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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-6 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCabe et al. (US 2003/0125498).
Regarding claims 1-2, 4-6 and 8: McCabe et al. (US ‘498) discloses contact lens compositions [abstract; 0007-0013], wherein Example 84 [Ex. 84; 0183; Table 13, Ex. 84] contains 28 wt% [0144] mPDMS (800-1000 Mn monomethacryloxypropyl terminated mono-n-butyl terminated polydimethylsiloxane [0142] {corresponding to n ~ 7-9 instant formula (1)), 3 wt% AcPDMS (bis-3-methacryloxy-2-hydroxypropyloxypropyl polydimethylsiloxane [0142]; n = 10 or 20; (~ 1080 or 1820 Mn [0031-0039; 0048; 0152]), 15 wt% TRIS (3-methacryloxypropyltris(trimethylsiloxy)silane [0142]), 29 wt% DMA (N,N-dimethylacrylamide [0142]), 2 wt% HEMA (2-hydroxyethyl methacrylate [0142]), 2 wt% Norbloc (2-(2’-hydroxy-5-methacrylyloxyethylphenyl)-2H-benzotriazole [0142]), 0.02 wt% Blue HEMA, and 1 wt% CGI 1850 {corresponding to a weight ratio of 2.1:1 of (mPDMS+AcPDMS):TRIS} [Ex. 84; 0183; Table 13, Ex. 84]. The resulting lens has a Dk of 100 barrers and an elongation of 300% [Ex. 84; 0183; Table 13, Ex. 84].
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCabe et al. (US 2003/0125498).
Regarding claim 10: McCabe et al. (US ‘498) discloses contact lens compositions [abstract; 0007-0013], wherein the lens of Example 84 [Ex. 84; 0183; Table 13, Ex. 84] a Dk [0138] of 100 barrers and an elongation of 300% [Ex. 84; 0183; Table 13, Ex. 84].
Claim(s) 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McCabe et al. (US 2003/0125498).
Regarding claim 11: McCabe et al. (US ‘498) discloses contact lens compositions [abstract; 0007-0013], wherein Example 84 [Ex. 84; 0183; Table 13, Ex. 84] contains 28 wt% [0144] mPDMS (800-1000 Mn monomethacryloxypropyl terminated mono-n-butyl terminated polydimethylsiloxane [0142] {corresponding to n ~ 7-9 instant formula (1)), 3 wt% AcPDMS (bis-3-methacryloxy-2-hydroxypropyloxypropyl polydimethylsiloxane [0142]; n = 10 or 20; (~ 1080 or 1820 Mn [0031-0039; 0048; 0152]), 15 wt% TRIS (3-methacryloxypropyltris(trimethylsiloxy)silane [0142]), 29 wt% DMA (N,N-dimethylacrylamide [0142]), 2 wt% HEMA (2-hydroxyethyl methacrylate [0142]), 2 wt% Norbloc (2-(2’-hydroxy-5-methacrylyloxyethylphenyl)-2H-benzotriazole [0142]), 0.02 wt% Blue HEMA, and 1 wt% CGI 1850 {corresponding to a weight ratio of 2.1:1 of (mPDMS+AcPDMS):TRIS} [Ex. 84; 0183; Table 13, Ex. 84]. The resulting lens has a Dk [0138] of 100 barrers and an elongation of 300% [Ex. 84; 0183; Table 13, Ex. 84].
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.
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.
Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCabe et al. (US 2003/0125498) as applied to claim 1 above.
Regarding claim 3: McCabe et al. (US ‘498) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein McCabe et al. (US ‘498) discloses formula II can have R2 and/or R4 as C1-6carbonyl.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979) [see MPEP 2144.09].
Regarding claim 7: McCabe et al. (US ‘498) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein McCabe et al. (US ‘498) discloses the composition can contain azobisisobutyronitrile as a polymerization initiator [0097].
McCabe et al. (US ‘498) does not specifically disclose Ex. 84 containing azobisisobutyronitrile. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included azobisisobutyronitrile based on the invention of McCabe et al. (US ‘498), and would have been motivated to do so since McCabe et al. (US ‘498) suggests that the composition can contain azobisisobutyronitrile as a polymerization initiator [0097]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over McCabe et al. (US 2003/0125498) as applied to claim 8 above, and further in view of Lin et al. (US 2017/0227790).
Regarding claim 9: McCabe et al. (US ‘498) discloses the basic claimed composition [as set forth above with respect to claim 8]; wherein McCabe et al. (US ‘498) discloses UV absorbing compounds [0114].
McCabe et al. (US ‘498) does not disclose a piperidine ring. However, Lin et al. (US ‘790) discloses compositions for contact lenses [abstract], wherein the composition can contain Reactive Yellow 15 [0038]. McCabe et al. (US ‘498) and Lin et al. (US ‘790) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of compositions for contact lenses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Reactive Yellow 15, as taught by Lin et al. (US ‘790) in the invention of McCabe et al. (US ‘498), and would have been motivated to do so since Lin et al. (US ‘790) suggests the composition can contain Reactive Yellow 15 as a short wavelength (280-495 nm) absorbing agent [0038].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 19/717809 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed contact lens and contact lens compositions substantially overlap in scope. While Application No. 19/717809 does not specifically claim a weight ratio of a siloxane having a single acryloyl group and a siloxane having two acryloyl groups to a tris(trimethylsiloxy)silylpropyl methacrylate of ~ 27.5:1 and ~ 0.29:1, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
While Application No. 19/717809 does not specifically claim a contact lens having an oxygen permeability of greater than 80 barrer and an elongation of greater than 270%, in the case where the claimed ranges “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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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