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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2, 4, 6, 9-10, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295) in view of Henry (US 2015/0301253)
Regarding claim 1, Fukuda discloses a functionalized optical article (see Fig 2), comprising: an optical lens including at least one polymerized monomer formulation (see Fig 2; Para [0066]; a base lens 1 may comprise polymerized formulations); a functional laminate including a functional film and at least one thermoplastic film layer attached to at least one side of the functional film (see Fig 2; Para [0072]; a functional laminate comprises cured layer 2 and inorganic oxide layer 3; examiner interprets the at least one film layer to be the cured layer 2 (contains urethane methacrylate, a thermoplastic) and the functional film the inorganic oxide layer 3); and a primer coating deposited on at least one external surface of the functional laminate (see Fig 2; Para [0153-0176]; primer layer 4 disposed on a surface of laminate 2/3), wherein said primer coating includes, prior to curing: at least one acrylic polymer (see Fig 2; Para [0154]; methacryl resin may be used), at least one urethane acrylate oligomer (see Fig 2; Para [0155]; a polyurethane with an acryl component is equivalent to an urethane acrylate oligomer), at least one reactive component (see Fig 2; Para [0154]; methacryl resin may be used and is consisted a reactive component); and at least one solvent (see Fig 2; Para [0176]; a solvent may be used in the primer coating). Fukuda does not disclose wherein said primer coating includes, prior to curing: at least one UV initiator; and wherein the reactive component comprises at least one selected from the group consisting of:2-hydroxyethylmethacrylate (HEMA), allyl methacrylate (AMA), 2-hydroxy-l,3- di(meth)acryloxy propane, 2-hydroxypropylmethacrylate (HPMA),dimethylaminoethylmethacrylate (DMAEM), diethylaminoethylnethacrylate (DEAEM),pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol, ethylene glycol bis-mercaptoacetae and pentaerythritol. Fukuda and Henry are related because both disclose curable coatings.
Henry discloses a coating (see Fig 1) wherein said primer coating includes, prior to curing: at least one UV initiator (see Fig 1; Para [0039]; light curable primer contains a 3% Irgacure); and wherein the reactive component comprises at least one selected from the group consisting of:2-hydroxyethylmethacrylate (HEMA), allyl methacrylate (AMA), 2-hydroxy-l,3- di(meth)acryloxy propane, 2-hydroxypropylmethacrylate (HPMA),dimethylaminoethylmethacrylate (DMAEM), diethylaminoethylnethacrylate (DEAEM),pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol, ethylene glycol bis-mercaptoacetae and pentaerythritol (see Fig 1; Para [0039]; 8.56 wt % hydroxyethyl methacrylate may be used as a reactive component).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda wherein said primer coating includes, prior to curing: at least one UV initiator; and wherein the reactive component comprises at least one selected from the group consisting of:2-hydroxyethylmethacrylate (HEMA), allyl methacrylate (AMA), 2-hydroxy-l,3- di(meth)acryloxy propane, 2-hydroxypropylmethacrylate (HPMA),dimethylaminoethylmethacrylate (DMAEM), diethylaminoethylnethacrylate (DEAEM),pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol, ethylene glycol bis-mercaptoacetae and pentaerythritol of Henry for the purpose of improving functionality of primer coating layer (Para [0039])
Regarding claim 2, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Henry discloses wherein the acrylic polymer has a molecular weight ranging from about 1,000 to about 100,000 g/mol (Henry: see Fig 1; Para [0039]; poly isobornyl acrylate can have average molecular weights of 100,000 g/mol depending on length of polymer chain).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda with wherein the acrylic polymer has a molecular weight ranging from about 1,000 to about 100,000 g/mol of Henry for the purpose of improving functionality of primer coating layer (Para [0039])
Regarding claim 4, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda further discloses wherein the reactive component has a functionality of at least 2 (see Fig 2; Para [0154]; binder resins such as vinyl chloride/vinyl acetate copolymer resin has multiple functional groups).
Regarding claim 6, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Henry discloses wherein the reactive component is included in the primer coating, prior to curing, in an amount of 1% by mass to 30% by mass (see Fig 1; Para [0039]; hydroxyethyl methacrylate may be used in a amount of 8.56 by weight and act as a reactive component).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda with wherein the reactive component is included in the primer coating, prior to curing, in an amount of 1% by mass to 30% by mass of Henry for the purpose of improving functionality of primer coating layer (Para [0039])
Regarding claim 9, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda further discloses wherein the solvent comprises at least one selected from the group consisting of a ketone solvent and an acetate solvent (see Fig 2; Para [0176]; methyl ethyl ketone may be used as a solvent)
Regarding claim 10, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda further discloses wherein the functional laminate comprises a functional layer and a thermoplastic film layer, where the thermoplastic film layer comprises at least one selected from the group consisting of polycarbonate (PC), polymethyl methacrylate (PMMA), polyamide (nylon), polyester (PET), cellulose acetate butyrate (CAB), and triacetyl cellulose (TAC) (Fig 2; Para [0080-0081]; functional laminate includes a functional layer 3 which is an inorganic oxide and a cured layer 2 which may be formed of PMMA or PC as stated in said paragraphs).
Regarding claim 13, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda further discloses wherein the primer coating on the functional laminate is dried and has a thickness ranging from about 0.5 µm to about 30 µm (see Fig 2; Para [0174, 0176]; primer coating is dried and may have a thickness of between 1-10 microns)
Regarding claim 15, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda further discloses wherein the functional laminate is positioned on a surface of the optical article or resides embedded within the optical article (see Fig 2; Para [0061]; example in figure 2 has a function laminate, elements 2 and 3, positioned on an indirect surface of the optical article as seen in Fig 2).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295) in view of Henry (US 2015/0301253) as applied to claim 1 above, and further in view of Kouzimina (US 2018/0215661, of record)
Regarding claim 3, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the urethane acrylate oligomer comprises an ethylenically unsaturated monomer having a degree of unsaturation of 1 or more. Fukuda in view of Henry and Kouzmina are related because both disclose coatings.
Kouzimina discloses a coating (Para [0054]) wherein the urethane acrylate oligomer comprises an ethylenically unsaturated monomer having a degree of unsaturation of 1 or more (Para [0054]; a urethane acrylate oligomer may be used in a aromatic ring thus making an unsaturation of 1 or more)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the urethane acrylate oligomer comprises an ethylenically unsaturated monomer having a degree of unsaturation of 1 or more of Kouzimina for the purpose of reducing the cost to manufacture said coating (Para [0008-0010])
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295) in view of Henry (US 2015/0301253) as applied to claim 1 above, and further in view of Itoh (US 2010/0201939, of record)
Regarding claim 5, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the reactive component has at least one functional group selected from the group consisting of: allyl, vinyl, (meth)acrylate, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine, or the reactive component has a (meth)acrylate group and at least one functional group selected from the group consisting of: allyl, vinyl, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine. Fukuda in view of Henry and Itoh are related because both disclose lenses.
Itoh discloses a lens (Para [0020-0025]) wherein the reactive component has at least one functional group selected from the group consisting of: allyl, vinyl, (meth)acrylate, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine, or the reactive component has a (meth)acrylate group and at least one functional group selected from the group consisting of: allyl, vinyl, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine (Para [0026-0027]; reactive component may include pentaerythritol tetrakis(3-mercaptopropionate) and 2-hydroxyethyl(meth)acrylate which contains a meth acrylate group)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the reactive component has at least one functional group selected from the group consisting of: allyl, vinyl, (meth)acrylate, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine, or the reactive component has a (meth)acrylate group and at least one functional group selected from the group consisting of: allyl, vinyl, thiol, hydroxyl, isocyanate, epoxy, episulfide, amine, and imine of Itoh for the purpose of improving transparency of the lens while suppressing coloring (Para [0007])
Regarding claim 8, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the reactive component is 2- hydroxyethylmethacrylate and pentaerythritol tetrakis(3-mercaptopropionate). Fukuda in view of Henry and Itoh are related because both disclose lenses.
Itoh discloses a lens (Para [0020-0025]) wherein the reactive component is 2- hydroxyethylmethacrylate and pentaerythritol tetrakis(3-mercaptopropionate) (Para [0026-0027]; reactive component may include pentaerythritol tetrakis(3-mercaptopropionate) and 2-hydroxyethyl(meth)acrylate which contains a meth acrylate group)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the reactive component is 2- hydroxyethylmethacrylate and pentaerythritol tetrakis(3-mercaptopropionate) of Itoh for the purpose of improving transparency of the lens while suppressing coloring (Para [0007])
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295) in view of Henry (US 2015/0301253) as applied to claim 1 above, and further in view of Glacet (US 2010/0110567, of record)
Regarding claim 11, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the functional film layer comprises PVA polarizing film and photochromic film. Fukuda in view of Henry and Glacet are related because both disclose coatings.
Glacet discloses a coating (see Fig 1) wherein the functional film layer comprises PVA polarizing film and photochromic film (see Fig 1; Para [0013]; functional layer may include PVA polarization film and photochromic film)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the functional film layer comprises PVA polarizing film and photochromic film of Glacet for the purpose of improve both the mechanical and optical properties of laminated functionalized optical element (Para [0007])
Regarding claim 12, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the functional laminate is a TAC laminate with dried primer coating on at least one external surface. Fukuda in view of Henry and Glacet are related because both disclose coatings.
Glacet discloses a coating (see Fig 1) wherein the functional laminate is a TAC laminate with dried primer coating on at least one external surface. (see Fig 1; Para [0013]; laminate may include a TAC laminate with top coat; Fukuda discloses the primer coating on external surface)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the functional film layer comprises PVA polarizing film and photochromic film of Glacet for the purpose of improve both the mechanical and optical properties of laminated functionalized optical element (Para [0007])
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295) in view of Henry (US 2015/0301253) as applied to claim 1 above, and further in view of Valeri (US 2018/0003861, of record)
Regarding claim 14, Fukuda in view of Henry discloses the functionalized optical article of claim 1. Fukuda in view of Henry does not disclose wherein the ophthalmic lens includes at least one polymer, and wherein the polymer includes a urethane or thiourethane polymer. Fukuda in view of Henry and Valeri are related because both disclose UV curable coatings
Valeri discloses a coating (see Fig 1) wherein the ophthalmic lens includes at least one polymer, and wherein the polymer includes a urethane or thiourethane polymer (Valeri: see Fig 1; Para [0046]; optical article may include thiourethane).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Fukuda in view of Henry with wherein the ophthalmic lens includes at least one polymer, and wherein the polymer includes a urethane or thiourethane polymer of Valeri for the purpose of improving flexibility of the coating while maintaining scratch resistance (Para [0027])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yajima (US 2011/0268874) discloses a functional laminate optical article with a primer coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL ANDRES SANZ whose telephone number is (571)272-3844. The examiner can normally be reached Monday-Friday 8:30 am -5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached on (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.A.S./Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872