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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/4/2026, has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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, 4, 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Oyama (WO2019188702, herein Oyama, US20210040263 is used as English language equivalent) in the view of Daisuke (JP2006257284, herein Daisuke, a machine translation is being used for citation purpose) and Kato (US20180321423, herein Kato).
Regarding Claims 1, 4, 10, 14, Oyama teaches polycarbonate resin composition [0068] comprising: polycarbonate with repeating units of formula (1), formula (2) and formula (3) [0008], see below: the formula (1) reads on the claimed formula (3), wherein, i=2, ii=1, p=q=r=s=0, R1-R4 are hydrogen atom; the formula (2) reads on the claimed formula (1); the formula (3) with n=3, reads on the claimed formula (2). Oyama further teaches the mole percentage range of the formula (3) is 10 mol % to 40 mol % [0009], overlaps the claimed range of formula (2); formula (1) is 20 mol % to 70 mol % [0010], overlaps the claimed range of formula (3); formula (2) is 10 mol % to 60 mol % [0011], overlaps the claimed range of formula (1).
PNG
media_image1.png
386
886
media_image1.png
Greyscale
PNG
media_image2.png
634
826
media_image2.png
Greyscale
Also note [0072] where formula (3) units are derived from bisTMC:
PNG
media_image3.png
162
244
media_image3.png
Greyscale
This will result in carbonate units reading on claimed formula (2).
Oyama teaches additives including heat stabilizer [0068], but does not teach the specific structure.
Daisuke teaches octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate as the antioxidant [0178], in the range of 0.0001 to 1 part by weight, per 100 parts by weight of the total of Components A and B [0180] wherein the composition composed of (1) an aromatic polycarbonate resin composition comprising 80 to 99.99 parts by weight of an aromatic polycarbonate resin (component A) and 0.01 to 20 parts by weight of an antistatic agent (component B) in total of 100 parts by weight, and 0.05 to 30 parts by weight of a flow modifier (component C), wherein the flow modifier (component C) [0012], hence, the antioxidant range based on the component (A), (B) and the inclusion of the (C), overlaps the claimed range.
Oyama and Daisuke are considered analogous art because they are in the same field of endeavor, that of the polycarbonate-based resin composition for optical parts manufacturing in electrotonic products. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Oyama to add the teachings of the specific antioxidant and the range as taught by Daisuke into the resin composition formation. Doing so would further achieve the desired thermal stability of the polycarbonate resin. Additionally it is prima facie obvious to select a known material based on art-recognized suitability for its intended purpose. See MPEP 2144.07.
Oyama is silent on content of phenol and content of carbonate diester; and the wherein the weight average molecular weight (Mw) is 10,000 to 70,000.
However, Kato teaches polycarbonate with a phenol content in the thermoplastic resin that is preferably 0.1 to 3000 ppm [0068] and carbonic acid diester content that is 0.1 to 1000 ppm [0068] lie in the claimed ranges. Kato further teaches the weight average molecular weight of the thermoplastic resin is 10,000 to 100,000 [0064], which encompasses the claimed range.
Oyama and Kato are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of the polycarbonate-based copolymer system development toward optical lenses manufacturing.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Oyama to add the teachings of Kato and provide wherein said polycarbonate with a phenol content in the thermoplastic resin that is preferably 0.1 to 3000 ppm [0068] and carbonic acid diester content that is 0.1 to 1000 ppm [0068] as Kato expressly identifies controlling the amounts of phenol and carbonic acid diester contained in the resin, a resin having physical properties depending on purpose can be obtained [0068], wherein, if the content of phenol or carbonic acid diester is higher than the above-described range, problems may occur, such as a reduction in the strength of the obtained resin molded body or generation of odor. On the other hand, if the content of phenol or carbonic acid diester is lower than the above-described range, it is likely that plasticity is reduced upon the melting of the resin [0069], hence, the content of phenol and content of carbonate diester as taught by Kato can lead to the desired strength and plasticity. Furthermore, the molecular weight of the thermoplastic resin is 10,000 to 100,000 [0064] can lead to the desired property as of the brittleness reduction of the molded body is prevented, and melt viscosity does not become too high, and thus, it is easy to remove the resin from a metallic mold upon molding [0064].
In the case where the claimed ranges "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). See MPEP § 2144.05.
Regarding Claims 11-13, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the Oyama, Daisuke and Kato teach all of the claimed ingredients, in the claimed amounts, and Oyama teaches the composition as being made by a substantially similar process as of aspherical lens was injection molded [0110]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, wherein, the instant application discloses the optical lens of the present invention can be obtained by injection molding the aforementioned polycarbonate resin composition of the present invention into the shape of a lens [Instant App. US20220135738; 0075]. Therefore, the claimed effects and physical properties, i.e. the glass transition temperature; refractive index; Abbe number would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claims 15, 16, Oyama teaches imaging lenses [0069] reads on optical lenses, aspherical lens was injection molded to a thickness of 0.2 mm [0110].
Response to Arguments
Applicant’s arguments, filed 3/4/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Oyama (WO2019188702, herein Oyama, US20210040263 is used as English language equivalent), Daisuke (JP2006257284, herein Daisuke, a machine translation is being used for citation purpose) and Kato (US20180321423, herein Kato).
In this case, the applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above. In particular, the newly added reference_Oyama teaches the claimed polycarbonate copolymer structure as set forth in the new rejection above.
In response to the “unexpected results”, is not persuasive.
When Examples 1-8, Comp. Examples 1-4 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison.
Claim 1 is open to the content of formula (1) mole percentage 15-25%, formula (2) mole percentage 30-48%, formula (3) mole percentage 38-48%.
However, Ex. 1 has SPG 30 mol%, Ex. 2 has SPG 9 mol%, Ex. 3 has SPG 12 mol%, Ex. 5 has SPG 31 mol%, Comp. Examples 1-4 has SPG 41 mol%, 0 mol% 32 mol% and 30 mol%, all fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Ex. 6 has Bis-TMC 29 mol%, Ex. 7 has Bis-TMC 51 mol%, Comp. Examples 1, 3-4 has Bis-TMC 0 mol%, 0 mol% and 70 mol%, all fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Ex. 1-3, 5-7 have BPEF 29 mol%, 50 mol%, 51 mol%, 32 mol%, 50 mol%, 30 mol%, Comp. Examples 1-4 has BPEF 59 mol%, 54 mol%, 68 mol% and 0 mol%, all fall outside the scope of the claimed invention and cannot be relied upon to establish non-obviousness.
Hence, these examples listed above are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d). The experimental results are not commensurate in scope with the claims and are not sufficient to establish non-obviousness.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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, Mark Eashoo can be reached on (571)272-1197. 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.
/Z.L./
Examiner, Art Unit 1767
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights