DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 01/16/2026 is acknowledged. The previous rejection is maintained in this office action. Claims 1-10 are examined on the merits in this office action.
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.
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.
Claims 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (CN 106842612 A) in view of Nago et al. (JP 2009019157 A cited in IDS), Vetro (WO 2017/077359 A1 cited in IDS) and Matsuda et al. (4,973,640 cited in IDS). It is noted that the disclosures of Peng et al. are based on a machine translation of the reference which is included in this action and the disclosures of Nago et al. are based on a machine translation of the reference (cited in IDS) which is included in this action.
Regarding claims 1-5 and 10, Peng et al. disclose a bifocal resin lens (optical material) prepared from a polymerizable composition comprising diethylene glycol bis (allyl carbonate) compound (A), ultraviolet absorber (C) and isopropyl peroxydicarbonate, i.e. diisopropyl peroxydicarbonate (D1) (see paragraph 0009). Given that diethylene glycol bis(allyl carbonate) is the only compound present in the polymerizable composition, Peng et al. disclose a sole polymerizable monomer composition consisting of diethylene glycol bis (allyl carbonate) compound (A). The diethylene glycol bis(allyl carbonate) reads on an allyl carbonate represented by General Formula (1). Given that diisopropyl peroxydicarbonate (D1) is the only polymerization initiator, Peng et al. disclose polymerization initiator consisting of a radical polymerization initiator (D1). Further, there is no disclosure of a photochromic compound in the polymerizable composition.
Peng et al. do not disclose a (meth)acrylate compound (B). Peng et al. do not disclose an ultraviolet absorber (C) as presently claimed. Peng et al. do not disclose a radical polymerization (D2).
Nago et al. disclose a curable composition comprising a radical polymerizable monomer combined with a radical polymerization initiator (see Abstract, paragraph 0014). The radical polymerizable monomer comprises diethylene glycol bisallyl carbonate and/or its oligomer thereof (i.e. the compound A is allyl carbonate or a mixture of allylcarbonate A and an oligomer thereof) and other radically polymerizable monomer such as tripropylene glycol dimethacrylate (i.e. compound B) which is used to adjust the refractive index (see Abstract, paragraph 0016, last three lines, and paragraph 0018). As evidenced by the present specification, tripropylene glycol dimethacrylate is represented by General Formula (2-1), wherein p is 3 (see paragraph 0096 of published application). The amount of diethylene glycol bisallyl carbonate and/or its oligomer there of (compound A) can be 10 to 90 wt% and the amount of other radically polymerizable monomer such as tripropylene glycol dimethacrylate (compound B) can be 10 to 90 wt% (see paragraph 0019). This amount provides a cured product with refractive index of 1.48 to 1.525 (see paragraph 0019). Given that the radical polymerizable monomer of Nago et al. can comprise only diethylene glycol bisallyl carbonate and/or its oligomer thereof and tripropylene glycol dimethacrylate, Nago et al. discloses a sole polymerizable monomer consisting of an allyl carbonate compound A and a (meth)acrylate compound B as presently claimed.
In light of motivation for using a sole polymerizable monomer consisting of 10 to 90 wt% of an allyl carbonate compound and 10 to 90 wt% of a (meth)acrylate compound disclosed by Nago et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use a sole polymerizable monomer consisting of 10 to 90 wt% of an diethylene glycol bis (allyl carbonate) compound and 10 to 90 wt% of a (meth)acrylate compound of Nago et al. instead of diethylene glycol bis (allyl carbonate) compound in Peng et al. in order to provide a cured product with refractive index of 1.48 to 1.525, and thereby arrive at the claimed invention.
Peng et al. in view of Nago et al. do not disclose an ultraviolet absorber (C) as presently claimed. Peng et al. in view of Nago et al. do not disclose a radical polymerization (D2).
Vetro discloses UV absorber are incorporated in optical articles in order to reduce or prevent UV light from reaching the retina (in particular in ophthalmic lens materials), but also to protect the substrate material itself, thus preventing it from weathering and becoming brittle and/or yellow (see page 15, lines 33-36). The UV absorber can be a benzotriazole compound such as 2-(2-hydroxyphenyl)-benzotriazoles such as 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole (see page 16, lines 20-22). Given that 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole is identical to compound (C) represented by General Formula (3) utilized in the present invention, 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole is compound (C) represented by General Formula (3) (see paragraph 0106 of published application).
In light of motivation for using 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole disclosed by Vetro as described above, it therefore would have been obvious to one of ordinary skill in the art to use 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole as the ultraviolet absorber in Peng et al. in view of Nago et al. in order to reduce or prevent UV light from reaching the retina (in particular in ophthalmic lens materials), but also to protect the substrate material itself, thus preventing it from weathering and becoming brittle and/or yellow, and thereby arrive at the claimed invention. Accordingly, the ultraviolet absorber consists of 2-(2’-hydroxy-5’-t-octylphenyl) benzotriazole (compound (C) represented by General Formula (3)).
Peng et al. in view of Nago et al. and Vetro do not disclose a radical polymerization (D2).
Matsuda et al. disclose an optical material composed of resin produced by radical polymerization of polyfunctional (meth)acrylates (see Abstract). Matsuda et al. disclose combination of radical polymerization initiator such as diisopropyl peroxydicarbonate (D1) and 1,1’-azobis(cyclohexane-1-carbonitrile) (D2) (see col. 5, lines 5-18). Further, the type of polymerization initiator is selected in order to obtain a resin having a high refractive index (see col. 5, lines 5-8).
In light of motivation for using combination of radical polymerization initiator such as diisopropyl peroxydicarbonate and 1,1’-azobis(cyclohexane-1-carbonitrile) disclosed by Matsuda et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use combination of radical polymerization initiator such as diisopropyl peroxydicarbonate and 1,1’-azobis(cyclohexane-1-carbonitrile) in the polymerizable composition of Peng et al. in view of Nago et al. and Vetro in order to provide resin having high refractive index, and thereby arrive at the claimed invention.
Regarding claims 6-8, Peng et al. disclose a molded article such as bifocal resin lens (optical material or plastic lens) obtained by curing the polymerizable composition (see paragraph 0010).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al. (CN 106842612 A) in view of Nago et al. (JP 2009019157 A cited in IDS), Vetro (WO 2017/077359 A1 cited in IDS) and Matsuda et al. (4,973,640 cited in IDS) as applied to claim 6 above, further in view of Kawaguchi et al. (WO 2017/047742 A1). It is noted that when utilizing Kawaguchi et al., the disclosures of the reference are based on US 2018/0341043 A1 (cited in IDS) which is an English language equivalent of the reference. Therefore, the paragraph numbers cited with respect to Kawaguchi et al. are found in US ‘043.
Regarding claim 9, Peng et al. in view of Nago et al., Vetro and Matsuda et al. disclose the a bifocal resin lens (plastic lens) as set forth above. Peng et al. in view of Nago et al., Vetro and Matsuda et al. do not disclose a plastic polarizing lens as presently claimed.
Kawaguchi et al. disclose a plastic polarized lens comprising a polarizing film and a substrate layer including a molded product obtained by curing a polymerizable composition for an optical material formed on at least one surface of the polarizing film (see paragraph 0208). The polymerizable composition comprises a polymerizable monomer having a (meth)acrylic group (compound B) and benzotriazole (compound C) (see paragraphs 0045, 0047, 0040).
Therefore, as taught by Kawaguchi et al., it would have been obvious to one of ordinary skill in the art to prepare a plastic polarizing lens comprising a polarizing film and a base material layer formed over at least one surface of the polarizing film, wherein the base material layer comprises the molded product of Peng et al. in view of Nago et al., Vetro and Matsuda et al., and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that first, Nago is strictly directed to a photochromic curable composition for manufacturing a photochromic spectacle lens. See, e.g., abstract. As is apparent from Nago's disclosure, Nago's specific monomer mixture (i.e., diethylene glycol bisallyl carbonate allegedly corresponding to the claimed allyl carbonate compound (A), and tripropylene glycol dimethacrylate allegedly corresponding to the (meth)acrylate compound (B)) is tailored to addressing problems unique to photochromic lenses, such as ensuring the solubility and performance of the photochromic compound. Peng, on the other hand, relates to a non-photochromic optical material. The Patent Office concedes this in an attempt to address the claimed requirement that "the polymerizable composition does not contain a photochromic compound." See Office Action at page 4 ("there is no disclosure of a photochromic compound in the polymerizable composition [of Peng]"). A person of ordinary skill in the art would not have had reason to modify Peng (again, which relates to a non-photochromic lens) by looking to Nago (which is directed to a photochromic lens) in order to modify the base resin, while simultaneously arriving at the claimed requirement that "the polymerizable composition does not contain a photochromic compound." Using impermissible hindsight, the Patent Office seeks to arrive at a combination of Peng and Nago that would explicitly exclude the very component (the photochromic compound) that defines the essence of Nago's invention. Relying on Nago to modify a non-photochromic composition constitutes impermissible hindsight, as the monomer selection in Nago is inextricably linked to the presence of the photochromic dye.
However, both Peng and Nago are drawn to curable composition comprising a radical polymerizable monomer such as diethylene glycol bisallyl carbonate used for an optical material such as a lens. Further, Nago discloses radically polymerizable monomer such as tripropylene glycol dimethacrylate is used to adjust/increase refractive index, especially in range of 1.48 to 1.525 (see paragraph 0018). It is well known to one of the ordinary skill in the art that higher refractive index would provide higher refractive properties. The motivation/properties provided by tripropylene glycol dimethacrylate is not dependent on photochromic compound in Nago. Therefore, given that Nago is drawn to lens similar to Peng and Nago provides a proper motivation such as increasing refractive index by using tripropylene glycol dimethacrylate, a person of ordinary skill in the art would modify Peng using Nago, absent evidence to the contrary.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicants argue that second, the Patent Office alleges that it would have been obvious to employ, inter alia, Nago's tripropylene glycol dimethacrylate instead of the diethylene glycol bis (allyl) carbonate compound in Peng "in order to provide a cured product with refractive index of 1.48 to 1.525." See Office Action at page 4. However, the Patent Office provides no explanation as to why a person would have sought to achieve a refractive index of 1.48 to 1.525 purportedly taught by Nago in Peng's invention. Such an explanation is critical for supporting the Patent Office's obviousness theory, but is absent here. Nor does the Patent Office explain why Peng itself does not already achieve such refractive index of 1.48 to 1.525. Nor does the Patent Office explain why-to the extent Peng does not already achieve such refractive index of 1.48 to 1.525-a person would have had reason to forego the refractive index characteristic already attained by Peng in favor of the refractive index taught by Nago.
Nago discloses radically polymerizable monomer such as tripropylene glycol dimethacrylate is used to adjust/increase refractive index, especially in range of 1.48 to 1.525 (see paragraph 0018). It is well known as evidenced by Takenaka et al. (JP2005239887A) that one of the characteristics of plastic eyeglass lenses is the wide range of refractive indices, and lenses with refractive indices are appropriately selected to meet the requirements of each customer, taking into account factors such as the severity of myopia, the lightness or strength of the lens (0009). Therefore, it would have been obvious to one of the ordinary skill in the art use tripropylene glycol dimethacrylate to adjust/increase refractive index, including in the range of 1.48 to 1.525, to produce lens with desired lightness or strength that takes into account the severity of myopia. Thus, it would have been obvious to one of the ordinary skill in the art use tripropylene glycol dimethacrylate to adjust/increase refractive index, especially in range of 1.48 to 1.525.
Applicants argue that third, Nago merely discloses a broad range of 10-90 wt% for both the allyl carbonate and the radical polymerizable monomer (such as methacrylate). Nago fails to provide any disclosure or teaching that would have led a person of ordinary skill in the art to the specific, narrow range recited in claim 1. The Patent Office offers no reason as to why a person of ordinary skill in the art would have specifically selected this high-methacrylate/low-allyl carbonate region from the broad disclosure of Nago-much less for the purpose of solving the problems addressed by exemplary aspects of the present invention.
Nago discloses the amount of diethylene glycol bisallyl carbonate and/or its oligomer there of (compound A) can be 10 to 90 wt% and the amount of other radically polymerizable monomer such as tripropylene glycol dimethacrylate (compound B) can be 10 to 90 wt% (see paragraph 0019). Based on these amounts, the amount of diethylene glycol bisallyl carbonate and/or its oligomer can be less than tripropylene glycol dimethacrylate, which is similar to that presently claimed. Further, as set forth in MPEP 2144.05, in the case where the claimed range “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).
Applicants argue that fourth, the cited art has no recognition or suggestion of the exemplary advantages attained by the exemplary aspects of the present invention (e.g., balancing refractive index, impact resistance, and suppression of yellowing in a non-photochromic lens). As such, there would not have been any reason to optimize Peng-Nago to arrive at the specifically claimed requirement that "wherein, in 100% by weight in a total of the allyl carbonate compound (A) and the (meth)acrylate compound (B), the ally1 carbonate compound (A) is included in an amount of more than 0% by weight and 30% by weight or less and the (meth)acrylate compound (B) is included in an amount of 70% by weight or more and less than 100% by weight." The PTAB has consistently required examiners to provide explicit prior art disclosures establishing that a result- effective relationship with the claimed parameter was known in order to support a theory of obviousness by way of optimization, but no such prior art disclosures exist here. See, e.g., Ex parte Collison, Appeal No. 2010-002734 (BPAI Feb. 29, 2012), Ex parte Hagemann, Appeal No. 2018-001765 (PTAB May 13, 2019).
However, given that the polymerizable composition including an allyl polycarbonate (A), a (meth)acrylate compound (B), compound (C) and polymerization initiator (D) are identical to that presently claimed, with their amounts overlapping with that presently claimed, within the overlapping ranges, the polymerizable composition necessarily inherently has balancing refractive index, impact resistance, and suppression of yellowing in a non-photochromic lens, absent evidence to the contrary.
Applicants argue that fifth, Nago discloses tripropylene glycol dimethacrylate in an extensive list of potential radical polymerizable monomers that might be used in view of adjusting the refractive index of the obtained cured product to 1.49 to 1.51. Yet, the Patent Office provides no reason why a person would have selected tripropylene glycol dimethacrylate from such extensive list and used same in combination with the other elements of the polymerization composition as claimed.
However, the fact remains that Nago discloses tripropylene glycol dimethacrylate as radically polymerizable monomer. Therefore, it would have been obvious to one of the ordinary skill in the art to choose any radically polymerizable monomer including tripropylene glycol dimethacrylate to adjust/increase refractive index, especially in range of 1.48 to 1.525, absent evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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