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
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 4, 2026. Without acquiescing with the arguments that the groups should be examined together and are in condition for allowance, rejoinder of withdrawn claims will be considered where possible.
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 7 and 9 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 7 contains the term “WPBG300” however, it is unclear what that means and, further, a trademark cannot be used in a claim as a limitation or a means of identifying or describing a particular material or product. See MPEP 2173.05(u).
Claim 9 contains the term “IPTX”, however, it is unclear what that means and, further, a trademark cannot be used in a claim as a limitation or a means of identifying or describing a particular material or product. See MPEP 2173.05(u).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujii et al (EP 0 802 208).
With regards to claim 1, Fujii teaches an optical resin composition that contains a thiourethane prepolymer compound prepared by reacting a polythiol compound with an isocyanate compound, a (meth)acrylate compound (abstract) and a photo-initiator (page 6).
With regards to claim 3, Fujii teaches the isocyanate compound to include hexamethylene diisocyanate (page 5).
With regards to claim 4, Fujii teaches the (meth)acrylate compound to include ethylene glycol di(meth)acrylate, triethyleneglycol di(meth)acrylate), 1,3 butanediol di(meth)acrylate, 1,4-butane-diol di(meth)acrylate, or 1,6-hexanediol di(meth)acrylate (page 5).
With regards to claim 5, Fujii teaches the thiourethane compound to be formed using a catalyst (page 5).
With regards to claim 6, Fujii teaches the catalyst compound to include triethylamine (page 5).
With regards to claim 7, Fujii teaches the photoinitiator to include benzophenone (page 6).
With regards to claim 8, Fujii teaches the addition of a radical polymerization generator as well as the photo-initiator (page 6) reading on a photosensitizer.
With regards to claim 9, Fujii teaches the radical generato to include isopropylthioxanthone (page 6).
With regards to claim 10, Fujii teaches the composition to include solvent (page 5).
Claims 1-6 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowman et al (US 2011/0144227).
With regards to claim 1, Bowman teaches a resin for biomedical devices (abstract) that contains an oligomer (0039) that is formed using pentaerythritol tetra(3-mercaptopropionate) (table 1) and either hexamethylene diisocyanate or isophorone diisocyanate (table 2). Bowman further teaches the composition to contain a monomer such as hexanediol diacrylate and trimethylolpropane triacrylate (table 3) and a photoinitiator (0094).
With regards to claim 2, Bowman teaches the oligomer (0039) that is formed using pentaerythritol tetra(3-mercaptopropionate) (table 1).
With regards to claim 3, Bowman teaches the oligomer to be formed using hexamethylene diisocyanate or isophorone diisocyanate (table 2).
With regards to claim 4, Bowman further teaches the composition to contain a monomer such as hexanediol diacrylate and trimethylolpropane triacrylate (table 3).
With regards to claim 5, Bowman teaches the use of a catalyst to form the oligomer (0094).
With regards to claim 6, Bowman teaches the catalyst to include dibutyl tin dilaurate (0094).
With regards to claim 10, Bowman teaches the addition of a solvent (0014 and 0080).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fujii et al (EP 0802208) in view of Pfeifer et al (US 2017/0087062).
With regards to claim 2, the disclosure of Fujii is adequately set forth in paragraph 6 above and is herein incorporated by reference.
Fujii does not teach the thiol compound to be one of the claimed thiols.
Pfeifer teaches a composition containing a methacrylate compound and a thiourethane oligomer (abstract) wherein the thiourethane oligomer is formed from a reaction of PETMP (pentaerythritol tetra (3-mercaptopropionate) (0073)) and HDDI (hexanediol diisocyanate (0138)). Pfeifer teaches the motivation for using this compound to be because it improves toughness, provides a high refractive index, and provides optical clarity (0059). Fujii and Pfeifer are analogous in the art of curable bioresins. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to use the thiol of Pfeifer in the composition of Fujii, thereby obtaining the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following reference teaches the composition of claim 1: Pfeifer et al (US 2017/0087062).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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