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 .
Applicant’s preliminary amendment dated 15 February 2024 is acknowledged. Claims 1-4, 7, 10, 11, 13, 14, 18, 21, 22, 24, 27, 29-37, 39-42, 54-56, and 69 as amended are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13, 18, 21, and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 13, 18, and 21 depend from claims that have been canceled. Therefore, it cannot be determined what additional limitations are required. In addition, claims 18 and 21 recite “the free radical polymerization initiator,” for which there is no antecedent basis.
Claim 24 recites “the refractive monomer mixture” in line 1. It is not clear whether or not this refers to the reactive monomer mixture of claim 1, or some other mixture.
Claim Rejections - 35 USC § 103
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.
Claims 1, 7, 10, 11, 13, 18, 21, 22, 24, 29-31, 33, 35, 36, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0347167 (“Alli”).
As to claims 1, 7, 10, 31, and 33, Alli teaches a composition made by free radical polymerization of a reactive monomer mixture (para. 0221) of a (meth)acrylate monomer having more than one cycloaliphatic ring, a hydrophilic monomer and crosslinking agent having the recited refractive index and Abbe number range.
Referring to Table 7, para. 0359, example 35 of Alli teaches reactive monomer mixture having 53.14 weight percent of EGDCA (within the range of claims 1 and 31, ethylene glycol dicyclopentenyl acrylate (para. 0324) as required by claims 1 and 10. Said mixture further includes TCDA, which is a crosslinking agent as required by claim 1 and 7 (see para. 0324). Said reactive monomer mixture further includes DMA, dimethylacrylamide (para. 0324), which meets Formula II where Pg is a polymerizable double bond, L is a single bond, and R1 and R2 are each methyl. While Alli does not refer to DMA as a compatibilizing monomer, it is the same structure as recited and therefore is presumed to have that function. Example 35 has refractive index and Abbe number in the range recited by claims 1 and 33.
As to claim 11, Example 35 further includes NHA, n-hexyl acrylate (para. 0324), which is an alkyl acrylate having a C6 alkyl group.
As to claim 13, it is presumed that claim 13 depends from claim 1. Example 35 further includes NHA, n-hexyl acrylate (para. 0324), in the recited weight range.
As to claim 18, for the purpose of applying prior art, it is presumed that claim 18 depends from claim 1, and positively recites a free radical initiator. Example 35 includes Omnirad 819, a photoinitiator (see paras. 0302, 0326).
As to claim 21, for the purpose of applying prior art, it is presumed that claim 21 depends from claim 1, and positively recites a free radical initiator. Example 35 includes Omnirad 819, a photoinitiator (see paras. 0302, 0326), at 0.34 weight percent.
As to claim 22, example 35 of Alli includes HEVB, which is a HEV absorbing compound having a recited structure (para. 0326), and which is described by Alli as UV absorbing (para. 0249).
As to claim 24, example 35 of Alli includes HEVB, which is a HEV absorbing compound having a recited structure (para. 0326).
As to claim 29, example 35 of Alli includes 2 wt percent of dimethylacrylamide.
As to claim 30, example 35 of Alli includes 8 wt percent of the crosslinking agent TCDA.
As to claim 35, example 35 does not state the storage modulus. However, having the same structure as recited, it is presumed to have the storage modulus within recited range.
As to claims 36 and 40, Alli teaches forming the polymer of example 35 into a lens, an ophthalmic device (para. 0359).
Claims 1-4, 10, 11, 18, 29, 31, 33, and 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2020-204001 A (“Koike”).
A partial machine translation is enclosed.
As to claims 1-4, 10, 31, 33, and 35, Koike teaches a cured product (para. 0124) of a radiation curable composition (reactive monomer mixture), thus a radical polymerization product thereof. Referring to table 1, para. 0121, example 6 shows a composition having 25 weight percent of DCPEA, which is dicyclopentenyloxyethyl acrylate (para. 0123), which is the same as ethylene glycol dicyclopentenyl acrylate) as required by claims 1 and 10, and in the amount required by claims 1 and 31. This is presumed to be a compatibilizing compound. The composition also includes monomer 6101, which is 2-butylcarbamoyloxyethyl acrylate, which meets claim 2 where the linking group is an unsubstitiuted alkylene group, the Formula III of claim 3 where R3 is hydrogen, and R1 is hydrogen, and R2 is alkyl, and meets the fourth species of claim 4. The composition further includes VEEA, 2-2-vinyloxyethoxyethyl acrylate, a difunctional monomer, thus crosslinking agent.
Koike does not discuss refractive index or Abbe number as required by claims 1 and 33, or the modulus required by claim 35. However, given the identity of the composition, it is reasonable to presume the recited characteristics are met.
As to claim 11, the same example includes IBXA, isobornyl acrylate (para. 0124), which is a (meth)acrylate having an aliphatic alkyl group of the recited size.
As to claim 18, for the purpose of applying prior art, it is presumed that claim 18 depends from claim 1, and positively recites a free radical initiator. Example 6 includes Igracure 819, an initiator, and is subject to light curing (para. 0124), so it is reasonable to presume it is a photoinitiator.
As to claim 21, for the purpose of applying prior art, it is presumed that claim 21 depends from claim 1, and positively recites a free radical initiator. Example 6 includes Irgacure 819, a free radical initiator, in the recited amount.
As to claim 29, example 6 includes 15 wt % of the compatibilizing monomer.
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 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0347167 (“Alli”) in view of US 4,543,398 (“Bany”).
The discussion of Alli with respect to claim 1 is incorporated by reference.
As to claims 2-4, Alli does not teach the recited monomer, but is open (“comprising”) of other monomers. Bany teaches polymerizable compositions for forming ophthalmic devices, and teaches the addition of various monomers, including 2-(N-methylcarbamoyloxy)ethyl (meth)acrylate for stiffness and physical strength (7:60-8:8). The aforementioned monomer meets claim 2, having a (meth)acrylate polymerizable group and unsubstituted ethylene as linking group, claim 3 where R3 is hydrogen or methyl, R1 is hydrogen, and R2 is methyl, and the first species of claim 4. As such, the use of such monomer is known for providing additional stiffness and strength in ophthalmic devices.
Claims 14, 27, 32, 34, 37, 41, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0347167 (“Alli”).
The discussion of Alli with respect to claim 1 is incorporated by reference.
As to claim 14, the recited (meth)acrylate is not exemplified; however, Alli teaches that such monomers may be used in combination as hydrophilic monomers (para. 0231-0232), and as such the use of such monomer is an obvious modification suggested by Alli.
As to claim 27, the recited hydroxyalkyl (meth)acrylate is not exemplified; however, Alli teaches that such monomers may be used in combination as hydrophilic monomers (para. 02226-0228), and as such the use of such monomer is an obvious modification suggested by Alli.
As to claim 32, while not exemplified, Alli suggests that a diluent may be added, and as such is an obvious modification (para. 0261).
As to claim 34, while water content is not measured for example 35, Alli teaches water content for the composition should be in the recited range (para. 0262), and thus the recited water content is an obvious modification.
As to claim 37, the discussion of Alli with respect to claim 36 is incorporated by reference. While example 35 does not discuss the type of lens, Alli teaches the utility of the compositions for the recited device types (para. 0305) and are thus an obvious end use suggested by Alli.
As to claims 41 and 42, example 35 of Alli teaches forming the polymer of example 35 into a lens, an ophthalmic device (para. 0359), but does not exemplify the specific method. However, Alli teaches both preparing a blank and machining an ophthalmic device as required by claim 41, or molding the device from the composition as required by claim 42 (para. 0313), and therefore these methods are an obvious modification suggested by Alli.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0347167 (“Alli”) in view of US 2001/0036556 (“Jen”).
The discussion of Alli with respect to claim 36 is incorporated by reference.
As to claim 39, Alli does not discuss a coating on the device. Alli teaches that the device may be a contact lens (para. 0013), and it is known from Jen to coat contact lens for antifouling and wetting (Jen, abstract), and thus a coating is an obvious modification for ophthalmic devices such as contact lenses.
Allowable Subject Matter
Claims 54-56 and 69 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, including the references cited above, do not teach or suggest the specific formulations required byc claims 54 and 55.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2022/0135720 teaches a similar ophthalmic device composition, using dicyclopentenyl ethylene glycol (meth)acrylate, crosslinking agent, and may include acrylamides (though not exemplified), and having the recited refractive index and Abbe number.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KREGG T BROOKS/ Primary Examiner, Art Unit 1764
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