DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 02/25/2026 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected 02/25/2026, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/25/2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-11 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 1 in lines 3-4, claim 2 in line 3, claim 3 in lines 2-3, claim 5 in lies 2-3, and claim 8 in lines 2-3 recite the limitation “a total mass (100 parts by mass)” in lines 2-3, which is indefinite because it is unclear if “100 parts by mass” is a limitation, an abbreviation, or a reference character because it is enclosed in parentheses. For further examination of the claims, this limitation is interpreted as “100 parts by mass”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 3, 4, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa et al. (JP 2012-233044 A, cited in IDS, made of record on 07/19/2023, untranslated patent or machine translation in English used for citation as indicated, made of record on 01/30/2026).
Regarding claim 1, Hayakawa a curable composition containing a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), wherein the sulfur is cyclic S8 sulfur (translation [0011]), wherein the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), wherein unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], wherein when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], wherein hindered amines have low activity as polymerization catalysts for episulfide compounds [0013] wherein the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), wherein the curable composition has photocurability (translation [0007]), where in examples, the amount of the episulfide compound is 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, 50 g, 75 g, or 70 g, and the amount of sulfur is 6.0 g, 6.0 g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, 7.6 g, 8.8 g, or 11.0 g, respectively (translation [0025], [0026], [0028], [0030], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-9), which suggests carrying out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, selecting the amount of Hayakawa’s sulfur to be 6.0 g, 6.0 g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, 7.6 g, 8.8 g, or 11.0 g per 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, 50 g, 75 g, or 70 g of Hayakawa’s episulfide compound, respectively, which reads on a photocurable composition comprising an episulfide compound (b) and a photopolymerization initiator (c), and which suggests the photocurable composition further comprising a sulfur (a) having a cyclic structure represented by the formula (1), wherein a content of the sulfur (a) is 9.1, 9.1, 6.7, 7.2, 8.9, 11, 13, 11, or 14 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed. The content of the sulfur (a) is based on the calculations 6.0 / (6.0 + 60) * 100 = 9.1, 6.0 / (6.0 + 60) * 100 = 9.1, 5.7 / (5.7 + 80) * 100 = 6.7, 5.4 / (5.4 + 70) * 100 = 7.2, 6.8 / (6.8 + 70) * 100 = 8.9, 7.2 / (7.2 + 60) * 100 = 11, 7.6 / (7.6 + 50) * 100 = 13, 8.8 / (8.8 + 75) * 100 = 11, and 11.0 / (11.0 + 70) * 100 = 14.
Hayakawa does not teach that the photocurable further comprises sulfur (a) having a cyclic structure represented by the formula (1), wherein a content of the sulfur (a) is 1 to 28 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, and to select the amount of Hayakawa’s sulfur to be 6.0 g, 6.0 g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, 7.6 g, 8.8 g, or 11.0 g per 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, 50 g, 75 g, or 70 g of Hayakawa’s episulfide compound, respectively. The proposed modification would read on the photocurable composition further comprising a sulfur (a) having a cyclic structure represented by the formula (1), wherein a content of the sulfur (a) is 9.1, 9.1, 6.7, 7.2, 8.9, 11, 13, 11, or 14 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing amounts of Hayakawa’s sulfur and polythiol that are suitable for Hayakawa’s curable composition and for providing all the ingredients of Hayakawa’s curable composition at the time that Hayakawa’s polythiol oligomer is obtained without the need to add Hayakawa’s episulfide compound and photobase generator to Hayakawa’s polythiol oligomer after Hayakawa’s polythiol oligomer is obtained, which would have simplified preparation of Hayakawa’s curable composition because Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], that hindered amines have low activity as polymerization catalysts for episulfide compounds [0013], that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that in examples, the amount of the episulfide compound is 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, 50 g, 75 g, or 70 g, and the amount of sulfur is 6.0 g, 6.0 g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, 7.6 g, 8.8 g, or 11.0 g, respectively (translation [0025], [0026], [0028], [0030], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-9).
Regarding claims 3 and 4, Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the sulfur is cyclic S8 sulfur (translation [0011]), that the amount of sulfur used is preferably in the range of 0.2 to 0.95 moles of sulfur atoms per mole of thiol groups (translation [0012]), that if the amount is less than 0.2 moles, the conversion rate of polythiol is too low to be practical, that if the amount is more than 0.95 moles, unreacted sulfur tends to remain, which is undesirable (translation [0012]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], that hindered amines have low activity as polymerization catalysts for episulfide compounds [0013], that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that in examples, the amount and species of the polythiol is 40 g 40 g, 20 g, 30 g, 30 g, 40 g, or 50 g of 2,5-dimercaptomethyl-1,4-dithiane, the amount of the sulfur is 6.0 g, 6.0, g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, or 7.6 g, respectively, the amount and species of the episulfide compound is 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, or 50 g of bis(2,3-epithiopropyl) sulfide, respectively, and the amount of sulfur used is 0.50, 0.50, 0.94, 0.60, 0.75, 0.60, or 0.50 mol of sulfur atoms per mol of thiol groups, respectively (translation [0025], [0026], [0028], [0030], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-7), which suggests carrying out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, selecting the amount of Hayakawa’s sulfur to be 5.7 g per 20 g of polythiol that is 2,5-dimercaptomethyl-1,4-dithiane and 0.94 mol of sulfur atoms per mol of thiol groups, and selecting the ratio of the g of Hayakawa’s episulfide compound to Hayakawa’s mol of sulfur atoms per mol of thiol groups to be 60 / 0.50, which suggests the photocurable composition according to claim 1, which comprises a thiol compound (e) in an amount of 17 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed, wherein the thiol compound (e) is one multifunctional thiol selected from compounds represented by the following formula (4):
PNG
media_image1.png
66
442
media_image1.png
Greyscale
where q represents an integer of 0, and R3 represents an alkylene group containing 1 carbon atom as claimed, wherein a content of the sulfur (a) is 5 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed. The parts by mass of the thiol compound (e) is based on the calculation 20 / (5.7 + 0.94 * 60 / 0.50) * 100 = 17. The parts by mass of the sulfur (a) is based on the calculation 5.7 (5.7 + 0.94 * 60 / 0.50) * 100 = 5.
Hayakawa does not teach that the photocurable composition comprises a thiol compound (e) in an amount of 0.1 to 20 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b), wherein the thiol compound (e) is one multifunctional thiol selected from compounds represented by the formulae (3) to (5). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, to select the amount of Hayakawa’s sulfur to be 5.7 g per 20 g of polythiol that is 2,5-dimercaptomethyl-1,4-dithiane and 0.94 mol of sulfur atoms per mol of thiol groups, and to select selecting the ratio of the g of Hayakawa’s episulfide compound to Hayakawa’s mol of sulfur atoms per mol of thiol groups to be 60 / 0.50. The proposed modification would read on the photocurable composition according to claim 1, which comprises a thiol compound (e) in an amount of 17 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed, wherein the thiol compound (e) is one multifunctional thiol selected from compounds represented by the following formula (4):
PNG
media_image1.png
66
442
media_image1.png
Greyscale
where q represents an integer of 0, and R3 represents an alkylene group containing 1 carbon atom as claimed, wherein a content of the sulfur (a) is 5 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing amounts of Hayakawa’s sulfur, polythiol, and episulfide that are suitable for Hayakawa’s curable composition, for modifying the conversion rate of polythiol when Hayakawa’s sulfur and polythiol are reacted, for modify an amount of sulfur that remains unreacted when Hayakawa’s sulfur and polythiol are reacted, and for providing all the ingredients of Hayakawa’s curable composition at the time that Hayakawa’s polythiol oligomer is obtained without the need to add Hayakawa’s episulfide compound and photobase generator to Hayakawa’s polythiol oligomer after Hayakawa’s polythiol oligomer is obtained, which would have simplified preparation of Hayakawa’s curable composition because Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the sulfur is cyclic S8 sulfur (translation [0011]), that the amount of sulfur used is preferably in the range of 0.2 to 0.95 moles of sulfur atoms per mole of thiol groups (translation [0012]), that if the amount is less than 0.2 moles, the conversion rate of polythiol is too low to be practical, that if the amount is more than 0.95 moles, unreacted sulfur tends to remain, which is undesirable (translation [0012]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], that hindered amines have low activity as polymerization catalysts for episulfide compounds [0013], that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that in examples, the amount and species of the polythiol is 40 g 40 g, 20 g, 30 g, 30 g, 40 g, or 50 g of 2,5-dimercaptomethyl-1,4-dithiane, the amount of the sulfur is 6.0 g, 6.0, g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, or 7.6 g, respectively, the amount and species of the episulfide compound is 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, or 50 g of bis(2,3-epithiopropyl) sulfide, respectively, and the amount of sulfur used is 0.50, 0.50, 0.94, 0.60, 0.75, 0.60, or 0.50 mol of sulfur atoms per mol of thiol groups, respectively (translation [0025], [0026], [0028], [0030], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-7).
Regarding claim 8, Hayakawa teaches that the curable composition contains a photobase generator (translation [0006]), that the amount of the photobase generator is in the range of 0.01 to 10 parts by weight, based on 100 parts by weight of the curable composition (translation [0021]), that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur (translation [0006]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), and that in examples, the amount of the sulfur is 6.0 g or 6.0 g, the amount of the episulfide compound is 60 g or 60 g, respectively, and the amount of the photobase generator is 0.2 g or 0.2 g, respectively (translation [0025], [0026], [0028], [0030], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1, 2). As explained above for claim 1, Hayakawa renders it obvious to carry out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, and to select the amount of Hayakawa’s sulfur to be 6.0 g, 6.0 g, 5.7 g, 5.4 g, 6.8 g, 7.2 g, 7.6 g, 8.8 g, or 11.0 g per 60 g, 60 g, 80 g, 70 g, 70 g, 60 g, 50 g, 75 g, or 70 g of Hayakawa’s episulfide compound, respectively. Hayakawa’s teachings therefore suggest the photocurable composition according to claim 1, which comprises the photopolymerization initiator (c) in an amount of 0.3 parts by mass, with respect to a total mass (100 parts by mass) pf the sulfur (a) and the episulfide compound (b). The parts by mass is based on the calculations 0.2 / (6.0 + 60) * 100 = 0.3, 0.2 / (6.0 + 60) * 100% = 0.3.
Hayakawa does not teach that the photocurable composition comprises the photopolymerization initiator (c) in an amount of 0.1 to 10 parts by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the amount of Hayakawa’s photobase generator as 0.2 g per 66 g of the total of Hayakawa’s sulfur and episulfide compound. The proposed modification would read on the photocurable composition according to claim 1, which comprises the photopolymerization initiator (c) in an amount of 0.3 parts by mass, with respect to a total mass (100 parts by mass) pf the sulfur (a) and the episulfide compound (b) as claimed. One of ordinary skill in the art would have been motivated to do so because Hayakawa teaches that the curable composition contains a photobase generator (translation [0006]), that the amount of the photobase generator is in the range of 0.01 to 10 parts by weight, based on 100 parts by weight of the curable composition (translation [0021]), that in examples, the amount of the sulfur is 6.0 g or 6.0 g, the amount of the episulfide compound is 60 g or 60 g, respectively, and the amount of the photobase generator is 0.2 g or 0.2 g, respectively (translation [0025], [0026], [0028], [0030], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1, 2), which means that the proposed modification would have been beneficial for providing an amount of Hayakawa’s photobase generator that is suitable for Hayakawa’s curable composition.
Regarding claim 9, Hayakawa teaches that the curable composition contains a photobase generator (translation [0006]), that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that the curable composition has photocurability (translation [0007]), which reads on wherein the photopolymerization initiator (c) is a photobase generator as claimed.
Regarding claim 10, Hayakawa teaches that the episulfide is a compound represented by the following general formula (translation [0017])
PNG
media_image2.png
118
478
media_image2.png
Greyscale
(untranslated [0017]), wherein m is an integer of 0 to 6, n is an integer of 0 to 4, R3 and R4 each independently represent a hydrogen atom, R5 and R6 each independently represent an alkylene group having 1 carbon atom (translation [0017]), and that in examples, the episulfide is bis(2,3-epithiopropyl) sulfide (translation [0026], [0028], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-9), which optionally reads on wherein the episulfide compound (b) has a structure represented by the formula (6) wherein m represents an integer of 0 to 4, and n represents an integer of 0 as claimed.
Hayakawa does not teach a specific embodiment wherein the episulfide compound (b) has a structure represented b the formula (6) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Hayakawa’s episulfide to be bis(2,3-epithiopropyl) sulfide. The proposed modification would read on wherein the episulfide compound (b) has a structure represented by the formula (6) wherein m represents an integer of 0 to 4, and n represents an integer of 0 as claimed. One of ordinary skill in the art would have been motivated to do so because Hayakawa teaches that the episulfide is a compound represented by the following general formula (translation [0017])
PNG
media_image2.png
118
478
media_image2.png
Greyscale
(untranslated [0017]), wherein m is an integer of 0 to 6, n is an integer of 0 to 4, R3 and R4 each independently represent a hydrogen atom, R5 and R6 each independently represent an alkylene group having 1 carbon atom (translation [0017]), and that in examples, the episulfide is bis(2,3-epithiopropyl) sulfide (translation [0026], [0028], [0036], untranslated [0033], [Table 1], [0034], [Table 2], Examples 1-9), which means that the proposed modification would have been beneficial for providing a species pf episulfide that is suitable for Hayakawa’s curable composition.
Regarding claim 11, Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], and that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], which reads on the photocurable composition according to claim 1, which is formed by reacting a part or the entire of the sulfur with an amine compound as claimed.
Claims 2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa et al. (JP 2012-233044 A, cited in IDS, made of record on 07/19/2023, untranslated patent or machine translation in English used for citation as indicated, made of record on 01/30/2026) as applied to claim 1, and further in view of Namiki et al. (US 2018/0265638 A1, cited in IDS).
Regarding claim 2, Hayakawa renders obvious the photocurable composition according to claim 1 as explained above.
Hayakawa does not teach that the photocurable composition comprises a cyclic compound (d) represented by the formula (2) in an amount of 80 parts by mass or less with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). However, Namiki teaches a cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
[0016], wherein, C represents a carbon atom, X represents S, Se, or Te, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e) [0017], wherein the cyclic compound is present in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], wherein the proportion of the cyclic compound in the photocurable composition is 5-80 mass % [0018], wherein the proportion of the episulfide compound is 20-95 mass % [0018], wherein if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, whereas if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045]. Hayakawa and Namiki are analogous art because both references are in the same field of endeavor of a photocurable composition comprising an episulfide compound and a photopolymerization initiator. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Namiki’s cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
, wherein, C represents a carbon atom, X represents S, Se, or Te, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e), to modify Hayakawa’s curable composition, and to optimize the amount of Namiki’s cyclic compound to be 5-48 mass % with respect to the total mass of Namiki’s cyclic compound and Hayakawa’s episulfide compound. One of ordinary skill in the art would have been motivated to do so because Namiki teaches that the cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
[0016], wherein, C represents a carbon atom, X represents S, Se, or Te, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e) [0017], is beneficial for being useful in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], for being useful in a photocurable composition at a proportion that is 5-80 mass % [0018], that a proportion of the episulfide compound is 20-95 mass % [0018], that if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, and that if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045], which would have been desirable for Hayakawa’s curable composition because Hayakawa teaches that the curable composition has a high refractive index and has colorless transparency [0007], and that the curable composition contains an episulfide compound (translation [0006]).
Hayakawa does not teach that the photocurable composition comprises a cyclic compound (d) represented by the formula (2) in an amount of 80 parts by mass or less with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, and to select the amount of Hayakawa’s sulfur to be 5.7 g per 80 g of Hayakawa’s episulfide compound. The proposed modifications would read on the photocurable composition according to claim 1, which comprises a cyclic compound (d) represented by the formula (2) in an amount of 4.9 to 80 parts by mass with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b), wherein, C represents a carbon atom, X represents S, Se, or Te, and a to f each represent an integer of 0 to 3, wherein 8 ≥ (a+c+e) ≥ 1, 8 ≥ (b+d+f) ≥ 2, and (b+d+f) ≥ (a+c+e) as claimed. The parts by mass is based on the calculations 5 / (95 + 95 * 5.7 / 80) * 100 = 4.9 and 48 / (52 + 52 * 11.0 / 70) * 100 = 80. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing amounts of Hayakawa’s sulfur and polythiol that are suitable for Hayakawa’s curable composition and for providing all the ingredients of Hayakawa’s curable composition at the time that Hayakawa’s polythiol oligomer is obtained without the need to add Hayakawa’s episulfide compound and photobase generator to Hayakawa’s polythiol oligomer after Hayakawa’s polythiol oligomer is obtained, which would have simplified preparation of Hayakawa’s curable composition because Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], that hindered amines have low activity as polymerization catalysts for episulfide compounds [0013], that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that in examples, the amount of the episulfide compound is 80 g, and the amount of sulfur is 5.7 g (translation [0025], [0026], [0028], [0030], untranslated [0033], [Table 1], Example 3).
Regarding claim 5, Hayakawa renders obvious the photocurable composition according to claim 1 as explained above.
Hayakawa does not teach that the photocurable composition comprises an acid compound (f) in an amount of 0.001 to 1 part by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). However, Namiki teaches an acidic compound that is present in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0014], wherein the photopolymerization initiator is a base generator [0067], wherein the used amount of the acidic compound is preferably 0.001-1 part by mass to 100 parts by mass of the sum of the cyclic compound and the episulfide compound [0084], wherein if the added amount of the acidic compound is less than 0.001 part by mass, the stabilizing effect will be small, whereas if the added amount of the acidic compound exceeds 1 part by mass, photocurability may be deteriorated [0084], wherein the proportion of a cyclic compound in the photocurable composition is 5-80 mass % [0018], wherein the proportion of the episulfide compound is 20-95 mass % [0018], which means that the amount of the acidic compound is from 0.001053 to 5 parts by mass, with respect to 100 parts by mass of the episulfide compound, which is based on the calculations 0.001 / (100 * 95 / 100) * 100 = 0.001053 and 1 / (100 * 20 / 100) * 100 = 5. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Namiki’s acidic compound to modify Hayakawa’s curable composition, and to optimize the amount of Namiki’s acidic compound to be from 0.001071 to 1.07125 part by mass to 100 parts by mass of Hayakawa’s episulfide compound. One of ordinary skill in the art would have been motivated to do so because Namiki teaches that the acidic compound is beneficial for being useful in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0014], that the photopolymerization initiator is a base generator [0067], that the acidic compound is beneficial for being useful in an amount that is 0.001-1 part by mass to 100 parts by mass of the sum of the cyclic compound and the episulfide compound [0084], that if the added amount of the acidic compound is less than 0.001 part by mass, the stabilizing effect will be small, that if the added amount of the acidic compound exceeds 1 part by mass, photocurability may be deteriorated [0084], that the proportion of a cyclic compound in the photocurable composition is 5-80 mass % [0018], and that the proportion of the episulfide compound is 20-95 mass % [0018], which means that the amount of the acidic compound is from 0.001053 to 5 parts by mass, with respect to 100 parts by mass of the episulfide compound, which is based on the calculations 0.001 / (100 * 95 / 100) * 100 = 0.001053 and 1 / (100 * 20 / 100) * 100 = 5, which would have been desirable for Hayakawa’s curable composition because Hayakawa teaches that the curable composition contains an episulfide compound and a photobase generator (translation [0006]), that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that the curable composition has photocurability (translation [0007]).
Hayakawa does not teach that the photocurable composition comprises an acid compound (f) in an amount of 0.001 to 1 part by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to carry out the reaction of Hayakawa’s polythiol with Hayakawa’s sulfur in the presence of Hayakawa’s episulfide compound and Hayakawa’s photobase generator, and to select the amount of Hayakawa’s sulfur to be 5.7 g per 80 g of Hayakawa’s episulfide compound. The proposed modifications would read on the photocurable composition according to claim 1, which comprises an acid compound (f) in an amount of 0.001 to 1 part by mass, with respect to a total mass (100 parts by mass) of the sulfur (a) and the episulfide compound (b) as claimed. The parts by mass is based on the calculations 0.001071 / (100 + 100 * 5.7 / 80) * 100 = 0.001 and 1.07125 / (100 + 100 * 5.7 / 80) * 100 = 1. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing amounts of Hayakawa’s sulfur and polythiol that are suitable for Hayakawa’s curable composition and for providing all the ingredients of Hayakawa’s curable composition at the time that Hayakawa’s polythiol oligomer is obtained without the need to add Hayakawa’s episulfide compound and photobase generator to Hayakawa’s polythiol oligomer after Hayakawa’s polythiol oligomer is obtained, which would have simplified preparation of Hayakawa’s curable composition because Hayakawa teaches that the curable composition contains a polythiol oligomer obtained by reacting a polythiol with sulfur, an episulfide compound, and a photobase generator (translation [0006]), that the reaction of polythiol with sulfur may be carried out in the presence of the episulfide compound (translation [0015]), that unless an appropriate basic catalyst is selected, polymerization of the episulfide compound may proceed, causing gelation [0015], that when a basic catalyst is used, a hindered amine is preferred for the reasons mentioned above [0015], that hindered amines have low activity as polymerization catalysts for episulfide compounds [0013], that the photobase generator is a compound that is photodecomposed by actinic rays to generate a base (translation [0021]), and that in examples, the amount of the episulfide compound is 80 g, and the amount of sulfur is 5.7 g (translation [0025], [0026], [0028], [0030], untranslated [0033], [Table 1], Example 3).
Regarding claim 6, Hayakawa does not teach that in the formula (2), X is S. However, Namiki teaches a cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
[0016], wherein, C represents a carbon atom, X represents S, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e) [0017], wherein the cyclic compound is present in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], wherein the proportion of the cyclic compound in the photocurable composition is 5-80 mass % [0018], wherein the proportion of the episulfide compound is 20-95 mass % [0018], wherein if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, whereas if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Namiki’s cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
, wherein, C represents a carbon atom, X represents S, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e), to modify Hayakawa’s curable composition, and to optimize the amount of Namiki’s cyclic compound to be 5-48 mass % with respect to the total mass of Namiki’s cyclic compound and Hayakawa’s episulfide compound. The proposed modification would read on wherein, in the formula (2), X is S as claimed. One of ordinary skill in the art would have been motivated to do so because Namiki teaches that the cyclic compound represented by formula
PNG
media_image3.png
238
224
media_image3.png
Greyscale
[0016], wherein, C represents a carbon atom, X represents S, a to f each represent an integer of 0-3 provided that 8≥(a+c+e)≥1, 8≥(b+d+f)≥2, and (b+d+f)≥(a+c+e) [0017], is beneficial for being useful in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], for being useful in a photocurable composition at a proportion that is 5-80 mass % [0018], that a proportion of the episulfide compound is 20-95 mass % [0018], that if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, and that if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045], which would have been desirable for Hayakawa’s curable composition because Hayakawa teaches that the curable composition has a high refractive index and has colorless transparency [0007], and that the curable composition contains an episulfide compound (translation [0006]).
Regarding claim 7, Hayakawa does not teach that the cyclic compound (d) is one or more selected from the claimed group. However, Namiki teaches a cyclic compound that is [0040] 1,2-dithietane, trithietane, 1,2-dithiolane, 1,2,3-trihiolane, 1,2,4-trihiolane, tetrathiolane, 1,2-dithiane, 1,2,3-trithiane, 1,2,4-trithiane, 1,3,5-trithiane, 1,2,3,4-tetrathiane, 1,2,4,5-tetrathiane, 1,2,3-trithiepane, 1,2,4-trithiepane, 1,2,5-trithiepane, 1,2,3,4-tetrathiepane, 1,2,3,5-tetrathepane, 1,2,4,5-tetrathiepane, 1,2,4,6-tetrathiepane, 1,2,3,4,5-pentathiepane, 1,2,3,4,6-pentathiepane, 1,2,3,5,6-pentathiepane, or hexathiepane [0041], wherein the cyclic compound is present in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], wherein the proportion of the cyclic compound in the photocurable composition is 5-80 mass % [0018], wherein the proportion of the episulfide compound is 20-95 mass % [0018], wherein if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, whereas if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Namiki’s cyclic compound that is 1,2-dithietane, trithietane, 1,2-dithiolane, 1,2,3-trihiolane, 1,2,4-trihiolane, tetrathiolane, 1,2-dithiane, 1,2,3-trithiane, 1,2,4-trithiane, 1,3,5-trithiane, 1,2,3,4-tetrathiane, 1,2,4,5-tetrathiane, 1,2,3-trithiepane, 1,2,4-trithiepane, 1,2,5-trithiepane, 1,2,3,4-tetrathiepane, 1,2,3,5-tetrathepane, 1,2,4,5-tetrathiepane, 1,2,4,6-tetrathiepane, 1,2,3,4,5-pentathiepane, 1,2,3,4,6-pentathiepane, 1,2,3,5,6-pentathiepane, or hexathiepane to modify Hayakawa’s curable composition, and to optimize the amount of Namiki’s cyclic compound to be 5-48 mass % with respect to the total mass of Namiki’s cyclic compound and Hayakawa’s episulfide compound. The proposed modification would read on wherein the cyclic compound (d) is one selected from 1,2-dithietane, trithietane, 1,2-dithiolane, 1,2,3-trihiolane, 1,2,4-trihiolane, tetrathiolane, 1,2-dithiane, 1,2,3-trithiane, 1,2,4-trithiane, 1,3,5-trithiane, 1,2,3,4-tetrathiane, 1,2,4,5-tetrathiane, 1,2,3-trithiepane, 1,2,4-trithiepane, 1,2,5-trithiepane, 1,2,3,4-tetrathiepane, 1,2,3,5-tetrathepane, 1,2,4,5-tetrathiepane, 1,2,4,6-tetrathiepane, 1,2,3,4,5-pentathiepane, 1,2,3,4,6-pentathiepane, 1,2,3,5,6-pentathiepane, and hexathiepane as claimed. One of ordinary skill in the art would have been motivated to do so because Namiki teaches that the cyclic compound that is [0040] 1,2-dithietane, trithietane, 1,2-dithiolane, 1,2,3-trihiolane, 1,2,4-trihiolane, tetrathiolane, 1,2-dithiane, 1,2,3-trithiane, 1,2,4-trithiane, 1,3,5-trithiane, 1,2,3,4-tetrathiane, 1,2,4,5-tetrathiane, 1,2,3-trithiepane, 1,2,4-trithiepane, 1,2,5-trithiepane, 1,2,3,4-tetrathiepane, 1,2,3,5-tetrathepane, 1,2,4,5-tetrathiepane, 1,2,4,6-tetrathiepane, 1,2,3,4,5-pentathiepane, 1,2,3,4,6-pentathiepane, 1,2,3,5,6-pentathiepane, or hexathiepane [0041] is beneficial for being useful in a photocurable composition further comprising an episulfide compound and a photopolymerization initiator [0016], for being useful in a photocurable composition at a proportion that is 5-80 mass % [0018], that a proportion of the episulfide compound is 20-95 mass % [0018], that if the proportion of the cyclic compound is less than 5 mass %, the effect of improving the refractive index becomes too week, and that if the proportion of the cyclic compound exceeds 80 mass %, transparency of the resulting optical material may be deteriorated [0045], which would have been desirable for Hayakawa’s curable composition because Hayakawa teaches that the curable composition has a high refractive index and has colorless transparency [0007], and that the curable composition contains an episulfide compound (translation [0006]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID T KARST/Primary Examiner, Art Unit 1767
Prosecution Insights