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, encompassed by claims 1-2, drawn to compounds of formula (I), in the reply filed on 6/8/2026 is acknowledged.
Applicant has not pointed to any errors in Examiner’s analysis of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Therefore, claims 1-3 are currently pending and claims 1-2 are presently under examination.
Priority
The instant application is a 35 U.S.C. § 371 International Application of PCT/JP2022/016405, filed 3/31/2022, which claims priority to Japanese Patent Application No. JP-2021-085967, filed 5/21/2021.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 11/02/2023 is in compliance with the provisions of 37 CFR 1.97. All references have been considered except where marked with a strikethrough. A signed copy of Form 1449 is included with this Office Action.
Specification
The Applicant is reminded of the content of the Specification, which includes:
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
The specification is objected to because it lacks a section that cross-references to related applications.
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because: for chemical patent abstracts, in addition to the general nature of the compound or composition, the use should be given as well. 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 Objections
Claim 1 is objected to because of the following informalities: the bracketed term “[Chem. 1]” should be removed from the claim. The Examiner is unaware of its intended meaning or implication in the claim, especially since the compound of formula (I) is already clearly labeled as such. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-2 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.
Claims 1-2 are rejected as vague and indefinite for the recitation of the term “(meth)allyl group-containing”. It is unclear whether Applicant are claiming a generalized “allyl” group, or a more specific “methallyl” group. To overcome this rejection, Examiner recommends removal of the phrase “thioepoxy group and (meth)allyl group-containing” altogether so the claim simply reads, “A compound of formula (I) below…”, especially since it will be evident to a POSITA that the salient features of the claimed genus of compounds are allyl and thioepoxy functional groups.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Honda et al. (US 6,680,007 B2, published January 20, 2004)(hereinafter, ‘Honda’) and Lü et al. (“Studies on Syntheses and Properties of Episulfide-Type Optical Resins with High Refractive Index”, published June 12, 2003)(hereinafter, ‘Lü).
Honda discloses the following species, Compound F, taught in Synthesis Example 6 (col 15-16):
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The compound differs from instantly claimed compounds in that Compound F contains an oxygen-containing epoxide, instead of a sulfur containing thio-epoxide. This limitation is obvious over Lü.
Lü teaches the synthesis and properties of episfulfide-type optical resins with high refractive index. Lü teaches (Introduction, page 2426) that while optical resins have the advantages of light weight, excellent impact resistance, good processability, and dyeability compared with glasses, the refractive index of the normally used resins is lower than 1.60. Importantly, Lü specifically teaches:
Similar to epoxy resins, episulfide-type resins also possess the advantages of chemical resistance, small shrinkage, good heat resistance, and excellent mechanical properties. In addition, episulfide-type resins contain more sulfur elements, which can increase the refractive index of polymers. (emphasis added)
Indeed, Lü teaches (Table 1, page 2427) that two thio-epoxy compounds, BEPTES and ESDGEBA, have a “higher refractive index, in the range from 1.63 to 1.7” (Conclusion, Page 2430). Furthermore, Lü teaches the synthesis of BEPTES (Synthesis of BEPTES, page 2427), which employs the same synthetic protocol (thiourea, acetic anhydride, toluene, and methanol) as the instant application (Examples 1, 2, and 3; pages 12-15).
The instant application discloses that summary of the invention is “to provide a material which is useful as a macromonomer for heat-resistant resin materials, and moreover which is useful also as a highly refractive optical material that enables the resulting polymer to be made highly refractive” (emphasis added) (page 1, para [0004]). Therefore, it would have been prima facie obvious, at the time before the effective filing date of the invention, to substitute sulfur with oxygen (as taught by Lü) into the epoxy groups of the compound of Honda, with a reasonable expectation of success, in order to increase the refractive index using a well-known replacement.
Thus, said claims are rendered obvious.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yanaizumi et al. (US 9,840,484 B2, published December 12, 2017)(hereinafter, ‘Yanaizumi’) and Lü.
Yanaizumi discloses the following generic structure (col 21, claim 1), where the only difference between the reference disclosure and the instant application is the epoxide versus thio-epoxide, circled below:
Reference: Instant:
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Both instant and reference application disclose that R1 is at least a trivalent or tetravalent C3-C20 hydrocarbon, R2 is hydrogen or methyl, and n is 3 or 4.
Yanaizumi further discloses (cols 5-7) numerous species that read on instant claims 1-2. One example, Compound B (cols 13-14) is shown below:
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The compound differs from instantly claimed compounds in that the species of Yanaizumi contains an oxygen-containing epoxide, instead of a sulfur containing thio-epoxide. This limitation is obvious over Lü, where the teachings of Lü have been addressed in the previous 35 USC § 103 rejection and are being incorporated herein.
The instant application discloses that summary of the invention is “to provide a material which is useful as a macromonomer for heat-resistant resin materials, and moreover which is useful also as a highly refractive optical material that enables the resulting polymer to be made highly refractive” (emphasis added) (page 1, para [0004]). Therefore, it would have been prima facie obvious, at the time before the effective filing date of the invention, to substitute sulfur with oxygen (as taught by Lü) into the epoxy groups of the compounds of Yanaizumi, with a reasonable expectation of success, in order to increase the refractive index using a well-known replacement.
Thus, said claims are rendered obvious.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,840,484 B2 in view of Lü.
Instant application claims the following genus:
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Reference patent claims the following genus:
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The difference between the instant application and reference patent is that the instant application is drawn to thio-epoxides, while the reference patent is drawn to epoxides.
The previous teachings of Lü (see first 35 USC § 103 rejection “unpatentable over Honda et al. and Lü et al.”) are being incorporated herein.
Therefore, it would have been prima facie obvious, at the time before the effective filing date of the invention, to substitute sulfur with oxygen (as taught by Lü) into the epoxy groups of the compounds of reference patent, with a reasonable expectation of success, in order to increase the refractive index using a well-known replacement.
Conclusion
All claims are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUKE ALAN BORALSKY whose telephone number is (571)272-9746. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 am.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.A.B./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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