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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/27/2026 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.
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.
Claims 1-5, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. US 5,858,499 .
Regarding claims 1, 3, 8 and 10, Abe teaches (see reference claim 6) a polycarbonate copolymer (corresponding to the thermoplastic resin) which consists essentially of 15 to 75 mol% of recurring units represented by formula (I) as shown below, (which corresponds to applicant’s formula (2))
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79
352
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and 85 to 25 mol% of formula (II), wherein the recurring units of the formula (II) consists of at least one member of first recurring units which can be selected to be from monomers which include structure (B) (corresponding to applicant’s formula (3)) and structure (M) (corresponding to applicant’s formula (1)), as shown below. Since Abe discloses that “at least one” member of the first recurring unit of formula (II) can be utilized, implying more that one such repeat units can be incorporated in the inventive polycarbonate. Polycarbonate copolymers derived from Abe’s repeat units (I), (B) and (M) shown below, meets the repeat units of formula (2), (3) and (1) respectively.
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180
568
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154
477
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Abe provides polycarbonate compositions Example 2 (Table 1) which contains 0.4 mol spiroglycol and 0.6 mol of monomer D. Obvious embodiment of Abe would be, wherein Example 2, 0.6 mol of monomer tetramethyl bisphenol A (monomer unit D) is substituted with equal amounts of 4,4'-(3,3,5-trimethylcyclohexylidene) bisphenol (BisTMC) and 9,9-bis[4-(2-hydroxyethoxy)phenyl]fluorene (BPEF), since Abe notes that monomers tetramethyl bisphenol A, BPEF and BisTMC to be equivalents (structures(D), (B) and (M) shown in reference claim 6), and falls within Abe’s claimed range of recurring units. It is prima facie obvious to substitute art recognized equivalents for the same purpose, see MPEP 2144.06 II. Such an obvious embodiment would result in 30 mol% BPEF (corresponding to formula (1)); 40 mol% 3,9-bis(2-hydroxy-1,1-dimethylethyl)-2,4,8, 10-tetraoxaspiro(5,5)undecane (SPG) (corresponding to formula (2)); and 30 mol% BisTMC (corresponding to formula (3), instant claim 8).
Abe highlights that the inventive polycarbonate compositions have excellent optical properties (col 15, line 58) and can be used for optical equipment such an optical disk (col 15, line 62, instant claim 10), but does not address their refractive index property or the water absorption rate. However, the obvious embodiment of Abe as discussed above is substantially identical to instant examples (such as Example 9) and therefore would be expected to meet the requirement of refractive index and water absorption rate. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01I.
Regarding claim 2, Abe is silent on the Abbe number of the inventive polycarbonate copolymers. However as discussed when addressing claim 1, Obvious embodiment of Abe, is substantially identical to instant examples (such as Example 9) and therefore would be expected to meet the requirement of Abbe number.
Regarding claim 4, Abe’s Example 2 has a Tg of 157 oC (Table 1 continued). Obvious embodiment of Abe derived from Example 2, as discussed when addressing claim 1, would be reasonably expected to meet the claimed Tg requirement similar to instant specification’s Example 9.
Regarding claim 5, Abe recognizes the importance of low birefringence to minimize optical distortion in an optical equipment (Col 1, lines 25-27). Abe highlights that the inventive polycarbonates have small birefringence and have excellent optical properties (col 15, line 51), however does not provide the measurement values. As discussed, when addressing claim 1, obvious embodiment of Abe, is substantially identical to instant examples (such as Example 9) and therefore would be expected to meet the birefringence requirement.
Response to Arguments
Applicant's arguments filed 02/27/2026 have been fully considered.
Since the amended claims, comply with the written description requirement, the 112a rejection has been withdrawn.
In order to distinguish the claimed limitations from Abe’s disclosure, applicant has amended to narrow the repeating units of the spiroglycol formula (2) to be contained in the polycarbonate copolymer at 40 to 55 mol%.
Applicant has discussed the use of Abe’s examples 6 and 9, which was presented as a possibility to reject the amended claims as part of the advisory action mailed on 02/06/2026. It is highlighted that Abe’s example 2 is currently utilized as the basis for deriving a new obvious embodiment (as presented in the rejection above), the following responses are provided to the generalized arguments as filed on 02/27/2026.
Applicant argues that the although Abe considers monomers BPEF and BisTMC ((M) and (B)) as equivalents, a person having ordinary skill in the art would not have combined the monomers BPEF and BisTMC in the proposed manner, since Abe teaches that combination of a first recurring unit selected from the group consisting of the (A) to (M) and a second recurring unit selected from the class consisting of the (N) to (P) is particularly preferred as the recurring units represented by the formula (II).
In response, while it is acknowledged that Abe recommends incorporation of monomers from (N) to (P) as one of the second recurring units, it further notes these units are present at less than 50 mol% with respect to total monomer amounts, thus implying that the presence of monomers (N) to (P) are optional (reference claims 11 and 16). Abe’s inventive examples 2, 6 and 17 do not incorporate any monomers from the category of (N) to (P). Applicant’s arguments are therefore not compelling. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). See MPEP 2144.01.
Applicant adds that, there is no teaching or suggestion in Abe that a thermoplastic resin containing the three specific types of repeating units recited in claim 1 (for example, Abe's (M) and (B)), and further containing the repeating units of formulas (1) and (2) among them in a specific proportion, provides a thermoplastic resin having the properties of the claimed resin, such as a high refractive index and a low saturated water absorption.
While Abe does not provide a polycarbonate copolymer containing the three required repeating units, Abe requires the presence of spiroglycol corresponding to formula (2) in encompassing amounts of 15 to 75 mol%. The monomers corresponding to applicant’s formula (1) and (3) can be present in the combined amount of 25 to 85 mol% (reference claim 6), which fall within the required total amount of (1) and (3) of 21 to 90 mol%. Further, Abe’s examples 6 and 17 guide a skilled artisan towards the required monomers (B) and (M) corresponding to applicant’s formula (3) and (1) respectively. Since the claims are met by simply operating within the broadest teachings of the Abe, everything within the reference’s teachings are prima facie obvious. Additionally, since Abe discloses the same end use application of an optical fiber (reference claim 9), which is the same end use application as the instant specification, it would be obvious to optimize the polycarbonate compositions with the suitable disclosed monomers and their respective amounts, with the reasonable expectation of achieving adequate results.
Applicant last notes that Abe’s “obvious embodiment”, would not satisfy the refractive index and the saturated water absorption of claim 1. As discussed in the rejection, Abe’s obvious embodiment derived from Example 2, is substantially similar to instant example 9, and thus would be expected to meet the refractive index and the water absorption requirements.
Applicant’s arguments against Abe are not convincing and therefore Abe continues to provide the foundation for maintaining the rejection.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/10/25