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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chien (US 10,514,479).
Regarding claims 1-2 and 11: Chien (US ‘479) discloses ophthalmic lenses [abstract; 1:14-22], wherein Example 2 [Ex. 2; 7:16-37] prepares a lens from a composition comprising HEMA (2-hydroxyethyl methacrylate [2:46]), NVP (N-vinylpyrrolidone [2:48]), MAA (methacrylic acid [2:47-48]), Irgacure 1173 (photoinitiator [2:59-63]), EGDMA (ethyleneglycol dimethacrylate [2:53-54]), ethanol, C.I. Reactive Red 11, and C.I. Reactive Yellow 15 [Ex. 2; 7:16-37]. Chien (US ‘479) discloses acrylic based monomers with R as H or CH3, such as acrylic acid and methacrylic acid [2:42-52].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted acrylic acid for methacrylic acid in Ex. 2 based on the invention of Chien (US ‘479), and would have been motivated to do so since Chien (US ‘479) discloses acrylic based monomers with R as H or CH3, such as acrylic acid and methacrylic acid [2:42-52]. Additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Chien (US ‘479) discloses ophthalmic lenses and intraocular lenses [1:19-22]. While Chien (US ‘479) does not specifically disclose a contact lens, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Regarding claims 3-4: Chien (US ‘479) discloses at least one hydrophilic monomer, such as DMA (N,N-dimethylacrylamide [2:42-52]), and at least on red pigment, such as Reactive Red 180 [2:20-22].
Chien (US ‘479) does not specifically disclose Ex. 2 containing DMA and Reactive Red 180. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included DMA and Reactive Red 180 based on the invention of Chien (US ‘479), and would have been motivated to do so since Chien (US ‘479) suggests that the composition can contain at least one hydrophilic monomer, such as DMA [2:42-52], and at least on red pigment, such as Reactive Red 180 [2:20-22]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 5-6: Chien (US ‘479) discloses a combined total of 0.32 mass% of C.I. Reactive Red 11 and C.I. Reactive Yellow 15 [corresponding to a total of 0.32 parts by mass] [Ex. 2; 7:16-37].
Chien (US ‘479) does not specifically disclose 0.16 mass% of C.I. Reactive Yellow 15 and 0.16 mass% of Reactive Red 11 [instant claim 5]; 0.16 parts by weight of C.I. Reactive Yellow 15 and 0.16 parts by weight of Reactive Red 11 [instant claim 6]. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)) [MPEP 2143].
Regarding claims 7-8: Chien (US ‘479) discloses a total of 0.32 mass% of C.I. Reactive Red 11 and C.I. Reactive Yellow 15 [corresponding to a total of 0.32 parts by mass] [Ex. 2; 7:16-37]. Chien (US ‘479) discloses 0.004 to about 5 mass% of pigments to afford a lens having a vermeil, dark red, reddish orange, rust, red, pink or other red color [2:13-19].
Chien (US ‘479) does not specifically disclose a 1:0.1 to 1:10 weight ratio of C.I. Reactive Yellow 15 to HEMA [instant claim 7]; 1:0.1 to 1:10 weight ratio of Reactive Red 11 to NVP [instant claim 8]. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 10: Chien (US ‘479) discloses C.I. Reactive Red 11 (sodium (Z)-4-(2-(8-((4,6-dichloro-1,3,5-triazin-2-yl)amino)-1-oxo-3,6-disulfonatonaphthalen-2(1H)-ylidene)hydrazineyl)benzoate) {contains sulfonate group} [Ex. 2; 7:16-37].
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2005/0251929).
Regarding claims 12-14: Hong (US ‘929) discloses contact lenses containing reactive tinting compounds prepared from a reactive dye and a hydrophilic monomer [abstract]. Hong (US ‘929) discloses Example 4 [Ex. 4; 0044] prepares a tinting compound by reacting a mixture of Reactive Yellow 15, sodium carbonate, HEMA (2-hydoxyethyl methacrylate [0024]), and hydroquinone at 30 oC for 24 hours. Hong (US ‘929) discloses Example 2 [Ex. 2; 0042] prepares a tinting compound by reacting a mixture of Reactive Blue 19, sodium hydroxide, HEMA, and hydroquinone at 30 oC for 24 hours [Ex. 2; 0042]. Hong (US ‘929) discloses Example 6 [Ex. 6; 0046-0047; Table 1, tinting compound of Ex. 4] prepares a lens by UV curing a lens composition containing HEMA, N-vinyl pyrrolidone, methacrylic acid, ethyleneglycol dimethacrylate, 2-chlorothixanthone, and the tinting compound of Ex. 4 [Ex. 6; 0046-0047; Table 1, tinting compound of Ex. 4].
Hong (US ‘929) discloses 2-hydroxyethyl methacrylate (HEMA) and glycerol methacrylate as hydrophilic monomers [0024]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted glycerol methacrylate for HEMA in Ex. 2 and Ex. 4 based on the invention of Hong (US ‘929), and would have been motivated to do so since Hong (US ‘929) discloses glycerol methacrylate and HEMA as the hydrophilic monomer [0024]. Additionally, an express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Hong (US ‘929) does not specifically disclose Ex. 6 (containing the tinting compound of Ex. 4 derived from Reactive Yellow 15) further comprising the tinting compound of Ex. 2 (derived from Reactive Blue 19). However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the tinting compound of Ex. 2 with the tinting compound of Ex. 4 based on the invention of Hong (US ‘929), and would have been motivated to do so since Hong (US ‘929) suggests tinting compounds added the lens formulation to achieve a desired tone and color [0039]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 15-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong (US 2005/0251929).
Regarding claims 15 and 19-20: Hong (US ‘929) discloses contact lenses containing reactive tinting compounds prepared from a reactive dye and a hydrophilic monomer [abstract], wherein Hong (US ‘929) discloses 2-hydroxyethyl methacrylate (HEMA) and glycerol methacrylate as hydrophilic monomers [0024]. Hong (US ‘929) discloses Example 4 [Ex. 4; 0044] prepares a tinting compound by reacting a mixture of Reactive Yellow 15, sodium carbonate, glycerol methacrylate (note: glycerol methacrylate exchanged for HEMA as the hydrophilic monomer [0024]; see MPEP 2131.02), and hydroquinone at 30 oC for 24 hours. Hong (US ‘929) discloses Example 6 [Ex. 6; 0046-0047; Table 1, tinting compound of Ex. 4] prepares a lens by UV curing a lens composition containing HEMA, N-vinyl pyrrolidone, methacrylic acid, ethyleneglycol dimethacrylate, 2-chlorothixanthone, and the tinting compound of Ex. 4 [Ex. 6; 0046-0047; Table 1, tinting compound of Ex. 4]. Hong (US ‘929) discloses 2-hydroxyethyl methacrylate and the like as hydrophilic monomer [0024].
Hong (US ‘929) does not disclose Example 6 containing 2-hydroxybutyl methacrylate. However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [See MPEP 2144.09].
Regarding claim 16: Hong (US ‘929) discloses ~0.02 wt% of the tinting compound [Ex. 6; 0046-0047; Table 1, tinting compound of Ex. 4].
Regarding claim 18: Hong (US ‘929) discloses a weight ratio of Reactive Yellow 15 to glycerol methacrylate of 1:0.32 (25:8) [Ex. 4; 0044].
Allowable Subject Matter
Claims 21-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: While Chien (US 10,514,479) discloses ophthalmic lenses [abstract; 1:14-22], wherein Chien (US ‘479) discloses acrylic based monomers with R as H or CH3, such as acrylic acid and methacrylic acid, as well as 2-hydroxyethyl methacrylate (HEMA) and N,N-dimethylacrylamide (DMA) [2:42-52], Chien (US ‘479) does not disclose glycidyl methacrylate, N,N-diethyl acrylamide, N-vinyl-N-methyl acetamide, 2-methacryloyloxyethyl phosphorylcholine or 2-hydroxybutyl methacrylate [instant claim 22]. Chien (US ‘479) does not disclose forming the blue light blocking component by reacting the acrylic based monomer with C.I. Reactive Yellow 15 [instant claim 21].
While Hong (US 2005/0251929) discloses contact lenses containing reactive tinting compounds prepared from a reactive dye and a hydrophilic monomer [abstract], wherein Hong (US ‘929) discloses 2-hydroxyethyl methacrylate (HEMA), glycerol methacrylate, acrylic acid, and the like as hydrophilic monomers [0024], Hong (US ‘929) discloses reaction in an aqueous solution [0036-0039; 0044].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Chien (US 10,514,479) was relied on for disclosing ophthalmic lenses [abstract; 1:14-22], wherein Chien (US ‘479) discloses acrylic based monomers with R as H or CH3, such as acrylic acid and methacrylic acid [2:42-52]. Chien (US ‘479) discloses Example 2 [Ex. 2; 7:16-37] prepares a mixture comprising HEMA (2-hydroxyethyl methacrylate [2:46]), NVP (N-vinylpyrrolidone [2:48]), AA (acrylic acid [2:42-48]; see above), Irgacure 1173 (photoinitiator [2:59-63]), EGDMA (ethyleneglycol dimethacrylate [2:53-54]), ethanol, C.I. Reactive Red 11, and C.I. Reactive Yellow 15 [Ex. 2; 7:16-37].
Hong (US 2005/0251929) was relied on for disclosing contact lenses containing reactive tinting compounds prepared from a reactive dye and a hydrophilic monomer [abstract], wherein Hong (US ‘929) discloses 2-hydroxyethyl methacrylate (HEMA), hydroxyethyl acrylate, glycerol methacrylate, acrylic acid, and the like as hydrophilic monomers [0024]. While Hong (US ‘929) does not disclose Example 6 containing 2-hydroxybutyl methacrylate, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [See MPEP 2144.09].
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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