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 .
Response to Amendment
In the applicant’s reply of 8 September 2025, the claims were amended. Based on these amendments, the § 112 rejection included in the previous office action is withdrawn.
Response to Arguments
The applicant's arguments filed 8 September 2025 have been fully considered, but they are not persuasive.
Regarding the applicant’s arguments that Kimura and Inage individually fail to disclose certain claim limitations, the relevant portion of the rejection relies on the combined teachings of Tamura, Kimura, Inage, and Myllymaki. Pointing out that a particular reference does not disclose a particular feature is insufficient when that reference is not relied upon for that feature. For example, the applicant points out that neither Kimura nor Inage discloses locating two injection holes on the same side of the mold, but these references are not relied upon to teach this feature. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the applicant’s arguments that Myllymaki is non-analogous art, the examiner respectfully disagrees. It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, while it is true that Myllymaki does not relate to manufacturing a lens, Myllymaki is in the same field of endeavor (injection molding) and is reasonably pertinent to the particular problem with which the inventor was concerned (molding around an insert).
Regarding the applicant’s arguments related to Jiang, Berzon, and Yamamoto, the examiner would again like to emphasize that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. As explained in the rejection, Berzon discloses a TAC/PVA/TAC polarizing wafer (see paragraphs 105 and 108) that is immersed in NaOH solution to improve adhesion to the lens material or another functional coating (see paragraphs 112-115). Similarly, Yamamoto discloses a polarizing plate in which a protective sheet is applied to both sides of a polarizer sheet with an adhesive (see paragraph 34) and, in order to improve the adhesion between the sheets, the surfaces of the protective or polarizer sheets can be alkali treated (see paragraph 38). In other words, Berzon teaches treating the exterior TAC surfaces of a TAC/PVA/TAC polarizing wafer, and Yamamoto teaches treating the interior TAC surfaces of the wafer, such that both sides of the TAC film are treated, as claimed.
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, 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0331259 (“Jiang”) (cited in an IDS), in view of US 2007/0202265 (“Berzon”), US 2002/0084023 (“Yamamoto”), JP 2001-311804 (“Tamura”), US 2006/0073226 (“Kimura”), JP 57-72822 (“Inage”), US 4,289,191 (“Myllymaki”), and US 2020/0133342 (“Choi”).
Regarding claim 1, Jiang discloses a method for manufacturing a high-refractive polarized lens (see paragraph 67, which discloses that thiourethane polymers can be used for the base optical lens, and paragraph 68, which discloses that the film can provide a polarizing function; thiourethane polymers have high refractive indices), the method comprising:
preparing a polarized film by attaching the TAC film to both sides of a PVA film (see paragraphs 62 and 64 and Figure 4);
forming the prepared polarized film into a lens shape (see Figure 4);
placing the formed polarized film on a mold for manufacturing a lens (see paragraph 57, which discloses that the lens can be manufactured by an edge-gated injection molding process);
injecting the polythiourethane-based resin into the mold on which the formed polarized film is placed (see paragraph 57 regarding injection molding and paragraph 67 regarding thiourethane polymers); and
cooling the polythiourethane-based resin while the mold is fixed (it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have allowed the injected resin to cool while the mold was fixed since this is standard operating procedure for injection molding).
Jiang does not disclose pretreating both surfaces of the TAC film. However, it is well known in the art to pretreat optical films to increase adhesion. For example, Berzon discloses a TAC/PVA/TAC polarizing wafer (see paragraphs 105 and 108) that is immersed in NaOH solution to improve adhesion to the lens material or another functional coating (see paragraphs 112-115) as part of manufacturing a polythiourethane optical lens (see paragraph 3). Similarly, Yamamoto discloses a polarizing plate in which a protective sheet is applied to both sides of a polarizer sheet with an adhesive (see paragraph 34) and, in order to improve the adhesion between the sheets, the surfaces of the protective or polarizer sheets can be alkali treated (see paragraph 38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have pretreated both surfaces of the TAC film of Jiang by immersion in NaOH solution to improve adhesion to the polythiourethane base optical lens of Jiang, as taught by Berzon, as well as to the PVA film of Jiang, as taught by Yamamoto. See Figure 4 of Jiang, which shows a TAC/PVA/TAC/lens structure. Also, note that immersion in NaOH is an alkali treatment, as desired by Yamamoto.
Paragraph 57 of Jiang discloses that the lens can be manufactured by an edge-gated injection molding process, but Jiang does not disclose the details of the mold. Jiang also fails to disclose that the polythiourethane-based resin is injected into the front and back surfaces of the formed pretreated polarized film. In Jiang, the lens 80s is only attached to one side of the films 80a, 80c, 80e. See Figure 4.
Tamura relates to a plastic polarizing lens for spectacles. See paragraph 1 of the provided translation. As shown in Figure 1, a polarizing lens L is formed by sandwiching a polarizing element 1 and plastic base layers 2 and 3. The polarizing element 1 is made of a plastic film that has been polarized. See paragraph 19. As shown in Figure 2, the polarizing lens L is manufactured using a gasket 10 that acts as a mold frame and a pair of mold members 11, 12 that fit within the inner circumference of the gasket 10. The gasket 10 is formed from a plastic elastic material and has injection pipes 13 for injecting a monomer. The polarizing element 1 is held by the portion 14 of the gasket 10. See paragraph 23. Monomer is filled into each of the two gaps separated by the polarizing element 1, forming the plastic base layers 2 and 3 sandwiching the polarizing element 1 therebetween. See paragraph 27.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the injection-molding arrangement of Tamura for the injection molding of Jiang (see paragraph 57 of Jiang) since Tamura discloses an injection-molding arrangement suitable for manufacturing a polarized lens as in Jiang (see paragraph 1 of Tamura and paragraph 68 of Jiang). This would represent a combination of prior art elements according to known methods to yield predictable results. See MPEP 2143(I)(A). While resin would now be injected on both sides of the films 80a, 80c, 80e of Jiang, Tamura discloses that this is a suitable arrangement for a polarized lens. See Figure 1 and paragraph 19 of Tamura.
In the resulting combination, the mold has rubber packings on both sides (the gasket 10 of Tamura; see Figure 2; although the gasket 10 is illustrated as a single ring, dividing it into multiple pieces would not materially affect its function; see MPEP 2144.04(VI)(B); with respect to the gasket 10 being made of rubber, paragraph 23 of Tamura states that the gasket 10 is formed from “a plastic elastic material” but does not specifically list rubber; however, rubber is a common gasket material; see MPEP 2144.07), and
two injection holes are formed on the rubber packings through which a polythiourethane-based resin is injected (the injection pipes 13 of Tamura; see Figure 2), and
a lens-shaped blocking plate is provided at the upper and lower portions of the mold between the rubber packings (the mold members 11 and 12 of Tamura; see Figure 2), and
the formed pretreated polarized film is positioned between the blocking plates (see Figure 2 and paragraphs 26-27 of Tamura), and
an injection space is formed between each blocking plate and the formed pretreated polarized film (see id.)
wherein the polythiourethane-based resin is injected into the front and back surfaces of the formed pretreated polarized film (see id.).
Tamura does not disclose that the two injection holes are formed on only one of the rubber packings, wherein the first injection hole injects polythiourethane-based resin between the upper blocking plate and the polarized film, and the second injection hole injects polythiourethane-based resin between the lower blocking plate and the polarized film.
It is well known in the injection molding art to inject resin on one side of an insert using a first injection hole and on another side of the insert using a second injection hole. For example, Kimura discloses that, instead of injecting molding material around an insert via a single injection hole (Fig. 8A), the molding material can be injected on two sides of the insert via two injection holes (Fig. 12A). Inage discloses that such an arrangement is also known in the context of lenses (abstract). Similar to Tamura, Inage shows an arrangement where resin is injected around an insert via a single injection hole located at the edge of the insert (Figs. 1-3 of Inage). However, it is preferable to use two injection holes for the two cavities defined by the insert (Fig. 4 and abstract of Inage). Also, Myllymaki discloses that both holes can be adjacent the same edge of the insert, i.e., on the same side of the mold (Fig. 3).
In view of these teachings from Kimura, Inage, and Myllymaki, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged both injection pipes 13 of Tamura in the same portion of the gasket 10 of Tamura (e.g., both on the left side in Fig. 2b of Tamura), with one injection pipe 13 directing monomer above the film of Jiang and the other injecting monomer below the film. This would represent a combination of prior art elements according to known methods to yield predictable results. See MPEP 2143(I)(A).
Regarding the limitation, previously found in claim 2, that the pretreatment of the TAC film is performed by immersing the TAC film in an aqueous NaOH solution so as to be surface-modified according to a certain chemical formula, this limitation is addressed above. See the discussion of Berzon and Yamamoto. Since the same material is being treated in the same manner, the same chemical reaction will occur. See MPEP 2112.
Regarding the limitation, previously found in claim 3, that attaching the pretreated TAC film to the PVA film is accomplished by applying an adhesive on both sides of the PVA film and then attaching the pretreated TAC film on the PVA film, see Figure 4 and paragraphs 62 and 64 of Jiang.
Regarding the limitation, previously found in claim 4, that the adhesive consists of a water-based adhesive formed by mixing PVA powder and water, Jiang does not disclose this feature. However, Jiang does disclose that any suitable adhesive can be used. See paragraphs 53 and 57.
Choi discloses a polarizing plate with a TAC film attached to a PVA polarizer using a water-based adhesive including a PVA-based aqueous solution. See paragraph 169.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a water-based PVA adhesive as the adhesive in Jiang since Choi discloses that such an adhesive is suitable for adhering a TAC film to a PVA polarizer and Jiang states that any suitable adhesive can be used. See MPEP 2144.07.
Regarding the limitation, previously found in claim 6, that adhesion is increased by hydrogen bonding between the formed pretreated polarized film and the polythiourethane-based resin, modified Jiang discloses the same materials (TAC, PVA, and polythiourethane) and the same pretreatment (NaOH), so the mechanism by which adhesion is increased would be the same. See MPEP 2112.
Conclusion
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 John DeRusso whose telephone number is (571)270-1287. The examiner can normally be reached Monday-Friday, 10:00 AM-6:00 PM ET.
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/John J DeRusso/Primary Examiner, Art Unit 1744