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 .
Claim Analysis
Summary of Claim 1:
A method for producing a thiol group-containing polyether polymer by reacting a terminal halogenated polyether polymer and a hydrogen sulfide metal salt by a substitution reaction,
wherein the terminal halogenated polyether polymer has a polyether moiety represented by the following general formula (1) in a main chain of the terminal halogenated polyether polymer, and a structure represented by the following general formula (2) at a terminal of the terminal halogenated polyether polymer,
the hydrogen sulfide metal salt is represented by the following general formula (3),
the thiol group-containing polyether polymer has a polyether moiety represented by the general formula (1), and a structural unit represented by the following formula (4) at a terminal of the thiol group-containing polyether polymer,
the substitution reaction is performed in a closed system,
the terminal halogenated polyether polymer is charged into the closed system in an amount of 20 vol% or more of a volume of the closed system, and
the hydrogen sulfide metal salt is charged into the closed system as an aqueous solution having a concentration of 25 mass% or more:
R'[- (R20)n]m- (1)
where Rl is a group having a structure obtained by removing a hydrogen atom from a polyvalent amine or polyhydric alcohol having 10 or less carbon atoms, R2 is an alkylene group having 2 to 6 carbon atoms, n is an integer of 1 to 200, and m is an integer of 2 to 8, -CH2CH (OH) CH2-X (2) where X is a halogen atom, M (SH)k (3) where M is an alkali metal or alkaline earth metal, and k is an integer of 1 to 2, and -CH2CH (OH) CH2-SH (4).
Claim Interpretation
The recitation of “internal pressure” in claim 3 is interpreted as the gauge pressure of the closed system in view of instant specification [0047].
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 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. (JP 2019189695 as listed on IDS dated March 26, 2024).
The examiner refers to the English machine translation of Hamada et al. provided in this Office Action.
Regarding claim 1 and 6, Hamada et al. teach in Synthesis Example 1 wherein a polypropylene glycol is reacted with epichlorohydrin to form a halogen terminated polyether polymer, thereby reading on the terminal halogenated polyether polymer having a polyether moiety represented by general formula (1) wherein R1 is a group having a structure obtained by removing a hydrogen atom from a polyhydric alcohol having 3 carbon atoms, R2 is an alkylene having 3 carbon atoms and structure represented by general formula (2). Then, the halogen terminated polyether is mixed with an aqueous sodium hydrosulfide solution having a concentration of 48.1 mass% in a reaction vessel and forms the thiol group containing polyether polymer [0050], thereby reading on reacting a terminal halogenated polymer and a hydrogen sulfide metal salt by a substitution reaction, general formula 3 wherein M is an alkali metal and k is 1, the substitution reaction is performed in a closed system, lying within the claimed range of hydrogen sulfide metal salt, and general formula (4) of instant claim 1 and the sodium hydrogen sulfide of instant claim 6.
Hamada et al. is silent on if the structure of the terminal halogenated polyether in Synthesis Example 1 is represented by general formula (1) having n and m as recited in the instant claim.
However, Hamada et al. broadly teach the thiol group-containing polyether polymer has a structure of R1[-(R2O)n]m- wherein R1 is a group obtained by removing a hydrogen atom from a polyvalent amine or polyhydric alcohol having 12 or less carbon atoms, R2 is an alkylene group having 2 to 4 carbon atoms, n is 6 to 200, and m is an integer of 3 to 8, thereby overlapping with general formula (1) as recited in the instant claim. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Hamada et al.
Hamada et al. is further silent on if the terminal halogenated polyether polymer is charged into the closed system in an amount of 20 vol% or more of a volume of the closed system as recited in the instant claim.
However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).) In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of terminal halogenated polypropylene glycol to produce a thiol group containing polyether polymer with the desired heat resistance.
Regarding claim 2, Hamada et al. disclose in the method of Example 1 does not comprise supplying a hydrogen sulfide gas [0050], thereby reading on the instant claim.
Regarding claim 4 and 5, Hamada et al. disclose a step of reacting a trifunctional polypropylene glycol obtained by adding propylene oxide to glycerin with epichlorohydrin to produce a terminal halogenated polyether polymer [0050], thereby reading on the step of instant claim 4 and the polyether polyol of instant claim 5.
Regarding claim 7, Hamada et al. disclose in the method of Synthesis Example 1 does not comprise a phase transfer catalyst, thereby reading on the instant claim.
Regarding claim 8, Hamada et al. disclose the solvent used in the method of Synthesis Example 1 is N,N-dimethylformamide [0050], thereby reading on an organic solvent of the instant claim.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hamada et al. (JP 2019189695 as listed on IDS dated March 26, 2024) in view of Gong et al. (CN 109880075 as listed on IDS dated March 26, 2024).
The examiner refers to the English translation of Gong et al. provided in this Office Action.
The method of claim 1 is incorporated herein by reference.
Regarding claim 3, Hamada et al. is silent on the pressure of the closed system as recited in the instant claim.
Gong et al. teach a method of preparing a polythiol curing agent comprising reacting a polyether polyol with a epichlorohydrin to form a chlorinated polyether polyol (claim 4). The chlorinated polyether polyol is then reacted with sodium hydrosulfide at a pressure of 0.02 to 4.5 MPa, thereby reading on the substitution reaction and lying within the claimed range of the internal pressure of the closed system as recited in the instant claim the instant claim. Hamada et al. also teach a similar reaction (claim 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the pressure taught by Gong et al. with the method of Hamada et al. since these are typical reaction conditions for the method.
Conclusion
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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