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 .
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.
Claims 8-10, 12-16, and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes (US 5,702,645 A) in view of Obata et al (US 2011/0288231 A1).
With regards to claim 8, Hughes is directed to a photochromic article such as a coated ophthalmic lens including a layer comprising photochromic chromene derivatives (i.e., chromene compounds) (Hughes: col. 1, lines 5-10).
Hughes does not appear to further disclose the inclusion of a protective layer in the form of a cured layer obtained by curing a polymerizable composition per the present claims.
Obata is directed to a raw material composition comprising tricyclodecane dimethanol dimethacrylate as a compound (A) (i.e., a polymerizable composition comprising one or more types of (meth)acrylates, including an alicyclic bifunctional (methacrylate)) (Obata: para. [0016], [0092], and [0279]). More particularly, Obata discloses 45 to 100 mass % of compound (A) relative to the total amount of all methacrylate compounds listed (i.e., 45 to 100 mass % of compound (A), or tricyclodecane dimethanol dimethacrylate, based on the total amount of (meth)acrylates) (Obata: para. [0113]). That the composition as claimed in present claim 1 “is a polymerizable composition for forming a protective layer of a photochromic article” constitutes an intended use. It is noted that since the composition of Obata is curable to form a coating, it is technically capable of forming a protective layer of a photochromic article (i.e., as any layer is capable of providing protection to any article). Hughes and Obata are analogous art in that they are related to the same field of endeavor of optical compositions. A person of ordinary skill in the art would have found it obvious to have applied the coating of Obata to at least the photochromic layer of Hughes in order to provide improved heat protection, thermal stability, solvent resistance, and reduced cracking (Obata: para. [0005] and [0015]). It is noted that the range taught by Obata overlaps the claimed range of 87.0 mass% or more and 100 mass% or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 9, Hughes does not appear to expressly disclose a protective layer thickness as claimed. However, Hughes teaches use of its material to form, for example, a lens, whose design is known to optimize (Hughes: col. 1, lines 50-64). It is noted that the present specification uses the claimed invention to form the same type of article (i.e., lenses). Based on the foregoing, a person of ordinary skill in the art would have found it obvious to have optimized the thickness of the protective layer, since Hughes expressly instructs a person of ordinary skill to optimize the features of the composition such that it is usable with respect to lenses, and since, as best understood, the present specification selects the claimed thickness range for such a purpose.
With regards to claim 10, the article of Hughes and Obata includes a substrate and a photochromic layer (see above discussion).
With regards to claim 12, Hughes discloses its article as used to form a lens (see above discussion). Therefore, the article of Hughes is considered to meet the claimed intended use of “spectacle lens” (i.e., as it includes the structural properties of a spectacle lens as claimed).
With regards to claim 13, Hughes discloses its article as used to form a lens (see above discussion). Therefore, the article of Hughes is considered to meet the claimed intended use of “goggles lens” (i.e., as it includes the structural properties of a spectacle lens as claimed).
With regards to claim 14, Hughes discloses its article as used to form a lens (see above discussion). Therefore, the article of Hughes is considered to meet the claimed intended use of “goggles lens” (i.e., as it includes the structural properties of a spectacle lens as claimed).
With regards to claim 15, Hughes discloses its article as used to form a lens (i.e., a shield member of a helmet) (see above discussion).
With regards to claim 16, Hughes discloses its article as used to form a lens (see above discussion). Therefore, the article of Hughes is considered to meet the claimed intended use of “eyeglasses” (i.e., as it includes the structural properties of a spectacle lens as claimed).
With regards to claim 18, Obata teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (i.e., the amount of compound (A) by total methacrylate must also be at least within this claimed range) (Obata: para. [0113]). This range overlaps the claimed range of 90.0 mass% or more and 100 mass % or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 19, Obata further teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (Obata: para. [0113]). This range overlaps the claimed range of 80.0 mass% or more, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 20, Obata further teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (Obata: para. [0113]). This range overlaps the claimed range of 90.0 mass% or more, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 21, Obata further discloses the inclusion of a radical polymerization initiator (Obata: para. [0150]).
With regards to claim 22, Obata further discloses the inclusion of an ultraviolet absorber (Obata: para. [0183]).
With regards to claim 23, a person of ordinary skill in the art would have found it obvious to have added a (meth)acrylate to the photochromic layer of Hughes, and further, to have cured said layer, in order to provide improved heat protection, thermal stability, solvent resistance, and reduced cracking (Obata: para. [0005] and [0015]).
With regards to claim 24, a person of ordinary skill would have found it obvious to have further included pentaerythritol tetraacrylate and isobornyl methacrylate (i.e., isobornyl acrylate), in order to provide improved crack suppression and transparency (Obata: para. [0070], [0107], [0109], and [0254]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hughes in view of Obata et al as applied to claim 10 above, and in further view of Gao et al (US 2015/0210587 A1).
With regards to claim 11, Hughes and Obata teach a photochromic article as applied to claim 10 above, the photochromic article including a substrate, photochromic layer, and protective layer laminated in order (see above discussion). However, Hughes and Obata do not appear to further disclose the lamination of an organosilicon-based cured layer.
Gao is directed to a method of coating a glass substrate used in a photochromic lens, the coating formed from a coating solution B or a coating solution C, each of which contain organosilicon compounds (i.e., organosilicon solutions) (Gao: para. [0103] and [0107]-[0108]). The coating solutions of Gao are considered well-known in the art as they are commercially available (Gao: para. [0107]-[0108]). The coating solutions of Gao result in improved contact angles after 1000 cycles of abrasion testing (i.e., the formed coatings retain dirt and smudge resistance despite exposure to abrasion) (Gao: para. [0118]-[0120]; Table 1). Hughes, Obata, and Gao are analogous art in that they are related to the same field of endeavor of protecting photochromic articles. A person of ordinary skill in the art would have found it obvious to have applied one of the coating solutions of Gao to either side of the photochromic article of Hughes and Obata (i.e., thereby forming a substrate/photochromic layer/protective layer/organosilicon-based cured layer) in order to provide improved dirt and smudge resistance which is maintained despite exposure to abrasion (Gao: para. [0118]-[0120]; Table 1).
Response to Arguments
Applicant’s arguments with respect to the grounds of rejection under 35 U.S.C. 103 have been fully considered but they are not found persuasive.
Applicant argues that independent claim 8 is directed to a photochromic article, not to a polymerizable composition for forming a protective layer of a photochromic article. Applicant concludes that the Office’s rationale is not appropriate. Applicant then argues that Obata merely discloses using its resin composition for an optical part, and that there is no suggestion regarding its use for protecting a photochromic layer. Applicant’s arguments are not found persuasive as independent claim 8 does not merely recite a photochromic article, but rather, it recites a photochromic article comprising a photochromic layer and a protective layer. Although it is agreed that the present claims are directed to a photochromic article, the Examiner notes that, more specifically, the claimed photochromic article includes a protective layer. The composition of Obata need not be disclosed as used in a photochromic composition in order to meet the present claims. In addition, Obata broadly directs a person of ordinary skill to use its protective layer composition in optical components. As best understood, an article having a photochromic layer is a type of optical component. In particular, Hughes discloses the use of its photochromic layer in optical elements (i.e., a photochromic article is a type of optical element, per Hughes). Therefore, a person of ordinary skill would have considered the protective layer composition of Obata suitable for use with the photochromic article (i.e., optical element) of Hughes. Applicant additionally argues that a person of ordinary skill has no other reason for combining the composition of Obata with the photochromic layer of Hughes, but this argument is not found persuasive as the composition of Obata may be used with any optical element (such as a photochromic article) in order to provide improved strength and crack resistance.
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.
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/E.W./
Examiner, Art Unit 1783
/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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