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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 4/8/2026.
The terminal disclaimer filed on 4/8/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. patent no. 12,441,836 and US. Patent application nos. 18/569,429 and 18/569821 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 4/8/2026. In particular, claim 1 has been amended to limit R1 to a substituted phenyl group, substituted or unsubstituted naphthyl group, or a substituted or unsubstituted heteroaryl group. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara (JP 2001-106761, machine translation) in view of Yamada (US 2022/0146713).
With respect to claims 1-4, 9-11, and 16-20, Ohara discloses a resin composition for an optical lens prepared from a fluorene compound represented by general formula (I) n for P-3
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where R1-R8 group can be an aryl group and X and Y can be oxygen or sulfur (paragraph 0008-0010). An exemplified resin includes P-3 (paragraph 0072)
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. This resin reads on claimed Chemical Formula I (except for claimed R1) for r2 = 0, L1 and L2 are halogen-substituted phenylenes, L is -CO-L’- where L’ is phenylene, X1 and X4 are S, X2 and X3 are O and Z2 are ethylene, and a = b = 1.
P-3 does not include an aryl group at claimed R1, however, Ohara teaches that the resin can be prepared from
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(paragraph 0042) which has R1 that is an unsubstituted phenyl. Other than claimed R1, this specific fluorene compound reads on claimed Chemical Formula 1a when r1 is 1, r2 is 0, L1 an L2 are phenylene, X1-X4 are O, Z1 and Z2 are ethylene, and a and b are 1.
While Ohara discloses a generic “aryl” as R1-R8, it fails to explicitly discloses that its aryl group R1-R8 includes functional groups (claimed R1) other than unsubstituted phenyl.
Yamada, like Ohara, discloses an optical lens composition (abstract) which comprising a resin derived from
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where Ar1 and Ar2 are substituted phenyls and naphthyl groups (paragraphs 0082-0085). While Yamada does not disclose claim R2 (i.e., not aryl), it is a suitable reference to be combined with Ohara as they are in the same field of endeavor. Yamada teaches that naphthyl groups provide higher refractive index compared to phenyl groups (paragraph 0066).
Given that both Ohara and Yamada are drawn to fluorene resins for optical lenses and further given that Yamada teaches that a suitable aryl functional group R1-R8 (reads on claimed R1) includes substituted phenyls and naphthyls, it would have been obvious to one of ordinary skill in the art to utilize the fluorene diols of Ohara having a R1 that is a substituted phenyl or naphthalene group.
With respect to claim 5, Ohara’s
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has X (corresponds to claimed X2 and X4) and Y (corresponds to claimed X1 and X4) can be all oxygen (paragraphs 0008-0010). While not exemplified disclosed in a preferred embodiment, it still would have been obvious to one of ordinary skill in the art to prepare a resin with all claimed X1-X4 that are oxygen.
With respect to claim 6, Ohara does not define the number of repeat units n. Even so, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Should applicant argue criticality of molecular weight, it will be noted that applicant’s examples do not indicate or suggest a critical molecular weight. Such data has little to no probative value.
Given that Ohara discloses a resin with multiple repeat unit n, it would have been obvious to one of ordinary skill in the art to prepare a resin having claimed molecular weight of 10,000-200,000 g/mol.
With respect to claim 7, Ohara teaches that the molding temperature of 230-350°C is 150°C higher than the glass transition temperature of the resin (paragraph 0087). Therefore, Ohara suggests that the glass transition temperature is 80 to 200°C.
With respect to claim 8, Ohara teaches that the refractive index of the resin is at least 1.60 (paragraph 0090).
With respect to claim 12, the polythioester P-3 is prepared from terephthalic acid chloride (paragraph 0062) which reads on claimed Chemical Formula B when Ra1 and Ra2 are halogen, Ar1 is phenylene, and a1 and a2 are 0.
With respect to claims 13-15, Ohara teaches that the resin is used in a resin composition and molded into articles (paragraph 0078) such as optical lenses (paragraph 0086).
Response to Arguments
Applicant's arguments filed 4/8/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Ohara fails to disclose a substituted phenyl or naphthyl group as claimed R1 and does not fairly disclose or teach that improves refractive index.
Because Ohara only discloses “aryl” or phenyl groups, Ohara Yamada has been relied upon to cure the deficiency. Specifically, Yamada, like Ohara, discloses an optical lens composition (abstract) which comprising a resin derived from
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where Ar1 and Ar2 are substituted phenyls and naphthyl groups (paragraphs 0082-0085). While Yamada does not disclose claim R2 (i.e., not aryl), it is a suitable reference to be combined with Ohara because they are in the same field of endeavor. Also Yamada teaches that naphthyl groups provide higher refractive index compared to phenyl groups (paragraph 0066). Therefore, it is clearly advantageous to select a larger claimed R1 group.
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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