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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2026 has been entered.
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 1-3 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), Jinkerson (US 5,662,707 A), and He et al. (CN 106146868 A) (He), and in view of evidence by Mainster et al. (“Blue-Blocking IOLs vs. Short-Wavelength Visible Light: Hypothesis-Based vs. Evidence-Based Medical Practice”, 2011) (Mainster).
The Examiner has provided a machine translation of JP 4581216 B2 and CN 106146868 A. The citation of the prior art in this rejection refer to the machine translations.
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) (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) (JP’216, [0041]-[0044]);
catalysts including hydrochloric acid, nitric acid, and dibutyltin dilaurate (i.e., first and second catalyst) (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%, and alternatively does not explicitly teach (c) more than one silane coupling agent.
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 blocks 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, and wherein blue-blocking, yellow-tinted IOLs absorb violet and blue light as evidenced by Mainster (Mainster, p. 1, Col. 1, Paragraph 1). 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.
With respect to the difference (c), He teaches a multifunctional fog-proof coating comprising silane coupling agents, an ammonia solution, and an organosilane reagent (He, Abstract; p. 3, Last paragraph; p. 4, Paragraphs 1 and 3). He specifically teaches organic silane coupling agents selected from γ-aminopropyl trimethoxysilane and aminopropyl triethoxy silane in the one kind or several (He, p. 4, Paragraph 1).
He is analogous art as it is drawn to a hydrophilic glass coating comprising silane coupling agents (He, p. 1, Paragraph 3; p. 4, Paragraphs 1)
In light of the disclosure of He of the equivalence and interchangeability of using one silane coupling agent as disclosed in JP’216, with more than one silane coupling agent as presently claimed, it would therefore been obvious to one of ordinary skill in the art to use more than one silane coupling agent in JP’216, and thereby arrive claimed invention.
Given that JP’216, in view of Sherwood, Jinkerson, and He, 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.
While there is no disclosure that the coating of JP’216 in view of Sherwood, Jinkerson, and He, 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
Applicant primarily argues:
“The Final Office Action asserts that Sherwood teaches a UV absorber, such as 2,2',4,4'- tetrahydroxybenzophenone (BP-2), which would necessarily have an absorption peak in a wavelength range of 330 nm-370 nm. Applicant respectfully disagrees.
Sherwood discloses that the cured coating can block UV radiation in a wavelength range of about 300 nm to about 380 nm. However, such disclosure only relates to the UV blocking performance of the cured coating, rather than the absorption peak of the UV absorber itself. The UV blocking range represents an overall optical property of the coating, whereas the absorption peak represents a specific spectral property of the UV absorber.
Accordingly, the fact that the coating of Sherwood blocks UV radiation within the range of 300 nm to 380 nm does not establish that the absorption peak of the UV absorber is necessarily located within the claimed range of 330 nm to 370 nm. Sherwood does not identify the location of the absorption peak based on this blocking range, and the disclosed blocking range, standing alone, cannot establish the claimed absorption-peak limitation.
The Examiner further relies on the disclosure of 2,2',4,4'-tetrahydroxybenzophenone (BP-2) in Sherwood and the present specification. However, the mere fact that BP-2 is identified as an acceptable UV absorber in the present specification does not itself establish the location of the absorption peak of the BP-2 disclosed in Sherwood. Neither the cited passage of Sherwood nor the cited passage of the present specification expressly states that BP-2 has an absorption peak within 330 nm to 370 nm.
Rather, amended claim 1 specifically requires:
"the UV absorber has an absorption peak in a wavelength range of 330 nm~370 nm."
Accordingly, the cited disclosures do not, without more, establish that the BP-2 relied upon by the Examiner necessarily possesses the claimed absorption-peak characteristic. The Examiner's inherency position therefore does not cure the absence of an express disclosure of the claimed absorption peak.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
The fact remains that 2,2’,4,4’-tetrahydroxybenzophenone is taught in the Specification as an acceptable UV absorber, therefore having an absorption peak in a wavelength range of 330 nm~370 nm. As 2,2’,4,4’-tetrahydroxybenzophenone is explicitly taught by Sherwood, the absorption peak would be the same because it is the same material whether explicitly taught or not and the material properties would not change.
Further, while the applicant states that the Specification does not say that 2,2’,4,4’-tetrahydroxybenzophenone has an absorption peak of 330~370 nm, Paragraph [0024] states:
“In some embodiments, the UV absorber has an absorption peak in a wavelength range of 330 nm-370 nm, and is selected from a group consisting of a benzophenone UV absorber, a benzimidazole UV absorber, and a triazine UV absorber.” (emphasis added)
And in Paragraph [0025] states:
“Specifically, the benzophenone UV absorber mentioned above may be 2,4-
Dihydroxybenzophenone, 2,2' ,3(or any of 4, 5 and 6)- Trihydroxybenzophenone, 2,2' ,4,4'tetrahydroxybenzophenone, 2,4-Dihydroxy-2' ,4' -Dimethoxybenzophenone, 2-Hydroxy-4-Octy loxybenzophenone, etc.” (emphasis added)
Therefore, it is clear that the Specification does state that 2,2’,4,4’-tetrahydroxybenzophenone has an absorption peak of 330~370 nm.
Applicant further argues:
“The Final Office Action further relies on Jinkerson, which discloses yellow dyes capable of blocking blue light in a wavelength range of approximately 400 nm to 500 nm. Applicant respectfully disagrees.
Jinkerson merely discloses the wavelength range of blue light blocked by the yellow dye, rather than the specific location of the absorption peak of the blue-light absorber. The wavelength range of blocked blue light represents the overall optical performance of the material, whereas the absorption peak represents a specific spectral property of the blue-light absorber itself.
In contrast, amended claim 1 specifically requires:
"the blue-light absorber has an absorption peak in a wavelength range of 400 nm~420 nm."
Jinkerson does not disclose or suggest where the absorption peak of the yellow dye is located within the broad range of 400 nm to 500 nm. Importantly, Jinkerson's range of approximately 400 nm to 500 nm and the claimed range of 400 nm to 420 nm do not concern the same parameter. Jinkerson identifies the wavelength range of blue light to be blocked, whereas amended claim 1 defines the wavelength range in which an absorption peak of the blue-light absorber is located. Accordingly, the mere numerical overlap between 400 nm to 500 nm and 400 nm to 420 nm does not establish an overlap of the same claimed property.
For this reason, the overlapping-range rationale referenced in the Advisory Action does not establish the claimed absorption-peak limitation. Jinkerson does not disclose or suggest where the absorption peak of its yellow dye is located.”
Remarks, p. 11
The examiner respectfully traverses as follows:
While applicant argues the yellow dye in Jinkerson is only blocking rather than absorbing blue light, as evidenced by Mainster, yellow pigment in “blue-blocking” lenses absorbs light in a range of 400-500 nm (Mainster, p. 1, Col. 1, Paragraph 1). Therefore, the azo dyes in Jinkerson “block” blue light by absorbing the blue light in a range of 400-500 nm.
Further, while Jinkerson does not teach a specific peak in the absorption range being 400-420 nm, the fact remains that the entire absorption range overlaps with and includes the entire claimed absorption peak.
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:
“More importantly, amended claim 1 requires both a UV absorber having an absorption peak in a wavelength range of 330 nm~370 nm and a blue-light absorber having an absorption peak in a wavelength range of 400 nm~420 nm in the same coating solution. The Office's stated combination establishes, at most, the general use of a UV absorber and a blue-light-blocking dye. It does not establish that the selected UV absorber and blue-light absorber simultaneously possess the specifically claimed absorption-peak characteristics. Accordingly, JP'216, Sherwood, and Jinkerson, whether considered individually or in combination, fail to disclose, teach, or suggest Feature A.
Thus, JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest element A.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
It is the examiner’s position that JP’216 modified by Sherwood and Jinkerson teaches these limitations as JP’216 teaches the use of UV absorbers (JP’216, [0013]; [0014]) and
dyes (JP’216, [0013]) and Sherwood and Jinkerson teach the specific UV absorbers and dyes that correspond to those claimed as discussed above.
Applicant further argues:
“JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest the claimed coupling agent limitations in combination with the other limitations of amended claim 1.
Amended claim 1 further requires:
"wherein each of the first coupling agent and the second coupling agent is at least one selected from the group consisting of 3-Aminopropyltrimethoxysilane, γ-Aminopropyltriethoxysilane, γ-(2,3-Epoxypropoxy)propyltrimethoxysilane, γ-Methacryloxypropyltrimethoxysilane, and N-(β-Aminoethyl)-γ-aminopropyltrimethoxysilane"
The Final Office Action relies on paragraph [0050] of JP'216 as disclosing certain silane coupling agents, including 3-aminopropyltrimethoxysilane, 3-aminopropyltriethoxysilane, and N-(2- aminoethyl)-3-aminopropyltrimethoxysilane.
The Advisory Action further states that JP'216 teaches "silane coupling agents," i.e., in the plural, in paragraph [0013], and concludes that a person of ordinary skill in the art could therefore include more than one of the disclosed coupling agents.
Applicant respectfully disagrees with this conclusion.
First, paragraph [0013] of JP'216 generically identifies silane coupling agents among various optional additives that may be included in the reactive composition. The use of a plural class name does not itself disclose that multiple coupling agents are simultaneously employed in a particular embodiment, much less that such coupling agents are assigned to two separately defined components in the manner required by amended claim 1.
Likewise, paragraph [0050] of JP'216 merely provides a list of exemplary silane compounds. The mere listing of multiple alternative compounds does not itself teach selecting more than one of those compounds for simultaneous use.
More importantly, amended claim 1 does not merely require the presence of "more than one coupling agent." Rather, amended claim 1 expressly requires a first coupling agent contained in the silica sol and a second coupling agent contained in the chelating agent, and further requires that each of the first coupling agent and the second coupling agent be selected from the specifically recited group.
Thus, the Examiner's observation that JP'216 generically refers to "silane coupling agents" in the plural does not address the particular relationship required by amended claim 1 between the first coupling agent, the second coupling agent, the silica sol, and the chelating agent.
Further, the statement in the Advisory Action that a person of ordinary skill in the art "could include more than one" disclosed coupling agent establishes, at most, a possibility of using multiple coupling agents. JP'216 provides no teaching or reason that would have led a person of ordinary skill in the art to select multiple coupling agents from the claimed group and to use them respectively as the first coupling agent of the silica sol and the second coupling agent of the chelating agent as required by amended claim 1.
Sherwood and Jinkerson do not remedy this deficiency. Neither reference teaches or suggests the above relationship between the first coupling agent and the second coupling agent required by amended claim 1.
Accordingly, JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest element B.”
Remarks, p. 12-13
The examiner respectfully traverses as follows:
Firstly, 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 first and second coupling agents. 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, He is relied upon to teach claimed elements missing from JP’216. See item #16 above.
Secondly, while applicants argue that the coupling agents are not taught to be one in the silica sol and one in the chelating agent, the examiner notes that the claims are drawn to a product and not to a process of making. As the final product is the combination of the two components, i.e., silica sol and chelating agent, the two components are not kept separate. Therefore, as long as there is a teaching of a coupling agent or multiple (i.e., there is no limitation that claims the coupling agent in the silica sol must be different from the coupling agent in the chelating agent) in the mass percentage range claimed for both coupling agents in the final product, it meets the limitation of a coupling agent in both the silica sol and chelating agent in the coating solution.
Applicant further argues:
“JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest the claimed first- solvent/second-solvent limitations and arrangement recited in amended claim 1.
Amended claim 1 further requires:
"the first solvent is at least one selected from the group consisting of methanol, ethanol, propanol, isopropanol, butanol, and propylene glycol methyl ether, and the second solvent is at least one selected from the group consisting of butyl acetate, propylene glycol methyl ether, isobutyl acetate, and xylene."
The Final Office Action relies on paragraphs [0041]-[0044] of JP'216 as allegedly disclosing the claimed first and second solvents. In particular, JP'216 generally lists various organic solvents, including methanol, ethanol, n-propanol, isopropanol, n-butanol, propylene glycol methyl ether, xylene, and butyl acetate, which may be used alone or in combination.
Applicant respectfully submits that JP'216 does not disclose the first-solvent/second-solvent arrangement required by amended claim 1. Even assuming, solely for the sake of argument, that certain solvents identified by the Examiner may correspond to individual solvent species recited in the claim, such disclosure still does not establish the particular first-solvent/second-solvent arrangement required by amended claim 1.
Amended claim 1 does not merely require the presence of one or more solvents in a coating composition. Rather, read in the context of claim 1 as a whole, the claim requires that the silica sol comprise the first solvent, while the chelating agent comprise the second solvent, and further requires that the first solvent and the second solvent be selected from their respective specifically recited groups.
By contrast, JP'216 merely provides a general disclosure of solvents that may be used in preparing its hydrophilizing agent. JP'216 does not identify any solvent as a first solvent contained in a silica sol, does not identify any solvent as a second solvent contained in a chelating agent, and does not disclose or suggest assigning solvents to these two separately recited components in the manner required by amended claim 1.
Nor does JP'216's statement that solvents may be used "alone or in combination" cure this deficiency. Such a statement merely addresses whether one or more solvents may be used in the hydrophilizing agent as a whole; it does not teach or suggest the claimed relationship in which a first solvent is contained in the silica sol and a second solvent is contained in the chelating agent.
Accordingly, the Examiner's reliance on JP'216's general solvent disclosure does not establish the claimed relationship among the first solvent, the second solvent, the silica sol, and the chelating agent.
Nor can the claimed arrangement be established merely from the alleged presence of certain solvents in the final composition. The presence of a solvent in a final composition does not, by itself, establish that the solvent is contained in the silica sol as the first solvent or in the chelating agent as the second solvent, as expressly required by amended claim 1.
Sherwood and Jinkerson do not remedy this deficiency. Neither reference teaches or suggests the claimed first-solvent/second-solvent arrangement required by amended claim 1.
Accordingly, JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest element C.”
Remarks, p. 13-15
The examiner respectfully traverses as follows:
As disclosed above, the claims are drawn to a product and not to a process of making. Therefore, the final composition includes both solvents combined together, and as JP’216 teaches the different types of solvents in the composition, it meets the limitation of a first and second solvent.
Applicant further argues:
“JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest the claimed first- catalyst/second-catalyst limitations and arrangement recited in amended claim 1.
Amended claim 1 further requires:
"the first catalyst is at least one selected from the group consisting of hydrochloric acid, nitric acid, and ammonia solution, and the second catalyst is at least one selected from the group consisting of dibutyltin dilaurate, an organobismuth catalyst, and stannous octoate."
The Final Office Action relies on paragraphs [0036]-[0039] of JP'216 as allegedly disclosing the claimed first and second catalysts. JP'216 generally lists various catalysts, including hydrochloric acid, nitric acid, dibutyltin dilaurate, and other acidic, basic, and organometallic catalysts, and further states that such catalysts may be used individually or in combination.
Applicant respectfully submits that JP'216 does not disclose the first-catalyst/second-catalyst arrangement required by amended claim 1. Even assuming, solely for the sake of argument, that certain catalysts identified by the Examiner may correspond to individual catalyst species recited in the claim, such disclosure still does not establish the particular first-catalyst/second-catalyst arrangement required by amended claim 1.
Amended claim 1 does not merely require the presence of one or more catalysts in a coating composition. Rather, read in the context of claim 1 as a whole, the claim requires that the silica sol comprise the first catalyst, while the chelating agent comprise the second catalyst, and further requires that the first catalyst and the second catalyst be selected from their respective specifically recited groups.
By contrast, JP'216 merely provides a general disclosure of catalysts that may be used in preparing its hydrophilizing agent. JP'216 does not identify any catalyst as a first catalyst contained in a silica sol, does not identify any catalyst as a second catalyst contained in a chelating agent, and does not disclose or suggest assigning catalysts to these two separately recited components in the manner required by amended claim 1.
Nor does the disclosure in JP'216 that catalysts may be used individually or in combination cure this deficiency. Such disclosure merely addresses whether one or more catalysts may be used in the hydrophilizing agent as a whole; it does not teach or suggest the claimed relationship in which a first catalyst is contained in the silica sol and a second catalyst is contained in the chelating agent.
Accordingly, the Examiner's reliance on JP'216's general catalyst disclosure does not establish the claimed relationship among the first catalyst, the second catalyst, the silica sol, and the chelating agent.
Likewise, the alleged presence of certain catalysts in the final composition does not establish their allocation between the separately recited silica sol and chelating agent. A final-composition disclosure does not, without further teaching, establish the claimed first-catalyst/second-catalyst relationship.
Sherwood and Jinkerson do not remedy this deficiency. Neither reference teaches or suggests the claimed first-catalyst/second-catalyst arrangement required by amended claim 1.
Accordingly, JP'216, Sherwood, and Jinkerson fail to disclose, teach, or suggest element D.”
Remarks, p. 15-16
The examiner respectfully traverses as follows:
As disclosed above, the claims are drawn to a product and not to a process of making. Therefore, the final composition includes both catalysts combined together, and as JP’216 teaches the different types of catalysts in the composition, it meets the limitation of a first and second catalyst.
Applicant further argues:
“As discussed above, the Office's rejection relies on isolated disclosures of individual components but does not establish the specific selections, spectral characteristics, and component-by- component arrangement required by amended claim 1. In particular, the cited art does not provide an articulated reason why a person of ordinary skill in the art would have selected and arranged the UV absorber, blue-light absorber, first and second coupling agents, first and second solvents, and first and second catalysts in the particular silica-sot/chelating-agent configuration recited in amended claim 1. Accordingly, the claimed subject matter cannot be reached merely by reconstructing amended claim
1 from isolated disclosures in the cited references with Applicant's disclosure as a roadmap.”
Remarks, p. 16-17
The examiner respectfully traverses as follows:
While applicant argues impermissible hindsight due to no disclosure of a silica sol and chelating agent being separate components, as the examiner disclosed above, the claims are drawn to a product in which these components are combined and not separate, not to a process of making. Therefore, as JP’216 in view of Sherwood, Jinkerson, and He, teaches a final composition comprising each of the components in the final mass percentages claimed, the limitation is met without the use of hindsight, whether the components are taught to be separated prior to mixing in a silica sol and chelating agent or not as there is no process claimed.
Conclusion
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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