Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Objection to Abstract
2. The abstract of the disclosure is objected to because the subject matter of the abstract is not representative of the claimed invention. The abstract is devois of the claimed limitations with respect to the isocyanate compounds of claim 1. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1 and 5-11 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.
Polythiol compound (A) and the compound represented by formula (1), as claimed, are not mutually exclusive. Since the respectively claimed compounds can be satisfied by the same compound, the metes and bounds of the claims cannot be determined.
Prior Art Rejections
5. 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
6. Claims 1-4 and 6-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pai et al. (US 2021/0171449 A1).
Pai et al. disclose an optical polymerizable composition for the production of molded articles including optical lenses (See paragraphs [0212]-[0217]), wherein the composition comprises 2-(2-mercaptoethylthio)propane-1,3-dithiol, meeting applicants’ compounds of formulas (1) (claim 1) and (1a) (claim 7), as a preferred thiol reactant, which may be combined with other thiols, such as those of claims 2-4 (See paragraphs [0205], [0204], and [0206]) and xylylene diisocyanate and cyanobenzyl isocyanate, corresponding to applicants’compound (N3) (See paragraphs [0171] and 0170], respectively). The cyanobenzyl isocyanate may be present in an amount of 1% by weight or less, which equates to 10,000 PPM or less. Accordingly, the quantity clamed for compound (N3) is considered met. Regarding claim 6, since 2-(2-mercaptoethylthio)propane-1,3-dithiol is disclosed as being preferred and therefore present, the limitation of claim 6 is met.
7. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Pai et al. (US 2021/0171449 A1).
Pai et al. disclose an optical polymerizable composition for the production of molded articles including optical lenses (See paragraphs [0212]-[0217]), wherein the composition comprises 2-(2-mercaptoethylthio)propane-1,3-dithiol, meeting applicants’ compounds of formulas (1) (claim 1) and (1a) (claim 7), as a preferred thiol reactant, which may be combined with other thiols, such as those of claims 2-4 (See paragraphs [0205], [0204], and [0206]) and xylylene diisocyanate and cyanobenzyl isocyanate, corresponding to applicants’compound (N3) (See paragraphs [0171] and 0170], respectively). The cyanobenzyl isocyanate may be present in an amount of 1% by weight or less, which equates to 10,000 PPM or less. Accordingly, the quantity clamed for compound (N3) is considered met.
8. Though the reference fails to disclose the claimed peak area for the compound of formula (1), the position is taken, as aforementioned, that the cited disclosures within the reference allow for the use of mixtures of thiol compound of formula (1) and other thiol compounds. Accordingly, the position is taken that optimizing the quantity ratio of the thiols used, to tailor such properties as impact resistance or crosslink density, and thereby optimizing the peak area value, would have been obvious to one of ordinary skill in the art.
Comment Regarding Effective Filing Date
9. Since parent US application 18/245554, PCT/JP2021/048029, and JP2020-216939 do not disclose compounds (N1), (N2), or (N3) or the limitations associated therewith, the claims are not entitled to the benefit of their filing dates.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
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