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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-7 and 12-18, in the reply filed on 10/15/2025 is acknowledged.
Claims 8-11 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/15/2025.
Claim Rejections - 35 USC § 102
Claim(s) 1-4, 6-7, 12-13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata et al. (US 2008/0318072).
Regarding claim 1:
Kawabata discloses an imide resin for optical uses [abstract; 0001; 0039]. An article can be formed by injection molding [0124; 0227]. The resin comprises a unit according to General Formula (1), a unit according to General Formula (2), and a unit according to General Formula (3), which correspond to the presently claimed General Formulas (1)-(3) [0040-0043]. The resin has the following properties:
An orientation birefringence is -0.1×10-3 to 0.1×103 [0040];
A photoelastic constant has an absolute value of 5×10-12 Pa-1 or less [0103-0104];
A glass transition temperature is 130°C or more [0101]; and
A phase difference (retardation) of 20 nm or less [0167].
Examples 15 and 18 disclose imide resins having photoelastic constants of 2×10-12 Pa-1 and 1×10-12 Pa-1 and glass transition temperatures of 132°C and 159°C, respectively [0298-0306; 0305; 0321-0328; 0327; Tables 3 & 5].
Regarding claim 2:
Given that Kawabata discloses a resin that is otherwise the same as claimed, the examiner submits the prior art resin necessarily meets the same property requirements as claimed.
Regarding claims 3 and 12:
Kawabata teaches the imidization ratio is 5-70% [0223]. Various examples disclose ratios falling within the claimed ranges, including, but not limited to: Example 1 is 68%; Example 5 is 65%; Example 6 is 45%; Example 15 is 58%, and Example 18 is 69% [Tables 1, 3, and 5].
Regarding claims 4 and 13:
Kawabata teaches R3 is preferably a methyl group [0089]. Additionally, Example 15 has an imidization ratio of 58% and uses monomethylamine in forming the resin (i.e., results in R3 is a methyl group) [0298].
Regarding claims 6 and 15:
Given that Kawabata discloses a resin that is otherwise the same as claimed, the examiner submits the prior art resin necessarily meets the same property requirements as claimed.
Regarding claims 7 and 16:
Kawabata discloses lenses and displays [0107].
Claim(s) 5 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kawabata et al. (US 2008/0318072).
Regarding claims 5 and 14:
Kawabata teaches an optical article comprising a glutarimide resin as explained above. Imidization ratios falling within the claimed range are disclosed as explained in rejections above, which are incorporated herein by reference. Kawabata teaches R3 is a hydrogen atom or a methyl group and further teaches units comprising different groups can be used [0089].
The examiner submits this disclosure is sufficiently specific to anticipate the claimed glutarimide units. Alternatively, the examiner also submits such a combination of groups would have been obvious in view of the disclosure. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a unit wherein R3 is hydrogen and a unit wherein R3 is methyl to provide a glutarimide resin in accordance with Kawabata’s teaching, and thereby arrive at the claimed invention.
Claim(s) 1-2, 6-7, and 15-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (JP 2020-015905).
Note: citations refer to the machine translation of JP ‘905 provided with this Office Action.
Regarding claim 1:
Yoshida a methacrylic resin and an injection-molded optical component formed therefrom [abstract; 0001; 0008]. The resin comprises (A) a unit derived from a methacrylic acid ester monomer, (B-2) a unit comprising glutarimide, and (C) a unit derived from a vinyl monomer [0014]. Unit (A) is formed from monomers falling within the scope of present General Formula (2), such as methyl methacrylate, ethyl methacrylate, etc. [0016]. Unit (B-2) comprises a glutarimide represented by General Formula (3), which corresponds to present General Formula (1) [0027-0028]. Unit (C) is formed from aromatic vinyl monomers (C-1), such as those represented by General Formula (5), falling within the scope of present General Formula (3) [0033-0034]. The resin has the following properties:
An orientation birefringence has an absolute value of 0.1×10-5 to 5.0×10-5 [0052];
A photoelastic constant has an absolute value of 3.0×10-12 Pa-1 or less [0058];
A glass transition temperature is 125°C or more [0050]; and
A retardation of 5.0 nm or less or 4.0 nm or less (note the machine translation incorrectly translates the upper limit as “5.1mm or less” but the subsequent values clarify the units) [0151; also see original JP ‘905 at 0151].
Regarding claim 2:
Given that Yoshida discloses a resin that is otherwise the same as claimed, the examiner submits the prior art resin necessarily meets the same property requirements as claimed.
Regarding claims 6 and 15:
Given that Yoshida discloses a resin that is otherwise the same as claimed, the examiner submits the prior art resin necessarily meets the same property requirements as claimed.
Regarding claims 7 and 16:
Yoshida teaches lens and in-vehicle displays [0153].
Regarding claims 17-18:
Yoshida teaches thicknesses of up to 1.5 mm [0152]. Yoshida also teaches the use of test pieces having thicknesses of 1 mm and 4 mm [0162-0163].
Claim Rejections - 35 USC § 103
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata et al. (US 2008/0318072) in view of Yoshida et al. (JP 2020-015905).
Note: citations refer to the machine translation of JP ‘905 provided with this Office Action.
Regarding claims 17 and 18:
Kawabata teaches an optical article comprising a glutarimide resin as explained above. Kawabata discloses lenses and displays [0107].
Kawabata is silent with regard to the thickness of such articles.
Lenses and other optical articles having thicknesses within the claimed range were known in the art. For example, Yoshida discloses a methacrylic resin composition useful for optical articles, such as lenses and displays [abstract; 0001; 0153]. The resin comprises a unit comprising a methacrylic acid ester, a unit comprising a glutarimide, and a unit comprising a vinyl component [0014]. Yoshida provides an injection molded article having a thickness of up to 1.5 mm [0057; 0146; 0152]. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the optical article over values known in the art to have utility, including values falling within the claimed range, to provide such useful optical articles.
Claim(s) 3-5 and 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JP 2020-015905).
Note: citations refer to the machine translation of JP ‘905 provided with this Office Action.
Regarding claims 3 and 12:
Yoshida teaches the content of the glutarimide-based structural unit is 5-70% by mass, preferably 5-60% by mass of the methacrylic resin to provide the desired glass transition temperature [0028]. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the imidization ration, including values falling within the claimed range, to provide the desired glass transition temperature for a given end use.
Regarding claims 4 and 13:
Yoshida teaches a glutarimide represented by General Formula (3) having R9, which corresponds to present General Formula (1) having R3, wherein R9 is a methyl group [0028]. Yoshida teaches the content of the glutarimide-based structural unit is 5-70% by mass, preferably 5-60% by mass of the methacrylic resin to provide the desired glass transition temperature [0028]. 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).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the imidization ratio, including values falling within the claimed range, to provide the desired glass transition temperature for a given end use.
Regarding claims 5 and 14:
See the rejection of claims 4 and 13 regarding the claimed imidization ratio. Yoshida teaches a glutarimide represented by General Formula (3) having R9, which corresponds to present General Formula (1) having R3, wherein R9 is a hydrogen atom or methyl group and further teaches units comprising different groups can be used [0028].
The examiner submits this disclosure is sufficiently specific to anticipate the claimed glutarimide units. Alternatively, the examiner also submits such a combination of groups would have been obvious in view of the disclosure. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a unit wherein R9 is hydrogen and a unit wherein R9 is methyl to provide a glutarimide resin in accordance with Yoshida’s teaching, and thereby arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787