DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 1, 10 objected to because of the following informalities: the parentheses should be removed. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites an optical material comprising an episulfide compound and the sulfur-containing polymer compound. However, the optical material is formed by curing the curable composition of claim 1. In a cured product, the ingredients lose their original characteristic present in curable condition. In other words, the optical material does not comprise the episulfide compound and the sulfur-containing polymer compound. For purposes of expediting prosecution, the claim is interpreted as an optical material comprises a cured product of formed by curing the curable composition of claim 1.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 5, 8-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (US 2021/0163684, equivalent with WO2020235913).
Claim(s) 1-2, 5, 8-10: Kim teaches a curable composition comprising an episulfide
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and a cyclic compound
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(table 1, example 1), the weight ratio of the cyclic compound and the episulfide is 1:6.7. Kim further teaches an optical material comprising a cured product of the curable composition (abstract).
Claims 11-13: Because Kim teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claim(s) 1-5, 8-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Choi et al (US 2022/0204702, equivalent with WO2021085956).
Choi teaches a curable composition comprising an episulfide and a compound
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(claims, example 4), the weight ratio of the compound and the episulfide is 1:10. Choi further teaches an optical material comprising a cured product of the curable composition.
Because Choi teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2021/0163684) in view of Kamura et al (US 2014/0357835) and Kariyazono et al (US 2017/0334876).
Kim teaches the limitation of claim 1, as discussed above.
Kim does not teach a sulfur particle.
However, Kamura teaches including sulfur can improve the refractive index of an optical material [0026]. Kariyazono teaches the sulfur particle size should be small than mesh size of 60 (250um), so that it can be dissolved completely [0049]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include sulfur in the curable composition to adjust refractive index when a higher refractive index optical material is desired.
Claims 1-5, 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oki et al (JP2006265408).
In setting forth this rejection a machine translation of JP2006265408 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Claims 1-3, 8-10: Oki teaches a curable composition comprising A, B1, C and D [0012]. B1 is an aliphatic liner oligomer such as polyethylene sulfide thiol, polyethylene disulfide thiol and polyethylene polysulfide thiol, polyethylene sulfide diol polyethylene disulfide diol and polyethylene polysulfide diol [0022-0023]. D is bis(β-epithiopropyl) sulfide [0058]. Oki further teaches an optical material comprising a cured product of the curable composition
Oki does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claim 4: Oki does not explicitly disclose how many sulfide in the polysulfide section.
However, Oki discloses sulfide and disulfide and then followed with polysulfide, it is reasonably believed the polysulfide includes trisulfide and tetrasulfide, the latter results in a repeating unit of
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Claim 5: the composition comprises 10-50 wt% of B1 and 20-50 wt% of D. Therefore, the weight ratio would overlap the claimed range.
Claims 11-13: Oki is silent with respect to the properties of the cured article. However, the teachings from Oki have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed physical properties to naturally arise.
Claims 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oki et al (JP2006265408) in view of Kamura et al (US 2014/0357835) and Kariyazono et al (US 2017/0334876).
Oki teaches the limitation of claim 1, as discussed above. Oki further teaches a refractive index improving component can be included [0043].
Oki does not teach a sulfur particle.
However, Kamura teaches sulfur particle can improve refractive index [0026]. Kariyazono teaches the sulfur particle size should be small than mesh size of 60 (250um), so that it can be dissolved completely [0049]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include sulfur in the curable composition to improve refractive index.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 8-9 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-5 of U.S. Patent No.12/371,533. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘533 claims a curable composition comprising an episulfide compound and a sulfur containing polymer.
Claims 1-2, 5, 8-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9, 12, 14 of U.S. Patent No.11/945,914. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘914 claims a curable composition comprising an episulfide compound and a sulfur containing polymer.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763