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
Applicant’s claim amendments and remarks filed 2/27/2026 are entered and have
been fully considered. Applicant has amended claims 1 and 19 to overcome the 112b rejections and claim 19 objection, therefore they are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 19 does not include all of the limitations of claim 1, from which it depends. Claim 1 states that the polycarbonate resin does not comprise the structural unit B followed by the structure of unit B, then claim 19 states that the polycarbonate does contain a structural unit that is a variant of unit B, which contradicts claim 1. Applicant has deleted “(B)” from the claim, but this does not fix the issue, the structure of claim 19 is not distinct from the structure (B) of claim 1. The claim narrows the structural limitation by stating that “at least one of m and n is at least 1” but this limitation is encompassed by the limitations of structural unit (B) of claim 1, which is excluded from the composition entirely.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 3-4, 7, 10-16, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hirakawa et al, WO2018181157A1 (US20200224025A1 for translation and paragraph numbers) in view of Yoshimura et al, WO2018062327A1 (US20200031990A1 for translation and paragraph numbers).
Regarding claim 1, 3-4, 7, 10, 13, Hirakawa teaches a polycarbonate resin for optical lenses containing polycarbonate resin (A) with structural units represented by general formula (1) below, abstract and ¶[0028], which reads on applicant’s structural unit (D) of claims 3 and 4.
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The R represents a hydrogen atom or a C1-C4 alkyl group, preferably a hydrogen atom, a methyl group or an ethyl group, and particularly preferably a hydrogen atom ¶[0029]. Hirakawa teaches the resin further comprises a polycarbonate resin (B) of general formula (2) below, abstract and ¶[0036], which reads on applicant’s structural unit (C) of claims 1 and 7.
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R1 and R2 each independently represent a hydrogen atom, a C1-C20 alkyl group, a C1-C20 alkoxyl group, a C5-C20 cycloalkyl group, a C5-C20 cycloalkoxyl group, a C6-C20 aryl group or a C6-C20 aryloxy group, preferably a hydrogen atom, a methyl group or a phenyl group, and more preferably a hydrogen atom or a phenyl group ¶[0036].
The Y represents a C1-C4 alkylene group, preferably an ethylene group or a propylene group, and more preferably an ethylene group ¶[0037]. Additionally, the Abbe number of the polycarbonate resin composition after molding is preferably 28 or higher, ¶[0079], which encompasses the claimed range, and Hirakawa exemplifies several compositions where the Abbe number falls within the claimed range, such as examples 1-6 table 4 page 13, which are the mixtures of polycarbonate resins of formula 1 and 2.
Hirakawa further teaches the polycarbonate composition may comprise other resins, with the total proportion of the polycarbonates of general formulas 1 and 2 being 70% by mass or more ¶[0043]. And the mixed ratio of the polycarbonate resins themselves is 10:90 to 90:10 by mass, ¶[0044]. Hirakawa’s resin does not include the polycarbonate resin with applicant’s structural unit (B).
Hirakawa does not teach the polyester resin containing applicant’s structural unit (A) represented by formula 1 in claim1.
Yoshimura discloses a polyester resin for optical lenses comprising the structure of formula (1) below, wherein R1 is a hydrogen atom, CH3, or C2H5, R2 and R3 are each independently a hydrogen atom or CH3, and n is 0 or 1 ¶¶[0047-0048].
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This structure corresponds to applicant’s polyester structure (A) of general formula 1 in claim 1 and claim 13 (where R1, R2, and R3 are hydrogen atoms and n=1).
Yoshimura further discloses that this resin creates an optical lens with low water-absorbing capacity, superior heat resistance, transparency, and optical characteristics (refractive index, Abbe number, and photo elastic coefficient) ¶¶[0018, 0049]. The composition may further comprise other resins such as polycarbonate resins, and can be combined with two or more of these types ¶[0116]. Yoshimura discloses this composition is suitable for a variety of optical lenses and films ¶¶[0123, 0134]. Additionally the optical lenses formed from the polyester resins have an Abbe number of 28 or more, ¶¶[0035, 0069] which encompasses the claimed range, and Yoshimura exemplifies several compositions where the Abbe number is within the claimed range, such as examples 3 and 4, see table 1 continued on page 13. Yoshimura also discloses that the Abbe number can be adjusted as appropriate within the range by adjusting the proportions of starting monomers for the polyester resin, ¶[0066].
Considering Hirakawa’s polycarbonates A and B (applicant’s D and C), make up 70 wt.% minimum of the composition, as stated above, the polyester resin of Yoshimura can be added up to 30 wt.%. So the ratio of the polycarbonates, based on the 10:90 to 90:10 ratios mentioned above, would be 7:63 to 63:7 to total the minimum 70 wt.%. Calculating the ratio of Yoshimura’s polyester (A) to Hirakawa’s polycarbonate that matches applicant’s C, the mass ratio range is 30/63 (equal to 32/68) to 30/7 (equal to 81/19) which falls within the claimed A/C mass ratio of claim 1. Furthermore, calculating the mass ratio of Yoshimura’s polyester (A) to Hirakawa’s polycarbonate that matches applicant’s D, the mass ratio range is also 30/7 (equal to 81/19) to 30/63 (equal to 32/68), which falls within the claimed A/D mass ratio of claim 10.
Hirakawa and Yoshimura are analogous to the claimed invention because both are in the field of optical lens compositions.
Therefore it would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify the invention of Hirakawa by adding up to 30wt.% of the polyester resin of Yoshimura with the motivation to lower the water absorbing capacity, increase the heat resistance, improve the transparency, and to improve the optical characteristics of the resin composition, and producing another permutation of an optical lens with an Abbe number of 28 or more as disclosed by both Hirakawa and Yoshimura.
Furthermore, 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).
Regarding claims 11-12, Hirakawa teaches adding antioxidants to the composition ¶[0046]. Examples of the antioxidant include triethylene glycol-bis[3-(3-tert-butyl-5-methyl-4-hydroxyphenyl)propionate], 1,6-hexanediol-bis[3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate], pentaerythritol tetrakis [3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate], octadecyl-3-(3,5-di-tert-butyl-4-hydroxyphenyl)propionate, and 1,3,5-trimethyl-2,4,6-tris(3,5-di-tert-butyl-4-hydroxybenzyl)benzene which are phenolic antioxidants, ¶[0046].
Regarding claims 14-16, Hirakawa teaches the polycarbonate composition is suitable for optical lenses ¶¶[0012, 0091]. Yoshimura discloses forming an optical lens ¶¶0117-0120] and optical film ¶[0134].
Regarding claim 18, Yoshimura discloses that n can be zero for the polyester structure of formula (1), ¶[0048]. The only m and X in claim 1 refer to the structural unit (B), which the resin composition of claim 1 does not comprise, therefore the composition would be the same whether the m=0 or the X is a fluorene or not, because the unit is absent from the composition entirely. As such, because Hirakawa and Yoshimura do not include the structural unit B where m=0 and X is fluorene, the composition of Hirakawa modified by Yoshimura satisfies this claim.
Regarding claim 20, Yoshimura discloses the optical lens includes a copolymerized polyester resin containing structural units A, B, and C ¶[0054]. Structural unit A is the formula (1) ¶[0048], as shown above for claim 1. Structural unit B is derived from a diol, ¶[0055]. Structural unit C is derived from a dicarboxylic acid or an ester-forming derivative thereof ¶[0058]. Yoshimura also discloses that a preferred unit is derived from 9,9-bis(2-methoxycarbonylethyl)fluorene in order to achieve good optical characteristics ¶[0059]. Therefore it would be obvious to include the claimed dicarboxylic acid because Yoshimura discloses the polyester more preferably comprises structural units derived from the claimed FDPM in order to balance the properties of transparency, heat resistance, and optical characteristics.
Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive.
Applicant has amended claim 19 to remove the name of the structural unit, “(B)”, but the structural unit of claim 19 is encompassed by the structural unit (B) of claim 1, which is clearly excluded from the composition. Removing the label (B) does not fix the issue, the claim is at odds with claim 1, from which it depends; the structural unit cannot be both excluded and included at the same time, therefore the 112d rejection is maintained.
In response to applicant’s argument that claim 1 exhibits unexpected results is not persuasive. Both Hirakawa and Yoshimura disclose their resin compositions both produce lenses with Abbe numbers 28 or higher, and as explained in the rejection above, both have examples where their resins have Abbe numbers within the claimed range. Furthermore, the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c). Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 716.02. If applicant is arguing the Abbe numbers of the resins produced in the instant specification are unexpected, this is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art. Unexpected results must be commensurate in scope with the claims. Applicant has results for the claimed range of Abbe numbers, but the data is not commensurate in scope with the claim because the claim is directed to generic structures and the data is from specific structures in specific amounts. The unexpected results are not unexpected because Yoshimura and Hirakawa disclose the same range of Abbe numbers as applicant for their resins and allow for blends with other resins, therefore a POSA would have a reasonable expectation of success in blending a polyester resin for optical lenses with an Abbe number of 28 or more with a polycarbonate resin for optical lenses with an Abbe number of 28 or more and produce a third resin with an Abbe number of 28 or more.
In response to Applicant’s argument that Yoshimura only relates to resins with high Abbe numbers, Examiner points to ¶¶[0035, 0066] of Yoshimura which discloses that the Abbe number of the resins is 28 or more, and that the Abbe number is adjusted as appropriate within the range by adjusting the proportions of starting monomers, ¶[0066]. Furthermore, Yoshimura has two examples, example 3 and 4, derived from D-NHEs, DMCD, EG, and BPEF (which are the same monomers exemplified by Applicant) which have Abbe numbers of 40 and 42, see table 1 continued on page 13. Yoshimura also has example 5, which has an Abbe number of 28, which may be out of the claimed range, but shows that the teachings of Yoshimura embrace the lower possible Abbe numbers, contrary to Applicant’s assertion.
Additionally, Applicant argues that Hirakawa’s resin has a “medium” Abbe number, but Hirakawa’s examples 1-6 all have Abbe numbers within the claimed range, with example 4 at 29 and example 3 at 33, see table 4 page 13 where the blends of PC resins are tested. These Abbe numbers would be considered “low” because they are closer to the claimed 28.7 which Applicant calls a “low” Abbe number. Hirakawa teaches the polycarbonate resins produce moldings with Abbe numbers of 28 or higher, with 50 as the maximum ¶[0079]. This range in itself encompasses the claimed range of claim 1. Therefore, Hirakawa does not only teach resins with Abbe numbers in the “medium” range.
In response to Applicant’s argument that a person of ordinary skill in the art would not expect to yield a blend of Hirakawa’s resin and Yoshimura’s resin with an Abbe number the same as the claimed Abbe number, Examiner points to the above explanation that each prior art teaches a range of Abbe numbers that encompasses the claimed range and has examples within that range, and each prior art teaches blending with other resins, as explained above for claim 1, therefore there is a reasonable expectation of success to achieve a resin blend of the polyesters and polycarbonates of Yoshimura and Hirakawa with an Abbe number within the claimed range. Furthermore, Yoshimura discloses adjusting the Abbe number as desired by adjusting the monomer ratios. It is within the ambit of the skilled artisan to adjust the ratio of monomers in a blend of resins to achieve a desired Abbe number for the molded resin. Examiner also points out that Applicant asserts the invention has a low Abbe number, but according to Applicant’s Table 2 where the PC and polyesters are blended, the Abbe numbers range from 28.7 to 49.6, which includes not just low numbers but also includes results in the medium range. Applicant’s range of Abbe numbers and resin monomers are in line with the teachings of the prior art, and therefore the results are not actually unexpected.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., continuous moldability) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s argument that a POSA would not use a Titanium catalyst for the formation of the polyester is unsupported speculation on Applicant’s behalf and, therefore, not persuasive. There is no evidence to suggest titanium catalysts result in a resin with lower thermal stability. In fact Applicant discloses in ¶[0030] of the instant specification that titanium is a suitable catalyst for polyester formation, and is considered “more favorable” along with germanium, manganese, antimony, and tin. Applicant uses germanium oxide as the catalyst for the polyester component, but does not provide evidence that the use of a titanium catalyst would produce different results. Furthermore, Yoshimura discloses the use of the same favorable catalysts as applicant, ¶[0111], therefore it would be obvious to a POSA that they are not limited to only titanium catalysts.
In response to applicant’s argument that there is no motivation to combine Yoshimura’s polyester with the PC of Hirakawa to obtain a resin with excellent continuous molding properties, examiner reminds applicant that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation is found in Yoshimura, which as explained above for claim 1, the motivation is to lower the water absorbing capacity, increase the heat resistance, improve the transparency, and to improve the optical characteristics of the resin composition, and further to produce another permutation of an optical lens with an Abbe number of 28 or more. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
For all the above reasons, the §103 rejection is maintained. Additionally, new claim 20 is rejected because Yoshimura discloses the claimed dicarboxylic acid unit.
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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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