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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-10 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Ceska et al-6,399,672.
The rejection from the previous office actions is repeat and applied here as such.
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
Applicants’ have amended the claims to cancel the first Zr species of metal salt, therefore leaving the Zr oxide and La species. They argue that to arrive at applicant’s specific species a number of selection would have to made.
The rejection is maintained since along with the disclosure of Zr, the Zr oxide is also an option disclosed by Ceska, see column 5 lines 18-30. Although the Ceska reference requires several selections from disclosed variables, he does in fact disclose the all of the components/variables of applicants claimed ethylenically unsaturated metal salt (as admitted by applicants’). One skilled in art would have found it prima facie obvious to select the claimed variables from the broader disclosure of Ceska since the courts have held that the fact that the reference discloses numerous types of monomers which can be suitably selected to form a compound does not render any particular combination of two or more of Ceska's disclosed variables less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. V. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989). It is further noted that Applicant has not established any unexpected or unpredictable result from using the selected components.
The burden is shifted to applicants’ to show unexpected results for the claimed compounds when compared to those of the prior art.
Applicants argue that the present invention obtains a “high” refractive index (RI) when compared to example 1 of the Ceska reference. The 4 examples from the present spec show a range of RI of 1.588-1.594, while the example from Ceska shows 1.5126. This appears to be a minor difference, and an expected standard deviation when comparing such compounds. Also, more importantly, the present examples and that of example 1 do not contain same unsaturated elements/variables, which would also be expected to have an effect on the RI obtained. Further, applicants do not disclose any comparative data. Therefore, it appears that there is no real data to compare from the present disclosure nor the reference since many of the variable are different, not simply the Zn and Zr metal ions. Lastly, the Ceska reference discloses the preference/ability of obtaining products with RIs between 1.50-1.60, see column 7, lines 8-14.
Applicants’ also argue that, as disclosed in their spec., the process used in Ceska is insufficient to obtain the corresponding soluble metal salt.
This statement seems unfounded since 1) no comparative data is presented to prove the assertion and 2) the Ceska reference discloses that their compounds are also soluble in the same materials as applicants. Applicants withdrawn claim 16 states that the reactive diluents that solubilize the metal salt are mono- polyfunctional acrylics, vinyl or allyl monomers. Ceska discloses in column 8 lines 44-48:
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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 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 RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766