DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/21/2025 has been entered.
Claim Rejections - 35 USC § 103
Claim(s) 1-2 and 5 are rejected as obvious under 35 U.S.C. 103 as being unpatentable from U.S. 6,100,313 Treadway (hereinafter “Treadway”) evidenced by SciFinder Accession Number: 2007:1443687 CAPLUS (2007) hereinafter “Acc # 2007_1443687”) and evidenced by U.S. 2014/0342091, White et al. (hereinafter “White”) and evidenced by SciFinder Registry Number: 2238-07-5 hereinafter “RN 2238-07-5” in view of U.S. 2007/0021523 Treadway (hereinafter “Treadway 523”) evidenced by US 2010/0035067, Colton (hereinafter “Colton”). Below the symbol “{ }” indicates the examiner’s comments contained therein.
Regarding Claims 1-2 and 5, Treadway discloses in the title, abstract and at Col. 1 lines 5-10 a UV curable coating composition for forming a transparent, abrasion-resistant coating upon eyeglass lenses or other transparent substrates, like polycarbonate (See Col. 2, lines 1-12) {reading on substrate for Claim 1 and polycarbonate For Claim 5}, the UV-curable {reading on application of ultraviolent radiation for pending Claim 1} composition, comprising: a binder component and a curing agent component, where the binder component comprises the hydrolysis product of an epoxy-functional alkoxy silane such as partially hydrolyzed epoxy-functional alkoxysilane (See Col. 1, lines 60-67) {reading on partially hydrolyzed alkoxyfunctional silane a) of pending Claim 1}, a polyglycidyl ether such as resorcinol diglycidyl ether (See Col. 4, lines 9-16) and an acrylic monomer having an acrylic functionality of not more than two {reading on ethylenically unsaturated monomer of pending Claim 1}, and where the curing agent component comprises a cationic photoinitiator {reading on cationic photoinitiator of pending Claim 1} and a free radical photoinitiator {reading on radical photoinitiator of pending Claim 1} , where the coating has excellent adhesion to polycarbonate {See Col 2, lines 1-12}. For the resorcinol diglycidyl ether Acc # 2007_1443687 evidences RDGE {i.e. monoaromatic diglycidyl ether and RDGE having a structure of:
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}, and White evidences at ¶ 0020 that 1,3 -benzenediol diglycidyl ether is resorcinol diglycidyl ether. Also RN 2238-07-5 evidences that another name for diglycidyl ether is oxirane, 2,2'-[oxybis(methylene)]bis-. This coincides with Applicants explanation at ¶ 0008 of the application as filed that resorcinol diglycidyl ether (also referred to as 1,3-benzenediol-2,2'-[oxybis(methylene)]dioxirane (1 :1) ("RDGE") {reading on 1,3-benzenediol-2,2'-[oxybis(methylene)]dioxirane (1 :1) ("RDGE") of pending Claim 1}. Colton evidences at ¶s 0044-0045 that resorcinol diglycidyl ether in the curable film-forming compositions facilitates homogeneous tinting thereof. That is, the polyglycidyl ether promotes more even distribution of a colorant throughout the compositions, compared to a similar composition that does not contain a polyglycidyl ether, without compromising abrasion resistance or compatibility with subsequently applied coatings, particularly anti-reflective coatings {i.e. adhesion resistance}.
Treadway divulges at its claim 8 that the coating composition is substantially solvent-free {reading on solvent-free coating composition of pending Claim 1}. Treadway divulges at Col. 5, lines 37-48 that adhesion may be measured using the procedures of ASTM 3359. This test, in brief, provides for scoring of the cured coating with a sharp instrument in a cross-hatched fashion to leave diamond-shaped patches, followed by an attempt to lift the diamond-shaped patches from the substrate through the use of a pressure sensitive adhesive tape that is applied to the cross hatched surface and then pulled away. The degree to which the cross-hatched portions of the coating remain adhered to the substrate provides a measure of adhesion to that substrate, and is reported as the percentage of diamond-shapes that remain adhered to the substrate.
Treadway does not expressly disclose that the coating composition has substantially non-hydrolyzed alkoxy-functional silane.
Treadway 523 discloses in the abstract coating compositions yielding cured coatings that exhibit excellent abrasion-resistance and hardness for use on polymeric substrates such as the front side of optical lenses, in a manner that meets or exceeds the stringent requirements for such use. The compositions include the hydrolysis product of an epoxy functional alkoxy silane, including A) at least partially hydrolyzed epoxy functional alkoxysilane {See paragraph 0040} in a viscosity-reducing amount up to 50% by weight, solids basis, of a monomeric (silanol free) epoxy functional epoxy silane or unhydrolyzed epoxy functional alkoxy silane C) (See ¶s 0046-0047), and colloidal silica, D), {reading on non-hydrolyzed alkoxy-functional silane of pending Claim 1}. Treadway 523 divulges at ¶ 0011 that the compositions preferably are of low viscosity and most preferably are substantially free of volatile solvents and exhibit excellent abrasion resistance and hardness and from ¶ 0084 are UV cured. Also from paragraph 0063 suitable silane coupling agents provide an optimal combination of such properties as compatibility, low viscosity (e.g., liquid at room temperature), the ability to improve adhesive and/or flexibility characteristics without undue impact on hardness or abrasion resistance, and the ability to react in a composition of this invention to provide a clear cured composition. From ¶ s 0052-0053, Treadway discloses that a wide variety of ethylenically unsaturated monomers (including oligomers) can be employed in the coating composition, and acrylic monomers and oligomers, particularly those having acrylic functionalities of not greater than two, are preferred, where useful acrylic compounds for improving adhesion to polycarbonate substrates include both mono and di-functional monomers. From paragraph 0014 and 0055 a curing agent C) comprising a cationic photoinitiator for polymerizing epoxy compounds as well as photoactivated free-radicals are in the coating composition. From paragraph 0027 the composition is prepared by providing and blending together parts A, C and D, typically followed by distillation to remove solvents, after which a cationic initiator B can be incorporated and the composition can be photocured. Treadway at ¶ 0085 divulges that a coating thickness of 4-5 microns, and had excellent adhesion according to ASTM D3359-02 (Standard Test Methods for Measuring Adhesion by Tape Test), using 3M 600 tape 1'' wide, when tested both prior to and after soaking for 15 minutes in a dye bath at 95-100C.
In accordance with MPEP § 2144.06 “Art Recognized Equivalence for the Same Purpose” "It is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances." In re Ruff 118 USPQ 343; In re Jeze/158 USPQ 99; "the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious." In re Font, 213 USPQ 532. Alternatively in accordance with MPEP § 2144.06 “ “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). Here Treadway and Treadway 523 have the same components of a partially hydrolyzed epoxy-functional alkoxysilane, cationic photoinitiator, free radical initiator and ether like epoxy ether as in oxirane containing ether for the same purpose of UV cured coating composition for optical lenses. Given this similarity of purpose the unhydrolyzed or non-hydrolyzed alkoxy-functional silane of Treadway 523 can be combined with similar other components of Treadway.
Regarding the limitation of Claim 1 for “the cured coating exhibits a level 5B adhesion resistance, as determined by for both a Colts Laboratories' Crosshatch Adhesion/Boiling Water test and a Colts Laboratories' Cycle Humidity Oven/Crosshatch test” and for Claim 2 of “the cured coating also exhibits a level 5B acceptable adhesion resistance, as determined by for a Colts Laboratories' Cycle Humidity OUV/Crosshatch test”, it has been held that where claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established and the burden of proof is shifted to Applicant to show that prior art products of Treadway in view of Treadway 523 both having excellent adhesive properties do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC 102 or on prima facie obviousness under 35 USC 103, jointly or alternatively. Therefore, the prime facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In re Spada had the original rejection under 35 U.S.C. 102/103 and Ex parte Smith 83 USPQ2d 1509, U.S. Patent and Trademark Office Board of Patent Appeals and Interferences, (2007) citing Spada holds that in combining references the property recited in the Claim in application for patent on pocket insert for a book, which requires that insert be “passable through a copier or printer in sequence with a sheet of paper,” is obvious in view of combination of two prior art patents, since first patent discloses that indexing member claimed therein may be formed from any conventional stationery paper, including card stock and paper stock, and since two-ply embodiment of first patent, or two-ply seams of second patent combined with single-pocket arrangement of first patent, would inherently be capable of passing through printer or copier in sequence with sheet of paper. Also in accordance with MPEP § 2144.01 “[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); here both Treadway and Treadway 523 show excellent adhesion properties so the cured coating exhibiting a level 5B as determined by for both a Colts Laboratories' Crosshatch Adhesion/Boiling Water test and a Colts Laboratories' Cycle Humidity Oven/Crosshatch test would be expected” and for Claim 2 of “the cured coating also exhibits a level 5B acceptable adhesion resistance, as determined by for a Colts Laboratories' Cycle Humidity OUV/Crosshatch test also as expected . Also in accordance with MPEP § 2112 the express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
In the instant case, the coated substrate of Treadway in view of Treadway 523, as afore-described, is identical or substantially similar to that of the combination of Claims 1 and 2, therefore, in addition to the above disclosed limitations, the presently claimed properties of adhesion resistance by crosshatch for conditions of deionized water and humidity testing or QUV testing would have inherently or implicitly have been present because in accordance with MPEP 2112.01(II) when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent so that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPO 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPO2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F2d at 1255, 195 USPO at 433. See also Titanium Metals Corp. v. Banner, 778 F2d 775, 227 USPO 773 (Fed. Cir. 1985).
One of ordinary skill in the art before the effective filing of the pending patent application would have considered it prima facie obvious as for example under rationale G of MPEP § 2141 III and 2143 I G from Treadway to have a UV cured coated substrate from a solventless coating composition having partially hydrolyzed epoxy-functional alkoxysilane, acrylic type ethylenically unsaturated monomer, cationic photoinitiator, free radical initiator and resorcinol diglycidyl ether (RDGE), as afore-described, where from Treadway 523 unhydrolyzed, i.e. non-hydrolyzed, epoxy functional alkoxy silane useful in UV cured coatings with hydrolysis product of an epoxy functional alkoxy silane, with a wide variety of ethylenically unsaturated monomers (including oligomers) of coating compositions that are substantially free of volatile solvents in the UV curable solventless coating composition of Treadway in that both coating compositions of Treadway and Treadway 523 have the same purpose with articulate motivational rational from the afore-described underpinning of facts of the disclosures of Treadway and Treadway 523 to have a low viscosity for the coating composition preferably free of volatile solvents while having excellent abrasion resistance and hardness and adhesive properties, inherently or implicitly or at least overlapping with adhesion resistance, for the combination of Claims 1-2 and 5. The combination of Treadway 523 with Treadway to one skilled in the art has a reasonable expectation of success because both Treadway 523 and Treadway are for abrasion resistant coatings of alkoxysilanes for polycarbonate optical lenses or eyeglass lenses.
That is, it would have been obvious to one of ordinary skill in the art to include a non-hydrolyzed alkoxy-functional silane in the composition of Treadway in order to impart the desired viscosity (Treadway ‘523, paragraphs [0032] and [0046]).
Claims 6 and 21-22 are rejected as obvious under 35 U.S.C. 103 as being unpatentable over Treadway as evidenced by: Acc # 2007_1443687, White and RN 2238-07-5 in view of Treadway 523 further in view of US 2010/0035067, Colton (hereinafter “Colton”).
Regarding Claims 6 and 21-22 Treadway in view of Treadway 523 is incorporated herein as applied to Claims 1, and 5, however Treadway as modified does not expressly disclose a substrate of polyisocyanate and polythiol.
Colton discloses in its claims 2 and 4 and example 1 and ¶ 0044 articles such as lenses and discloses systems which comprise a substrate made of polycarbonate or another suitable substrate of high refractive index such as polymers prepared by reacting polyfunctional isocyanates with polythiols (See ¶s 0059-0061 and claim 15) {for Claims 6 and 9} for ophthalmic articles, and a coating composition comprising an alkoxysilane which can be glycidoxypropyltrimethoxysilane) (See ¶ 0037) and a polyglycidyl ether which can be resorcinol diglycidyl ether (See ¶ 0044). In the example, another ether is used, but the choice of the resorcinol ether is subject to one selection only. From ¶ 0054 of Colton the compositions have water and may contain one or more organic solvent, and from ¶ 0067 the curable film-forming composition may be applied to the substrate by one or more of a number of methods and dried to remove alcohol and water solvents {i.e. solvent-free}. In accordance with MPEP § 2144.06 “Art Recognized Equivalence for the Same Purpose” "It is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances." In re Ruff 118 USPQ 343; In re Jeze/158 USPQ 99; "the express suggestion to substitute one equivalent for another need not be present to render the substitution obvious." In re Font, 213 USPQ 532. Here polycarbonate like polyol(allyl carbonate) monomers, e.g., allyl diglycol carbonates such as diethylene glycol bis(allyl carbonate) as well as polymers prepared by reacting polyfunctional isocyanates with polythiols have the same purpose as substrates for optical articles. Colton divulges at ¶ 0045 that the polyglycidyl ether in the curable film-forming compositions is in an amount ranging from 1 to 65 percent by weight, such as from 5 to 50 percent by weight, based on the total weight of solids in the curable film-forming composition. Such a range overlaps with that of the pending claims 21-22 about 2 to about 8 and about 4 to about 6, respectively. In accordance with 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). The presence of the polyglycidyl ether in the curable film-forming compositions facilitates homogeneous tinting thereof. That is, the polyglycidyl ether promotes more even distribution of a colorant throughout the compositions, compared to a similar composition that does not contain a polyglycidyl ether, without compromising abrasion resistance or compatibility with subsequently applied coatings, particularly anti-reflective coatings.
One of ordinary skill in the art before the effective filing of the pending patent application would have considered it prima facie obvious as for example under rationale G of MPEP § 2141 III and 2143 I G from Treadway as modified to have a UV cured coated substrate from a solventless coating composition having partially hydrolyzed epoxy-functional alkoxysilane, acrylic type ethylenically unsaturated monomer, cationic photoinitiator, free radical initiator and resorcinol diglycidyl ether, 1,3-benzenediol-2,2'-[oxybis(methylene)]dioxirane, (RDGE) and non-hydrolyzed epoxy functional alkoxy silane, as afore-described for Claims 1 and 5, where from Colton the substrate is a polymer prepared by reacting polyfunctional isocyanates with polythiols as an optical substrate like that of polycarbonate as from Treadway as modified and the amount of the diglycidyl ether (like 1,3-benzenediol-2,2'-[oxybis(methylene)]dioxirane the RDGE) ranges from about 1 to about 65 percent by weight based on the total weight of solids in the curable film-forming composition overlapping the amounts in Claims 6 and 21-22 as motivational rational based on the factual underpinings as afore-described from Treadway and Treadway 523 and Colton to have lenses or ophthalmic articles as for Claim 6 and for the amount of 1,3-benzenediol-2,2'-[oxybis(methylene)]dioxirane ether for Claims 21-22 motivated to facilitate homogeneous tinting in that the polyglycidyl ether promoting more even distribution of a colorant throughout the compositions, compared to a similar composition that does not contain a polyglycidyl ether, without compromising abrasion resistance or compatibility with subsequently applied coatings, particularly anti-reflective coatings as for the combination of Claims 21-22. The combination of Colton with Treadway as modified has a reasonable expectation of success to one skilled in the art because both are for UV cured coatings, like actinic radiation for Colton, of RDGE and hydrolyzed alkoxysilanes like epoxy-functional alkoxysilanes that are for optical substrates such as polycarbonate.
Claim 23 is rejected as obvious under 35 U.S.C. 103 as being unpatentable over Treadway as evidenced by: Acc # 2007_1443687, White and RN 2238-07-5 in view of Treadway 523 further in view of King (WO 2005095541).
Treadway in view of Treadway ‘523 is relied upon as disclosed above.
Regarding claim 23, Treadway in view of Treadway ‘523 fails to teach further comprising additional coating layers.
However, King teaches photochromic articles, such as an ophthalmic plastic lens, having a first layer of a transparent, desirably optically clear, photochromic polymeric coating, and additional layers including antistatic and/or antiwetting coatings (paragraph [0002]).
It would have been obvious to one of ordinary skill in the art to include additional layer on the substrate of Treadway in view of Treadway ‘523 in order to provide additional functional properties, e.g., antistatic and/or antiwetting coatings (King, paragraph [0002]).
Response to Arguments
Applicant's arguments filed 07/21/2025 have been fully considered but they are not persuasive.
Applicant added new claim 23.
Applicant argues that the allegation that, since Treadway and Treadway 523 are similar, the teaches of the references "can be combined" does not provide any reason why one of ordinary skill in the art would have combined and modified the teachings of the references but instead is a conclusory statement that such a combination and modification would have been obvious because it could have been made.
However, section c. in the rejection of claim 1 above pointed to by Applicant was not used as motivation to combine the references. Rather, this section was used to establish that Treadway and Treadway 523 are similar and therefore, properly combined. The motivation to combine Treadway and Treadway 523 is found in sections f. and, additionally, g. of the rejection of claim 1 above, namely, Treadway ‘523 discloses the use of non-hydrolyzed alkoxy-functional silane imparts the desired viscosity (paragraph [0046]).
Applicant argues that the unexpected results associated with the presently claimed RDGE molecule, in combination with the other claim features, are demonstrated by the intrinsic record and the working examples provided in the application. Applicant respectfully requests specific reconsideration of the features of claim 6 in view of the explanation that MR8 and MR10 are commercial examples of high index materials comprising polyisocyanate and polythiol.
However, the data is still not persuasive in establishing criticality of using RDGE as compared to Heloxy 5048 given that the data only shows that RDGE has improved adhesion with Heloxy 5048 when used on specific substrates, i.e. pc, MR8 and MR10 while the present claims encompass any substrate. That is, the scope of claim 1 does not specifically include a substrate comprising polyisocyanate and polythiol. If Applicant were to amend claim 1 to recite the substrate comprises polyisocyanate and polythiol, the rejection of record would be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787