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 .
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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1, 3 – 4 and 6 - 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20150275043 A1 to Kikuchi et al. hereinafter “Kikuchi” and further in view of JP 2008134618A to Yoshimitsu, Aiiso hereinafter “Yoshimitsu”.
Kikuchi is directed to curable hardcoat compositions [0001].
Regarding claims 1, 3 – 4 and 6 – 8, Kikuchi teaches a curable hardcoat for shaped products [0119] in Reference Example 1 comprising a cationically curable silicone resin containing silsesquioxane units having an epoxy groups [0192]. This cationic curable silicone resin is produced by reacting 2-(3,4-epoxy)cyclohexylethyltrimethoxysilane (equivalent to a cyclohexene oxide group containing silsesquioxane) with phenyltrimethoxysilane forming product ESQ [0190]. The cyclohexene oxide group is also equivalent to a cycloaliphatic epoxide group or a alicyclic epoxy group. ESQ is mixed with a photoacid generator and cured [0194, - 0195].
Kikuchi is silent as to the use of a tetraazaporphyrin dye in the composition hence attention is directed to Yoshimitsu.
Yoshimitsu is directed to plastic eyeglass lenses that use an organic dye in place of a neodymium compound for glare reduction [0001 – 0002].
Yoshimitsu teaches that a plastic eyeglass lens made of a plastic lens wafer made of a thermosetting resin or a thermoplastic resin comprising an organic dye. The organic dye may be contained in the plastic lens wafer or may be contained in the hard coat layer or primer layer or any other component layer formed on one or both sides of the plastic lens wafer [0012, line 175]. The dye taught my Yoshimitsu is a tetraazaporphyrin compound such as tetra-t-butyl-tetraazaporphyrin / copper complex [0014] which has an absorption peak of 585 nm and less than 600 nm [0012, line 189].
Yoshimitsu discloses that the use level of the organic dye (tetraazaporphyrin) is 0.0002 – 0.05 wt. %. This is outside the claimed range of 0.1 – 1 wt. %.
With regard to applicant’s limitations regarding the concentrations of tetraazaporphyrin, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the results desired. Because, Yoshimitsu discloses that the use level of the organic dye (tetraazaporphyrin) is 0.0002 – 0.05 wt. % , the Examiner asserts that the concentrations of tetraazaporphyrin are art recognized result-effective variables. Thus it would be obvious in the optimization process to adjust the concentrations of tetraazaporphyrin to achieve the required degree of glare reduction. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the applicant, the formation of a silsesquioxane hardcoat composition with cyclohexene oxide groups and a tetraazaprophyrin dye compound to reduce glare.
Therefore, it would have been obvious to one of ordinary skill to incorporate the tetraazaporphyrin dye of Yoshimitsu into the curable hardcoat composition of Kikuchi as it is directly taught for this purpose.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2 it is unclear if the claim requires the silsesquioxane to have a cyclohexene group. Claim 2 teaches a Formula I comprising a Ra where this group can be a number of alternate organic groups. Claim 2 is dependent on independent claim 1 and therefore requires all the limitation of the independent claim.
As to claim 5, this claim teaches a transmittance (t1) of the minimum value is 80% or less. It is unclear at what wavelength that transmittance (t1) is recorded. For examination is was interpreted as the transmittance (t1) was taken at the region of 570 to 605 nm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 1/10/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759