claimed radical polymerization process of producing a sulfur copolymer comprising melting sulfur (50 wt%) at 180 °C (enables thermal activation of scission of dynamic S-S bond and forming sulfur radicals) with addition of propylenedioxythiophenes (40wt%) (would inherently form a prepolymer, first step) followed by further heating 180 °C of the prepolymer (would inherently enables thermal activation of scission of dynamic S-S bond and forming sulfur radicals) with further addition of 1 ,3-diisopropenyl benzene (10 wt%, enables branching, second step).
Applicant's argument (9-10) of unexpected results to rebut the previous 102 rejections of claims 1-4, 6-12, and 16 appears erroneous and irrelevant, because arguing unexpected results cannot overcome 102 rejections.
Regarding claim 13, applicant's argument (9-10) of unexpected results is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Denton. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range. Furthermore, the argument cannot overcome the 102 rejections.
Therefore, the previous restriction and 102/103 rejections have been maintained and repeated. See above rejections.
This is an RCE of applicant’s earlier Application. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP §706.07(b). 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 mailing 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.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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