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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-9, 13-15, and 19-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
To satisfy the enablement requirement of 35 U.S.C. 112, first paragraph, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without "undue experimentation.” See, e.g., In re Wands, 858 F.2d 731, 736-37 (Fed. Cir. 1988). In In re Wands, the court set forth the following factors to consider when determining whether undue experimentation is needed: (1) the breadth of the claims; (2) the nature of the invention; (3) the state of the prior art; (4) the level of one of ordinary skill; (5) the level of predictability in the art; (6) the amount of direction provided by the inventor; (7) the existence of working examples; and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. Wands, 858 F.2d at 737. The undue experimentation determination is not a single factual determination. Rather, it is a conclusion reached by weighing all the factual considerations. Wands, 858 F.2d at 737.
Whether the specification would have been enabling as of the filing date involves consideration of the nature of the invention, the state of the prior art, and the level of skill in the art. The initial inquiry is into the nature of the invention, i.e., the subject matter to which the claimed invention pertains. The nature of the invention becomes the backdrop to determine the state of the art and the level of skill possessed by one skilled in the art. See MPEP § 2164.05(a).
Regarding Claim 1, the specification fails to enable the full scope of the claimed spectacle lens without undue experimentation. The specification, while being enabling for a spectacle lens with the two classes of compounds recited in Formula 1-1 and 1-2, does not reasonably provide enablement for a spectacle lens for any compound that fulfils the transmittance measurements recited in Claim 1.
As to the nature of the invention, the instant Application is directed to lens with UV absorbers. Those skilled in the art are generally engineers and chemists with knowledge of both chemistry, physics and engineering principals.
The claim is directed to a spectacle lens comprising a resin and a Compound 1, where Compound 1 has specific transmittance conditions, such that Compound 1 in a sample, wherein the sample containing a standard resin from curing 50.28 parts by mass of a mixture of 2,5-bis(isocyanatomethyl)-bicyclo[2.2.1]heptane and 2,6-bis(isocyanatomethyl)-bicyclo[2.2.1]heptane and a mixture of 25.50 parts by mass of pentaerythritol tetrakis(3-mercaptopropionate) and 24.22 parts by mass of 1,2-bis(2-mercaptoethylthio)-3-mercaptopropane and 0.55 parts by mass of the above compound with respect to 100 parts by mass of the standard resin, the sample having a thickness of 1.6 mm at the measurement point, the transmittance of light with a wavelength of 410 nm and 430 nm is measured with a spectrophotometer.
The prior art recognizes lens comprising a resin and a UV absorber.
The Specification does not guide one of ordinary skill in the art to achieve the scope of Claim 1. As discussed above, Claim 1 recites any Compound 1, such that Compound 1 in a sample, wherein the sample containing a standard resin from curing 50.28 parts by mass of a mixture of 2,5-bis(isocyanatomethyl)-bicyclo[2.2.1]heptane and 2,6-bis(isocyanatomethyl)-bicyclo[2.2.1]heptane and a mixture of 25.50 parts by mass of pentaerythritol tetrakis(3-mercaptopropionate) and 24.22 parts by mass of 1,2-bis(2-mercaptoethylthio)-3-mercaptopropane and 0.55 parts by mass of the above compound with respect to 100 parts by mass of the standard resin, the sample having a thickness of 1.6 mm at the measurement point, the transmittance of light with a wavelength of 410 nm and 430 nm is measured with a spectrophotometer
The Specification only provides specific guidance on using two classes of benzotriazole UV absorbers, shown as Formula 1-1 and 1-2. A person of ordinary skill in the art would have to undergo undue amount of experimentation to achieve the claimed invention, beyond the disclosed classes of benzotriazole UV absorbers. The Specification allows for any compound comprising a benzotriazole ring, which would require an immense quantity of experimentation to reach a compound that could meet the claimed sample test.
Based upon a totality of the Wands factor, there is an undue burden on the person having an ordinary skill in the art when seeking to the make the claimed invention and the specification fails to enable the full scope of the claim.
Claims 1-4, 6-9, 13-15, and 19-22 are also rejected, due to their dependency on Claim 1.
Claims 20 and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 20, the claim depends on canceled Claim 12 which renders the claim indefinite.
Regarding Claim 22, the claim recites a ratio for mercapto to isocyanato groups. However, the claim does not recite identify what mercapto and isocyanato groups must have this ratio. It is uncertain if the components in the standard resin, the Compound 1, the lens substrate resin or the entire lens itself have this claimed ratio. Thus, the claim is rendered indefinite as one with ordinary skill in the art would be ascertain the metes and bounds of the claim.
Claim Rejections - 35 USC § 103
Claims 1, 9, 13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kagei (WO 2001/077717 A1) in view of Iwamoto et al. (JP 2018-168089 A) [referenced and translated via US 2020/0031782 A1].
Regarding Claim 1, Kagei teaches a spectacle lens (Abstract) comprising a lens substrate comprising an episulfide resin (Abstract) and a UV absorber, such as benzotriazole-based absorber. (Page 2). Kagei teaches the UV absorber can be added in 0.01 to 4 wt% relative to the resin, which would overlap 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. (MPEP §2144.05). Kagei also teaches the lens can have a refractive index of 1.74 (Page 3)
Kagei does not specifically teach Compound 1.
Iwamoto teaches using 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate as the benzotriazole-based ultraviolet absorber (Compound 1) for use in lens. (Paragraph 0018) 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate is recited as Compound 1 in the instant Specification; therefore, 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate meets transmittances recited in Claim 1. Iwamoto teaches the claimed benzotriazole ultraviolet absorber provides the advantage of high yield production and better and longer UV blocking with little coloration compared to other benzotriazole absorbers. (Paragraph 0013, 0015). Therefore, it would have been obvious to one with ordinary skill in the art to use 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate as Compound 1 in Kagei as taught by Iwamoto for the improved properties to the resulting lens.
Regarding Claim 9, Kagei teaches the resin is an episulfide resin. (Title; Abstract).
Regarding Claim 13, Kagei teaches applying a hard coat layer and/or antireflection layer to the lens. (Page 3).
Regarding Claim 19, Kagei teaches applying a hard coat layer and/or antireflection layer to the lens. (Page 3).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kagei and Iwamoto in view of Fromentin et al. (US 2019/0047967 A1)
Regarding Claim 2, Kagei does not specifically teach the claimed transmittances for the spectacle lens. Kagei does teach the transmittance should start to decrease around 420 nm (Abstract).
Fromentin teaches a lens comprising a benzotriazole-based ultraviolet absorber. (Abstract; Paragraph 0024). Fromentin teaches the optical material should have a light transmittance of 1% or less at wavelength of 410 nm and a light transmittance of 65% or more at a wavelength of 430 nm. (Abstract; Paragraph 0086). These two ranges overlap 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. (MPEP §2144.05). Fromentin teaches having these light transmittances improves eye health. (Paragraph 0003-0015). Thus, it would have been obvious to one with ordinary skill in the art to have the light transmittance of Kagei set to the claimed range to ensure the lens improve eye health.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kagei and Iwamoto in view of Ihara (JP 2008-169312 A).
Regarding Claims 3-4, Kagei does not specifically teach coloring agents L and S. Kagei does teach adding in dyes/coloring to adjust the color of the lens. (Page 3)
Ihara teaches a lens (Abstract) comprising a benzotriazole-based ultraviolet absorber (Page 6), where coloring agents are added. Ihara states Solvent Violet 13, which is recited as Coloring Agent L in the Specification, and Solvent Red 111, which is recited as Coloring Agent S in the Specification, can be added to the lens composition. (Page 5). As Ihara teaches the same coloring agents recited in the Specification, then the coloring agents would inherently have the claimed maximum absorption wavelengths. Ihara teaches adding these dyes ensures the lens remans colorless and transparent and prevent a yellowing tint. (Page 1-3). Thus, it would have been obvious to one with ordinary skill in the art to add the claimed coloring agents to the composition of Kagei in order to ensure the lens remain colorless, transparent and non-yellowed, which is desired by Kagei (Page 3).
Claim 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kagei and Iwamoto in view of Ito (JP 2012/181268 A).
Regarding Claim 6-8, Kagei does not teach the claimed composition for the episulfide resin.
Ito teaches a lens comprising benzotriazole-based ultraviolet absorber (Abstract) comprising an isocyanate and an active hydrogen compound component. (Page 4). Ito teaches a hexamethylene diisocyanate and bis(mercaptomethyl)-3,6,9-trithiaundecandithiol is a mixture of 4,7-bis(mercaptomethyl)-3,6,9-trithiaundecane-1,11-dithiol, 4,8-bis(mercaptomethyl)-3,6,9-trithiaundecane-1,11-dithiol and 5,7-bis(mercaptomethyl)-3,6,9-trithiaundecane-1,11-dithiol (Page 4) Ito teaches this composition improves weather resistance. (Page 3). Thus, it would have been obvious to one with ordinary skill in the art to use the claimed composition in Kagei as the resin for improved weather resistance.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kagei and Iwamoto, in further view of OptiCampus (NPL).
Regarding Claim 14, Kagei does not teach the lens is a meniscus type. OptiCampus teaches ophthalmic lens are meniscus type to provide the correct power adjustment for glasses, thus a glasses user will be able to properly see. (Page 2-3) Thus, it would have been obvious to one with ordinary skill in the art to ensure the lens of Kagei is a meniscus lens type to ensure they can be used in ophthalmic glasses for a user.
Regarding Claim 15, Kagei does not teach the optical center thickness. Opticampus teaches optical center thickness of the lens can range from 1.0 to 2.2 mm. (Page 3). This overlaps 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. (MPEP §2144.05). Opticampus teaches this ensures this thickness ensure sufficient impact protection and flexural stability. (Page 3). Therefore, it would have been obvious to one with ordinary skill in the art to set the optical center thickness of Kagei to the claimed range as taught by OptiCampus.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fromentein et al. (US 2019/0047967 A1) in view of Iwamoto.
Regarding Claim 1, Fromentein teaches a spectacle lens (Abstract) comprising a lens substrate comprising a polythiourethane resin (Paragraph 0033) and UV absorber, such as a benzotriazole -based absorber. (Abstract; Paragraph 0054-0056). Fromentein teaches the benzotriazole can be around 0.2 to 3 wt%. (Paragraph 0080), which overlaps 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. (MPEP §2144.05). Fromentein teaches the refractive index of the lens substrate can be 1.60 or 1.67 (Paragraph 0033).
Fromentein does not teach the claimed Compound 1.
Iwamoto teaches using 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate as the benzotriazole-based ultraviolet absorber (Compound 1) for use in lens. (Paragraph 0018). 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate is recited as Compound 1 in the instant Specification; therefore, 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate meets transmittances recited in Claim 1. Iwamoto teaches the claimed benzotriazole ultraviolet absorber provides the advantage of high yield production and better and longer UV blocking with little coloration compared to other benzotriazole absorbers. (Paragraph 0013, 0015). Therefore, it would have been obvious to one with ordinary skill in the art to use 2-ethylhexyl 2-(2-hydroxy-4-methoxyphenyl)2H-benzotriazole-5-carboxylate as Compound 1 in Fromentein as taught by Iwamoto for the improved properties to the resulting lens.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Fromentin and Iwamoto, in further view of Kawaguchi et al. (US 2010/0010192 A1).
Regarding Claim 21, Fromentin does not teach the specific polythiourethane resin composition.
Kawaguchi teaches a polythiourethane resin with the claimed components recited in Claim 21 (Abstract; Paragraph 0021, 0035, 0038). Kawaguchi teaches the claimed polythiourethane resin composition avoids clouding or striation of the resulting lens. (Paragraph 0006). Thus, as Kawaguchi teaches the composition avoid quality defects for lens, it would have been obvious to one with ordinary skill in the art to use claimed polythiourethane composition taught by Kawaguchi in the lens of Fromentin.
Response to Arguments
Applicant’s arguments have been fully considered.
A new ground of rejection has been made in view of Applicant’s amendments.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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