FINAL 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 .
Status of Claims
Receipt is acknowledged of claim amendments filed on 17 March 2026.
Claims 1 has been amended.
Claims 2-7, 14, 16, 29-31 and 34-35 are cancelled.
Claims 10-11 and 28 remains withdrawn from consideration.
Claims 1, 8-9, 12-13, 15, 17-27, 32-33 and 36-40 are presented for examination herein and are examined herein to the extent that α-cyclodextrin is the (a) cyclic molecule, polyethylene glycol is the (b) linear molecule, N-vinyl pyrrolidone is the (c) hydrophilic monomer, ethylene glycol dimethacrylate is the (d) cross-linker, bis(2,6-difluoro-3-(1-hydropyrro-1-yl)-phenyl)titanocene is the (e) initiator, and menthol is the (f) active ingredient, e.g., applicant's elected species.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Rejections Withdrawn
The rejection of claims 1, 3, 8-9, 12-13, 15, 17-26, 32-33, 36 and 39 under 35 U.S.C. 103(a) as being unpatentable over CHIANG (TW 201718769 A, publication date of 01 June 2017) in view of LAI (EP 3029081 A1, publication date of 08 June 2016), ITO (CN 101287775 A, publication date of 15 October 2008), HARADA (US 2019/0119408 A1, effective filing date of 27 April 2017) and KE (US 2019/0144569 A1, effective filing date of 15 November 2017) as evidenced by CHEMICALBOOK (electronic CAS Data Base light at chemicalbook.com, retrieved on 17 December 2023 at URL: https://www.chemicalbook.com/ChemicalProductProperty_EN_CB9370465.htm#:~:text=Description-,Bis%5B2%2C6%2Ddifluoro%2D3%2D(1H%2D,titanium%E2%80%90complex%20free%20radical%20photoinitiator.), is withdrawn in view of the claim amendments.
New Grounds of Rejection
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 8-9, 12-13, 15, 17-26, 32-33, 36 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over CHIANG (TW 201718769 A, publication date of 01 June 2017) in view of LAI (EP 3029081 A1, publication date of 08 June 2016), MASUHARA (EP 2947104 A1, publication date of 25 November 2015), HARADA (US 2019/0119408 A1, effective filing date of 27 April 2017) and KE (US 2019/0144569 A1, effective filing date of 15 November 2017) as evidenced by CHEMICALBOOK (electronic CAS Data Base light at chemicalbook.com, retrieved on 17 December 2023 at URL: https://www.chemicalbook.com/ChemicalProductProperty_EN_CB9370465.htm#:~:text=Description-,Bis%5B2%2C6%2Ddifluoro%2D3%2D(1H%2D,titanium%E2%80%90complex%20free%20radical%20photoinitiator.).
Chiang is primarily directed towards a hydrogel composition for manufacturing hydrogel contact lens (abstract of English translation and hereafter when citing Chiang).
Regarding claims 1, 15 and 17-20, Chiang discloses a water gel (e.g. hydrogel) composition for preparing a water gel lens. The composition comprises a hydrophilic monomer, a blue blocking monomer, a crosslinking agent and an initiator, wherein the hydrophilic monomer is 30 to 99.68 parts by weight, the blocking blue light monomer is 0.02 to 0.5 parts by weight, and it contains yellow dye, the crosslinking agent is 0.1 to 1 part by weight, and the initiator is 0.2 to 2 parts by weight (page 2, fourth paragraph). Chiang discloses that the hydrophilic is including N-vinyl pyrrolidone (page 3, fourth paragraph). Chiang discloses that the crosslinking agent is including ethylene glycol dimethacrylate (page 3, fifth paragraph). Chiang discloses that the initiator is a photoinitiator and includes metallocene titanium compound initiator (page 3, sixth to seventh paragraph).
Regarding claims 22-23, Chiang discloses that the water gel composition comprises a blocking ultraviolet light monomer in an amount of 0.5 to 2 parts by weight and includes benzophenone and benzotriazole (page 3, tenth and eleventh paragraph).
Regarding claims 24-25, Chiang discloses that the water gel composition further comprises an organic solvent and is 1 to 30 parts by weight (page 4, second paragraph). Chiang discloses that the organic solvent is selected from a group that includes glycerol, n-butanol, t-butanol, t-amyl alcohol and n-hexanol (e.g. co-solvent) (page 4, third paragraph).
Regarding claim 26, Chiang discloses that when there is yellow dye in the water gel composition in an amount of 0.02-0.15 parts by weight, 15-55% of blue light can be blocked (page 6, fifth paragraph).
Regarding claim 36, Chiang discloses contact lens made by the water gel composition (page 6, last paragraph).
Chiang does not specifically teach that the initiator is bis(2,6-difluoro-3-(1-hydropyrro-1-yl)-phenyl)titanocene (e.g., Applicant elected species). Chiang does not specifically teach that the composition comprises a rotaxane compound with a content range in the composition being between 0.1 wt% and 12 wt% based on the total weight of the composition, wherein the rotaxane compound includes at least one cyclic molecule (e.g. α-cyclodextrin is Applicant elected species) and at least one linear molecule (e.g. polyethylene glycol is Applicant elected species) threading through the at least one cyclic molecule. Chiang does not specifically teach that the weight ratio of the cyclic molecule relative to the linear molecule is between 1:14 and 1:74. Chiang does not specifically teach that the number average molecular weight of the linear molecule is between 4,000 and 8,000. Chiang does not specifically teach polyrotaxane where the linear does not have any blocking group. Chiang does not specifically teach that the hydrogel composition further comprises other cyclic molecules that are present, as independent molecules, dispersed outside the at least one linear molecule. The deficiencies are made up for by the teachings of Lai, Ito, Masuhara, Harada and Ke.
Lai is primarily directed towards a hydrogel composition for making contact lens (abstract).
Regarding claims 1 and 21, Lai teaches hydrogel composition including a hydrophilic monomer, a crosslinker and an initiator (page 2, sixth paragraph). Lai teaches that the initiator is a photoinitiator and includes Irgacure-784 (page 7, fifth and seventh paragraph). As evidenced by Chemical Book, bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene is Irgacure-784 (see a copy of the webpage).
Ito is primarily directed towards crosslinking a composition comprising a polyrotaxane and a polymer (abstract).
Regarding claims 1, 8-9, 12-13, 29, 32-33 and 36, Ito teaches that crosslinked polymer containing polyrotaxane do not generate crack or damage even if tension is applied (page 2, first paragraph). Ito teaches that polyrotaxane comprise cyclic molecules and linear molecule which is included in a cavity of the cyclic molecules in a skewered manner (page 2, first paragraph; claim 1 of Ito). Ito teaches that the cyclic molecule includes α-cyclodextrin (e.g. elected species) and the linear molecule is polyethylene glycol (e.g. elected species) (page 4, seventh and eighth paragraph). Ito teaches that the composition is suitable for including contact lenses that is soft and has excellent strength (page 10, sixth and eighth paragraph).
Masuhara is primarily directed towards a composition for soft materials, wherein the composition for soft materials include polyrotaxane including a cyclic molecule and a linear molecule threading through a cavity of the cyclic molecule in a skewered manner (abstract).
Regarding claim 1, Masuhara teaches that the amount of polyrotaxane in the composition for soft materials is 0.2% by mass at the minimum and 30% by mass at the maximum which can be used to obtain material with strength and flexibility (paragraph [0051]). The amount of 0.2% by mass at the minimum and 30% by mass at the maximum overlaps the range of “between 1.35 wt% and 6.9 wt%” recited in claim 1. Thus, the range is rendered prima facie obvious. See 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). See also MPEP 2144.05.
Harada is primarily directed towards producing a polyrotaxane (abstract).
Regarding claim 1, Harada teaches to more easily form a clathrate compound, the cyclic molecule (e.g., α-cyclodextrin has a g/mol 972.846) is used in an amount of 1 to 50 moles (e.g., 972.846 to 48642.3) per mole of the linear molecule (paragraph [0035]). Harada teaches that weight average molecular weight of the linear molecule is including 3000 to 500000 (paragraph [0030]). Harada teaches that the linear molecule is easily heated to melting temperature or higher, the polyrotaxane is more easily formed, and the stability of polyrotaxane is easily improved (paragraph [0030]). Harada teaches that polypseudorotaxane, linear molecule does not have blocking groups (e.g., stopper or capping) at its ends, can be used (paragraphs [0055-0056]). Harada teaches that in the clathrate compound (e.g., linear molecule passes through multiple cyclic molecules), the number cyclic molecules through which a linear molecule passes in a skewering manner, i.e., the number of cyclic molecules through which one linear molecule penetrates (also referred to as the inclusion amount), has an upper limit of 0.70 and a lower limit of 0.15 (paragraph [0050]).
Regarding claim 33, Figure 1 of Harada shows the orientation of the cyclodextrin, with cyclodextrin arranged in a heads to heads and tails to tails.
Ke is primarily directed towards supramolecular polypseudorotaxane hydrogel compositions (abstract).
Regarding claim 1, Ke teaches that rapid self-healing of PRH (e.g., polypseudorotaxane hydrogel) is attributed to 1 a high α-CD threading ratio in the formed polypseudorotaxanes and 2) an accelerated microcrystalline domain reformation which is facilitated by unthreaded α-CDs, both of which promote the rapid re-establishment of hydrogen-bonding networks (paragraph [0111]).
Regarding claim 33, Ke teaches that α-CD rings orient in a head-to-head and tail-to-tail design (paragraph [108]).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce a hydrogel composition for making contact lens that comprises N-vinyl pyrrolidone as a hydrophilic monomer in an amount of 30 to 99.68 parts by weight, a blocking blue light monomer in an amount of 0.02 to 0.5 parts by weight, ethylene glycol dimethacrylate as a crosslinking agent in an amount of 0.1 to 1 part by weight, Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) as a photoinitiator in an amount of 0.2 to 2 parts by weight, a polyrotaxane comprising α-cyclodextrins as cyclic molecules and polyethylene glycol as a linear molecule that skewers the cyclic molecules (e.g. threading the cyclic molecule), and unthreaded α-cyclodextrins (e.g., independent molecules, dispersed outside the linear molecule); wherein the amount of the polyrotaxane is 0.2% by mass at the minimum and 30% by mass at the maximum; wherein the α-cyclodextrins (e.g. molecular weight of 972.846 g/mol) is in an amount of 1 to 50 moles per mole of the polyethylene glycol that has an average molecular weight (or number average molecular weight) of 3000 to 500000 (e.g., weight ratio α-cyclodextrins to polyethylene glycol ranges from 972.846-48642.3 (e.g., 50*972.846) : 3000 to 500000 ~ 0.00194 to 16.214 weight ratio). The person of ordinary skill in the art would have been motivated to make those modifications: 1) because other known photoinitiators suitable as a photoinitiator includes Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) which is taught by Lai and would have been expected to be suitable as the photoinitiator in the composition of Chiang; 2) to obtain a hydrogel that is able to make contact lens with better flexibility and strength and does not crack or damage under tension by adding a polyrotaxane to the hydrogel composition of Chiang and optimized the amount of polyrotaxane using the range of 0.2% by mass at the minimum and 30% by mass at the maximum taught by Masuhara to obtain a desired strength and flexibility; 3) to produce polyrotaxane more easily by using an amount of 1 to 50 moles of α-cyclodextrins (e.g., cyclic molecule) per mole of the polyethylene glycol (e.g., linear molecule) and using polyethylene glycol (e.g., linear molecule) with weight average molecular weight of including 3000 to 500000; and 4) to produce hydrogel with rapid self-healing by including unthreaded α-cyclodextrins. The person of ordinary skill in the art would have reasonably expected success because Chiang discloses a water gel (e.g. hydrogel) composition for preparing a water gel lens. The composition comprises a hydrophilic monomer, a blue blocking monomer, a crosslinking agent and an initiator, wherein the hydrophilic monomer is 30 to 99.68 parts by weight, the blocking blue light monomer is 0.02 to 0.5 parts by weight, and it contains yellow dye, the crosslinking agent is 0.1 to 1 part by weight, and the initiator is 0.2 to 2 parts by weight (page 2, fourth paragraph). Chiang discloses that the hydrophilic is including N-vinyl pyrrolidone (page 3, fourth paragraph). Chiang discloses that the crosslinking agent is including ethylene glycol dimethacrylate (page 3, fifth paragraph). Chiang discloses that the initiator is a photoinitiator and includes metallocene titanium compound initiator (page 3, sixth to seventh paragraph). Lai teaches hydrogel composition including a hydrophilic monomer, a crosslinker and an initiator (page 2, sixth paragraph). Lai teaches that the initiator is a photoinitiator and includes Irgacure-784 (page 7, fifth and seventh paragraph). As evidenced by Chemical Book, bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene is Irgacure-784 (see a copy of the webpage). Ito teaches that crosslinked polymer containing polyrotaxane do not generate crack or damage even if tension is applied (page 2, first paragraph). Ito teaches that polyrotaxane comprise cyclic molecules and linear molecule which is included in a cavity of the cyclic molecules in a skewered manner (page 2, first paragraph; claim 1 of Ito). Ito teaches that the cyclic molecule includes α-cyclodextrin (e.g. elected species) and the linear molecule is polyethylene glycol (e.g. elected species) (page 4, seventh and eighth paragraph). Ito teaches that the composition is suitable for including contact lenses that is soft and has excellent strength (page 10, sixth and eighth paragraph). Masuhara teaches that the amount of polyrotaxane in the composition for soft materials is 0.2% by mass at the minimum and 30% by mass at the maximum which can be used to obtain material with strength and flexibility (paragraph [0051]). Harada teaches to more easily form a clathrate compound, the cyclic molecule (e.g., α-cyclodextrin has a g/mol 972.846) is used in an amount of 1 to 50 moles (e.g., 972.846 to 48642.3) per mole of the linear molecule (paragraph [0035]). Harada teaches that weight average molecular weight of the linear molecule is including 3000 to 500000. Harada teaches that the linear molecule is easily heated to melting temperature or higher, the polyrotaxane is more easily formed, and the stability of polyrotaxane is easily improved (paragraph [0030]). Harada teaches that polypseudorotaxane, linear molecule does not have blocking groups at its ends, can be used (paragraphs [0055-0056]). Ke teaches that rapid self-healing of PRH (e.g., polypseudorotaxane hydrogel) is attributed to 1 a high α-CD threading ratio in the formed polypseudorotaxanes and 2) an accelerated microcrystalline domain reformation which is facilitated by unthreaded α-CDs, both of which promote the rapid re-establishment of hydrogen-bonding networks (paragraph [0111]).
Regarding claim 1, Chiang discloses that the hydrophilic monomer is 30 to 99.68 parts by weight (page 2, fourth paragraph). Ito teaches that crosslinked polymer containing polyrotaxane do not generate crack or damage even if tension is applied (page 2, first paragraph). Masuhara teaches that the amount of polyrotaxane in the composition for soft materials is 0.2% by mass at the minimum and 30% by mass at the maximum which can be used to obtain material with strength and flexibility (paragraph [0051]). The amount of polyrotaxane is an art-recognized result-effective variable, e.g., effects the flexibility and strength of the material formed, which a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal weight ratio of the polyrotaxane to the polymer in order to obtain a water gel composition that forms a water gel contact lens with desired flexibility and strength. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient amount would have been obvious at the time of Applicant's invention.
Regarding claim 39, in light of the disclosure of Chiang and the teachings of Lai, Ito, Masuhara, Harada and Ke (described above), it would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce contact lens made of a hydrogel composition that comprises N-vinyl pyrrolidone as a hydrophilic monomer in an amount of 30 to 99.68 parts by weight, a blocking blue light monomer in an amount of 0.02 to 0.5 parts by weight, ethylene glycol dimethacrylate as a crosslinking agent in an amount of 0.1 to 1 part by weight, Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) as a photoinitiator in an amount of 0.2 to 2 parts by weight, and a polyrotaxane comprising α-cyclodextrins as cyclic molecules and polyethylene glycol as a linear molecule that skewers the cyclic molecules (e.g. threading the cyclic molecule); wherein the weight ratio of the polyrotaxane to the N-vinyl pyrrolidone is 1/10 or more. The contact lens which is prima facie obvious in light of the disclosure of Chiang and the teachings of Lai, Ito, Masuhara, Harada and Ke, necessarily possesses the same properties as recited in claim 39, e.g., since it comprises the same ingredients in the same amounts recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicant’s own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Chiang in view Lai, Ito, Masuhara, Harada and Ke as evidenced by ChemicalBook as applied to claims 1, 8-9, 12-13, 15, 17-26, 32-33, 36 and 39 above, and further in view of MIYABAYASHI (EP 0549808 A1).
Regarding claim 27, the composition of claim 26 is described above in section 9. Chiang discloses that when there is yellow dye in the water gel composition in an amount of 0.02-0.15 parts by weight, 15-55% of blue light can be blocked (page 6, fifth paragraph). Chiang, Lai and Ito, Masuhara, Harada and Ke do not specifically teach that the dye is at least one material selected from a group consisting of reactive blue 19, indigo and quinoline yellow. The deficiency is made up for by the teachings of Miyabayashi.
Miyabayashi is primarily directed towards transparent plastic material usable as including lens (abstract).
Regarding claim 27, Miyabayashi teaches that dyestuff or pigment which at least absorbs blue light is yellowish dyestuff or pigment (page 26, lines 24-26). Miyabayashi teaches yellow dyestuff for lens including quinoline yellow (page 34, lines 40-41).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce a hydrogel composition for making contact lens that comprises N-vinyl pyrrolidone as a hydrophilic monomer in an amount of 30 to 99.68 parts by weight, a blocking blue light monomer including Quinoline Yellow in an amount of 0.02 to 0.5 parts by weight, ethylene glycol dimethacrylate as a crosslinking agent in an amount of 0.1 to 1 part by weight, Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) as a photoinitiator in an amount of 0.2 to 2 parts by weight, a polyrotaxane comprising α-cyclodextrins as cyclic molecules and polyethylene glycol as a linear molecule that skewers the cyclic molecules (e.g. threading the cyclic molecule), and unthreaded α-cyclodextrins (e.g., independent molecules, dispersed outside the linear molecule); wherein the weight ratio of the polyrotaxane to the N-vinyl pyrrolidone is 1/10 or more; wherein the α-cyclodextrins (e.g. molecular weight of 972.846 g/mol) is in an amount of 1 to 50 moles per mole of the polyethylene glycol that has an average molecular weight (or number average molecular weight) of 3000 to 500000 (e.g., weight ratio α-cyclodextrins to polyethylene glycol ranges from 972.846-48642.3 (e.g., 50*972.846) : 3000 to 500000 ~ 0.00194 to 16.214). The person of ordinary skill in the art would have been motivated to make those modifications because yellow dye suitable for lens composition and able to absorb blue light includes Quinoline Yellow which is taught by Miyabayashi and one of ordinary skill in the art would expect Quinoline Yellow to be suitable as the yellow dye in the composition of Chiang. The person of ordinary skill in the art would have reasonably expected success because Chiang discloses that when there is yellow dye in the water gel composition in an amount of 0.02-0.15 parts by weight, 15-55% of blue light can be blocked (page 6, fifth paragraph). Miyabayashi teaches that dyestuff or pigment which at least absorbs blue light is yellowish dyestuff or pigment (page 26, lines 24-26). Miyabayashi teaches yellow dyestuff for lens including quinoline yellow (page 34, lines 40-41).
Claims 37-38 are rejected under 35 U.S.C. 103 as being unpatentable over Chiang in view Lai, Ito, Masuhara, Harada and Ke as evidenced by ChemicalBook as applied to claims 1, 8-9, 12-13, 15, 17-26, 32-33, 36 and 39 above, and further in view of TANIKAWA (WO 2010/010689 A1, cited in IDS filed 06/13/2022).
Regarding claims 37-38, the composition of claim 36 is described above in section 9. Chiang, Lai and Ito, Masuhara, Harada and Ke do not specifically teach that the polyrotaxane carries menthol as an active (e.g., elected species). The deficiency is made up for by the teachings of Tanikawa.
Tanikawa is primarily directed towards contact lenses which contains a compound having a cyclic or tubular molecular structure such as cyclodextrin together with a drug component (abstract).
Regarding claims 37-38, Tanikawa teaches contact lenses that comprise a chain molecular structure in a liquid medium containing a compound having a cyclic molecular structure together with a drug component (page 2, fifth paragraph). Tanikawa teaches that drug component includes a refreshing agent that gives a refreshing feeling to the eyes or eliminating the feeling of foreign objects and itching when wearing contact lenses and further includes l-menthol and dl-menthol (page 3, fourth paragraph).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce a hydrogel composition for making contact lens that comprises N-vinyl pyrrolidone as a hydrophilic monomer in an amount of 30 to 99.68 parts by weight, a blocking blue light monomer in an amount of 0.02 to 0.5 parts by weight, ethylene glycol dimethacrylate as a crosslinking agent in an amount of 0.1 to 1 part by weight, Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) as a photoinitiator in an amount of 0.2 to 2 parts by weight, a polyrotaxane comprising menthol as a drug, α-cyclodextrins as cyclic molecules and polyethylene glycol as a linear molecule that skewers the cyclic molecules (e.g. threading the cyclic molecule), and unthreaded α-cyclodextrins (e.g., independent molecules, dispersed outside the linear molecule); wherein the weight ratio of the polyrotaxane to the N-vinyl pyrrolidone is 1/10 or more; wherein the α-cyclodextrins (e.g. molecular weight of 972.846 g/mol) is in an amount of 1 to 50 moles per mole of the polyethylene glycol that has an average molecular weight (or number average molecular weight) of 3000 to 500000 (e.g., weight ratio α-cyclodextrins to polyethylene glycol ranges from 972.846-48642.3 (e.g., 50*972.846) : 3000 to 500000 ~ 0.00194 to 16.214). The person of ordinary skill in the art would have been motivated to make those modifications to obtain a composition for making contact lens that is able to deliver a refreshing agent as a drug by including menthol as a refreshing agent in the polyrotaxane as taught by Tanikawa. The person of ordinary skill in the art would have reasonably expected success because Tanikawa teaches contact lenses that comprise a chain molecular structure in a liquid medium containing a compound having a cyclic molecular structure together with a drug component (page 2, fifth paragraph). Tanikawa teaches that drug component includes a refreshing agent that gives a refreshing feeling to the eyes or eliminating the feeling of foreign objects and itching when wearing contact lenses and further includes l-menthol and dl-menthol (page 3, fourth paragraph).
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Chiang in view Lai, Ito, Masuhara, Harada and Ke as evidenced by ChemicalBook as applied to claims 1, 8-9, 12-13, 15, 17-26, 32-33, 36 and 39 above, and further in view of SHIMIZU (WO 2020/032056 A1, publication date of 13 February 2020).
Regarding claims 40, the composition of claim 1 is described above in section 9. Harada teaches to more easily form a clathrate compound, the cyclic molecule (e.g., α-cyclodextrin has a g/mol 972.846) is used in an amount of 1 to 50 moles (e.g., 972.846 to 48642.3) per mole of the linear molecule (paragraph [0035]).
Chiang, Lai, Ito, Masuhara, Harada and Ke do not specifically teach that the weight ratio of the at least one cyclic molecule relative to the at least one linear molecule is between 20.5:1 and 30.6:1. The deficiency is made up for by the teachings of Shimizu.
Shimizu is primarily directed towards a curable composition comprising a (A) polypseudorotaxane monomer and (B) a polymerizable monomer other than (A) (abstract).
Regarding claim 40, Shimizu teaches that axial molecule (e.g., linear molecule) for polypseudorotaxane including polyethylene glycol (fourth page, third paragraph). Shimizu teaches that if the molecular weight of the axial molecule (e.g., linear molecule) is too large, when it is mixed with other components, the viscosity increases, and not only is the handling difficult, but also the compatibility is poor. Shimizu teaches a weight average molecular weight of the shaft molecule (e.g., axial molecule/linear molecule) is including 1,000 to 50,000 (fifth page, eighth paragraph).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to produce a hydrogel composition for making contact lens that comprises N-vinyl pyrrolidone as a hydrophilic monomer in an amount of 30 to 99.68 parts by weight, a blocking blue light monomer in an amount of 0.02 to 0.5 parts by weight, ethylene glycol dimethacrylate as a crosslinking agent in an amount of 0.1 to 1 part by weight, Irgacure-784 (e.g., bis(2,6-difluoro-3-(1H-pyrrol-1-yl)phenyl)titanocene) as a photoinitiator in an amount of 0.2 to 2 parts by weight, a polyrotaxane comprising α-cyclodextrins as cyclic molecules and polyethylene glycol as a linear molecule that skewers the cyclic molecules (e.g. threading the cyclic molecule), and unthreaded α-cyclodextrins (e.g., independent molecules, dispersed outside the linear molecule); wherein the weight ratio of the polyrotaxane to the N-vinyl pyrrolidone is 1/10 or more; wherein the α-cyclodextrins (e.g. molecular weight of 972.846 g/mol) is in an amount of 1 to 50 moles per mole of the polyethylene glycol that has an average molecular weight (or number average molecular weight) of 1000 to 50000 (e.g., weight ratio α-cyclodextrins to polyethylene glycol ranges from 972.846-48642.3 (e.g., 50*972.846) : 1000 to 50000 ~ 0.0195 to 48.6). The person of ordinary skill in the art would have been motivated to make those modifications to produce hydrogel that are easier to handle during production and have better compatibility by using linear molecules with lower weight average molecular weight of including from 1,000 to 50,000 as taught by Shimizu. The person of ordinary skill in the art would have reasonably expected success because Harada teaches to more easily form a clathrate compound, the cyclic molecule (e.g., α-cyclodextrin has a g/mol 972.846) is used in an amount of 1 to 50 moles (e.g., 972.846 to 48642.3) per mole of the linear molecule (paragraph [0035]). Shimizu teaches that axial molecule (e.g., linear molecule) for polypseudorotaxane including polyethylene glycol (fourth page, third paragraph). Shimizu teaches that if the molecular weight of the axial molecule (e.g., linear molecule) is too large, when it is mixed with other components, the viscosity increases, and not only is the handling difficult, but also the compatibility is poor. Shimizu teaches a weight average molecular weight of the shaft molecule (e.g., axial molecule/linear molecule) is including 1,000 to 50,000 (fifth page, eighth paragraph).
Response to Arguments
Applicant’s arguments will be addressed as they pertain to the new grounds of rejection above.
Applicant argues that none of the cited references a rotaxane loading of 1.35 wt% to 6.9 wt% as instantly claimed.
Applicant's arguments filed on 17 March 2026 have been fully considered but they are not persuasive. In response, Chiang discloses a water gel (e.g. hydrogel) composition for preparing a water gel lens. The composition comprises a hydrophilic monomer, a blue blocking monomer, a crosslinking agent and an initiator, wherein the hydrophilic monomer is 30 to 99.68 parts by weight, the blocking blue light monomer is 0.02 to 0.5 parts by weight, and it contains yellow dye, the crosslinking agent is 0.1 to 1 part by weight, and the initiator is 0.2 to 2 parts by weight (page 2, fourth paragraph). Ito teaches that crosslinked polymer containing polyrotaxane do not generate crack or damage even if tension is applied (page 2, first paragraph). Ito teaches that polyrotaxane comprise cyclic molecules and linear molecule which is included in a cavity of the cyclic molecules in a skewered manner (page 2, first paragraph; claim 1 of Ito). Ito teaches that the cyclic molecule includes α-cyclodextrin (e.g. elected species) and the linear molecule is polyethylene glycol (e.g. elected species) (page 4, seventh and eighth paragraph). Ito teaches that the composition is suitable for including contact lenses that is soft and has excellent strength (page 10, sixth and eighth paragraph). Masuhara teaches that the amount of polyrotaxane in the composition for soft materials is 0.2% by mass at the minimum and 30% by mass at the maximum which can be used to obtain material with strength and flexibility (paragraph [0051]). Therefore, in light of the disclosure of Chiang and the teachings of Lai, Ito, Masuhara, Harada and Ke, the person of ordinary skill in the art would have been motivated to obtain a hydrogel that is able to make contact lens with better flexibility and strength and does not crack or damage under tension by adding a polyrotaxane to the hydrogel composition of Chiang and optimized the amount of polyrotaxane using the range of 0.2% by mass at the minimum and 30% by mass at the maximum taught by Masuhara to obtain a desired strength and flexibility. The amount of 0.2% by mass at the minimum and 30% by mass at the maximum overlaps the range of “between 1.35 wt% and 6.9 wt%” recited in claim 1. Thus, the range is rendered prima facie obvious. See MPEP 2144.05 (quoted supra).
Applicant argues that Harada teaches a mole ratio of 1-50 and not a weight ratio. Applicant argues that the mole ratio does not teach a weight ratio of 8.8:1 to 30.6:1 because the conversion form mole ratio to weight ratio depends on specific molecular weight selections for the cyclic and linear components.
In response, Ito teaches that crosslinked polymer containing polyrotaxane do not generate crack or damage even if tension is applied (page 2, first paragraph). Ito teaches that polyrotaxane comprise cyclic molecules and linear molecule which is included in a cavity of the cyclic molecules in a skewered manner (page 2, first paragraph; claim 1 of Ito). Ito teaches that the cyclic molecule includes α-cyclodextrin (e.g. elected species) and the linear molecule is polyethylene glycol (e.g. elected species) (page 4, seventh and eighth paragraph). Harada teaches to more easily form a clathrate compound, the cyclic molecule (e.g., α-cyclodextrin has a g/mol 972.846) is used in an amount of 1 to 50 moles (e.g., 972.846 to 48642.3) per mole of the linear molecule (paragraph [0035]). Harada teaches that weight average molecular weight of the linear molecule is including 3000 to 500000 (paragraph [0030]). Therefore, an amount of 1 to 50 moles cyclic molecule including α-cyclodextrin to linear molecule of including polyethylene glycol with average molecular weight of including 3000 to 500000 can be calculated to weight ratio of about 972.846 (1 mole α-cyclodextrin) to 48642.3 (50 mole α-cyclodextrin) : 3000 to 500000 weight ratio of α-cyclodextrin to polyethylene glycol with average molecular weight of including 3000 to 500000. The weight ratio of α-cyclodextrin to linear molecule of including polyethylene glycol with average molecular weight of including 3000 to 500000 of 972.846-48642.3 : 3000 to 500000 is further calculated to range from about 0.00194 to 16.214 (e.g., 972.846/500000 to 48642.3/3000) which overlaps weight ratio of cyclic molecule relative to the linear molecule of between 8.8:1 and 30.6:1.
Applicant argues that Harada teaches average molecular weight (Mw) and does not teach number average molecular weight (Mn) between 4,000 and 8,000 as instantly claimed.
In response, as evidenced by Tewes (“Raman Spectroscopic Classification of Polyethylene Glycol Samples of Varying Molecular Weights Using Machine Learning”, Molecules, 31, 778, 2026), polyethylene glycol with average molecular weight of about 1,000 to 35,000 have a Mw that is higher than the Mn ranging from 1.07-1.21. Therefore, the lower average molecular weight of polyethylene glycol of the polyethylene glycol with average molecular weight of including 3000 to 500000 (e.g., 3,000 to 35,000) would have a Mn close to the Mw with a difference of from 1.07-1.21 and would still overlap the range of between 4,000 and 8,000 Mn recited in instant claim 1.
Thus, for the reasons of record and for the reasons presented above claims 1, 8-9, 12-13, 15, 17-27, 32-33 and 36-40 are rejected under 35 U.S.C. 103(a).
Conclusion and Correspondence
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN P NGUYEN whose telephone number is (571)270-5877. The examiner can normally be reached Monday-Friday 10am-6pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on (571) 272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN P NGUYEN/
Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
Prosecution Insights