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 § 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 1-5, 7-8, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Miyake et al, US20190225739A1.
Regarding claims 1-4 and 11-12, Miyake teaches an isocyanate composition comprising a difunctional or more-functional isocyanate compound and a compound different from the isocyanate that has at least one unsaturated bond (excluding the unsaturated bonds on an aromatic ring) in an amount of 1-10,000 ppm based on the amount of the isocyanate compound, abstract and ¶[0045]. The difunctional isocyanate may be selected as xylylene diisocyanate, ¶[0059], which reads on the diisocyanate with an isocyanatomethyl group of claims 1, 2, 4 and 12.
The compound different from the isocyanate with an unsaturated bond is preferably a compound having an UV absorption in an area of decamer or higher isocyanates in a measurement spectrum of gel permeation chromatography ¶[0083], which is preferably a compound having a 1-nylon body structure of formula (37), ¶[0086]. In the formula, R29 represents a residual group obtained by removing one isocyanate group from the difunctional or more-functional isocyanate compound, and w represents an integer of 1 or more ¶[0087]. The compound with the 1-nylon structure reads on the 1-nylon type polymer of claim 1 and reads on the specific compound with an absorption peak in the range of 1700-1720cm-1 of claim 2 because applicant states in ¶[0028, 0038] of the instant specification that the claimed absorption peak is due to the carbonyl group in an amide bond and an example of the specific compound that has this is the 1-nylon polymer.
Miyake teaches that the amount of the compound with an unsaturated group and UV absorption in an area of decamer or higher isocyanates is 1 ppm to 10,000 ppm ¶[0037, 0045] based on the mass of the isocyanate compound, which is in an amount of at least 97% by mass in the composition, ¶[0046]. Where the diisocyanate is selected as XDI, the molecular weight is about 188 g/mol, and there are two NCO groups with a molecular weight of 42 g/mol or 84 g/mol for both. 84 g/188 g = 0.4468, then 97 g * 0.4468 = 43.3 g mass of isocyanate groups in the 97 g isocyanate compound.
The 1-nylon polymer may be derived from the same diisocyanate as the difunctional isocyanate compound ¶[0088], so where the 1-nylon polymer is derived from XDI, there is one amide bond and one isocyanate bond per repeat unit, both of which are 42 g/mol out of the 188 g/mol weight of the repeat unit. Then 42 g/188 g= 0.2234 for each amide and NCO portion of the 1-nylon repeat unit. The highest amount allowable for the 1-nylon compound is 10,000 ppm or 1% based on the mass of the isocyanate compound, therefore out of 0.97% it is 0.217% each of NCO and amide groups. The mass ratio then becomes 0.217 amide/ (43.3+0.217) NCO = 0.217/43.52 = .00498 or about 50 ppm. The 50 ppm amide/NCO mass ratio reads on the mass ratio of claims 1, 2, 3, and 11.
The fact that Miyake discloses numerous types of polyisocyanates and compounds with an unsaturated bond which can be suitably selected to form an isocyanate composition does not render any particular combination of Miyake’s disclosed compounds less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Furthermore, the 1-nylon compound is the most favored option for the compound with the unsaturated bond ¶[0086] for the composition; and most of the aliphatic, alicyclic diisocyanates and triisocyanates posses the claimed isocyanatomethyl residue, therefore a majority of the preferred embodiments conform to the requirements of claims 1 and 2.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the difunctional isocyanate of XDI because Miyake teaches XDI is a suitable polyisocyanate for use in the composition and further selected the 1-nylon polymer as the compound with an unsaturated bond because it is the preferred compound for the isocyanate composition, with the motivation of producing the predictable result of an isocyanate composition for coatings as taught by Miyake.
Regarding claims 5 and 13, Miyake teaches that the isocyanate composition is reacted with a polyester polyol, which is an active hydrogen compound, to form a polymer for coatings, ¶[0272, 0341, 0344].
Regarding claims 7-8, Miyake teaches cured products of coatings and adhesives produced from the compositions ¶¶[0003, 0272]. Additionally, Miyake teaches polyurethanes are for foams ¶[0003] which commonly take form due to a mold and reads on the molded article of claim 8.
Allowable Subject Matter
Claims 9-10 and 14-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Miyake teaches adding active hydrogen compounds to the isocyanate composition, ¶¶[0270-0271], but does not teach the use of polythiol compounds nor the specific polythiols listed in claim 6. Miyake exemplifies polyols such as polyester polyols for reacting with the isocyanate composition and does not suggest using the composition for optical lenses, but instead used in coatings and adhesives, ¶[0272]. Therefore the addition of the polythiols of claim 6 would not be obvious to include and it further is not obvious to use the isocyanate composition in a molded article of an optical lens.
A relevant reference is US20200190249 to Yamasaki et al which discloses a xylylene diisocyanate composition and a compound of dichloromethylbenzyl isocyanate (DCI) for use in an optical lens, abstract and ¶[0221]. The isocyanate composition is derived from reacting xylylene diamine with hydrogen chloride and then phosgene to form the XDI and the DCI as a by-product ¶¶[0052, 0062+]. The composition, after purification, is mixed with an active hydrogen compound such as polythiols, including those claimed, ¶¶[0020, 0278]. Yamasaki does not teach the formation or inclusion of the 1-nylon type polymer in the optical lens composition.
Another relevant reference is US5302749 to Nagata et al, which is directed to a method of stabilizing isocyanate compounds to be used in compositions for optical lenses, abstract and Col. 1 line 15. Nagata teaches that diisocyanates such as XDI become turbid during storage due to formation of the 1-nylon polymer through self-polymerization, Col. 1 lines 59-62, which leads to unstable storage past 3 months. Therefore, because the 1-nylon polymer is undesirable for resin compositions for optical lenses as disclosed by Nagata, it would not be obvious for the skilled artisan to include a 1-nylon type polymer in an isocyanate composition for optical elements. There is no motivation to combine the teachings of Miyake and Yamasaki.
Conclusion
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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