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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-8) without indicating traverse, and no argument has been submitted. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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 of this title, 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.
Claim(s) 1-8 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Hosokawa et al. (US 20130197182) in view of Charas et al. (JOURNAL OF POLYMER SCIENCE: PART B: POLYMER PHYSICS 2011, 49, 52–61), both listed on IDS and ISR.
As to claims 1-6, Hosokawa (abs., claims, examples) discloses a polycarbonate (47) composition of producing optical element (2, 9) comprising a spirobifluorene (7, 13) moiety, which renders a higher refractive index and a lower birefringence because of having a higher number of conjugated aromatic rings in a molecule thereof and a higher symmetry of the molecular structure. Hosokawa (Ex.5-1) discloses a polycarbonate produced via polymerizing diphenyl carbonate with spirobifluorene a diol (formula 3a):
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, and the resultant polycarbonate shows a Mw of 12.7x2.5=31.75k (Table 2), falling within the claimed range of claim 6.
Hosokawa is silent on the claimed spirobifluorene monomer moiety of formula 1 requiring the claimed L1 and L3 being substituted or unsubstituted arylene or heteroarylene. Hosokawa merely discloses a spirobifluorene commoner having no substituted or unsubstituted arylene or heteroarylene adjacent to the spirobifluorene moiety.
In the same area of endeavor of producing optical element (abs.), Charas discloses a spirobifluorene monomer that renders good thermal and optical stability in the PMMA copolymer. Charas (scheme 1) discloses an intermediate comonomer of spirobifluorene diol:
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One of ordinary skill in the art would obviously recognize the spirobifluorene diol having three spirobifluorene moieties would improve the thermal stability, such as Tg, of the resultant copolymer, because of the two rigid aromatic rings of spirobifluorene between the center spirobifluorene and ether linkage, as compared to aforementioned Hosokawa’s formula 3a having no such moiety. In light of Hosakawa’s teaching (7), one of ordinary skill in the art would obviously recognize additional spirobifluorene moieties on the polymer backbone would further improve refractive index and birefringence.
Therefore, as to claims 1-6, it would have been obvious to one of ordinary skill in the art to have modified the polycarbonate disclosed by Hosokawa and replaced the spirobifluorene (formula 3a) with the one of Charas, because the resultant process would yield improved thermal and optical stability, refractive index, and birefringence. The resultant copolymer meets the claimed ones of claims 1-5, corresponding to the claimed L2=L1=spirobifluorene-phenylene (L1 and L2 can be construed as spirobifluorene substituted phenylene), X3=X2=O, Z1=Z2=propylene (construed as methylene substituted ethylene), a=b=1, R1=R2=nil(H) or r1=r2=0, X4=X1=O, and L=phenylene (form diphenyl carbonate for Hosakawa’s Ex.5-1).
The references are silent on the claimed Tg and refractive index of claims 7-8. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed comonomers/polycarbaonate having the claimed Mw. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. Tg and refractive index, would necessarily flow from a polycarbonate containing all of the claimed components in the claimed amounts prepared by a substantially similar process of producing polycarbonates. 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. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766