DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1, 3-8, 10 and 11 are pending as amended on 7/20/2026.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, and species (b) wherein the polycarbonate is a copolymer comprising structural units according to instant formula (I), in the reply filed on 7/20/2026 is acknowledged. The traversal is on the ground(s) that the term “polythiocarbonate” in Takada is ambiguous, and one would not understand a polythiocarbonate formed from Takada’s disclosed dithiol monomer to have units according to instant formula (I). This is not found persuasive because the simplest possible polythiocarbonate structural unit which could be formed from a monomer as taught by Takada (i.e., units having a structure wherein the H is removed from each SH group, and wherein each unit is connected to an adjacent unit with a (C=O) moiety) has a structure according to instant formula I. Therefore, a polycarbonate according to instant formula (I) would have been immediately envisaged from Takada’s disclosure of a “polythiocarbonate.” The requirement is still deemed proper and is therefore made FINAL.
Claims 6-8, 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claim 3 is objected to because of the following informalities: In claim 3, the definition of M1 includes “a linear or linear alkylene group…” The second instance of --linear-- is clearly a typographical error and should be changed to --branched--. Appropriate correction is required.
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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al (JP 2009221433-A; included machine translation cited herein).
As to claim 1, Suzuki discloses a lens substrate comprising a composition of a thermoplastic resin containing structural units according to formula (I) below, which is formed from a diol compound and/or diothiol compound as a raw material monomer (structure copied from original document, see also translation pp 1 and 7).
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Suzuki discloses that the raw material monomer preferably has a structure according to a formula (4) (translation p 7) and discloses several examples thereof. See the table copied below from p 12 of the original document:
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At least monomers MA-8 through MA-10 and monomers MA-18 through MA-20 above are dithiol or diol compounds which, when polymerized, result in moieties having structures according to the moieties derived from a diol or dithiol in the polycarbonate structural unit according to instant formula (I).
Suzuki teaches resin synthesis via a condensation reaction between the monomers described above and a compound having two or more reactive groups capable of condensation reaction with the above compound. Suzuki names several examples of such compounds, including phosgene (p 8, middle). Suzuki further teaches that the resin to be synthesized is a condensation resin, and names polycarbonate resin as an example of a “more preferable” resin (p 10). One would further recognize that Suzuki’s example resins on p 23 of the original document show polycarbonates comprising structural units wherein diol monomer residues are connected via carbonate (O-C(=O)-O) linkages. Suzuki fails to show (via chemical drawing) a polycarbonate repeating unit according to instant formula (I). However, one having ordinary skill in the art would have recognized that the reaction of phosgene with a diol according to Suzuki’s MA-18-20 produces a polycarbonate having structural units according to instant formula (I) wherein X1,2 are C2 alkylene and a and b are 1, and, that reaction of phosgene with a dithiol according to Suzuki’s MA-8-10 produces a polycarbonate having structural units according to instant formula (I) wherein a and b are 0.
When forming a composition for a lens substrate as taught by Suzuki, the person having ordinary skill in the art would have been motivated to select either of the two preferred types of condensation resins named by Suzuki in order to provide properties suited for a given lens application, including a polycarbonate resin (e.g., formed via reaction of phosgene with a diol or dithiol monomer compound). Additionally, one having ordinary skill in the art would have been motivated to select any appropriate monomer compound from Suzuki’s exemplified compounds on p 12, including MA-8, MA-9, MA-10, MA-18, MA-19 or MA-20, in order to tailor the properties of a resin for a given lens application. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polycarbonate resin by reaction of a diol or dithiol compound with phosgene, as disclosed by Suzuki, from any of Suzuki’s monomers shown on p 12, including MA-8, MA-9, MA-10, MA-18, MA-19 or MA-20, thereby arriving at a polycarbonate which comprises structural units according to instant formula (I).
As to the recitation that the structural unit of formula (I) has a content of 5-100 mol% of all structural units of the polycarbonate:
Suzuki teaches including a monomer having a functional group capable of forming a chemical bond with inorganic particles (p 9, bottom of page) and teaches that the average number of functional groups is preferably 1 to 5 per polymer chain (p 10, upper half). The number average molecular weight of the entire thermoplastic resin is 10,000 to 500,000 (p 10, last three lines). In a polycarbonate having a Mn of 10,000 to 500,000 with units derived from a diol or dithiol according to Suzuki’s formula (2) and a comonomer capable of bonding to inorganic particles, wherein the content of the comonomer is sufficient to provide only 1 to 5 of the comonomer units per polymer chain, the content of units derived from Suzuki’s diol/dithiol of formula (2) (i.e., units according to instant formula (1) must be substantially higher than 5 mol% and must be less than 100 mol%, and therefore, must be within the claimed range of 5 to 100 mol%.
As to claim 3, Suzuki teaches that a diol or dithiol compound not represented by the general formula (2) can be used if the performance of the resin is not impaired (translation p 8). Suzuki names and shows examples of such comonomers; see translation p 8 (top half) and see structures of comonomers on p 14 of the original document. Polycarbonate structural units derived from several of the diol compounds shown on p 14 meet instant formula (III) wherein c and d are 0, such as MD-10, 11, 12, 13 and 16. Suzuki further teaches the ethylene oxide adducts of the shown compounds (translation p 8), which result in polycarbonate units according to instant formula III wherein c and d are 1 and Y1,2 are C2 alkylene.
Considering Suzuki’s teaching that the comonomer should be used as long as performance of the resin is not impaired, the person having ordinary skill in the art would have been motivated to include one of Suzuki’s comonomers not represented by formula (2) in an amount which is less than the amount of the monomer represented by formula (2), in order to sufficiently obtain the desired properties associated with Suzuki’s formula (2) monomer. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed Suzuki’s polycarbonate from reaction of phosgene and a dithiol/diol monomer represented by formula (2) by further including one of Suzuki’s comonomer diols (MD-10, 11, 12, 13, 16 or the ethylene oxide adduct thereof) in an amount less than the amount of MA-8, MA-9, MA-10, MA-18, MA-19 or MA-20, thereby arriving at a polycarbonate as presently recited wherein a structural unit according to instant formula (I) has a content substantially above the presently recited lower endpoint of 5 mol%, and a content less than the upper endpoint of 100 mol%, based on total repeating structural units of the polycarbonate.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka et al (US 2015/0285954) in view of Takada et al (JP 2002338540-A, previously provided machine translation cited herein).
As to instant claims 1, 3 and 4, Ishizuka discloses a polycarbonate resin having a structural unit represented by (A):
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wherein X is C1-4 alkylene [0036]. The unit of formula (A) taught by Ishizuka has a structure according to instant formula IV recited in claim 3.
Ishizuka teaches a polycarbonate resin which further has a unit represented by (B), wherein the R groups can be, e.g., hydrogen [0038]:
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The polycarbonate is made by reacting dihydroxy compounds (monomers) (C) (providing units according to (A)) and (D) (providing units according to (B)) with a carbonic acid diester, as taught in [0039-40], with diphenyl carbonate (DPC) taught as a preferred carbonic acid diester [0075].
Ishizuka’s structural unit (B) shown above has a formula according to instant formula (I) recited in claim 1 wherein “a” and “b” are 0, except that Ishizuka’s unit has -O- moieties (because it is derived from a monomer compound having OH groups) where instant formula (I) has -S- moieties (because it is derived from monomer compound having SH groups).
Takada teaches that compounds having a fluorene skeleton and a hydroxyl functional group have high heat resistance and refractive index, and are used as a resin material such as polycarbonate, but for high performance heat resistant resins and optical materials, further improvements are desired in terms of heat resistance and refractive index [0002]. Takada discloses a compound having the following formula:
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(see original document p 1), and exemplifies a compound wherein “n” is zero [0033]::
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Takada teaches that the compound has a high heat resistance and a high refractive index because it has a sulfur atom in the molecular skeleton, and can be used as a raw material for polythiocarbonate [0027-28].
Considering Takada’s disclosure, the person having ordinary skill in the art would have been motivated to utilize a fluorene monomer having thiol (SH) groups instead of a fluorene monomer having hydroxy (OH) groups when preparing a polycarbonate for optical applications in order to improve the heat resistance and increase the refractive index of the obtained polycarbonate. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polycarbonate having structural units (A) and (B) from compounds (C) and (D), as taught by Ishizuka, by substituting Ishizuka’s compound (D) for Takada’s analogous dithiol compound in order to increase the refractive index and heat resistance of Ishizuka’s polycarbonate, thereby arriving at the presently recited polycarbonate having structural units according to instant formula IV as recited in claim 3 and structural units according to instant formula (I) wherein “a” and “b” are zero, as recited in claim 1.
As to the content of the structural unit of formula (I) recited in claim 1, and further as to the content of units according to instant formulas (I) and (IV) recited in claim 4:
Ishizuka teaches that the polycarbonate resin has a molar ratio (A/B) in the range of 20/80 to 99/1 [0038], which corresponds to A units having a content of 20-99 mol%, and B units having a content of 1 to 80 mol% of all structural units of the polycarbonate. Ishizuka’s range of 1-80 mol% B units substantially overlaps the range of 5 to 100 mol% formula (I) units recited in claim 1, as well as the range of 30-85 mol% formula (I) units recited in claim 4. Ishizuka’s range of 20-99 mol% A units substantially overlaps the range of 15-70 mol% formula (IV) units recited in claim 4.
When forming a polycarbonate of binaphthalene A units and B units derived from Takada’s dithiol compound, as suggested by modified Ishizuka, it would have been obvious to the person having ordinary skill in the art to have selected any appropriate A/B molar ratio within Ishizuka’s disclosed range, including a molar ratio corresponding to contents of structural units according to instant formulas (I) and (IV) within the presently claimed ranges, in order to achieve a desired balance in properties associated with each type of monomer. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claim 5, modified Ishizuka suggests a polycarbonate according to claim 1, as set forth above. Ishizuka teaches that there has been a demand for the development of resins with a higher refractive index, in terms of reduction in the size and weight of final products [0003]. Ishizuka teaches that the polycarbonate resin has a refractive index of preferably 1.635 to 1.695, and is suitable as a material for optical lenses because of its high refractive index [0057]. When producing a polycarbonate wherein Ishizuka’s (B) units are substituted with units derived from Takada’s dithiol compound, one having ordinary skill in the art would have had a reasonable expectation of success in achieving a high refractive index within Ishizuka’s disclosed range, considering Takada’s disclosure that the dithiol compound has a high refractive index because of the sulfur atom. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriately high refractive index value within Ishizuka’s disclosed range of 1.635 to 1.695 in order to reduce the size and weight of the final product, including a refractive index within the presently claimed range of 1.673 to 1.794.
Ishizuka further teaches a Tg within a range of 100 to 160 C, and teaches that if Tg is lower than 90 C, the temperature range available for use is too narrow, while if higher than 170 C, the melt temperature of the resin becomes higher and decomposition/coloration is more likely to occur [0065]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any Tg within Ishizuka’s disclosed range of 100-160 C, including a temperature within the presently claimed range of 135-200 C, in order to obtain a desired balance between availability of temperatures for use, and increase in melt temperature. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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