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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 26, 2026 has been entered.
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.
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 1-6, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Wallace et al. (US 2002/0022682) as evidenced by Szymczyk et al. (Advances in Colloid and Interface Science 292, 2021, 102421).
Considering Claims 1 and 5: Wallace et al. teaches a liquid hard coating (¶0002) comprising the hydrolysis product of an epoxysilane (¶0019; ¶0038) that is preferably 3-glycidyloxyproypltrimethoxysilane (¶0082), which reads on formula I, where X is Formula II and Y is methoxy groups; a dispersion of particles having an average diameter of 1 to 100 nanometers (¶0017), which is preferably a silica sol that is Ludox-CL (¶0078); a non-hydrogen Lewis Acid (¶0018), that is preferably an aluminum/multivalent ion salt (¶0031); and a surfactant (¶0061) that is preferably Zonyl FSO-100 (¶0084). Wallace et al. teaches the sum of the amount of the silane, the cationic particles and the Lewis acid as being 58.97 in the example, with the particles being 34.23% and Lewis acid being 1.86% (Sample 6). Wallace et al. teaches that the composition can be free of organic solvents (¶0039). Thus the amount of organic solvent is less than 0.5 weight percent.
The original specification teaches that Ludox-CL is a cationic alumina coated silica particle (6:36-7:4). Szymczyk et al. teaches the surface tension of Zonyl FSO-100 as being less than 25 mN/m (Table 1).
Wallace et al. teaches the particle size of the dispersion of particles as being 1 to 100 nm, which encompasses the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have found the optimum particle size within the disclosed range of Wallace et al., and thus arrive at the claimed range, and the motivation to do so would have been, as Wallace et al. suggests, to control the settling out of the particles and to control the clarity of the coating (¶0020-21).
Considering Claim 2: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the transmittance of UV light by the dispersion of particles in water, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 3: Wallace et al. teaches adding 0.75 weight percent of an UV absorber (¶0090).
Considering Claim 4: Wallace et al. teaches the composition of claim 1 as shown above.
Wallace et al. teaches that an additional liquid medium component, such as a propylene glycol methyl ether, can be added to the composition (Claim 30), and teaches a preference for low levels of organic solvent (¶0007; ¶0039). Wallace et al. does not teach the specific range claimed. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the amount of additional liquid medium, and the motivation to do so would have been, to ensure the stability of the coating components in the composition, while reducing the amount of solvent that needs to be removed before curing.
Considering Claim 6: Wallace et al. teaches the pH as being 2.85 to 5.8 in the examples (Table II).
Considering Claim 12: Wallace et al. teaches applying the coating to an optical plastic (¶0013) and curing the coating (¶0013).
Considering Claim 15: Wallace et al. teaches forming an ophthalmic lens (¶0004).
.
Claims 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wallace et al. (US 2002/0022682) as evidenced by Szymczyk et al. (Advances in Colloid and Interface Science 292, 2021, 102421) in view of Suzuki et al. (US Pat. 4,211,823).
Considering Claims 7, 10, and 11: Wallace et al. teaches a liquid hard coating (¶0002) prepared by a process comprising mixing the hydrolysis product of an epoxysilane (¶0019; ¶0038) that is preferably 3-glycidyloxyproypltrimethoxysilane (¶0082), which reads on formula I, where X is Formula II and Y is methoxy groups; a dispersion of particles having an average diameter of 1 to 100 nanometers, which teaches the claimed range with sufficient specificity (¶0017), which is preferably a silica sol that is Ludox-CL (¶0078); a non-hydrogen Lewis Acid (¶0018), that is preferably an aluminum/multivalent ion salt (¶0031); and a surfactant (¶0061) that is preferably Zonyl FSO-100 (¶0084). Wallace et al. teaches the sum of the amount of the silane, the cationic particles and the Lewis acid as being 58.97 in the example, with the particles being 34.23% and Lewis acid being 1.86% (Sample 6). Wallace et al. teaches that the composition can be free of organic solvents (¶0039). Thus the amount of organic solvent is less than 0.5 weight percent.
The original specification teaches that Ludox-CL is a cationic alumina coated silica particle (6:36-7:4).
Szymczyk et al. teaches the surface tension of Zonyl FSO-100 as being less than 25 mN/m (Table 1).
Wallace et al. does not teach forming the hydrolysis product of the epoxysilane by the claimed means. However, Suzuki et al. teaches forming an epoxysilane hydrolysis product by mixing the epoxysilane with hydrochloric acid/a Bronsted acid with a pKa of less than 3 (Example 1). The example uses 0.68 mmol of acid per 100 g or silane (Example 1). Wallace et al. and Suzuki et al. are analogous art as they are concerned with the same field of endeavor, namely epoxysilane hard coatings. It would have been obvious to a person of ordinary skill in the art to have used the method of Suzuki et al. to prepare the hydrolysis product of Wallace et al., and the motivation to do so would have been, it is the conventional means of forming a silane hydrolysis product.
Considering Claim 8: Wallace et al. teaches the same cationic particles as the instant specification. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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.
Considering Claim 9: Wallace et al. teaches the sum of the amount of the silane, the cationic particles and the Lewis acid as being 58.97 in the example (Sample 6).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wallace et al. (US 2002/0022682) as evidenced by Szymczyk et al. (Advances in Colloid and Interface Science 292, 2021, 102421) as applied to claim 12 above, and further in view of Berit-Debat et al. (US 2011/0058142).
Considering Claim 13: Wallace et al. teaches the optical article of claim 12 as shown above.
Wallace et al. does not teach the claimed primer. However, Berit-Debat et al. teaches a primer for an optical article comprising a polyurethane and an inorganic filler (¶0275). Wallace et al. and Berit-Debat et al. are analogous art as they are concerned with the same field of endeavor, namely optical articles. It would have been obvious to a person of ordinary skill in the art to have used the primer of Berit-Debat et al. as the primer of Wallace et al., and the motivation to do so would have been, as Berit-Debat et al. suggests, to provide impact resistance to the optical article (¶0209).
Considering Claim 14: Wallace et al. teaches the optical article of claim 12 as shown above.
Wallace et al. does not teach an anti-reflective coating. However, Berit-Debat et al. teaches applying an anti-reflective coating on the surface the abrasion resistance coating (¶0144). It would have been obvious to a person of ordinary skill in the art to have applied the anti-reflective coating of Berit-Debat et al. on the surface of the abrasion resistant coating of Wallace et al., and the motivation to do so would have been, as Berit-Debat et al. suggests, to reduce the light reflection of the article (¶0144).
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Wallace et al. does not disclose cationic particles having an average diameter of 30 to 80 nm is not persuasive. Wallace et al. teaches a dispersion of particles having an average diameter of 1 to 100 nanometers (¶0017), which is preferably a silica sol that is Ludox-CL (¶0078). The original specification teaches that Ludox-CL is a cationic alumina coated silica particle (6:36-7:4). While Wallace et al. does not explicitly use the term cationic particles, this is implicitly taught by the disclosure of Ludox-CL.
Wallace et al. teaches the particle size of the dispersion of particles as being 1 to 100 nm, which encompasses the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have found the optimum particle size within the disclosed range of Wallace et al., and thus arrive at the claimed range, and the motivation to do so would have been, as Wallace et al. suggests, to control the settling out of the particles and to control the clarity of the coating (¶0020-21).
B) The applicant’s argument that a single example of Wallace et al. does not teach the claimed features is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Wallace et al. teaches the inclusion of the surfactant generally, and not only with the components of example 6.
C) The applicant’s argument of unexpected results is not persuasive. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d). The data relied upon by the applicant shows one value inside the claimed range (45 nm) and one value outside the claimed value (17 nm). The provided data is not sufficient to establish the criticality of the specific range claimed, as the applicant’s a posteriori rationalization is based only on the one data point, namely 45 nm.
Further, the data does not appear to provide a consistent effect across all samples, as 2 of the four inventive samples tested in Table 5 do not show the improved adhesion under UV exposure.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/ Primary Examiner, Art Unit 1767