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. This Office Action is responsive to the amendment filed on 03/24/2026.
3. Claims 1, 7-13,18 are pending. Claims 1, 7-13,18 are under examination on the merits. Claims 1, 18 are amended. Claims 2-6,14-17,19-20 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 1, 7-13,18 have been fully considered but they are not persuasive, thus claims 1-12 stand rejected as set forth in Office action dated 01/14/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1, 7-10, 12-13,18 are rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. (US Pub. No. 6,036,891, hereinafter “’891”) in view of Kawaguchi et al. (US Pub. No.2022/0289945 A1, hereinafter “’945”).
Regarding claims 1, 7-10,12-13: ‘891 teaches a blue light filtering ophthalmic lens (Col. 4, lines 1-8; Col. 11, Claim 8; instant claim 7) comprising a base material, and a blue light filtering compound (Col. 8, Table 1), wherein the base material (instant claim 8) is selected form a group consisting of a hydrophilic substance such as 2-hydroxyehtyl methacrylate HEMA (instant claim 13), a thermal polymerization initiator such as 2,2’-azobisisobutyronitrile AIBN (instant claims 9-10), a cross-linking agent such as ethylene glycol dimethacrylate EGDMA (Col. 8, lines 30-42, Table I, instant claim 12), and wherein the blue light filtering compound is a compound of structural formula such as 2-(2'-hydroxy-5'-methacryloxyethyloxymethylphenyl)-2H-benzotriazole HMMB or 2-(2'-hydroxy-5'-methacryloxyethyloxyethylphenyl)-2H-benzotriazole (Col. 8, lines 30-42, Table I), wherein the blue light filtering ophthalmic lens (instant claim 7) is provided with a thickness of 0.5 mm to 2.00 mm (Col. 8, lines 18-21), and wherein the blue light filtering compound has a mass percentage concentration of 1.0% to 2.0% (Col. 8, lines 43-50, Table II). ‘891 teaches the blue light filtering ophthalmic lens (Col. 4, lines 1-8; Col. 11, Claim 8), wherein the base material has a mass percentage concentration of 100% (Col. 8, lines 43-50, Table II; a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05). ‘891 does not expressly teach a blue light filtering compound, wherein a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, and a blue light filtering ophthalmic lens provided with db* value smaller than or equal to 2, comprising a blue light filtering compound and a base material, wherein db* = (b*)1 - (b*)0, (b*)1 is a b* value of the ophthalmic lens and (b*)0 is a b* value of a control group lens.
However, ‘945 teaches a plastic lens (Page 1, [0022]; Page 3, [0042]; Page 16, Claim 19) comprising a cured product of the polymerizable composition for an optical material (Page 2, [0020]; Page 16, Claim 15). The polymerizable composition comprising (A) an isocyanate compound, (B) at least one active hydrogen compound (Page 2, [0022]), and (D) a compound having a cyclic structure including a sulfur atom as the base material (Page 2, [0024]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), wherein the base material has a mass percentage concentration of 100%, and 0.1 to 3.0% by weight of the ultraviolet absorber (C) such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl]methylpropionate (i.e., Eversorb 88) (Page 6, [0107]-[108]; Page 13, [0242]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), and which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60% (Page 14, [0245], Fig. 2, Table 2, Examples b1-b3) with benefit of providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties.
(Page 3, [0043]; Page 6, [0099]).
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In an analogous art of the ophthalmic devices, 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 blue light filtering compound by ‘891, so as to include the ultraviolet absorber (C) such as Eversorb 88 as taught by ‘’945, and would have been motivated to do so with reasonable expectation that this would result in providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide 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 3, [0043]; Page 6, [0099]).
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 the ultraviolet absorber) 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 specifically to claim 1, since ‘891 in view of ‘945 discloses the identical or substantially identical blue light filtering ophthalmic lens, which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, comprising a blue light filtering compound with a compound of structural formula (A) as set forth and a base material, wherein the blue light filtering compound has a mass percentage concentration of 0.4% to 10% and the base material has a mass percentage concentration of 100% as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. the yellow index Y.I. would be the same as claimed (i.e., the blue light filtering ophthalmic lens provided with the yellow index db* value smaller than or equal to 2). If there is any difference between the product of ‘891 in view of ‘945 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 chemical structure, 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 197 5).
Regarding claim 18: The disclosure of ‘891 in view of ‘945 is adequately set forth in paragraph above and is incorporated herein by reference. ‘891 teaches a method for obtaining a blue light filtering ophthalmic lens (Col. 7, lines 55-63, Example 3), comprising steps of: mixing a blue light filtering compound and a base material to obtain a mixture solution (Col. 8, lines 30-42, Table 1) wherein the blue light filtering compound has a mass percentage concentration of 0.4% to 10% (Col. 8, lines 43-50, Table II), and the base material has a mass percentage concentration of 90.0% to 99.6% (i.e., prior art ranges do not overlap but are close enough, Col. 8, lines 43-50, Table II), adding the mixture solution into a mold, and apply a copolymerization of the mixture solution in the mold to obtain the blue light filtering ophthalmic lens (Col. 7, lines 64-67 to (Col. 8, lines 1-27, Example 3). ‘891 does not expressly teach a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, and a blue light filtering ophthalmic lens provided with db* value smaller than or equaled to 2, comprising a blue light filtering compound and a base material, wherein db* = (b*)1 - (b*)0, (b*)1 is a b* value of the ophthalmic lens and (b*)0 is a b* value of a control group lens.
However, ‘945 teaches a method of manufacturing a blue light filtering of the plastic lens (Page 1, [0022]; Page 3, [0042]; Page 16, Claim 19) comprising a cured product of the polymerizable composition for an optical material (Page 2, [0020]; Page 16, Claim 15). The polymerizable composition comprising (A) an isocyanate compound, (B) at least one active hydrogen compound (Page 2, [0022]), and (D) a compound having a cyclic structure including a sulfur atom as the base material (Page 2, [0024]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), wherein the base material has a mass percentage concentration of 100%, and 0.1 to 3.0% by weight of the ultraviolet absorber (C) such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl]methylpropionate (i.e., Eversorb 88) (Page 6, [0107]-[108]; Page 13, [0242]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), and which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60% (Page 14, [0245], Fig. 2, Table 2, Examples b1-b3) with benefit of providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties.
(Page 3, [0043]; Page 6, [0099]).
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In an analogous art of the method for obtaining a blue light filtering ophthalmic 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 blue light filtering compound by ‘891, so as to include the ultraviolet absorber (C) such as Eversorb 88 as taught by ‘’945, and would have been motivated to do so with reasonable expectation that this would result in providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide 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 3, [0043]; Page 6, [0099]).
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 the ultraviolet absorber) 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 specifically to claim 1, since ‘891 in view of ‘945 discloses the identical or substantially identical method for obtaining a blue light filtering ophthalmic lens, which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, comprising a blue light filtering compound with a compound of structural formula (A) as set forth and a base material, wherein the blue light filtering compound has a mass percentage concentration of 0.4% to 10% and the base material has a mass percentage concentration of 100% as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. the yellow index Y.I. would be the same as claimed (i.e., the blue light filtering ophthalmic lens provided with the yellow index db* value smaller than or equal to 2). If there is any difference between the product of ‘891 in view of ‘945 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 chemical structure, 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 197 5).
8. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Liao et al. (US Pub. No. 6,036,891, hereinafter “’891”) in view of Kawaguchi et al. (US Pub. No.2022/0289945 A1, hereinafter “’945”) as applied to claim 1 above, and further in view of Mahadevan et al. (US Pub. No. 2021/0388141 A1, hereinafter “’141”).
Regarding claim 11: The disclosure of ‘891 in view of ‘945 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘891 in view of ‘945 does not expressly teach the photopolymerization initiator is phenyl bis(2,4,6-trimethylbenzoyl)-phosphine oxide or 2-hydroxy-2-methyl-1-phenyl-1-propanone.
However, ‘141 teaches imidazolium zwitterion polymerizable compounds, polymers made therefrom, and their use in ophthalmic devices and/or packaging solutions for ophthalmic devices (Page 1, [0002]). ’41 teaches a polymerization initiator may be used in the reactive mixture. The polymerization initiator may include, for instance, azobisisobutyronitrile, and the like, that generate free radicals at moderately elevated temperatures, and photoinitiator systems such as 2-hydroxy-2-methyl-1-phenyl-propan-1-one, bis(2,6-dimethoxybenzoyl)-2,4-4-trimethylpentyl phosphine oxide (DMBAPO), bis(2,4,6-trimethylbenzoyl)-phenyl phosphine oxide (Irgacure 819) (Page 14, [0129]) with benefit of providing to initiate photopolymerization of the reactive mixture, e.g., from about 0.1 to about 2 parts by weight per 100 parts of reactive monomer mixture. Polymerization of the reactive mixture can be initiated using the appropriate choice of heat or visible or ultraviolet light or other means depending on the polymerization initiator used (Page 14, [0130]).
In an analogous art of the ophthalmic devices, 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 polymerization initiator by ‘891, so as to include the photo polymerization initiator such as phenyl bis(2,4,6-trimethylbenzoyl)-phosphine oxide or 2-hydroxy-2-methyl-1-phenyl-1-propanone as taught by ‘141, and would have been motivated to do so with reasonable expectation that this would result in providing to initiate photo polymerization of the reactive mixture, e.g., from about 0.1 to about 2 parts by weight per 100 parts of reactive monomer mixture. Polymerization of the reactive mixture can be initiated using the appropriate choice of heat or visible or ultraviolet light or other means depending on the polymerization initiator used as suggested by ‘141 (Page 14, [0130]).
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 initiators) 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).
Response to Arguments
9. Applicant's arguments filed 03/24/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that ‘945 proposes two solutions,1) by adding compound A and compound B, the amount of compound (C) that can be incorporated is increased (i.e., 0.1-10%), and 2) by adding compound D, the amount of compound (C) that can be incorporated is increased (i.e., 0.1-10%) for the final coloration requirement, however,
within a system involving transparent lenses, the meaning of "transparent and colorless" cannot be objectively determined. Therefore, it is necessary to describe such characteristics through a colorimetric system.
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is submitted that that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). In this case, nevertheless, the combination of
’891 in view of ’945 is deemed to teach a blue light filtering ophthalmic lens as the recited claimed. ‘891 teaches a blue light filtering ophthalmic lens (Col. 4, lines 1-8; Col. 11, Claim 8; instant claim 7) comprising a base material, and a blue light filtering compound (Col. 8, Table 1), wherein the base material (instant claim 8) is selected form a group consisting of a hydrophilic substance such as 2-hydroxyehtyl methacrylate HEMA (instant claim 13), a thermal polymerization initiator such as 2,2’-azobisisobutyronitrile AIBN (instant claims 9-10), a cross-linking agent such as ethylene glycol dimethacrylate EGDMA (Col. 8, lines 30-42, Table I, instant claim 12), and wherein the blue light filtering compound is a compound of structural formula such as 2-(2'-hydroxy-5'-methacryloxyethyloxymethylphenyl)-2H-benzotriazole HMMB or 2-(2'-hydroxy-5'-methacryloxyethyloxyethylphenyl)-2H-benzotriazole (Col. 8, lines 30-42, Table I), wherein the blue light filtering ophthalmic lens (instant claim 7) is provided with a thickness of 0.5 mm to 2.00 mm (Col. 8, lines 18-21), and wherein the blue light filtering compound has a mass percentage concentration of 1.0% to 2.0% (Col. 8, lines 43-50, Table II). ‘891 teaches the blue light filtering ophthalmic lens (Col. 4, lines 1-8; Col. 11, Claim 8), wherein the base material has a mass percentage concentration of 100% (Col. 8, lines 43-50, Table II; a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05). ‘891 does not expressly teach a blue light filtering compound, wherein a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, and a blue light filtering ophthalmic lens provided with db* value smaller than or equal to 2, comprising a blue light filtering compound and a base material, wherein db* = (b*)1 - (b*)0, (b*)1 is a b* value of the ophthalmic lens and (b*)0 is a b* value of a control group lens.
However, ‘945 teaches a plastic lens (Page 1, [0022]; Page 3, [0042]; Page 16, Claim 19) comprising a cured product of the polymerizable composition for an optical material (Page 2, [0020]; Page 16, Claim 15). The polymerizable composition comprising (A) an isocyanate compound, (B) at least one active hydrogen compound (Page 2, [0022]), and (D) a compound having a cyclic structure including a sulfur atom as the base material (Page 2, [0024]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), wherein the base material has a mass percentage concentration of 100%, and 0.1 to 3.0% by weight of the ultraviolet absorber (C) such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl]methylpropionate (i.e., Eversorb 88) (Page 6, [0107]-[108]; Page 13, [0242]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), and which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60% (Page 14, [0245], Fig. 2, Table 2, Examples b1-b3) with benefit of providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties.
(Page 3, [0043]; Page 6, [0099]).
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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 the ultraviolet absorber) 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).
Furthermore, the present claims “Comprising” language leaves the claim open for the inclusion of unspecified ingredients even in major amounts, see Ex parte Davis et al., 80 USPQ 448 (PTO Ed. App. 1948). Also, the broad “comprising” and “containing” terminology do not exclude the presence of other ingredients in the composition, unlike the narrow “consisting of” language, see Swain v.Crittendon, 332 F 2d 820,14 1 USPQ 8 11 (CCPA 1964).
In response to the Applicant’s argument that ‘945 teaches in Table 1, Table 2, and Figure 1, the YI values are all significantly greater than 2. Therefore, it cannot be concluded that these tables and figures can be used to infer db* ≤2 (YI ≤ 2), and a person of ordinary skill in the art would not consider this a straightforward or easily achieved result.
The examiner respectfully disagrees. The Applicants' argument unpersuasive because it fails to recognize that the rejection is based on the combination of references, not any single reference alone. In re Keller, 642 F.2d 413,426 (CCPA 1981). ‘945 teaches a plastic lens (Page 1, [0022]; Page 3, [0042]; Page 16, Claim 19) comprising a cured product of the polymerizable composition for an optical material (Page 2, [0020]; Page 16, Claim 15). The polymerizable composition comprising (A) an isocyanate compound, (B) at least one active hydrogen compound (Page 2, [0022]), and (D) a compound having a cyclic structure including a sulfur atom as the base material (Page 2, [0024]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), wherein the base material has a mass percentage concentration of 100%, and 0.1 to 3.0% by weight of the ultraviolet absorber (C) such as 3-[3-tert-butyl-5-(5-chloro-2H-benzotriazol-2-yl)-4-hydroxyphenyl]methylpropionate (i.e., Eversorb 88) (Page 6, [0107]-[108]; Page 13, [0242]; Page 14, [0245], Fig. 2, Table 2, Examples b1-b3), and which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60% (Page 14, [0245], Fig. 2, Table 2, Examples b1-b3) with benefit of providing a polymerizable composition for an optical material using a specific ultraviolet absorber makes it possible to provide an optical material having an excellent effect of blocking blue light of approximately 420 nm from ultraviolet light and excellent design properties (Page 3, [0043]; Page 6, [0099]). Since ‘891 in view of ‘945 discloses the identical or substantially identical blue light filtering ophthalmic lens, which is provided with a thickness of 2.00 mm, a blue light filtering rate in the wavelength range of 380 nm to 460 nm between 10% to 60%, comprising a blue light filtering compound with a compound of structural formula (A) as set forth and a base material, wherein the blue light filtering compound has a mass percentage concentration of 0.4% to 10% and the base material has a mass percentage concentration of 100% as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. the yellow index Y.I. would be the same as claimed (i.e., the blue light filtering ophthalmic lens provided with the yellow index db* value smaller than or equal to 2). If there is any difference between the product of ‘891 in view of ‘945 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 chemical structure, 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 rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). “[T]he burden of showing unexpected results rests on he who asserts them.” Klosak, 455 F.2d at 1080. “[I]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 19995) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)); see also In re Wood, 582 F.2d 638, 642 (CCPA 1978) (“Mere lawyer’s arguments and conclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.”); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements in the specification . . . are entitled to little weight when the Patent Office questions the efficacy of those statements.”).
In response to Applicant’s argument that the overall technical solution of the present invention (i., unexpected results) is achieved by simultaneously satisfying the following interrelated conditions:
A specific thickness: 0.04 mm to 2.00 mm;
A specific compound concentration: 0.4% to 10% of compound A;
A specific optical performance: a blue light filtering rate of 10% to 60% in the wavelength range of 380 nm to 460 nm; and
A stringent color control requirement: db* ≤ 2.
The examiner respectfully disagrees. Turning to Applicant’s argument regarding unexpected results, examiner agrees that Applicant’s proffered evidence of the examples of Table of the Specification, 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). It is submitted that evidence of the blue light filtering compound of structure (A) in Table 1 of the present specification represents only one species in the amount of 0.4% to 10% in Lens 2 to Lens 6, where the claim to a sub-genus is being sought. Additionally, it is unclear as the definition of R1 moiety as substituent in the recited structure (A) is being used in Lens 2 to Lens 6 of Table 1. The showing of one species is insufficient to overcome a sub-genus. In re Shokal 113 USPQ 283 (CCPA 1957). On the other hand the showing of unexpected results does not have to cover every species within the sub-genus. Only a "representative" number need be shown. Ex parte Winters 11 USPQ 2d 1387, 1388 (BPAI 1~89).
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 their invention product (i.e., a blue light filtering ophthalmic lens) and show the product is actually different from and unexpectedly better than the teachings of the references. 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.
10. 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 extension fee 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 date of this final action.
Examiner Information
11. 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
04/07/2026
bijan.ahvazi@uspto.gov
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