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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
3. Claims 1-3, 6-7, 9-11, 13-14, 16-21, 28 are pending. Claims 1, 6-7, 9-11, 13-14, 28 are under examination on the merits. Claims 1, 9, 11 are mended. Claim 29 is cancelled. Claims 4-5, 8,12, 15, 22-27 are previously cancelled. Claims 2-3,16-21 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1, 6-7, 9-11, 13-14, 28 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1, 6-7, 9-11, 13-14, 28 are rejected under 35 U.S.C. 103(a) as being unpatentable over Jang et al. (US Pub. No. 2018/ 0179154 A1, hereinafter “’154”) in view of Keizo Ikari (US Pub. No. 2007/0228587 A1, hereinafter “’587”).
Regarding claims 1,13-14: ‘154 teaches a method of producing an optical material (Page 1, [0001]), the method comprising: (i) mixing 24.09 g of isophorone diisocyanate (IPDI) (Page 10, [0068]), 18.23 g of hexamethylene diisocyanate (HDI) (Page 10, [0069]), and 57.67 g of trimethylolpropane tris(3-mercaptopropionate) (TMPMP) (Page 10, [0070]), which could allow for vacuum defoaming, and 0.1 g of Zelec UN (i.e., release agent, Page 10, [0073]), 1.5 g of 2-(2′-hydroxy-5′-t-octylphenyl)benzotriazole (HOPBT, identical to 2nd compound of instant claim 6; Page 10, [0074]), 20 ppm of 1-hydroxy-4-(p-toluidine)anthraquinone (HTAQ, hue adjuster; (Page 10, [0075]), 10 ppm of perinone dye (PRD, organic dye, Page 10, [0076]), and 0.1 g of dibutyltin dichloride (BTC, polymerization Initiator, Page 10, [0076]),are added thereto while maintaining 15°C., followed by stirring for 20 minutes under a nitrogen stream to obtain a resin composition for lenses of eyeglasses, defoamed under reduced pressure of 0.1 torr or less for 90 minutes, charged with nitrogen and injected into a glass mold fixed with a polyester adhesive tape using a nitrogen pressure (dioptre: −5.00)(Page 9, [0062], Example 1). The glass mold into which the resin composition for lenses of eyeglasses is injected is maintained in a forced-air oven at 35° C, heated to 40° C for 3 hours, heated to 120° C for 12 hours, maintained at 120° C for 2 hours, cooled to 70° C for 2 hours and cured by heating, and the mold is released from the solid substance to obtain an optical lens having a central thickness of 1.2 mm (Page 9, [0063], Table 1, Example 1). ‘154 teaches the method of producing an optical material (Page 1, [0001]), the method comprising: (i) mixing 24.09 g of isophorone diisocyanate (IPDI) (Page 10, [0068]), 18.23 g of hexamethylene diisocyanate (HDI) (Page 10, [0069]), and 57.67 g of trimethylol
propane tris(3-mercaptopropionate) (TMPMP) (Page 10, [0070]; Page 9, [0062], Table 1, Example 1).’154 does not expressly teach a content of the hue adjuster in the polymerizable composition for an optical material is from 1.5 ppm to less than 15 ppm, and to prepare a polymerizable composition for an optical material having a hue for which L* is 70 or more and b* is from -30 to 10, preferably from -30 to 5 in a CIE 1976 (L*, a*, b*) color space in a case in which the polymerizable composition for an optical material is measured at a thickness of 10 mm; and polymerizing and curing the polymerizable composition for an optical material to obtain a cured product having a hue for which L* is 70 or more and b* is from -30 to 10, preferably from -25 to 10 in the CIE 1976 (L*, a*, b*) color space in a case in which the cured product is measured at a thickness of 10 mm.
However, ‘587 teaches a spectacle lens formed from a polycarbonate resin composition (Page 1, [0001]). The polycarbonate resin composition may contain a bluing agent (component f) to remove a yellow tinge in a lens which is caused by the polycarbonate resin (component a) or the ultraviolet absorber (component b) when the composition is molded into the spectacle lens. As the bluing agent, any bluing agent which is used in polycarbonate resins can be used without any particular problems. In general, anthraquinone dye is easy to obtain and preferred (Page 6, [0063]). Specific examples of the bluing agent include Solvent Violet 13 (CA. No (color index No) 60725; trade name "Macrolex Violet B" of Bayer AG, "Diaresin Blue G" of Mitsubishi Chemical Corporation, "Sumiplast Violet B" of Sumitomo Chemical Co., Ltd.], Solvent Violet 31 (CA. No 68210; trade name "Diaresin Violet D" of Mitsubishi Chemical Corporation), Solvent Violet 33 [CA. No 60725; trade name "Diaresin Blue J" of Mitsubishi Chemical Corporation], Solvent Blue 94 (CA. No 61500; trade name "Diaresin Blue N" of Mitsubishi Chemical Corporation), Solvent Violet 36 (CA. No 68210; trade name "Macrolex Violet 3R" of Bayer AG), Solvent Blue 97 (trade name "Macrolex Blue RR" of Bayer AG), and Solvent Blue 45 (CA. No 61110; trade name "Tetrasol Blue RLS" of Sandoz Ltd.). These bluing agents (component f) are generally contained in a concentration of 0.1 to 6 ppm in the polycarbonate resin. When a considerably large amount of the bluing agent is contained, absorption by the bluing agent is so strong that luminous transmittance lowers, resulting in an opaque lens. In particular, in the case of a vision corrective lens, the lens has a thick portion and a thin portion and has a great variation in thickness. Accordingly, when absorption by the bluing agent is strong, a difference in hue ascribable to a difference in thickness between the central portion and peripheral portion of the lens occurs, resulting in significantly poor appearance of the lens (Page 6, [0064]).
In an analogous art of the method of producing an 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 content of the hue adjuster in polymerizable composition by ‘154 so as to include a content of the hue adjuster in the polymerizable composition for an optical material is from 1.5 ppm to less than 15 ppm as taught by ‘587, and would have been motivated to do so with reasonable expectation that this would result in providing a bluing agent for offsetting a yellow tint that the polycarbonate resin and an ultraviolet absorbent bring about on a lens when it is molded into a spectacle lens as suggested by ‘587 (Page 4, [0063]).
Pertaining to claims 1, 13-14, since ‘154 in view of ‘587 discloses the identical or substantially identical a resin monomer for an optical material with an additive to prepare a polymerizable composition for an optical material as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e., a hue, would be the same as claimed (i.e., to prepare a polymerizable composition for an optical material having a hue for which L* is 70 or more and b* is from -30 to 10, preferably from -30 to 5 in a CIE 1976 (L*, a*, b*) color space in a case in which the polymerizable composition for an optical material is measured at a thickness of 10 mm, and polymerizing and curing the polymerizable composition for an optical material to obtain a cured product having a hue for which L* is 70 or more and b* is from -30 to 10, preferably from -25 to 10 in the CIE 1976 (L*, a*, b*) color space in a case in which the cured product is measured at a thickness of 10 mm). If there is any difference between the product of ‘154 in view of ‘494 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"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).
Regarding claims 6,28: ‘154 teaches the method of producing an optical material (Page 1, [0001]), the method comprising: (i) mixing 24.09 g of isophorone diisocyanate (IPDI) (Page 10, [0068]), 18.23 g of hexamethylene diisocyanate (HDI) (Page 10, [0069]), and 57.67 g of trimethylolpropane tris(3-mercaptopropionate) (TMPMP) (Page 10, [0070]), which could allow for vacuum defoaming, and 0.1 g of Zelec UN (i.e., release agent, Page 10, [0073]), 1.5 g of 2-(2′-hydroxy-5′-t-octylphenyl)benzotriazole (HOPBT, identical to 2nd compound of instant claim 6; Page 10, [0074]), 20 ppm of 1-hydroxy-4-(p-toluidine)anthraquinone (HTAQ, hue adjuster; (Page 10, [0075]), wherein the hue adjuster is bluing agent (i.e., solvent violet 13)(Page 9, [0062], Table 1, Example 1).
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Regarding claim 7: ‘154 teaches the method of producing an optical material (Page 1, [0001]), the method comprising: (i) mixing 24.09 g of isophorone diisocyanate (IPDI) (Page 10, [0068]), 18.23 g of hexamethylene diisocyanate (HDI) (Page 10, [0069]), and 57.67 g of trimethylolpropane tris(3-mercaptopropionate) (TMPMP) (Page 10, [0070]), which could allow for vacuum defoaming, and 0.1 g of Zelec UN (i.e., release agent, Page 10, [0073]), 1.5 g of 2-(2′-hydroxy-5′-t-octylphenyl)benzotriazole (HOPBT, identical to 2nd compound of instant claim 6; Page 10, [0074]), 20 ppm of 1-hydroxy-4-(p-toluidine)anthraquinone (HTAQ, hue adjuster; (Page 10, [0075]), wherein the hue adjuster is bluing agent (i.e., solvent violet 13)(Page 9, [0062], Table 1, Example 1).
‘587 teaches a spectacle lens formed from a polycarbonate resin composition (Page 1, [0001]). The polycarbonate resin composition may contain a bluing agent (component f) to remove a yellow tinge in a lens which is caused by the polycarbonate resin (component a) or the ultraviolet absorber (component b) when the composition is molded into the spectacle lens. As the bluing agent, any bluing agent which is used in polycarbonate resins can be used without any particular problems. In general, anthraquinone dye is easy to obtain and preferred (Page 6, [0063]). Specific examples of the bluing agent include Solvent Violet 13 (CA. No (color index No) 60725; trade name "Macrolex Violet B" of Bayer AG, "Diaresin Blue G" of Mitsubishi Chemical Corporation, "Sumiplast Violet B" of Sumitomo Chemical Co., Ltd.], Solvent Violet 31 (CA. No 68210; trade name "Diaresin Violet D" of Mitsubishi Chemical Corporation), Solvent Violet 33 [CA. No 60725; trade name "Diaresin Blue J" of Mitsubishi Chemical Corporation], Solvent Blue 94 (CA. No 61500; trade name "Diaresin Blue N" of Mitsubishi Chemical Corporation), Solvent Violet 36 (CA. No 68210; trade name "Macrolex Violet 3R" of Bayer AG), Solvent Blue 97 (trade name "Macrolex Blue RR" of Bayer AG), and Solvent Blue 45 (CA. No 61110; trade name "Tetrasol Blue RLS" of Sandoz Ltd.).
Regarding claims 9-10: ‘154 teaches the method of producing an optical material (Page 1, [0001]), the method comprising: (i) mixing 24.09 g of isophorone diisocyanate (IPDI) (Page 10, [0068]), 18.23 g of hexamethylene diisocyanate (HDI) (Page 10, [0069]), and 57.67 g of trimethylolpropane tris(3-mercaptopropionate) (TMPMP) (Page 10, [0070]; Page 9, [0062], Table 1, Example 1).
Regarding claim 11: ‘154 teaches the method of producing an optical material (Page 1, [0001]), wherein the polythiol compound comprises at least one selected from pentaerythritol-tetrakis(3-mercaptopropionate) (PETMP) as shown in Example 5 (Page 10, [0071]; Page 9, [0061], Table 1, Example 5).
Response to Arguments
8. Applicant’s arguments with respect to claims 1, 6-7, 9-11, 13-14, 28 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
9. 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..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
02/04/2026
bijan.ahvazi@uspto.gov