DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
3. Claims 1-2, 5-10,14-16, 18-21 are pending. Claims 1-2, 5-10, 14-16, 18-21 are under examination on the merits. Claims 1, 2 are amended. Claim 13 is cancelled. Claims 3-4, 11-12, 17 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive, thus claims 1-2, 5-10,14-16, 18-21 stand rejected as set forth in Office action dated 06/18/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 2, 8-9, 15, 18-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 2 recites “(D) a compound having a cyclic structure including a sulfur atom; a polythiol compound having two or more mercapto groups”, wherein applicant fails to articulate by sufficiently distinct functional language if the compound (D) is a compound having a cyclic structure including a sulfur atom alone or the recited compound (D) is the combination of a compound having a cyclic structure including a sulfur atom, and a polythiol compound having two or more mercapto groups”, thus claim 2 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 8-9, 15, 18-21 being depended on claim 2 are rejected as well.
For the purpose of examination against the prior art claim 2 is construed to recites ” (D) a compound having a cyclic structure including a sulfur atom, and a polythiol compound having two or more mercapto groups”.
8. Claims 2, 8-9, 15, 18-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). In the present instance, claim 2 recites the broad recitation of the ultraviolet absorber (C) is included in an amount of 0.1 to 3.0% by weight with respect to 100% by weight of compound (D) (i.e., for the purpose of examination against the prior art claim 2 is construed to recites “(D) a compound having a cyclic structure including a sulfur atom, and a polythiol compound having two or more mercapto groups”, and the claim also recites the ultraviolet absorber (C) is included in an amount of 0.6 to 1.2% by weight with respect to 100% by weight of a total weight of the compound (D), which is the narrower statement of the range/limitation. Claims 8-9, 15, 18-21 being depended on claim 2 are rejected as well.
9. Claims 15, 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 15 recites “a cured product of the polymerizable composition for an optical material, comprising: 0.1 to 3.0% by weight of the ultraviolet absorber (C)”, wherein applicant fails to articulate by sufficiently distinct functional language if the recited amount of the ultraviolet absorber (C) is based on the weight of the cured product or is based on the compound (D) having a cyclic structure including a sulfur atom, and a polythiol compound having two or more mercapto groups”, thus claim 15 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claim 19 being depended on claim 15 is rejected as well.
Claim Rejections - 35 USC § 112
10. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
11. Claim 15, 19 are rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 15, as written, depends from claim 2, which recites “0.1 to 3.0% by weight of the ultraviolet absorber (C)”, however, based on the content of the claim 2, the ultraviolet absorber (C) is included in an amount of 0.1 to 3.0% by weight with respect to 100% by weight of compound (D), thus claim 15 as being of improper dependent form for failing to further limit the subject matter of a previous claim 2. Claim 19 being depended on claim 15 is rejected as well.
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 1, 5-7, 10, 14, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kakinuma et al. (WO 2016/125736 A1, equivalent to US Pub. No. 2018/0016415 A1, hereinafter “’415”).
Regarding claim 1: ‘415 teaches a polymerizable composition for an optical material (Page 1, [0017]), the composition comprising: (A) an isocyanate compound, (B) at least one active hydrogen compound selected from the group consisting of a polythiol compound having two or more mercapto groups, a hydroxythiol compound having one or more mercapto groups and one or more hydroxyl groups (Page 4, [0036]-[0042]), a polyol compound having two or more hydroxyl groups, wherein the polyol compound is an aliphatic or alicyclic alcohol compound (Page 4, [0043]-Page 5, [0046]) and an amine compound (Page 5, [0047]-Page 6, [0056]), and (C) an ultraviolet absorber represented by General Formula (2) as set forth (Page 6, [0063]), wherein, in General Formula (2), R1 and R2 represent an alkyl group having 1 to 8 carbon atoms, and may be the same or different, a plurality of R1's or a plurality of R2’s may be the same or different, m represents an integer of 0 to 3, n represents an integer of 0 to 3, and R3 represents a functional group having 2 to 15 carbon atoms, and including an ester bond (Page 2, [0017; Page 6, [0065]-[0066]), preferably R3 represents a functional group having 1 to 10 carbon atoms and including an ester bond in General Formula (2),
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R4 represents a hydrocarbon, group with 1 to 10 carbon, atoms which may be branched, preferably an alkylene group with 1 to 5 carbon atoms which may be branched (Page 6, [0065]). R5 represents a hydrocarbon group with 1 to 10 carbon atoms which may be branched, preferably an alkyl group with 3 to 10 carbon atoms which may be branched (Page 6, [0066]), wherein a content of the active hydrogen compound (B) in the polymerizable composition for an optical material is 30 parts by mass or more and 70 parts by mass or less in 100 parts by mass of the polymerizable composition for an optical material (Page 6, [0055]), and wherein the ultraviolet absorber (C) is included in an amount of 0.5 to 7.5 parts by mass in 100 parts by mass of the polymerizable composition for an optical material (i.e., overlapping ranges; Page 7, [0071]; Page 17, Table 1, Examples; Page 17, Claim 9) with benefit of providing using a specific ultraviolet absorber makes it possible to provide an optical material having a high effect of blocking the blue light of approximately 420 nm from, harmful ultraviolet rays, and to provide a polymerizable composition for an optical material which is also excellent in the productivity of the optical material (Page 2, [0026]). Furthermore, the polymerizable composition for an optical material, it is possible to provide an optical material which is colorless and transparent, excellent in an appearance, and excellent in optical characteristics such as a high refractive index and a high Abbe number and various physical properties such as a heat resistance, specifically to provide a plastic spectacle lens (Page 2, [0021]). Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing specific ultraviolet absorber for a known material based on its suitability for its intended use is within the level ordinary skill in the art.
Regarding claim 5: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein a maximum absorption peak of the ultraviolet absorber (C) is in a range of 340 nm to 370 nm (Page 2, [0017]; Page 6, [0063]; Page 6, [0067]).
Regarding claim 6: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein the isocyanate compound (A) includes at least one selected from an aromatic isocyanate compound and an aromatic aliphatic isocyanate compound (Page 3, [0026]-[0027]).
Regarding claim 7: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein the isocyanate compound (A) is at least one selected from the group consisting of xylene diisocyanate, phenylene diisocyanate, tolylene diisocyanate, and diphenylmethane diisocyanate (Page 2, [Page 3, [0028]-[0031]).
Regarding claim 10: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein the polythiol compound (B) is at least one selected from the group consisting of 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11- dimercapto-3,6,9-trithiaundecane, 4,8-dimercaptomethyl-1, 11-dimercapto-3,6,9-trithiaundecane, 4-mercaptomethyl-1,8-dimercapto-3,6-dithiaoctane, pentaerythritol tetrakis(2-mercaptoacetate), pentaerythritol tetrakis(3-mercaptopropionate), 2,5-bis(mercaptomethyl)-1,4-dithiane, bis(mercaptoethyl)sulfide, 1,1,3,3-tetrakis(mercapto methyl thio) propane, 4,6- bis(mercaptomethylthio)-1,3-dithiane, 2-(2,2-bis(mercaptomethylthio)ethyl)-1 ,3-dithiethane, 1,1,2,2-tetrakis(mercaptomethylthio)ethane, 3-mercaptomethyl-1,5-dimercapto-2,4-dithiapentane, tris(mercaptomethylthio)methane, and ethylene glycol bis(3-mercapto propionate) (Page 4, [0036]-[0041]).
Regarding claim 14: ‘415 teaches a cured product of the polymerizable composition for an optical material (Page 9, [0103]; Page 17, Claim 15).
Regarding claim 16: ‘415 teaches a plastic lens comprising: the cured product (Page 9, [0108]; Page 17, Claim 13).
14. Claims 2, 8-9,15,18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kakinuma et al. (WO 2016/125736 A1, equivalent to US Pub. No. 2018/0016415 A1, hereinafter “’415”) as applied to claim 1 above, and further in view of Hashimoto et al. (US Pub. No. 2015/0370094 A1, hereinafter “’094”).
Regarding claims 2,8-9, 20-21: The disclosure of ‘415 is adequately set forth in paragraph 13 above and is incorporated herein by reference. ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), comprising: (C) an ultraviolet absorber represented by General Formula (2), wherein, in General Formula (1), R1 and R2 represent an alkyl group having 1 to 8 carbon atoms, and may be the same or different, a plurality of R1's or a plurality of R2’s may be the same or different, m represents an integer of 0 to 3, n represents an integer of 0 to 3, and R3 represents a functional group having 1 to 10 carbon atoms (i.e., overlapping ranges) and including an ester bond (Page 2, [0017]), wherein the ultraviolet absorber (C) is included in an amount of 0.5 to 7.5 parts by mass in 100 parts by mass of the polymerizable composition for an optical material (i.e., overlapping ranges; Page 7, [0071]; Page 17, Table 1, Examples; Page 17, Claim 9). ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein the polythiol compound (B) is at least one selected from the group consisting of 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11- dimercapto-3,6,9-trithiaundecane, 4,8-dimercaptomethyl-1, 11-dimercapto-3,6,9-trithiaundecane, 4-mercaptomethyl-1,8-dimercapto-3,6-dithiaoctane, pentaerythritol tetrakis(2-mercaptoacetate), pentaerythritol tetrakis(3-mercaptopropionate), 2,5-bis(mercaptomethyl)-1,4-dithiane, bis(mercaptoethyl)sulfide, 1,1,3,3-tetrakis(mercapto methyl thio) propane, 4,6- bis(mercaptomethylthio)-1,3-dithiane, 2-(2,2-bis(mercaptomethylthio)ethyl)-1 ,3-dithiethane, 1,1,2,2-tetrakis(mercaptomethylthio)ethane, 3-mercaptomethyl-1,5-dimercapto-2,4-dithiapentane, tris(mercaptomethylthio)methane, and ethylene glycol bis(3-mercapto propionate) (Page 4, [0036]-[0041]). ‘415 does not expressly teach (D) a compound having a cyclic structure including a sulfur atom, wherein the compound (D) has two or more three- to five-membered cyclic structures including a sulfur atom in one molecule and a weight average molecular weight of 100 to 1000, and the compound (D) includes an episulfide group represented by General Formula (5), wherein, in the formula, n represents 0 or 1, and wherein the ultraviolet absorber (C) is included in an amount of 0.6 to 1.2% by weight with respect to 100% by weight of a total weight of the compound (D) having a cyclic structure including a sulfur atom, and a polythiol compound having two or more mercapto groups.
However, ‘094 teaches the composition for an optical material can contain the polymerizable compound (c), and as the resin obtained from the polymerizable compound (c) (Page 5, [0087]) such as bis(2,3-epithiopropyl)sulfide and bis(2,3-epithiopropyl)disulfide (Page 6, [0097]) with benefit of providing a resin material obtained from polymerizable compound, wherein these materials (transparent resins) having a high degree of transparency, and can be suitably used for optical materials (Page 5, [0087]). ‘094 teaches a composition for an optical material (Page 1, [0018]; Page 3, [0057]) comprising: an ultraviolet absorber (a), and a polymerizable compound (c) which is a polyepithio compound and/or a polythietane compound, or a combination of a polyepithio compound and a polythiol compound, wherein the amount of the ultraviolet absorber (a) contained in the composition is 0.3% by weight to 2% by weight with respect to the total weight of the polymerizable compound (c) (Page 7, [0104]; Page 17, Claim 12), wherein the polymerizable compound (c) is a combination of bis(2,3-epithiopropyl)disulfide, and a mixture which contains 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane and 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components (Page 17, Claim 26) with benefit of providing an optical material which exerts a strong effect of blocking from harmful ultraviolet rays to blue light of about 420 nm and has an excellent external appearance that is colorless and transparent. The optical material has excellent optical characteristics such as a high refractive index and a high Abbe number, has an excellent external appearance that is colorless and transparent, and can prevent injury including eye fatigue and stress by reducing influence of harmful light on the eye. Therefore, the optical material can be suitably used particularly as a plastic spectacle lens (Page 2, [0045]).
In an analogous art of the polymerizable composition for optical material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymerizable composition by ‘415, so as to include (D) a compound having a cyclic structure including a sulfur atom, wherein the compound (D) has two or more three- to five-membered cyclic structures including a sulfur atom in one molecule and a weight average molecular weight of 100 to 1000, and the compound (D) includes an episulfide group represented by General Formula (5), wherein, in the formula, n represents 0 or 1 as taught by ‘094, and would have been motivated to do so with reasonable expectation that this would result in providing a resin material obtained from polymerizable compound, wherein these materials (transparent resins) having a high degree of transparency, and can be suitably used for optical materials as suggested by ‘094(Page 5, [0087]).
In an analogous art of the polymerizable composition for optical material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymerizable composition by ‘415, so as to include the ultraviolet absorber (C) in an amount of 0.1 to 3.0% by weight in 100% by weight of a total weight of the compound (D) having a cyclic structure including a sulfur atom and the polythiol (B) included as necessary as taught by ‘094, and would have been motivated to do so with reasonable expectation that this would result in providing an optical material which exerts a strong effect of blocking from harmful ultraviolet rays to blue light of about 420 nm and has an excellent external appearance that is colorless and transparent. The optical material has excellent optical characteristics such as a high refractive index and a high Abbe number, has an excellent external appearance that is colorless and transparent, and can prevent injury including eye fatigue and stress by reducing influence of harmful light on the eye. Therefore, the optical material can be suitably used particularly as a plastic spectacle lens as suggested by ‘094 (Page 2, [0045]).
Regarding claim 15: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein the ultraviolet absorber (C) is included in an amount of 0.1 to 10.0 parts by mass in 100 parts by mass of the polymerizable composition for an optical material (Page 7, [0071]; Page 17, Claim 9), preferably the ultraviolet absorber (C) is included in an amount of 0.1 to 2.0 parts by mass in 100 parts by mass of the polymerizable composition for an optical material (Page 7, [0071]; Page 17, Table 1, Examples; Page 17, Claim 9).
‘094 teaches a cured product of the polymerizable composition for an optical material, comprising: 0.1 to 3.0% by weight of the ultraviolet absorber (C) (Page 7, [0104]; Page 15, Table 1, Examples).
Regarding claim 18: ‘415 teaches the polymerizable composition for an optical material (Page 1, [0017]), wherein a maximum absorption peak of the ultraviolet absorber (C) is in a range of 340 nm to 370 nm (Page 2, [0017]; Page 6, [0063]; Page 6, [0067]).
‘094 teaches a composition for an optical material (Page 1, [0018]), wherein a maximum absorption peak of the ultraviolet absorber (C) is in a range of 340 nm to 370 nm (Page 3, [0057]).
Regarding claim 19: ‘415 teaches a plastic lens comprising: the cured product (Page 9, [0108]; Page 17, Claim 13).
‘094 teaches a plastic lens comprising: the cured product (Page 1, [0026]; Page 9, [0156]; Page 17, Claim 19).
15. Claims 2, 8-9, 13,15, 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 108084385 A. machine translation, hereinafter “’385”) in view of Hashimoto et al. (US Pub. No. 2015/0370094 A1,hereinafter “’094”).
Regarding claims 2,8-9, 20-21: ‘385 teaches a polymerizable composition for an optical material (Page 4/34, [0002]), the composition comprising: (A) an isocyanate compound such as Isophorone diisocyanate, hexamethylene diisocyanate (Page 12/34, [0055]), (B) at least one active hydrogen compound such as 2,3-bis(2-mercaptoethylthio)-3-propane-1-thiol (Page11/34, [0056]), and (C) an ultraviolet absorber such as 3-[3-tert-butyl-4-hydroxy-5-(5-chloro-2H-benzotriazol-2-yl)phenyl]propionic acid methyl ester (Page 12/34, [0059]) as shown in Example 1 (Page11/34, [0055]). ‘385 does not expressly teach (D) a compound having a cyclic structure including a sulfur atom, wherein the compound (D) has two or more three- to five-membered cyclic structures including a sulfur atom in one molecule and a weight average molecular weight of 100 to 1000, and the compound (D) includes an episulfide group represented by General Formula (5), wherein, in the formula, n represents 0 or 1, and wherein the ultraviolet absorber (C) is included in an amount of 0.6 to 1.2% by weight with respect to 100% by weight of a total weight of the compound (D).
However, ‘094 teaches a composition for an optical material (Page 1, [0018]; Page 3, [0057]) comprising: an ultraviolet absorber (a), and a polymerizable compound (c) which is a polyepithio compound and/or a polythietane compound, or a combination of a polyepithio compound and a polythiol compound (Page 5, [0094]), wherein the amount of the ultraviolet absorber (a) contained in the composition is 0.3% by weight to 2% by weight with respect to the total weight of the polymerizable compound (c) (Page 7, [0104]; Page 17, Claim 12). ’094 teaches the composition for an optical material can contain the polymerizable compound (c), and as the resin obtained from the polymerizable compound (c) (Page 5, [0087]) such as bis(2,3-epithiopropyl)sulfide and bis(2,3-epithiopropyl)disulfide (Page 6, [0097]) with benefit of providing a resin material obtained from polymerizable compound, wherein these materials (transparent resins) having a high degree of transparency, and can be suitably used for optical materials (Page 5, [0087]). ‘094 teaches a composition for an optical material (Page 1, [0018]; Page 3, [0057]) comprising: an ultraviolet absorber (a), and a polymerizable compound (c) which is a polyepithio compound and/or a polythietane compound, or a combination of a polyepithio compound and a polythiol compound, wherein the amount of the ultraviolet absorber (a) contained in the composition is 0.3% by weight to 2% by weight with respect to the total weight of the polymerizable compound (c) (Page 7, [0104]; Page 17, Claim 12), wherein the polymerizable compound (c) is a combination of bis(2,3-epithiopropyl)disulfide, and a mixture which contains 5,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane, 4,7-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane and 4,8-dimercaptomethyl-1,11-dimercapto-3,6,9-trithiaundecane as main components (Page 17, Claim 26) with benefit of providing an optical material which exerts a strong effect of blocking from harmful ultraviolet rays to blue light of about 420 nm and has an excellent external appearance that is colorless and transparent. The optical material has excellent optical characteristics such as a high refractive index and a high Abbe number, has an excellent external appearance that is colorless and transparent, and can prevent injury including eye fatigue and stress by reducing influence of harmful light on the eye. Therefore, the optical material can be suitably used particularly as a plastic spectacle lens (Page 2, [0045]).
In an analogous art of the polymerizable composition for optical material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymerizable composition by ‘385, so as to include (D) a compound having a cyclic structure including a sulfur atom, wherein the compound (D) has two or more three- to five-membered cyclic structures including a sulfur atom in one molecule and a weight average molecular weight of 100 to 1000, and the compound (D) includes an episulfide group represented by General Formula (5), wherein, in the formula, n represents 0 or 1 as taught by ‘094, and would have been motivated to do so with reasonable expectation that this would result in providing a resin material obtained from polymerizable compound, wherein these materials (transparent resins) having a high degree of transparency, and can be suitably used for optical materials as suggested by ‘094(Page 5, [0087]).
In an analogous art of the polymerizable composition for optical material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the polymerizable composition by ‘385, so as to include the ultraviolet absorber (C) in an amount of 0.1 to 3.0% by weight in 100% by weight of a total weight of the compound (D) having a cyclic structure including a sulfur atom and the polythiol (B) included as necessary as taught by ‘094, and would have been motivated to do so with reasonable expectation that this would result in providing an optical material which exerts a strong effect of blocking from harmful ultraviolet rays to blue light of about 420 nm and has an excellent external appearance that is colorless and transparent. The optical material has excellent optical characteristics such as a high refractive index and a high Abbe number, has an excellent external appearance that is colorless and transparent, and can prevent injury including eye fatigue and stress by reducing influence of harmful light on the eye. Therefore, the optical material can be suitably used particularly as a plastic spectacle lens as suggested by ‘094 (Page 2, [0045]).
Regarding claim 15: The disclosure of ‘385 in view of ‘094 is adequately set forth in paragraph above and is incorporated herein by reference. ‘385 teaches the polymerizable composition for an optical material (Page 4/34, [0002]), wherein the ultraviolet absorber (C) is included in an amount of 0.1 to 10.0 parts by mass in 100 parts by mass of the polymerizable composition for an optical material (Page 5/34, [0009]).
‘094 teaches a cured product of the polymerizable composition for an optical material, comprising: 0.1 to 3.0% by weight of the ultraviolet absorber (C) (Page 7, [0104]; Page 15, Table 1, Examples).
Regarding claim 18: The disclosure of ‘385 in view of ‘094 is adequately set forth in paragraph above and is incorporated herein by reference. ‘385 discloses the polymerizable composition for an optical material (Page 4/34, [0002]), wherein the ultraviolet absorber such as 3-[3-tert-butyl-4-hydroxy-5-(5-chloro-2H-benzotriazol-2-yl)phenyl]propionic acid methyl ester which inherently has a maximum absorption peak of the ultraviolet absorber (C) is in a range of 340 nm to 370 nm (Page 5/34, [0011]; Page 8/34, [0031]).
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
‘094 teaches a composition for an optical material (Page 1, [0018]), wherein a maximum absorption peak of the ultraviolet absorber (C) is in a range of 340 nm to 370 nm (Page 3, [0057]).
Regarding claim 19: The disclosure of ‘385 in view of ‘094 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘385 teaches a plastic lens comprising the cured product (Page 12/24, [0063]).
‘094 teaches a plastic lens comprising: the cured product (Page 1, [0026]; Page 9, [0156]; Page 17, Claim 19).
Response to Arguments
16. Applicant's arguments filed 12/01/2025 have been fully considered but they are not persuasive,
In response to Applicant’s argument that the claimed subject matter provides the unexpected result of improving the trade-off relationship and providing a polymerizable composition for an optical material and a use thereof, which is able to achieve both a high cut rate and design properties. Applicant submits that the above-described unexpected result is neither described nor suggested in any references.
The examiner respectfully disagrees. Examiner agrees that Applicant’s proffered evidence Table 1 of the Specification and the submitted declarations under 37 CFR 1.132, dated 05/13/2024 & 12/23/2024, are insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claims 1-2, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
The instant claim 1 recites an ultraviolet absorber represented by General Formula (2), wherein the ultraviolet absorber (C) is 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl] methylpropionate (Eversorb 88 manufactured by Everlight Chemical Industrial Corp.), wherein the ultraviolet absorber (C) is included in an amount of 1.5 to 2.0 parts by mass in 100 parts by mass of the polymerizable composition for an optical material.
The Examples a1-a4 in Table 1 of the instant application uses an ultraviolet absorber such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl] methylpropionate (Eversorb 88 manufactured by Everlight Chemical Industrial Corp.) in the amount of 1.5% or 2.0% by weight. The ultraviolet absorber is changed to 2-(2-hydroxy-3-t-butyl-5-methylphenyl)-chlorobenzotriazole (TINUVIN 326 manufactured by BASF Corp.) in Comparative Examples a1-a2 in the amount of 0.5% or 0.7% by weight. Thus, the Comparative Examples a1-a2 fail to show the higher amount of 1.5% or 2.0 % by weight. It is submitted that the comparison of the Examples a1-a4 with Comparative Examples a1-a2
must be under the substantially the same conditions except for the novel features of the invention (i.e., the same amount of ultraviolet absorber (C)).
The instant claim 2 recites an ultraviolet absorber represented by General Formula (2) as set forth, wherein the ultraviolet absorber (C) is 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl] methylpropionate (Eversorb 88 manufactured by Everlight Chemical Industrial Corp.), wherein the ultraviolet absorber (C) is included in an amount of 0.6 to 1.2% by weight in 100% by weight of a total weight of the compound (D) having a cyclic structure including a sulfur atom and the polythiol (B). The Examples b1-b3 in Table 2 of the instant application uses an ultraviolet absorber such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl] methylpropionate (Eversorb 88 manufactured by Everlight Chemical Industrial Corp.) in the amount of 0.6% or 0.9% or 1.2% by weight. The ultraviolet absorber is changed to 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl] octyl propionate (Eversorb 109 manufactured by Everlight Chemical Industrial Corp.) in Comparative Example b1 in the amount of 1.2% by weight, wherein the Comparative Example b1 fails to show the lower and higher amount of 1.2% by weight. It is submitted that the comparison of the Examples b1-b4 with Comparative Examples b1 must be under the substantially the same conditions except for the novel features of the invention. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product and show the product is actually different from and unexpectedly better than the teachings of the references.
Examiner Information
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571)270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
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/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
12/30/2025
bijan.ahvazi@uspto.gov