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 .
Response to Amendment
Applicant’s amendment filed on 06/24/2026 is acknowledged. In light of amendments, new grounds of rejection are set forth below. Claims 1, 2 and 4-6 are examined on the merits in this office action.
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 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, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai et al. (JP2019094468A cited in IDS) in view of Kishikawa et al. (US 2009/0011244 A1). It is noted that the disclosures of Kawai et al. are based on a machine translation of the reference (cited in IDS).
Regarding claims 1, 2 and 4, Kawai et al. disclose a coating composition comprising a (meth)acrylic resin (A), a polyol compound (B) and a polyfunctional isocyanate compound (C) (see Abstract). The amount of the polyol compound is 5 to 200 parts by mass based on 100 parts by mass of the (meth)acrylic resin (see paragraph 0065). The amount of the polyfunctional isocyanate compound is 5 to 100 parts by mass based on 100 parts by mass of the (meth)acrylic resin (see paragraph 0073).
The (meth)acrylic resin (A) comprises constitutional units derived from monomers (a-1) to (a-4) (see Abstract). The monomers (a-1), (a-2) and (a-4) are identical to monomers (a-1), (a-2) and (a-4) as presently claimed represented by formula (1), formula (2) and formula (3) respectively (see paragraph 0011). The monomer (a-3) is derived from hydroxyalkyl (meth)acrylate as presently claimed (see paragraph 0011). The proportion of (a-1) is 20 to 65 mass% (see paragraph 0033), (a-2) is 10 to 40 mass% (see paragraph 0034), (a-3) is 1 to 30 mass% (see paragraph 0036) and (a-4) is 1 to 10 mass% (see paragraph 0041).
Kawai et al. disclose a cured film is prepared from the coating composition (see paragraph 0086). The cured film provides anti-fogging and moisture (water) absorbing properties (see Abstract and paragraphs 0015, 0016, 0025). Therefore, the cured film reads on a water absorbent layer obtained from the coating composition. The object on which the cured film is coated includes eyeglass lenses, i.e. plastic spectacle lens (see paragraph 0087). Given that Kawai et al. disclose that the cured film provides anti-fogging and water absorbing properties and a plastic spectacle lens is coated with the cured film, Kawai et al. disclose an anti-fogging plastic spectacle lens comprising water absorbent layer (cured film) as presently claimed.
While Kawai et al. disclose the polyol compound, Kawai et al. do not disclose the polyol compound is epoxide having one or more hydroxyl groups.
Kishikawa et al. disclose an anti-fogging article comprising a substrate and a water-absorptive crosslinked resin layer comprising a crosslinking component (see Abstract and paragraph 0042). The crosslinking component includes a polyepoxide compound such as a polyglycerol polyglycidyl ether having multiple glycidyl groups (epoxy groups) and multiple hydroxyl groups (see paragraphs 0047, 0049 and 0050). Therefore, the polyglycerol polyglycidyl ether reads on the polyol compound having plurality of epoxy groups and plurality of hydroxyl groups. The polyglycerol polyglycidyl ether provides a crosslinked resin excellent in anti-fogging performance (see paragraph 0051).
In light of motivation for using polyglycerol polyglycidyl ether disclosed by Kishikawa et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use polyglycerol polyglycidyl ether as the polyol compound in Kawai et al. in order to improve anti-fogging performance of the cured film (water absorption layer), and thereby arrive at the claimed invention.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai et al. (JP2019094468A cited in IDS) in view of Kishikawa et al. (US 2009/0011244 A1) as applied to claim 1 above, further in view of Ishikawa et al. (US 2014/0242380 A1 cited in IDS).
Regarding claims 5 and 6, Kawai et al. in view of Kishikawa et al. disclose the anti-fogging plastic spectacle lens as set forth above. Kawai et al. in view of Kishikawa et al. do not disclose the anti-fogging plastic spectacle lens further comprising a water repellent layer as presently claimed.
Ishikawa et al. disclose an antifog optical article comprising a water repellent layer on a surface of a water absorbing layer, wherein an optical article includes a spectacle lens (see Abstract and paragraph 0018). The water repellent layer consists primarily (main component) of at least one of amino-modified silicone and mercapto-modified silicone oil having a functional group equivalent of 1000 to 10000 (see Abstract and paragraph 0033). The water repellent layer ensures visibility even when condensation occurs by the exceeding water-absorbing capacity of the water absorbing layer (see paragraphs 0004 and 0010).
In light of motivation for using water-repellent layer disclosed by Ishikawa et al. as described above, it therefore would have been obvious to one of the ordinary skill in the art to use water-repellent layer of Ishikawa et al. on a surface of the water-absorption layer of Kawai et al. in view of Kishikawa et al. in order to ensure visibility even when condensation occurs by the exceeding water-absorbing capacity of the water absorbing layer and improve antifog performance, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 06/24/2026 have been fully considered but they are not persuasive.
Applicants argue that amended claim 1 is distinguishable over the applied prior art because paragraph [0153] of Kishikawa discloses that the amount of polyepoxide (preferably polyglycerol polyglycidyl ether) included in the composition of the asserted water absorbent layer is 40 to 80 mass%. As such, if a person of ordinary skill in the art were to consider using the polyglycerol polyglycidyl ether disclosed in Kishikawa as the polyol compound (B) (asserted epoxide (C)) in the composition of the water absorbent layer disclosed in Kawai, the amount would have been 40 to 80 mass%. Therefore, modifying Kawai based on the teachings of Kishikawa, would not have resulted in the amount of epoxide (C) contained in the composition of the water absorbent layer being not less than 1 part by mass and not more than 10 parts by mass relative to 100 parts by mass of a combination of the (meth)acrylic-based resin (A) and the polyfunctional isocyanate compound (B), as now recited in claim 1.
As set forth above, Kawai et al. already disclose a coating composition comprising a polyol compound (B) in amount of 5 to 100 parts by mass based on 100 parts by mass of the (meth)acrylic resin, wherein a cured film prepared from the coating composition provides ant-fogging and moisture absorbing properties. However, Kawai et al. do not disclose the polyol compound is epoxide having one or more hydroxyl groups. Kishikawa et al. disclose polyglycerol polyglycidyl ether having plurality of epoxy groups and plurality of hydroxyl groups, i.e. epoxide polyol that provides anti-fogging performance. Therefore, Kishikawa has been properly combined with Kawai.
While the examiner is using polyglycerol polyglycidyl ether of Kishikawa as a specific polyol in Kawai, the examiner is not using the amount of polyglycerol polyglycidyl ether disclosed in Kishikawa. Further, the motivation for using polyglycerol polyglycidyl ether of Kishikawa is not based on amount of polyglycerol polyglycidyl ether (see paragraph 0051).
It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicants argue that Kishikawa fails to overcome the deficiencies of Kawai.
However, as set forth above, Kishikawa does overcome the deficiencies of Kawai by properly teaching specific polyol into Kawai. Given that Kawai discloses the use of polyol, given that Kishikawa discloses the use of specific polyol with motivation based on that specific polyol, and given that Kawai and Kishikawa are both drawn to anti-fogging articles, the combination is proper.
Applicants argue that Ishikawa fail to overcome the deficiencies of Kawai.
However, note that while Ishikawa do not disclose all the features of the present claimed invention, Ishikawa is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely water-repellant layer, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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