DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/23/2026 has been entered.
3. Claims 1, 3-15 are pending. Claims 1, 3-15 are under examination on the merits. Claims 1, 9 are amended. Claims 12-15 are newly added. Claim 2 is previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1, 3-15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Information Disclosure Statement
6. The information disclosure statement submitted on 01/22/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Double Patenting
7. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An erequest that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
8. A) Claims 1, 3-7, 12 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3-15 of copending Application No.17/842,753 (US Pub. No. 2022/0324853, hereinafter ”’853”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘853 recites a resin composition comprising a compound represented by Formula (1) as set forth and a resin. ‘853 teaches the resin composition, further comprising: an ultraviolet absorbing agent other than the compound represented by Formula (1), and a cured substance which is formed of the resin composition. Given that a kneaded material comprising an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound, and a polymer compound as presently read on a resin composition comprising a compound represented by Formula (1) as set forth and a resin disclosed in ‘853 claims, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention that the scope of recited claims encompasses the scope of ‘853 claims and thus, render the present claims prima facie obvious.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
B) Claims 1, 4-7, 12-13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-1 of US. Patent No. 12,565,600 B2 (hereinafter ”’600). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘600 recites a photopolymerizable composition comprising: at least one compound selected from a compound represented by Formula (1) or a compound represented by Formula (2), a polymerizable compound; and a photopolymerization initiator, wherein the photopolymerization initiator is at least one selected from an acetophenone compound, an acylphosphine compound, or a benzophenone compound. ‘600 teaches the photopolymerizable composition, further comprising: a resin, and a cured substance which is obtained by curing the photopolymerizable composition, and further an optical member comprising: the cured substance. Given that a kneaded material comprising an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound, and a polymer compound as presently read on a resin composition comprising a compound represented by Formula (1) or a compound represented by Formula (2) as set forth and a resin disclosed in ‘600 claims, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention that the scope of recited claims encompasses the scope of ‘853 claims and thus, render the present claims prima facie obvious.
Claim Rejections - 35 USC § 102
9. 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.
10. Claims 1, 3-7, 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furuyama et al. (US Pub. No. 2022/0324853 A1, “’853”).
Regarding claims 1,12: ‘853 discloses a resin composition (Page 1, [0007]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-10 or (1)-11 or (1)-13 (Page 10, compounds (1)-5 or (1)-10 or (1)-11 or (1)-13)), and a polymer compound (Page 22, [0222]).
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claim 3: ‘853 discloses the resin composition (Page 1, [0007]), further comprising: a plasticizer (Page 42, [0428]).
Regarding claims 4-5: ‘853 discloses the resin composition (Page 1, [0007]), wherein the ultraviolet absorbing agent further contains a compound A having a maximal absorption wavelength on a shorter wavelength side than the first compound or the second compound, wherein the compound A is at least one selected from a benzotriazole compound, a triazine compound, or a benzophenone compound (Page 21, [0216]-[0217]).
Regarding claims 6-7: ‘853 discloses the resin composition (Page 1, [0007]), wherein the polymer compound is at least one selected from a cyclic olefin resin (Page 44, [0450]-[0451]). ‘853 is silent regarding the glass transition point of the polymer compound.
However, pertaining specifically to claim 6, since ‘853 discloses the identical or substantially identical polymer compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. glass transition point, would inherently/implicitly be achieved by ‘853 (i.e., the polymer compound has a glass transition point of -80°C or higher and 200°C or lower). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
11. Claims 1, 4-7, 12-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sasaki et al. (US Pub. No. 2024/0067846 A1, “’846”).
Regarding claims 1,12-13: ‘846 discloses a photopolymerizable composition (Page 1, [0011]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-11 (Page 10, compounds (1)-5 or (1)-11)) or (1)-13 (Page 11, compound (1)-13), or the second compound such as (2)-8 or (2(9) or (2)-11 or (2)-12 (Page 28, compounds, (2)-8 or (2(9) or (2)-11 or (2)-12), and a polymer compound (Page 29, [0138]).
If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Regarding claims 4-5: ‘846 discloses a photopolymerizable composition (Page 1, [0011]), wherein the ultraviolet absorbing agent further contains a compound A having a maximal absorption wavelength on a shorter wavelength side than the first compound or the second compound, wherein the compound A is at least one selected from a benzophenone compound (Page 30, [0156]).
Regarding claims 6-7: ‘846 discloses a photopolymerizable composition (Page 1, [0011]), wherein the polymer compound is at least one selected from a cyclic olefin resin (Page 29, [0138]-[0139]). ‘846 is silent regarding the glass transition point of the polymer compound.
However, pertaining specifically to claim 6, since ‘846 discloses the identical or substantially identical polymer compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. glass transition point, would inherently/implicitly be achieved by ‘846 (i.e., the polymer compound has a glass transition point of -80°C or higher and 200°C or lower). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 1, 3-7, 9-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Takashi Kato (US Pub. No. 2018/0371255 A1, “’255”) in view of Furuyama et al. (US Pub. No. 2022/0324853 A1, “’853”) or Sasaki et al. (US Pub. No. 2024/0067846 A1, “’846”).
Regarding claims 1,12-13: ‘255 teaches a kneaded material such as a protective sheet (Page 1, [0002]; Page 21, [0351]) comprising: an ultraviolet absorbing agent that contains at least one compound selected from a second compound of UV-9 (Page 24, [0387], Example 18) and a polymer compound (Page 18, [0311], Example 1; Page 23, [0374], Example 14; Page 24, [0387]; Example 18). ‘255 does not expressly teach an ultraviolet absorbing agent contains at least one compound selected from a first compound includes at least one compound selected from the following compounds (1)-5, (1)-8, (1)-11, (1)-13, (1)-46, (1)-49, (1)-52, and (1)-53, or the second compound includes at least one compound selected from the following compounds (2)-8, (2)-9, (2)-11, and (2)-12 as set forth.
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However, ‘853 teaches a resin composition (Page 1, [0007]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-10 or (1)-11 or (1)-13 (Page 10, compounds (1)-5 or (1)-10 or (1)-11 or (1)-13)), and a polymer compound (Page 22, [0222]) with benefit of providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent (Page 1, [0006]).
Alternatively, ‘846 teaches a photopolymerizable composition (Page 1, [0011]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-11 (Page 10, compounds (1)-5 or (1)-11)) or (1)-13 (Page 11, compound (1)-13), or the second compound such as (2)-8 or (2(9) or (2)-11 or (2)-12 (Page 28, compounds, (2)-8 or (2(9) or (2)-11 or (2)-12), and a polymer compound (Page 29, [0138]) with benefit of providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time (Page 1, [0006]).
In an analogous art of the kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘853, and would have been motivated to do so with reasonable expectation that this would result in providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent as suggested by ‘853
(Page 1, [0006]).
In an analogous art of the kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘846, and would have been motivated to do so with reasonable expectation that this would result in providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time as suggested by ‘846 (Page 1, [0006]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two ultraviolet absorber compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 3: The disclosure of ‘255 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘853 teaches the resin composition (Page 1, [0007]), further comprising: a plasticizer (Page 42, [0428]).
Regarding claims 4-5: The disclosure of ‘255 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘853 teaches the resin composition (Page 1, [0007]), wherein the ultraviolet absorbing agent further contains a compound A having a maximal absorption wavelength on a shorter wavelength side than the first compound or the second compound, wherein the compound A is at least one selected from a benzotriazole compound, a triazine compound, or a benzophenone compound (Page 21, [0216]-[0217]).
‘846 teaches a photopolymerizable composition (Page 1, [0011]), wherein the ultraviolet absorbing agent further contains a compound A having a maximal absorption wavelength on a shorter wavelength side than the first compound or the second compound, wherein the compound A is at least one selected from a benzophenone compound (Page 30, [0156]).
Regarding claims 6-7: The disclosure of ‘255 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘255 teaches a kneaded material such as a protective sheet (Page 1, [0002]; Page 21, [0351]), wherein the polymer compound has a glass transition point of 103°C such as pentaerythritol triacrylate (Kayarad PET-30).
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Regarding claims 9,14-15: ‘255 teaches a method of producing a kneaded material Page 1, [0002]; Page 21, [0351]), comprising: kneading an ultraviolet absorbing agent that contains at least a second compound represented by Formula (2) such as UV-9 (Page 24, [0387], Example 18) with a polymer compound (Page 18, [0311], Example 1; Page 23, [0374], Example 14; Page 24, [0387]; Example 18). ‘255 does not expressly teach an ultraviolet absorbing agent contains at least one compound selected from a first compound includes at least one compound selected from the following compounds (1)-5, (1)-8, (1)-11, (1)-13, (1)-46, (1)-49, (1)-52, and (1)-53, or the second compound includes at least one compound selected from the following compounds (2)-8, (2)-9, (2)-11, and (2)-12 as set forth.
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However, ‘853 teaches a resin composition (Page 1, [0007]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-10 or (1)-11 or (1)-13 (Page 10, compounds (1)-5 or (1)-10 or (1)-11 or (1)-13)), and a polymer compound (Page 22, [0222]) with benefit of providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent (Page 1, [0006]).
Alternatively, ‘846 teaches a photopolymerizable composition (Page 1, [0011]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-11 (Page 10, compounds (1)-5 or (1)-11)) or (1)-13 (Page 11, compound (1)-13), or the second compound such as (2)-8 or (2(9) or (2)-11 or (2)-12 (Page 28, compounds, (2)-8 or (2(9) or (2)-11 or (2)-12), and a polymer compound (Page 29, [0138]) with benefit of providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time (Page 1, [0006]).
In an analogous art of the method of producing a kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘853, and would have been motivated to do so with reasonable expectation that this would result in providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent as suggested by ‘853
(Page 1, [0006]).
In an analogous art of the method of producing a kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘846, and would have been motivated to do so with reasonable expectation that this would result in providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time as suggested by ‘846 (Page 1, [0006]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two ultraviolet absorber compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 10: The disclosure of ‘255 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘255 teaches a molded body formed of the kneaded material (Page 21, [0351]).
Regarding claim 11: The disclosure of ‘255 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘255 teaches an optical member such as an image display device comprising the protective sheet comprising: the molded body (Page 18, [0312]-[0313]).
14. Claims 1, 3-7, 9-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Takashi Kato (JP 2019-191219 A, machine translation, hereinafter “’219”) in view of Furuyama et al. (US Pub. No. 2022/0324853 A1, “’853”) or Sasaki et al. (US Pub. No. 2024/0067846 A1, “’846”).
Regarding claims 1,12-13: ‘219 teaches an eyeglass lens is fabricated from pellets of a kneaded product containing a polycarbonate resin (Page 40/51, [0121], Example 1-8) and specific compound S-6 (Page 17/51, [0065], Chemical Formula 5, Compound S-6). ‘219 does not expressly teach an ultraviolet absorbing agent contains at least one compound selected from a first compound includes at least one compound selected from the following compounds (1)-5, (1)-8, (1)-11, (1)-13, (1)-46, (1)-49, (1)-52, and (1)-53, or the second compound includes at least one compound selected from the following compounds (2)-8, (2)-9, (2)-11, and (2)-12 as set forth.
However, ‘853 teaches a resin composition (Page 1, [0007]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-10 or (1)-11 or (1)-13 (Page 10, compounds (1)-5 or (1)-10 or (1)-11 or (1)-13)), and a polymer compound (Page 22, [0222]) with benefit of providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent (Page 1, [0006]).
Alternatively, ‘846 teaches a photopolymerizable composition (Page 1, [0011]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-11 (Page 10, compounds (1)-5 or (1)-11)) or (1)-13 (Page 11, compound (1)-13), or the second compound such as (2)-8 or (2(9) or (2)-11 or (2)-12 (Page 28, compounds, (2)-8 or (2(9) or (2)-11 or (2)-12), and a polymer compound (Page 29, [0138]) with benefit of providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time (Page 1, [0006]).
In an analogous art of the kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘219 so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘853, and would have been motivated to do so with reasonable expectation that this would result in providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent as suggested by ‘853
(Page 1, [0006]).
In an analogous art of the kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘219, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘846, and would have been motivated to do so with reasonable expectation that this would result in providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time as suggested by ‘846 (Page 1, [0006]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two ultraviolet absorber compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 3: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches the kneaded material (Page 40/51, [0121], Example 1-8), further comprising: a plasticizer (Page34/51, [0098]).
Regarding claims 4-5: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches the kneaded material (Page 40/51, [0121], Example 1-8), wherein the ultraviolet absorbing agent further contains a compound A having a maximal absorption wavelength on a shorter wavelength side than the compound represented by Formula (1), wherein the compound A is at least one selected from a benzotriazole compound, a triazine compound, or a benzophenone compound (Page 33/51, [0090]-[0092]).
Regarding claims 6-7: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches the kneaded material (Page 40/51, [0121], Example 1-8), wherein the polymer compound is at least one selected from a polycarbonate resin such as Panlite® L-1250W by Teijin Chemical having a glass transition of 147 °C (297 °F) (Page 40/51, [0121], Example 1-8)
Regarding claim 8: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches the kneaded material (Page 40/51, [0121], Example 1-8), wherein the kneaded material is a pellet (Page 40/51, [0121], Example 1-8).
Regarding claim 9: ‘219 teaches a method of producing a kneaded material, comprising:
kneading an ultraviolet absorbing agent for an eyeglass lens which is fabricated from pellets of a kneaded product containing a polycarbonate resin (Page 40/51, [0121], Example 1-8) and specific compound S-6 (Page 17/51, [0065], Chemical Formula 5, Compound S-6). ‘219 does not expressly teach an ultraviolet absorbing agent contains at least one compound selected from a first compound includes at least one compound selected from the following compounds (1)-5, (1)-8, (1)-11, (1)-13, (1)-46, (1)-49, (1)-52, and (1)-53, or the second compound includes at least one compound selected from the following compounds (2)-8, (2)-9, (2)-11, and (2)-12 as set forth.
However, ‘853 teaches a resin composition (Page 1, [0007]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-10 or (1)-11 or (1)-13 (Page 10, compounds (1)-5 or (1)-10 or (1)-11 or (1)-13)), and a polymer compound (Page 22, [0222]) with benefit of providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent (Page 1, [0006]).
Alternatively, ‘846 teaches a photopolymerizable composition (Page 1, [0011]) comprising an ultraviolet absorbing agent represented by the first compound such as (1)-5 or (1)-11 (Page 10, compounds (1)-5 or (1)-11)) or (1)-13 (Page 11, compound (1)-13), or the second compound such as (2)-8 or (2(9) or (2)-11 or (2)-12 (Page 28, compounds, (2)-8 or (2(9) or (2)-11 or (2)-12), and a polymer compound (Page 29, [0138]) with benefit of providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time (Page 1, [0006]).
In an analogous art of the method of producing a kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘853, and would have been motivated to do so with reasonable expectation that this would result in providing a compound which has an excellent absorption ability with respect to ultraviolet rays having a wavelength of approximately 400 nm, has less coloring, and is useful as an ultraviolet absorbing agent as suggested by ‘853
(Page 1, [0006]).
In an analogous art of the method of producing a kneaded material, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the ultraviolet absorbing agent of the kneaded material by ‘255, so as to include an ultraviolet absorbing agent contains at least one compound selected from a first compound or the second compound as taught by ‘846, and would have been motivated to do so with reasonable expectation that this would result in providing an improvement of light resistance performance of the ultraviolet absorbing agent, since the ultraviolet absorbing performance of an ultraviolet absorbing agent may be degraded with time due to irradiation with light. In particular, an ultraviolet absorbing agent having a maximal absorption wavelength on a longer wavelength side in an ultraviolet region has a tendency that the light resistance is poor and the ultraviolet absorption performance thereof is likely to be degraded with time as suggested by ‘846 (Page 1, [0006]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two ultraviolet absorber compounds) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 10: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches a molded body formed of the kneaded material (Page 40/51, [0121], Example 1-8).
Regarding claim 11: The disclosure of ‘219 in view of ‘853 or ‘846 is adequately set forth in paragraph above and is incorporated herein by reference. ‘219 teaches an optical member comprising: the molded body (Page 7/51, [0006]-[0007]).
Response to Arguments
15. Applicant’s arguments with respect to claims 1, 3-15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/07/2026
bijan.ahvazi@uspto.gov
Prosecution Insights