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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 4581216 B2 (JP’216) in view of Sherwood et al. (US 2016/0340523 A1) (Sherwood) and Jinkerson (US 5,662,707 A).
The Examiner has provided a machine translation of JP 4581216 B2. The citation of the prior art in this rejection refer to the machine translation.
Regarding claims 1-6 and 8-9, JP’216 teaches a resin coating (JP’216, [0001]) comprising:
silane coupling agents such as 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, N-(2-aminoethyl)-3-aminopropyltrimethoxysilane (i.e., first and second coupling agents; claim 4) (JP’216, [0050]);
pheneticillin trialkoxysilane compounds such as trimethoxysilane (i.e., silicate; claim 3) (JP’216, [0051]);
organic solvents such as methanol, ethanol, n-propanol, isopropanol, n-butanol, propylene glycol methyl ether, xylene, and butyl acetate, which may be used alone or in combination (i.e., first and second solvents; claim 5) (JP’216, [0041]-[0044]);
catalysts including hydrochloric acid, nitric acid, and dibutyltin dilaurate (i.e., first and second catalyst; claim 6) (JP’216, [0036]-[0039]);
UV absorbers (JP’216, [0013]; [0014]);
dyes (JP’216, [0013]) and
water (JP’216, [0033]), wherein in embodiments water is ion exchange water (JP’216, [0060]) (i.e., deionized water).
JP’216 further teaches the amount of organosilicon materials, including the silane coupling agents and trimethoxysilane, in the coating is 25 parts by weight or less (JP’216, [0054]). As the claimed silica sol is added with the chelating agent of 5% to 20% in mass percent, i.e., 5%:100% to 20%:100%, the total amount of second coupling agent in the coating is between 0.5%-1.5% (i.e., when the chelating agent is 5% and therefore, 0.1 x 0.05 = 0.005 or 0.5% to 0.3 x 0.05 = 0.015 or 1.5%) and 2%-6% (i.e., when the chelating agent is 20% and therefore 0.1 x 0.2 = 0.02 or 2% to 0.3 x 0.2 = 0.06 or 6%). While the amount of silicate from the silica sol in the coating is 15%~35% and the first coupling agent is 5%~15%. Therefore, a minimum of organosilicon materials is 0.5% second coupling agent + 15% silicate + 5% first coupling agent = 20.5% in mass percent. Therefore, the range of 25 parts by weight or less overlaps with the range of the presently claimed.
Further, JP’216 teaches the amount of solvent added is 100-50,000 parts by weight with respect to 100 parts by weight of the organosilicate in the coating (JP’216, [0047]), wherein the amount of organosilicates is 25 parts by weight or less (JP’216, [0054]).
As the claimed amount of solvent is 30%~60% of the first solvent, and when the chelating agent is 5%, the second solvent is 2%~3% (i.e., 0.05 x 0.4 = 0.02 or 2% to 0.05 x 0.6 = 0.03 or 3%), and when the chelating agent is 20%, the second solvent is 8%~12% (i.e., 0.2 x 0.4 = 0.08 or 8% to 0.2 x 0.6 = 0.12 or 12%), the total amount of solvent in the coating would be at a minimum 30% first solvent + 2% second solvent = 32% solvents. Therefore, the amount of solvents in the coating of JP’216 being 100-50,000 parts by weight with respect to 100 parts by weight of the organosilicates overlaps with the range of the presently claimed.
Further, JP’216 teaches the amount of catalyst is 0.1 to 10 parts by weight based on 100 parts by weight of organosilicate (JP’216). Therefore, if there are 25 parts by weight of organosilicon (i.e., the maximum), there would be 0.025 to 2.5 parts by weight of catalyst in the composition (i.e., 0.001 x 25 = 0.025 to 0.1 x 25 = 2.5). Additionally, when the claimed amount of chelating agent is 5%, the total amount of second catalyst is 0.0005% (i.e., 0.0001 x 0.05 = 0.000005 or 0.0005%) to 0.05% (i.e., 0.001 x 0.05 = 0.0005 or 0.05%), and when the claimed amount of chelating agent is 20%, the total amount of second catalyst is 0.002% (i.e., 0.001 x 0.2 = 0.00002 or 0.002%) to 0.2% (i.e., 0.01 x 0.2 = 0.002 or 0.2%). Therefore, the total amount of claimed catalyst at a maximum is 1% first catalyst + 0.2% second catalyst = 1.2% total amount of catalyst. Therefore, the amount of catalyst in JP’216 overlaps with the range of the presently claimed.
Further, JP’216 teaches the amount of water is 100 to 50,000 parts by weight with respect to 100 parts by weight of the organosilicate (JP’216, [0033]), wherein the amount of organosilicate is 25 parts by weight or less (JP’216, [0054]). Therefore, the amount of water overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
However, JP’216 does not explicitly teach (a) 1%~15% of a UV absorber or (b) a blue-light absorber of 1%~15%.
With respect to the difference (a), Sherwood teaches a coating composition comprising a bifunctional silanol coupling agent, tetraethyl orthosilicate, and a UV absorber (Sherwood, Abstract). Sherwood specifically teaches the UV absorber is included in the coating in an amount from about 3% to about 7% by weight (Sherwood, [0010]), which overlaps with the claimed range, and wherein the coating can block preferably 99% of the UV in the wavelength ranging from about 300nm to about 380 nm (Sherwood, [0019]), which would be attributed to the UV absorber (i.e., absorption peak in a wavelength range of 300 to 380 nm, which overlaps with the range of the presently claimed). Further, Sherwood teaches the UV absorber is 2,2’,4,4’-tetrahydroxybenzophenone (Sherwood, [0009]) (i.e., benzophenone UV absorber), which would necessarily have an absorption peak in a wavelength range of 330 nm~370 nm and a hydroxyl content of greater than or equal to 5% in mass, as 2,2’,4,4’-tetrahydroxybenzophenone is taught to be one of the acceptable benzophenone UV absorbers in Specification Paragraph [0025] (i.e., claim 8).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As Sherwood expressly teaches, the UV absorber can be used to protect items underlying transparent, semitransparent, and/or translucent substrates from the degradative effects of ultraviolet radiation absorption (Sherwood, [0004]).
Sherwood is analogous art as it is drawn to a coating composition comprising a bifunctional silanol coupling agent, tetraethyl orthosilicate, and a UV absorber (Sherwood, Abstract).
In light of the motivation of including a UV absorber in an amount of 3% to 7% in the coating as disclosed by Sherwood, it therefore would have been obvious to one of ordinary skill in the art to modify the coating of JP’216 by using 3% to 7% by weight of UV absorber in order to protect items underlying transparent, semitransparent, and/or translucent substrates from the degradative effects of ultraviolet radiation absorption, and thereby arrive at the claimed invention.
With respect to the difference (b), Jinkerson teaches dyes that are used to block or lower the intensity of blue light transmitted through ocular lenses and other windows (Jinkerson, Abstract) (i.e., blue light absorber). Jinkerson expressly teaches for a lens, the amount of yellow dye used to form a blue-blocking lens is typically less than about 1 wt% (Jinkerson, Col. 7, lines 58-59), which overlaps with the range of the presently claimed; and wherein the yellow dye absorbs blue light which has a wavelength of 400 nm to 500 nm (Jinkerson, Col. 1, line 18; Col. 7, lines 39-42), which overlaps with the range of the presently claimed absorption peak. Jinkerson further teaches N-2-[3-(2’-methylphenylazo)-4-hydroxyphenyl]ethyl methacrylamide is a preferred azo compound (Jinkerson, Col. 5, lines 45-46) (i.e., an azo blue-light absorber). Further, the chemical formula of N-2-[3-(2’-methylphenylazo)-4-hydroxyphenyl]ethyl methacrylamide is C19H21N3O2 which corresponds to a molar mass of 295.39 g/mol. The molar mass of the one hydroxyl group is about 17.01 g/mol. Therefore, the mass percentage of the hydroxyl group is (17.01 g/mol)/(295.39 g/mol) x 100 = 5.76%, which falls within the claimed range (i.e., claim 9).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As Jinkerson expressly teaches, blue light in a range of 400 nm to 500 nm is a threat to vision and lenses and other windows should be modified to protect against blue light (Jinkerson, Col. 1, lines 16-23; Col. 4, lines 3-13).
Jinkerson is analogous art as it is drawn to glass coatings comprising dyes (Jinkerson, Col. 4, lines 12-13).
In light of the motivation of including yellow dye in an amount of 1 wt% or less as disclosed by Jinkerson, it therefore would have been obvious to one of ordinary skill in the art to modify the coating of JP’216 by including 1 wt% or less of yellow dye in order to protect vision against harmful effects of blue light, and thereby arrive at the claimed invention.
Given that JP’216 in view of Sherwood and Jinkerson discloses the coating that overlaps the presently claimed coating solution, including trimethoxysilane, 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, N-(2-aminoethyl)-3-aminopropyltrimethoxysilane, hydrochloric acid, nitric acid, dibutyltin dilaurate, UV absorbers, and dyes, it therefore would be obvious to one of ordinary skill in the art, to use the trimethoxysilane, 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, N-(2-aminoethyl)-3-aminopropyltrimethoxysilane, hydrochloric acid, nitric acid, dibutyltin dilaurate, UV absorbers, and dyes, which is both disclosed by JP’216 in view of Sherwood and Jinkerson and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, while JP’216, in view of Sherwood and Jinkerson, does not explicitly teach a silica sol and chelating agent are composed of the claimed components, as JP’216, in view of Sherwood and Jinkerson, teaches the final composition comprises each of the claimed components, it is clear that JP’216, in view of Sherwood and Jinkerson, meets the claimed limitation of a silica sol comprising silicate, a first solvent, a first coupling agent, a first catalyst, and deionized water; and a chelating agent comprising a UV absorber, a blue-light absorber, a second solvent, a second catalyst, and a second coupling agent. Additionally, as disclosed above, JP’216, in view of Sherwood and Jinkerson, teaches the mass percentages that either fall within or overlap with the ranges of the presently claimed including the ratio of chelating agent to silica sol being 5%~20% in mass percent as claimed in claim 2.
While there is no disclosure that the coating of JP’216 in view of Sherwood and Jinkerson is “for blocking UV and blue light on a surface of a substrate” as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e., for blocking UV and blue light on a surface of a substrate, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Response to Arguments
In response to applicant’s amendments to claims 1, 3-6, and 8-9, the previous claim objections and 35 U.S.C. 112(b) rejections are withdrawn from the record.
Applicant primarily argues:
“JP'216 concerns hydrophilization of resin-coated glass containers to improve wettability and label adhesion. The disclosure of JP'216 is entirely unrelated to optical filtering, UV/blue- light control, or spectral engineering. Although paragraph [0013] of JP'216 lists UV absorbers as optional additives, JP'216 provides no wavelength ranges, absorption peaks, or spectral-selectivity teachings. JP'216 therefore offers no guidance toward the specific UV-absorption peak of 330 nm ~ 370 nm as required by amended claim 1.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Firstly, as JP’216 discloses UV absorbers as optional additives, it is clear that JP’216 is related to optical filtering, otherwise UV absorbers would not be an additive.
Secondly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that JP’216 does not expressly teach the claimed specific UV-absorption peak of 330 nm ~ 370 nm. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that JP’216 does not disclose the entire claimed invention. Rather, Sherwood is relied upon to teach claimed elements missing from JP’216. See item #13 above.
Applicant further argues:
“Sherwood concerns a hybrid inorganic-organic sol-gel coating that provides scratch resistance and broad-band UV attenuation. Sherwood aims to block at least 97% - 99% of UV radiation across 300 nm - 380 nm. Sherwood does not disclose any absorption-peak characteristics, nor does it suggest selecting a UV absorber exhibiting a defined peak within 330 nm - 370 nm. Sherwood is silent on blue-light absorption entirely. Accordingly, Sherwood fails to teach or suggest either of the peak-specific limitations as required by amended claim 1.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Firstly, Sherwood teaches the UV absorber is 2,2’,4,4’-tetrahydroxybenzophenone (Sherwood, [0009]) (i.e., benzophenone UV absorber), which would necessarily have an absorption peak in a wavelength range of 330 nm~370 nm as 2,2’,4,4’-tetrahydroxybenzophenone is taught to be one of the acceptable benzophenone UV absorbers in Specification Paragraph [0025].
Secondly, as Sherwood teaches the coating can block preferably 99% of the UV in the wavelength ranging from about 300nm to about 380 nm (Sherwood, [0019]), this UV wavelength range absorption would be attributed to the UV absorber, and therefore, the absorption peak would necessarily be within the range of 300-380 nm, which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it is the examiner’s position that Sherwood teaches the peak-specific limitation required by claim 1.
Thirdly, It is noted that while Sherwood does not disclose all the features of the present claimed invention, Sherwood is used as a teaching reference, namely to teach using 2,2’,4,4’-tetrahydroxybenzophenone as a UV absorber in a mass percentage range of 3 to 7%, in order to protect items underlying transparent, semitransparent, and/or translucent substrates from the degradative effects of ultraviolet radiation absorption (Sherwood, [0004]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Jinkerson concerns polymerizable yellow dyes for intraocular and ophthalmic lenses. The dyes absorb broadly across the 400 nm - 500 nm hazard region. Nothing in Jinkerson indicates that any dye has a peak within 400 nm - 420 nm. Jinkerson therefore provides no teaching toward the specific blue-light absorption peak (400 nm - 420 nm) as required by amended claim 1.”
Remarks, p. 8
The examiner respectfully traverses as follows:
As Jinkerson teaches the yellow dyes absorb across the 400 nm – 500 nm wavelength range, it is clear that an absorption peak would be within that range as well which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicant further argues:
“First, the technical focuses of the three references are fundamentally different. Specifically, JP'216 focuses on hydrophilization, Sherwood focuses on scratch resistance and broad UV blocking, and Jinkerson focuses on yellow dyes for lenses materials. Nothing in these references suggests engineering a coating with both a UV absorption peak at 330 nm-370 nm and a blue- light absorption peak at 400 nm-420 nm.”
Remarks, p. 8
The examiner respectfully traverses as follows:
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. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed.Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662,1685 (Fed. Cir. 2005); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). MPEP 2144 IV.
Applicant further argues:
“Furthermore, Sherwood explicitly emphasizes maintaining the appearance of artwork. Incorporating yellow/blue-light absorbing dyes of Jinkerson would introduce undesirable tinting, contrary to Sherwood's core objective. Therefore, Sherwood provides a teaching away rather than a motivation to add Jinkerson's dyes.
Moreover, Jinkerson's polymerizable dyes are formulated for acrylic copolymerization, while Sherwood's coating cures by TEOS hydrolysis-condensation. The references provide no suggestion for integrating Jinkerson-type dyes into Sherwood's matrix while retaining spectral- peak fidelity, dispersion stability, and optical clarity. This represents a significant technical barrier, further demonstrating non-obviousness.”
Remarks, p. 8
The examiner respectfully traverses as follows:
While applicant argues that the UV absorber of Sherwood would not be compatible in the invention of Jinkerson and the dye of Jinkerson would not be compatible in the invention of Sherwood, Sherwood is only used as a teaching reference in order to teach using 2,2’,4,4’-tetrahydroxybenzophenone as a UV absorber in a mass percentage range of 3 to 7%, and Jinkerson is only used as a teaching reference in order to teach a blue-light absorber of 1%~15% by mass. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu Fung can be reached at (571)270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732