DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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.
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.
Claim(s) 1-8 and 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka et al. (US 2015/028954, “Ishizuka”) in view of Lee et al. (US 2006/0183878, “Lee”).
Regarding claims 1 and 12 – 14, Ishizuka teaches a resin, that may be molded into an optical article ([0022], [0034], optical lens) including a polycarbonate compound (i.e., a monomeric unit having pendant groups reading on the claimed X1-Z1-X2 and X3-Z2-X4-L-C=O groups, see, e.g., [0036], compound of general formula (A); for use in an optical resin, [0002] - [0006]). Ishizuka teaches that such a compound may be formed from reaction of a dihydroxy precursor ([0049] – [0052], and may include fluorine).
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Ishizuka fails to teach the claimed structure because Ishizuka fails to teach a single substituted medial aryl group. However, in the same field of endeavor of optical resin applications ([0001] – [0010]), Lee teaches a terphenyl monomeric compound having a dihydroxy group and that such a compound may help to reduce steric hindrance and thus be more readily produced and be useful in the production of materials for use in optical applications (e.g., [0001] – [0010], [0048]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing have substituted a medial terphenyl group in the polycarbonate compound of Ishizuka (or to have used the terphenyl compound in a polycarbonate, consistent with the teachings of Ishizuka) at the very least as an attempt to harness its ability to reduce steric hindrance and thus be more readily produced and its usefulness in the production of materials for use in optical applications (e.g., [0001] – [0010], [0048]).
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Regarding claim 2, modified Ishizuki additionally teaches the medial benzene ring need not have a group corresponding to R1 (see Lee, [0046]).
Regarding claim 3, modified Ishizuka additionally teaches that the groups corresponding to Ar1 and Ar2 may be substituted aryl groups having 6 to 12 carbons (see Lee, [0046]).
Regarding claim 4, Ishizuka additionally teaches that the groups corresponding to the claimed Z1 and Z2 groups may be alkylene groups having from 1 to 4 carbon atoms (see Ishizuka, [0036]).
Regarding claim 5, Ishizuka additionally teaches that the groups corresponding to the claimed X1 and X4 may be oxygens (see Ishizuka [0036]).
Regarding claim 6, Ishizuka teaches the resin may have a molecular weight of 20,000 to 200,000 (e.g., [0054]).
Regarding claim 7, Ishizuka teaches the resin may have a glass transition temperature of from 100 to 160C ([0065]).
Regarding claim 8, Ishizuka teaches the resin may have a refractive index of from 1.635 to 1.695 at 589 nm ([0057]).
Regarding claim 15, modified Ishizuka additionally teaches that the groups corresponding to Ar1 and Ar2 may be substituted aryl groups having 6 to 12 carbons (see Lee, [0046]), the groups corresponding to the claimed Z1 and Z2 groups may be alkylene groups having from 1 to 4 carbon atoms (see Ishizuka, [0036]), and the group corresponding to the claimed L’ group need not be included by the language of claim 1 and thus, because Ishizuka teaches a linking group corresponding to the claimed limitation of element L is considered to teach the required elements of claim 15 (see Ishizuka, [0036]).
Regarding claim 16, modified Ishizuka additionally teaches that an end group may be, for example, CO2CH3 (see, e.g., [0036]).
Regarding claim 17, Ishizuka additionally teaches that the resin may have an Abbe’s number on the range of 24 or less under substantially similar testing conditions to those claimed (Ishizuka, [0058]).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Ashida et al. US 2015/0158800 discloses dihydroxy terphenyl compounds.
Response to Arguments
Applicant's arguments filed 5/4/26 have been fully considered but they are not persuasive.
Applicant argues that the structure provided by Lee does not teach the Ar1 and Ar2 groups instantly claimed. The Examine respectfully disagrees however. Ishizuka teaches that the polycarbonate resin includes a dihydroxy component reacted with a carbonate precursor (e.g., [0049] – [0051], [0038], wherein the hydroxyl groups are the reaction points for attachment to the polycarbonate). Lee teaches a dihydroxy group that may help to reduce steric hindrance and thus be more readily produced and be useful in the production of materials for use in optical applications (Lee, e.g., [0001] – [0010], [0048], Formula 1). Such hydroxy groups would attach to the polycarbonate under the reaction conditions described by Ishizuka. While the hydroxyl groups of the compound of Formula 1 of Lee do not read on the presently claimed Aryl groups but the Aryl groups pendant from the center benzene ring do read on groups Ar1 and Ar2. Therefore, the Examiner maintains the position described in the rejections above.
Therefore, claims 1-8 and 12-17 are rejected as described above.
Conclusion
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 ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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