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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on October 10, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendment of claims 1 & 11. Claims 11 – 12 are withdrawn. Claims 3 – 4, 7 – 8, & 10 are cancelled. Claims 1 – 2, 5 – 6, & 9 are examined herein.
Claim Rejections - 35 USC § 103
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 – 2, 5, & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuyoshi et al. (*JP 2001-288412 A), in view of Kutsukake et al. (EP 1647842 A2) (2006), Kasahara et al. (WO 2013/118566 A1) and Rody et al. (EP 0031302).
*machine translation submitted by Applicant with IDS filed 6/04/2021
With regard to claim 1, Katsuyoshi et al. teach an optical lens (“an optical member”), such as for spectacle lenses (i.e. an eyeglass lens) (paragraph [0075), comprising a base material, such as a plastic lens base (“plastic substrate”) (paragraph [0028]) and a hard multi-coat layer comprising an anti-reflection film (paragraphs [0010] – [0011]). The hard coat (coating composition) is formed from a curable composition containing one or more metal oxides (component (A)) selected from Ce (cesium), Zr (zirconium), Sn (tin), Sb (antimony), Ti (titanium), Ta (tantalum), W (tungsten) (paragraphs [0010] – [0011] & [0032]), and Y2O3 (yttrium oxide). The inorganic oxide substances may be used alone or in admixture of two or more (paragraphs [0010] – [0011], [0032]), preferably zirconium oxide and titanium oxide (paragraph [0053]). Therefore, it would have been obvious to one of ordinary skill in the art to select any of the metal oxides taught, particularly zirconium oxide and/or titanium oxide, as the inorganic oxide of the anti-reflection film of the multi-layer hard coat film.
The hard coat layer also comprises an ultraviolet absorption agent (component (C)) (paragraphs [0010] & [0014]) and an antioxidant (paragraph [0024]).
According to Applicant’s specification, pgs. 3 – 4:
“Inorganic oxide having an absorption edge at a wavelength of 300 to 450 nm” refers to an inorganic oxide that the lower limit (absorption edge) of the transmission wavelength range of a vapor-deposited film formed solely of the inorganic oxide is 300 to 400 nm.
Titanium oxide has an absorption edge at 400 nm, cesium oxide at 400 nm, tantalum oxide at 350 nm, zirconium oxide at 33nm, and yttrium oxide at 300 nm.
Silicon oxide has an absorption edge at 200 nm, aluminum oxide at 200 nm, and magnesium oxide at 200 nm.
Therefore, Katsuhoshi et al. inherently teach an inorganic oxide having an absorption edge at a wavelength of 300 to 450 nm.
The working examples of Katsuyoshi et al. suggests the organosilane compound, such as ɣ-glycidoxypropyltrimethoxysilane (also called 3-glycidoxypropyltrimethoxysilane) may be present in the range of 9.51 – 11.2% by mass. However, Katsuyoshi et al. do not teach the organosilane compound is present in the amount of 30 – 80% by mass per 100%.
Kutsukake et al. teach a lens including a base material and a hard coat layer laminated on the base material, wherein the hard coat layer comprises an organic silicon (organosilane) compound (paragraphs [0022] – [0024] & [0031] – [0035]), such as 20 – 30% by weight of gamma-glycidoxypropyltrimethoxysilane (Examples 1, 5 – 6). Organic silicon is responsible for hardness (paragraph [0023]).
Therefore, based on the combined teachings of Katsuyoshi et al. and Kutsukake et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a hard coating for an eye lens, wherein the hard coating comprises 9.5% – 30% by weight organosilane compound, which overlaps with Applicant’s claimed range of 30 – 80% by mass per 100%, in order to achieve a hard coat with the desired hardness. 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).
Applicant’s specification, paragraph [0025], teaches “[t]he organosilane compound has, for example, an organosilane moiety and an epoxy group. The organosilane moiety refers to a moiety having a silicon-carbon bond.” Considering each of these organosilane compounds contain a moiety having silicon-carbon bond, each of the organosilane compounds meet the definition of “a moiety derived from the organosilane compound in the cured product” as recited in claim 1.
Katsuyoshi et al. teach the antioxidant is present in a small amount (paragraph [0024]), but do not explicitly teach the content of the antioxidant in the cured product is preferably 1 to 15% by mass.
Kasahara et al. teach an optical film comprising acrylic resin and an antioxidant, such as 2,6-di-tert-butyl-p-cresol (pg. 28). The antioxidant content is in the range of up to 2.0% by mass relative to the resin component, which overlaps with Applicant’s claimed range of 1 – 15% by mass, for suppressing decomposition of the film material due to heat or oxygen (pg. 28).
Therefore, based on the teachings of Kasahara et al., it would have been obvious to one of ordinary skill in the art to incorporate up to 2.0% by mass of an antioxidant, such as 2,6-di-tert-butyl-p-crsol into the optical film taught by Katsuyoshi et al. for suppressing decomposition of the film material due to heat or oxygen. 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).
Katsuyoshi et al. do not teach the UV absorber is a compound represented by formula (1):
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wherein R1 is an aliphatic hydrocarbon group having 1 – 3 carbon atom(s), n is 2 – 3, and m is 0 or 1.
Rody et al. teach benzotriazole UV absorbers for coatings of the o-hydroxyphenyl-2H-benzotriazole type have long enjoyed considerable economic interest as light stabilizers for organic material. The compounds of the invention show excellent compatibility and solubility in a large number of substrate and at the same time surprisingly low volatility in stabilized compositions during high-temperature processing or in their end use (translation, pgs. 4 – 5). The benzotriazole UV absorbers of the invention is represented by formula (I) shown below:
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Wherein R is a hydrogen, R1 and R3 may represent a hydrogen atom or an alkyl group (i.e., aliphatic hydrocarbon), R2 may represent a hydrogen, a hydroxy, an alkoy, or an aralkoxy (see Rody’s claim 1). Specific examples include working example 4 that contains 2-(2,4-dihydroxyphenyl)benzotriazole shown below (Applicant’s recited structure of claim 1, wherein n = 2 and m = 0).
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Working example 5 includes 2-(2-hydroxy-5-methylphenyl) benzotriazole, which is taught as an example of a UV absorber of Katsuyoshi, as discussed in previous office actions for canceled claim 8 and Applicant’s specification).
Therefore, based on the teachings of Rody et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to substitute a benzotriazole compound that is an art recognized equivalent to the UV absorber benzotriazole compound taught by Katsuyoshi et al. and has been shown to have excellent compatibility and solubility in a large number of substrate and at the same time surprisingly low volatility in stabilized compositions during high-temperature processing or in their end use. See In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) and MPEP 2144.06.II.
With regard to claim 2, as discussed above for claim 1, Katsuyoshi et al. teach the selected inorganic oxide substances, such as titanium oxide or zirconium oxide, may be used alone (paragraphs [0011] & [0032]). Therefore, the content of titanium dioxide or zirconium oxide having an absorption at a wavelength of 300 to 450 nm is 100% by mass per 100% by mass of the total amount of inorganic oxide.
With regard to claim 5, Katsuyoshi et al. fail to teach the antioxidant is 2,6-di-tert-butyl-p-cresol.
With regard to claim 9, Katsuyoshi et al. teach the thickness of the hard coat layer is 0.5 to 10 µm (paragraph [0027]), which is within Applicant’s claimed range of 0.5 to 50 µm.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Katsuyoshi et al., Kutsukake et al., Kasahara et al., & Rody et al., as applied to claim 1 above, and further in view of Ito et al. (US 2009/0011256 A1).
With regard to claim 6, Katsuyoshi et al. fail to teach the content of the UV absorber in the cured product is 0.5 to 15% by mass.
Ito et al. teach a hardened coating composition comprising 0.1 to 50 wt.% polymer UV absorber (paragraphs [0029], [0036], [0064], [0092], & [0165]), such as benzotriazole-based absorbers (paragraphs [0125] & [0148]), for exhibiting weatherability for a long time (paragraph [0148]) and imparting excellent ultraviolet resistance (paragraph [0157]).
Therefore, based on the teachings of Ito et al., it would have been obvious to one of ordinary skill in the art to incorporate 0.1 to 50 wt.% benzotriazole-based ultraviolet absorber for imparting excellent ultraviolet resistance and weatherability to the hard coating taught by Katsuyoshi et al.
Claim(s) 1 – 2, 5, & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Katsuyoshi et al. (*JP 2001-288412 A), in view of Alves et al. (WO 2017/001902 A1), Kasahara et al. (WO 2013/118566 A1) and Rody et al. (EP 0031302).
*machine translation submitted by Applicant with IDS filed 6/04/2021
With regard to claim 1, Katsuyoshi et al. teach an optical lens (“an optical member”), such as for spectacle lenses (i.e. an eyeglass lens) (paragraph [0075), comprising a base material, such as a plastic lens base (“plastic substrate”) (paragraph [0028]) and a hard multi-coat layer comprising an anti-reflection film (paragraphs [0010] – [0011]). The hard coat (coating composition) is formed from a curable composition containing one or more metal oxides (component (A)) selected from Ce (cesium), Zr (zirconium), Sn (tin), Sb (antimony), Ti (titanium), Ta (tantalum), W (tungsten) (paragraphs [0010] – [0011] & [0032]), and Y2O3 (yttrium oxide). The inorganic oxide substances may be used alone or in admixture of two or more (paragraphs [0010] – [0011], [0032]), preferably zirconium oxide and titanium oxide (paragraph [0053]). Therefore, it would have been obvious to one of ordinary skill in the art to select any of the metal oxides taught, particularly zirconium oxide and/or titanium oxide, as the inorganic oxide of the anti-reflection film of the multi-layer hard coat film.
The hard coat layer also comprises an ultraviolet absorption agent (component (C)) (paragraphs [0010] & [0014]) and an antioxidant (paragraph [0024]).
According to Applicant’s specification, pgs. 3 – 4:
“Inorganic oxide having an absorption edge at a wavelength of 300 to 450 nm” refers to an inorganic oxide that the lower limit (absorption edge) of the transmission wavelength range of a vapor-deposited film formed solely of the inorganic oxide is 300 to 400 nm.
Titanium oxide has an absorption edge at 400 nm, cesium oxide at 400 nm, tantalum oxide at 350 nm, zirconium oxide at 33nm, and yttrium oxide at 300 nm.
Silicon oxide has an absorption edge at 200 nm, aluminum oxide at 200 nm, and magnesium oxide at 200 nm.
Therefore, Katsuhoshi et al. inherently teach an inorganic oxide having an absorption edge at a wavelength of 300 to 450 nm.
The working examples of Katsuyoshi et al. suggests the organosilane compound, such as ɣ-glycidoxypropyltrimethoxysilane (also called 3-glycidoxypropyltrimethoxysilane) may be present in the range of 9.51 – 11.2% by mass. However, Katsuyoshi et al. do not teach the organosilane compound is present in the amount of 30 – 80% by mass per 100%.
Alves et al. teach an anti-scratch coating applied to substrate for ophthalmic (eye) lenses (pg. 4), wherein the anti-scratch coating comprises 33 – 75% by weight of alkoxysilanes (organanosilane) for providing anti-scratching properties (pgs. 4 – 5).
Therefore, based on the combined teachings of Katsuyoshi et al. and Alves et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a hard coating for an eye lens, wherein the hard coating comprises 33% – 75% by weight alkoxysilane (i.e., “organosilane”) compound, which is within Applicant’s claimed range of 30 – 80% by mass per 100%, in order to achieve a hard coat with the desired scratch resistance.
Applicant’s specification, paragraph [0025], teaches “[t]he organosilane compound has, for example, an organosilane moiety and an epoxy group. The organosilane moiety refers to a moiety having a silicon-carbon bond.” Considering each of these organosilane compounds contain a moiety having silicon-carbon bond, each of the organosilane compounds meet the definition of “a moiety derived from the organosilane compound in the cured product” as recited in claim 1.
Katsuyoshi et al. teach the antioxidant is present in a small amount (paragraph [0024]), but do not explicitly teach the content of the antioxidant in the cured product is preferably 1 to 15% by mass.
Kasahara et al. teach an optical film comprising acrylic resin and an antioxidant, such as 2,6-di-tert-butyl-p-cresol (pg. 28). The antioxidant content is in the range of up to 2.0% by mass relative to the resin component, which overlaps with Applicant’s claimed range of 1 – 15% by mass, for suppressing decomposition of the film material due to heat or oxygen (pg. 28).
Therefore, based on the teachings of Kasahara et al., it would have been obvious to one of ordinary skill in the art to incorporate up to 2.0% by mass of an antioxidant, such as 2,6-di-tert-butyl-p-crsol into the optical film taught by Katsuyoshi et al. for suppressing decomposition of the film material due to heat or oxygen. 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).
Katsuyoshi et al. do not teach the UV absorber is a compound represented by formula (1):
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wherein R1 is an aliphatic hydrocarbon group having 1 – 3 carbon atom(s), n is 2 – 3, and m is 0 or 1.
Rody et al. teach benzotriazole UV absorbers for coatings of the o-hydroxyphenyl-2H-benzotriazole type have long enjoyed considerable economic interest as light stabilizers for organic material. The compounds of the invention show excellent compatibility and solubility in a large number of substrate and at the same time surprisingly low volatility in stabilized compositions during high-temperature processing or in their end use (translation, pgs. 4 – 5). The benzotriazole UV absorbers of the invention is represented by formula (I) shown below:
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Wherein R is a hydrogen, R1 and R3 may represent a hydrogen atom or an alkyl group (i.e., aliphatic hydrocarbon), R2 may represent a hydrogen, a hydroxy, an alkoy, or an aralkoxy (see Rody’s claim 1). Specific examples include working example 4 that contains 2-(2,4-dihydroxyphenyl)benzotriazole shown below (Applicant’s recited structure of claim 1, wherein n = 2 and m = 0).
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Working example 5 includes 2-(2-hydroxy-5-methylphenyl) benzotriazole, which is taught as an example of a UV absorber of Katsuyoshi, as discussed in previous office actions for canceled claim 8 and Applicant’s specification).
Therefore, based on the teachings of Rody et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to substitute a benzotriazole compound that is an art recognized equivalent to the UV absorber benzotriazole compound taught by Katsuyoshi et al. and has been shown to have excellent compatibility and solubility in a large number of substrate and at the same time surprisingly low volatility in stabilized compositions during high-temperature processing or in their end use. See In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958) and MPEP 2144.06.II.
With regard to claim 2, as discussed above for claim 1, Katsuyoshi et al. teach the selected inorganic oxide substances, such as titanium oxide or zirconium oxide, may be used alone (paragraphs [0011] & [0032]). Therefore, the content of titanium dioxide or zirconium oxide having an absorption at a wavelength of 300 to 450 nm is 100% by mass per 100% by mass of the total amount of inorganic oxide.
With regard to claim 5, Katsuyoshi et al. fail to teach the antioxidant is 2,6-di-tert-butyl-p-cresol.
With regard to claim 9, Katsuyoshi et al. teach the thickness of the hard coat layer is 0.5 to 10 µm (paragraph [0027]), which is within Applicant’s claimed range of 0.5 to 50 µm.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Katsuyoshi et al., Alves et al., Kasahara et al., & Rody et al., as applied to claim 1 above, and further in view of Ito et al. (US 2009/0011256 A1).
With regard to claim 6, Katsuyoshi et al. fail to teach the content of the UV absorber in the cured product is 0.5 to 15% by mass.
Ito et al. teach a hardened coating composition comprising 0.1 to 50 wt.% polymer UV absorber (paragraphs [0029], [0036], [0064], [0092], & [0165]), such as benzotriazole-based absorbers (paragraphs [0125] & [0148]), for exhibiting weatherability for a long time (paragraph [0148]) and imparting excellent ultraviolet resistance (paragraph [0157]).
Therefore, based on the teachings of Ito et al., it would have been obvious to one of ordinary skill in the art to incorporate 0.1 to 50 wt.% benzotriazole-based ultraviolet absorber for imparting excellent ultraviolet resistance and weatherability to the hard coating taught by Katsuyoshi et al.
Response to Arguments
Applicant argues, “…as noted in the Office Action, the Example compositions in Katsuyoshi have amounts of organosilane far less than 30 mass%...Katsuyoshi thus fails to describe or suggest the presently claimed eyeglass lens in which the organosilane compound comprises 30 to 80% by mass per 100% by mass of the total amount of ingredients of the curable composition other than solvent. Nothing in Katusyoshi suggests drastically increasing an amount of the specific organosilanes of the present claims for any reason or with any reasonable expectation of success” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Newly cited references of Kutsukake et al. and Alves et al. each teach the presence of organosilane compound a hard/anti-scratch coating deposited on a substrate for an eye lens for providing desired hardness/scratch-resistance, wherein the organosilane compound overlaps or within Applicant’s claimed range.
Applicant argues, “Kasahara, Rody and Ito do not remedy the above-discussed deficiencies of Katsuyoshi” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Applicant argues, “The optical member according to amended claim 1 exhibits excellent cracking resistance under ultraviolet irradiation and high-humidity conditions (see paragraph [0007] of the present application), which is demonstrated by Examples 1 to 5 of the present application. The above characteristics and effects are neither disclosed nor suggested in any of Katsuyoshi, Kasahara, Rody and Ito. None of these references teach or suggest the specific combination of components required in the present claims in order to achieve the advantages” (Remarks, Pgs. 6 – 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, Kutsukake et al. teach organic silicon is responsible for hardness (paragraph [0023]). The hard coating on the surface of the substrate of the eye lens serves the purpose of minimizing cracks. Therefore, it would have been obvious to a person of ordinary skill in the art to increase the organosilane content for increasing the hardness, and thus crack resistance, of the hard coating.
Furthermore, Applicant’s specification teaches the hard coat layer enhances scratch resistance (cracking) (spec, paragraph [0002]). As discussed above, Alves et al. teach alkoxysilane (organosilane) compounds in a coating applied to a substrate provide an anti-scratch (anti-crack) property to eye lenses.
Conclusion
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781