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 .
Double Patenting
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,583,819. Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to polythiol compositions and optical articles prepared therefrom comprising a main tetrafunctional polythiol and a minor amount sub-polythiol compound. The sub-polythiol compound is present in overlapping amounts within the claimed inventions. The copending application does not teach certain properties pertaining to the polythiol composition. However, said properties would be present absent a showing the contrary.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4, and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP-2020026412 to Kaoru et al.
As to claims 1 and 10-15, Karou discloses a process for preparing a polythiol composition and reacting of the polythiol composition with polyisocyanates to prepare optical articles (0062-0067) wherein the process includes adding 51.2 parts by weight of 2-mercaptoethanol, 26.5 parts by weight of distilled water, and 0.16 parts by weight of a 49% by weight sodium hydroxide aqueous solution are charged to a reactor, followed by the addition of 61.99 parts of epichlorohydrin added dropwise at 9-11°C for 6.5 hours. Next, 150.0 parts by weight of 17.3 sodium sulfate aqueous solution is added dropwise at 7-37°C over 5.5 hours to obtain a polyalcohol. The polyalcohol is added to hydrochloric acid at 100°C and stirred for 8 hours (0082). The additional process steps include reacting in 30 mL of distilled water, 1.21 parts of thiourea, 10mL of ethanol and 1.02 part of the polychloro composition derived from the polyalcohol to obtain a mixture of tetrathiol compounds represented by the following:
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The method of preparation of a polythiol composition and converting to a polythiol based compound taught in Karou similar to the method used in the instant specification. Karou discloses an additional heating step at 100°C for 8 hours after the polyalcohol is formed. The timing of the temperature increase that results in reduced side products is different than the instant invention. However, one of ordinary skill in the art would conclude that some higher molecular weight polythiols would still be present including those within the claims and those within the claimed amounts even after the distillation step to remove solvents and low-boiling compounds (Examples). Further, Karou discloses the reaction temperature ranges from 10 to 100°C and within the aforementioned range the reaction proceeds gently without the accumulation of unreacted substances in the reaction system and the generation of by-products due to side reactions is suppressed (0051)
Therefore, the preparation of the polythiol composition would contain mixtures of tetrafunctional polythiol in combination with higher molecular weight polythiols including those claimed and within the claimed values. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product including greater than 0 to 2.5% by weight of the higher molecular weight by-products.
As to claims 2, 4 and 7-9, the method of preparation of a polythiol composition and converting to a polythiol based compound taught in Karou is the same as the method used in the instant specification. Accordingly, one of ordinary skill in the art would conclude that some higher molecular weight polythiols are present including those within the claims and those within the claimed amounts even after the distillation step to remove solvents and low- boiling compounds (0056). Therefore, the preparation of the polythiol composition would contain mixtures of tetrafunctional polythiol in combination with higher molecular weight polythiols and would further provide the polythiol composition with the same values of the instant claims. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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