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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (WO 2019/198664 A1, “Mori”). This disclosure of Mori is based off US 2021/0108113 A1, which serves as an English language equivalent.
With respect to claims 1-3 and 5, Mori discloses an optical article bonded together through a photochromic adhesive layer ([0001]) where the adhesive includes a photochromic compound (A) and a urethane resin (B) ([0012]). The urethane resin (B) is obtained by polymerizing a polyiso(thio)cyanate compound (B1) having 2 or more iso(thio)cyanate groups; a poly(thi)ol compound (B2) having 2 or more active hydrogen-containing groups; and a mono(thi)ol compound (B3) having 1 active hydrogen-containing group ([0012]). The polyiso(thio)cyanate compound (B1) corresponds to the claimed polyiso(thio)cyanate component (A). The poly(thi)ol compound (B2) includes compounds having 2-6 hydroxy groups (i.e., 2-6 active hydrogen-containing groups) and therefore reads on the claimed polyfunctional active hydrogen-containing component (B1) having at least 3 active hydrogen-containing groups in 1 molecule. The mono(thi)ol compound (B3) has 1 hydroxy group or thiol group (i.e., has 1 active hydrogen-containing group in 1 molecule) ([0116]) and includes polyoxypropylene monoalkyl ether ([0117]) and has a molecular weight of 100 or greater ([0120]). Thus, the mono(thi)ol compound (B3) corresponds to the claimed first active hydrogen-containing component (B2) having a number average molecular weight of 500 or more and having a polyoxypropylene chain in a molecule. The number of moles of iso(thio)cyanate groups in the component (B1) is n1, the total number of moles of the active hydrogen-containing group in component (B2) is n2, and the total number of moles of the active hydrogen-containing group in the component (B3) is n3; the ratio n1:(n2+n3) is 0.9 to 1.5:1 ([0122]), which overlaps the presently claimed range. Therefore, Mori discloses an identical resin composition as that of claim 5.
While there may be no explicit disclosure from Mori regarding a ratio of PMIpst to PMIcp (PMIpst/PMIcp) being 8.0 or more and 40.0 or less when PMIpst indicates the maximal intensity of signal in a range of 16 ppm to 20 ppm in a first spectrum by 13C-PST/MAS nuclear magnetic resonance (NMR) spectroscopy and PMIcp indicates the maximum intensity of signal in a range of 16 ppm to 20 ppm in a second spectrum by 13C-PST/MAS NMR spectroscopy, given that Mori discloses an identical resin composition as that of the presently claimed invention, it is clear the resin composition of Mori would necessarily inherently have a ratio PMIpst/PMIcp of 8.0-40.0, absent evidence to the contrary.
While there may be no explicit disclosure from Mori regarding a ratio of AMIpst to AMIcp (AMIpst/AMIcp) being 7.0 or more and 23.0 or less when AMIpst indicates the maximal intensity of signal in a range of 10 ppm to 15 ppm in the first spectrum and AMIcp indicates the maximal intensity of signal in a range of 10 ppm to 15 ppm in the second spectrum, given that Mori discloses an identical resin composition as that of the presently claimed invention, it is clear the resin composition of Mori would necessarily inherently have a ratio AMIpst/AMIcp of 7.0-23.0, absent evidence to the contrary.
While there may be no explicit disclosure from Mori regarding a ratio of EIpst to EIcp (EIpst/EIcp) being 5.0 or more and 20.0 or less when EIpst indicates the maximal intensity of signal in a range of 68 ppm to 72 ppm in the first spectrum and EIcp indicates the maximal intensity of signal in a range of 68 ppm to 72 ppm in the second spectrum, given that Mori discloses an identical resin composition as that of the presently claimed invention, it is clear the resin composition of Mori would necessarily inherently have a ratio EIpst/EIcp of 5.0-20.0, absent evidence to the contrary.
In light of the overlap between the claimed resin composition and that taught by Mori, it would have been obvious to one of ordinary skill in the art to use a resin composition that is both taught by Mori and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 4, Mori discloses the use of an antistatic agent including an alkali metal or alkaline earth metal salt, a quaternary ammonium salt, surfactants, ionic liquids, and the like ([0159]). Since there are alternatives that are not alkali metal or alkaline earth metal-containing, then the total content of an alkali metal ion and alkaline earth metal ion determined by X-ray fluorimetry would be 0 ppm.
With respect to claim 6, in light of the overlap between the molecular weight of Mori (100 or more) and the presently claimed molecular weight (500 or more) of the polyoxypropylene compound (B3), it is clear the polyoxypropylene compound (B3) of Mori would inherently have an average value of oxypropylene repeating units of 2-25, absent evidence to the contrary.
With respect to claim 7, Mori discloses the mono(thi)ol compound (B3), which corresponds to the claimed compound (B2) as set forth above, includes polyoxypropylene monoalkyl ether ([0117]) and therefore includes an alkyl group in the molecule. Alternatively, the compound (B3) is polyoxyethylene polyoxypropylene monoalkyl ether ([0117]), so it has a polyoxyethylene chain in the molecule.
With respect to claim 8, Mori discloses the compound (B3) includes polyoxyethylene polyoxypropylene monoalkyl ether ([0117]), which has an alkyl group and has at least 6 carbon atoms (2 from the oxyethylene, 3 from the oxypropylene, and at least 1 from the monoalkyl).
With respect to claim 9, Mori discloses the compound (B3) is polyoxyethylene polyoxypropylene monoalkyl ether ([0117]). In light of the overlap between the molecular weight of Mori (100 or more) and the presently claimed molecular weight (500 or more) of the polyoxyethylene polyoxypropylene monoalkyl ether compound (B3), it is clear the polyoxyethylene polyoxypropylene monoalkyl ether compound (B3) of Mori would inherently have an average value of repeating units of 5-25, absent evidence to the contrary.
With respect to claim 10, the component (B2) includes pentaerythritol ([0114]). As can be seen in the structure shown below, pentaerythritol has a quaternary carbon atom, and all groups bonded to the quaternary carbon have active hydrogen-containing groups.
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Pentaerythritol
With respect to claims 11 and 13, Mori discloses a photochromic optical article 1 having the structure shown in Fig. 1 below, including an optical article plate 4, adhesive layer 3, and optical article plate 2 ([0018]) where the adhesive layer is made from the photochromic compound (A) and urethane resin (B) described in the above rejection of claim 1 ([0017]).
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With respect to claim 12, a polarizing film can be stacked in layers on the photochromic optical article ([0182]).
With respect to claims 14-15, Mori discloses an optical article plate having an adhesive layer made from a photochromic compound (A) and the urethane resin (B) described in the above rejection of claim 1 ([0017-0018]), where the optical article plate is used as an optical lens ([0019]) and includes sunglasses and prescription lenses ([0169], [0181]), which are considered eyeglasses.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday-Friday 07:30-16:00 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787