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 .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 46-65 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.
4. Claim 46 recites that “the free radical polymerization initiator comprises an azo free radical, an organic peroxide polymerization initiator, or a combination thereof” in lines 6-8 and also that the composition “comprises an organic peroxide” in line 11. The scope of the claim is confusing given that it is not clear if the composition comprises two organic peroxides or if the recitation in line 11 is meant to further limit the organic peroxide polymerization initiator.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 47 and 55-58 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 47 is improperly dependent because it fails to further limit the subject matter of Claim 46 on which it depends.
Claim 55 is improperly dependent because it fails to include all the limitations of Claim 46 on which it depends. Claim 55, line 4, requires “the composition does not comprise the free radical polymerization initiator” while Claim 46, line 5, requires a free radical polymerization initiator.
Claims 56-58 are rejected as dependent on rejected Claim 55.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 46-54 and 59-65 are rejected under 35 U.S.C. 103 as being unpatentable over Bojkova et al. (US 2007/0142605 A1) in view of Kang et al. (GB 2123431 A).
Regarding Claims 46-50, 52, Bojkova discloses the production of polythiols by reacting a mixture (i.e. composition) of a dithiol and a diene compound (Abstract), where the diene compound may include divinyl or diallyl (i.e. polyalkenyl) compounds (para 0083). The reaction mixture further comprises a radical initiator, such as azo or peroxide type free-radical initiators, or a combination of the two (para 0102). Example 1 uses an azo initiator in an amount of 0.1 wt.% (1.25/(1.25+888.53+311.47). Therefore, it would have been obvious to one of ordinary skill in the art to use the azo or peroxide type free-radical initiators in an amount of 0.1 wt.%.
The azo free-radical initiator may be VAZO-67 (para 0102), which is the same azo initiator used in the present invention (present specification, Table 3), has a formula of 2,2’-azodi(2-methylbutyronitrile) as claimed, and would therefore have a 10-hour half-life decomposition temperature as claimed.
The peroxide type free-radical initiator may be an organic peroxide, such as t-butyl peroxide (para 0207).
Bojkova does not disclose the specific organic peroxide as claimed.
Kang discloses the production of polythioethers (Abstract), using an organic peroxide free radical initiator (page 3, lines 22-25). Kang discloses specific t-butyl peroxides suitable for this reaction include 1,1-di(t-butylperoxy)-3,3,5-trimethyl-cyclohexane (page 3, lines 46-47).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Bojkova to incorporate the teachings of Kang, and use 1,1-di(t-butylperoxy)-3,3,5-trimethyl-cyclohexane as the organic peroxide free-radical initiator, since this would be a suitable organic peroxide for the reaction mixture.
Since 1,1-di(t-butylperoxy)-3,3,5-trimethyl-cyclohexane is the same organic peroxide as claimed, it would necessarily have a 10-hour half-life decomposition temperature as claimed.
Regarding Claim 51, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 46 above. Bojkova further discloses the reaction mixture may include a photoinitiator for reaction by irradiation with ultraviolet light (i.e. actinic radiation-activated free radical polymerization initiator) (paras 0208, 0210).
Regarding Claims 53-54, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 46 above. Bojkova further discloses the reaction mixture may comprise 0.01 to 5% by weight base catalyst such as 1,8-diazabicyclo[5.4.0]undec-7-ene (para 0111), which according to the present specification is a suitable reducing agent (para 348).
Regarding Claim 59, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 46 above. While there is no disclosure of storage stability, since the reaction mixture comprises all the materials of the present invention as claimed, it would necessarily have storage stability as claimed.
Regarding Claims 60-61, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 46 above. Bojkova further discloses a cured product of the reaction mixture (para 0278).
Regarding Claims 62 and 65, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 46 above. Bojkova further discloses the reaction mixture applied as a coating (i.e. sealant) on a polymerizate surface (para 0276).
Regrading Claim 63, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 62 above. Bojkova further discloses the reaction temperature may be from room temperature to 100 C (para 0103).
Regarding Claim 64, Bojkova in view of Kang discloses all the limitations of the present invention according to Claim 62 above. Bojkova further discloses the reaction can include irradiation with ultraviolet light (i.e. actinic radiation) (para 0208).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787