DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/13/2026 has been entered.
3. Claims 1-5, 7-8, 10-14, 17-20 are pending. Claims 1-5, 7-8, 10-14, 17-20 are under examination on the merits. Claim 1 is amended. Claims 6, 15 are cancelled. Claims 9, 16 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-5, 7-8, 10-14, 17-20 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 112
6. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
7. Claim 14 is rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 14, as written, depends on claim 1, which recites “wherein the spectacle lens contains 0.05 parts by mass or more and 2.00 parts by mass or less of the compound represented by formula (1) in relation to 100 parts by mass of the resin”, however, based on the content of the claim 1, “the spectacle lens contains 0.05 parts by mass or more and 0.6 parts by mass or less of the compound represented by formula (1) in relation to 100 parts by mass of the resin”. Thus, claim 14 as being of improper dependent form for failing to further limit the subject matter of a previous claim 1.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-5, 13-14, 17-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ogo et al. (US Pub. No. 2020/0264341 A1, hereinafter “’341”) in view of Iwamoto et al. (US Pub. No. 2020/0031782 A1, hereinafter “’782”).
Regarding claims 1-5: ‘341 teaches a spectacle lens (Page 1, [0001]) comprising a lens substrate that comprises 2-(3-tertbutyl-2-hydroxy-5-methyl phenyl)-5-chloro-2H-benzotriazole of blue light absorbable compound and a resin, wherein the spectacle lens contains 0.4 parts by mass if the recited compound in relation to 100 parts by mass of the resin (Page 7, [0083], Example 1), and the resin includes at least one selected from the group consisting of an episulfide resin such as bis-(β-epithiopropyl)sulfide, and wherein the lens substrate has a refractive index ne of 1.60 (Page 7, [0083], Example 1). ‘341 does not expressly teach a compound represented by formula (1) as set forth, and a transmittance of light of a wavelength of 410 nm in the entire spectacle lens is 5% or less, and a transmittance of light of a wavelength of 430 nm in the entire spectacle lens is 70% or more.
However, ‘782 teaches a spectacle lens (Page 1, [0001]) comprising: a compound such as 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl) -2H- benzotriazole-5-carboxylate (Page 6, [0070], Reference Example 2) as an ultraviolet absorber in the amount of 0.1 wt% or more and 1 wt% or less of the recited compound in relation to 100 parts by mass of the resin (Page 4, [0024]; Page 8, [0096]), wherein the lens substrate contains the recited compound and a resin (Page 1, [0013]; Page 3, [0022]; Page 4, [0023]) with benefit of providing a maximum absorbing wavelength in the vicinity of 360 nm, causes little coloration while strongly absorbing the ultraviolet light, and has a high light-resistance that shows the ultraviolet light blocking function in a long term (Page 2, [0015]).
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In an analogous art of the curable composition for optical materials such as spectacle lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorber by ‘341, so as to include a compound represented by formula (1) as set forth as taught by ‘782, and would have been motivated to do so with reasonable expectation that this would result in providing a maximum absorbing wavelength in the vicinity of 360 nm, causes little coloration while strongly absorbing the ultraviolet light, and has a high light-resistance that shows the ultraviolet light blocking function in a long term as suggested by ‘782 (Page 2, [0015]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
ultraviolet absorber compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Pertaining to claim 1, since the combination of ‘341 in view of ‘782 teaches substantially identical spectacle lens (Page 1, [0001]) comprising a lens substrate composition as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., a transmittance of light of a wavelength of 410 nm in the entire spectacle lens is 5% or less, and a transmittance of light of a wavelength of 430 nm in the entire spectacle lens is 70% or more). If there is any difference between the product of ‘341 in view of ‘782, and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
Regarding claim 13: ‘341 teaches the spectacle lens (Page 1, [0001]), wherein the resin is an episulfide resin such as bis-(β-epithiopropyl)sulfide (Page 7, [0083], Example 1).
Regarding claim 14: The disclosure of ‘341 in view of ‘782 is adequately set forth in paragraph above and is incorporated herein by reference. ‘341 teaches the spectacle lens (Page 1, [0001]), wherein the spectacle lens contains 0.4 parts by mass if the recited compound in relation to 100 parts by mass of the resin (Page 7, [0083], Example 1).
‘782 teaches the spectacle lens (Page 1, [0001]), wherein the spectacle lens contains 0.1 wt% or more and 1 wt% or less of the recited compound in relation to 100 parts by mass of the resin (Page 4, [0024]; Page 8, [0096]).
Regarding claim 17: ‘341 teaches the spectacle lens (Page 1, [0001]), wherein the lens substrate has a refractive index ne of 1.70 or more and 1.80 or less (Page 3, [0034]).
Regarding claim 18: ‘341 teaches the spectacle lens (Page 1, [0001]), comprising at least one selected from the group consisting of a hard coat layer, a base layer, and an anti-reflection (Page 6, [0075]; Page 7, [0076]).
Regarding claim 19: ‘341 teaches the spectacle lens (Page 1, [0001]), wherein the lens substrate is a meniscus substrate (i.e., concave surface; Page 7, [0083], Example 1).
Regarding claim 20: ‘341 teaches the spectacle lens (Page 1, [0001]), wherein the spectacle lens has an optical center thickness of 2.0 mm (Page 7, [0083], Example 1).
10. Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ogo et al. (US Pub. No. 2020/0264341 A1, hereinafter “’341”) in view of Iwamoto et al. (US Pub. No. 2020/0031782 A1, hereinafter “’782”) as applied to claim 1 above, and further in view of Fujita et al. (US Pub. No. 2003/00 47722 A1, hereinafter “’722”).
Regarding claims 7-8: The disclosure of ‘341 in view of ‘782 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘341 in view of ‘782 does not teach the spectacle lens comprising a coloring agent L having a largest maximum absorption wavelength within a range of 550 nm or more and 600 nm or less in a 20-ppm by mass toluene solution, and a coloring agent S having a largest maximum absorption wavelength within a range of 500 nm or more and less than 550 nm in a 20-ppm by mass toluene solution.
However, ‘722 teaches an optical material composition (Page 2, [0019]) comprising
a coloring agent having its absorption maximum in the range of 520 to 650 nm (Page 3, [0039]; Page 4, [0045]), wherein the content of coloring agent is usually 0.01 to 200 ppm, preferably 0.05 to 100 ppm of the total amount of the composition (Page 4, [0043]) with benefit of providing to give colorless, transparent lenses (Page 3, [0037]).
In an analogous art of curable composition for optical materials such as spectacle lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the curable composition by ‘341, so as to include the spectacle lens comprising a coloring agent L having a largest maximum absorption wavelength within a range of 550 nm or more and 600 nm or less in a 20-ppm by mass toluene solution, and a coloring agent S having a largest maximum absorption wavelength within a range of 500 nm or more and less than 550 nm in a 20-ppm by mass toluene solution as taught by ‘722, and would have been motivated to do so with reasonable expectation that this would result in providing to give colorless, transparent lenses as suggested by ‘722 (Page 3, [0037]).
11. Claims 10-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Ogo et al. (US Pub. No. 2020/0264341 A1, hereinafter “’341”) in view of Iwamoto et al. (US Pub. No. 2020/0031782 A1, hereinafter “’782”) as applied to claim 1 above, and further in view of Kawaguchi et al. (US Pub. No. 2022/0289945 A1, hereinafter “’945”).
Regarding claims 10-12: The disclosure of ‘341 in view of ‘782 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘341 in view of ‘782 does not expressly teach the resin is a cured product of an active hydrogen-containing compound component and an isocyanate component as set forth.
However, ‘945 teaches a polymerizable composition for an optical material (Page 3, [0051]) includes (A) an isocyanate compound (Page 3, [0057] to Page 4 [0059]), (B) at least one active hydrogen compound selected from the group consisting of a polythiol compound (Page 4, [0065]), and the mixture (Page 4, [0067]-[0068]), an episulfide resin (Page 8, [0151] to Page 9, [0158]), and (C) an ultraviolet absorber (Page 9, [0159]) with benefit of providing an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties (Page 1, [0020]-[0021]; Page 3, [0043]).
In an analogous art of curable composition for optical materials such as spectacle lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the curable composition by ‘341, so as to include the resin which is a cured product of an active hydrogen-containing compound component and an isocyanate component as set forth, and an episulfide resin as taught by ‘945, and would have been motivated to do so with reasonable expectation that this would result in providing an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties as suggested by ‘945 (Page 1, [0020]-[0021]; Page 3, [0043]).
Response to Arguments
12. Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive
In response to Applicant’s argument that the submitted declaration under 37 CFR 1.132 filed 04/13/2026 showing that the Declarant states that according to the present invention, it is possible to achieve both a high refractive index and a high Abbe number, in addition to suppressing 410 nm transmittance and ensuring excellent 430 nm transmittance. None of the cited references discloses or suggests these effects.
The examiner respectfully disagrees. The Applicant’s argument lacks persuasive merit at least because the claims do not include language that requires both a high refractive index and a high Abbe number. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]pplicant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”)
Furthermore, since the combination of ‘341 in view of ‘782 teaches substantially identical spectacle lens comprising a lens substrate composition as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. light transmittance, would be the same as claimed (i.e., a transmittance of light of a wavelength of 410 nm in the entire spectacle lens is 5% or less, and a transmittance of light of a wavelength of 430 nm in the entire spectacle lens is 70% or more). If there is any difference between the product of ‘341 in view of ‘782, and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 (CCP A 1975).
In response to Applicant’s argument that Example 1 compare to Comparative Example 1
achieves both a high refractive index and a high Abbe number, in addition to suppressing 410 nm transmittance and ensuring excellent 430 nm transmittance.
The examiner respectfully disagrees. Examiner agrees that Applicant’s proffered evidence of Table of declaration under 37 CFR 1.132 is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim 1, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005). The Declarant notes that the data are shown in the Examples (Ex1) and Comparative Examples (CEx1) of the present specification is an extraction and combination of relevant parts from Tables 1 to 4).
In this regard, Applicant notes that 2-(3-tert-butyl-2-hydroxy-5-methylphenyl)-5-chloro-2H-benztriazol (Compound 52) is a preferred compound of the primary reference Ogo (see paragraph [0057] of Ogo) and is the compound used in Ogo's Examples (see paragraph [0083] in Ogo). It appears from the recite Table that both Ex1 and CEx1 have identical high refractive index of 1.60, while the Abbe number of Ex1 is slightly higher than CEx1 (40.5 vs 39.5). Furthermore, both Ex1 and CEx1 show a transmittance of light of a wavelength of 410 nm in the entire spectacle lens is 5% or less (0.6 vs 0.2). However, a transmittance of light of a wavelength of 430 nm in the entire spectacle lens of Ex1 is slightly better than CEx1 (78.1 vs 67.5). Therefore, the Applicant asserts that the use of the compound recited in the claims of the present application achieves the effect of suppressing light transmittance at 410 nm while maintaining excellent light transmittance at 430 nm. Furthermore, regarding the Abbe number, the combined use of the resin having a specific ne and a relatively high refractive index with Compound 1-1 suppresses the decrease in the Abbe number compared to other compounds having similar structures, demonstrating an excellent effect.
The examiner respectfully disagrees. The comparison of Ex1 and CEx1 is insufficient to establish unexpected results for claim 1 because the amount of Compound-1 and compound52 are different (0.55 vs 1.00). It is submitted that any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected or whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare the recited spectacle lens properties and show the product is actually different from and unexpectedly better than the teachings of the references. The comparison must be under the substantially the same conditions except for the novel features of the invention, and precisely what was done should be recited in the declaration, e.g., the actual steps carried out, the materials employed, and the results obtained should be spelled out. Nothing concerning the work relied upon should be left to conjecture. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
Examiner Information
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
04/17/2026
bijan.ahvazi@uspto.gov
Prosecution Insights