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.
Response to Amendment
The amendments filed 06/01/2026 have been entered. Claims 1-6, 8-11 and 13-15 remain pending in the application.
Response to Arguments
Applicant's arguments filed 06/01/2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art of record fails to disclose the limitation of the amended
claim 1, specifically, “wherein the functional laminate is a triacetyl cellulose (TAC) laminate with a dried primer coating on at least one external surface”. Applicant notes that one of ordinary skill in the art would not have combined the TAC laminate of Glacet with the abrasion resistant layers defined in Fukuda in view of Henry since there is no mention of TAC laminates in Fukuda in view of Henry. Applicant further notes that the modification of Fukuda in view of Henry with Glacet may produce unexpected results since the use of for example pentaerythritol triacrylate or CR-39 provide poor adhesion after casting and become delaminated after surfacing. Examiner respectfully disagrees. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes 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, Glacet discloses, in Para [0013], the use of multiple laminated functional coatings including hard coatings and polarizing coatings, for this reason example believes one of ordinary skill in the art would have been motivation to modify the abrasion resistant coatings of Fukuda in view of Henry with the TAC layer of Glacet.
In response to applicant's argument wherein the modification may produce unexpected results such as delamination, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Examiner notes, Fukuda in view of Henry is disclosing the use of hydroxyethyl methacrylate as a reactive component in Henry Fig 1 and Para [0039] and as stated in PG 3 of the remarks would provide strong adhesion after casting. Together with Glacet’s disclosure of a method of producing adequate bonding between different materials as seen in Para [0033], Examiner believes one of ordinary skill in the art would have found it obvious to modify Fukuda in view of Henry with the TAC layer of Glacet. For these reasons examiner maintains the rejection of claim 1 under 35 USC 103.
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, 9-11, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295, of record) in view of Henry (US 2015/0301253, of record) and Glacet (US 2010/0110567, of record)
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), 2-hydroxypropylmethacrylate (HPMA), pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol and ethylene glycol bis-mercaptoacetae; wherein the functional laminate is a triacetyl cellulose (TAC) laminate with a dried primer coating on at least one external surface. 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), 2-hydroxypropylmethacrylate (HPMA), pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol and ethylene glycol bis-mercaptoacetae (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), 2-hydroxypropylmethacrylate (HPMA), pentaerythritol tetrakis(3-mercaptopropionate),2,3-bis[(2-mercaptoethyl)thio]-1-propanethiol, 2-mercaptoethyl sulfide, poly(ethylene glycol) dithiol, 2,2'- (Ethylenedioxy)diethanethiol and ethylene glycol bis-mercaptoacetae of Henry for the purpose of improving functionality of primer coating layer (Para [0039])
Fukuda in view of Henry does not disclose wherein the functional laminate is a triacetyl cellulose (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 triacetyl cellulose (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 laminate is a triacetyl cellulose (TAC) laminate with dried primer coating on at least one external surface of Glacet for the purpose of improve both the mechanical and optical properties of laminated functionalized optical element (Para [0007])
Regarding claim 2, Fukuda in view of Henry and Glacet 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 and Glacet 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 and Glacet 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 and Glacet 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 and Glacet 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 11, Fukuda in view of Henry and Glacet disclose 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 13, Fukuda in view of Henry and Glacet 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 and Glacet 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, of record) in view of Henry (US 2015/0301253, of record) and Glacet (US 2010/0110567, of record) 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 and Glacet discloses the functionalized optical article of claim 1. Fukuda in view of Henry and Glacet 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 Glacet 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 and Glacet 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, of record) in view of Henry (US 2015/0301253, of record) and Glacet (US 2010/0110567, of record) 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 and Glacet discloses the functionalized optical article of claim 1. Fukuda in view of Henry and Glacet 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 and Glacet 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 and Glacet discloses the functionalized optical article of claim 1. Fukuda in view of Henry and Glacet does not disclose wherein the reactive component is 2- hydroxyethylmethacrylate and pentaerythritol tetrakis(3-mercaptopropionate). Fukuda in view of Henry and Glacet 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 and Glacet 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])
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Fukuda (US 2017/0320295, of record) in view of Henry (US 2015/0301253, of record) and Glacet (US 2010/0110567, of record) 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 and Glacet discloses the functionalized optical article of claim 1. Fukuda in view of Henry and Glacet 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 Glacet 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 and Glacet 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.
Kawai (US 2005/0168690) discloses a optical structure with a TAC laminate and other functional layers.
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 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
/PINPING SUN/Supervisory Patent Examiner, Art Unit 2872
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