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. This Office Action is responsive to the amendment filed on 02/04/2026.
3. Claims 1, 3-10 are pending. Claims 1, 3-10 are under examination on the merits. Claims 1, 5 are amended. Claim 2 is cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive, thus claims 1, 3-10 stand rejected as set forth in Office action dated 11/17/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-6, 9-10 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable Shigematsu et al. (JPWO2014054710 A1, machine translation, hereinafter “’710”).
Regarding claim 1: ‘710 teaches an optical lens (Page 2/15, [0002]), comprising a thermoplastic resin that includes structural units derived from monomers represented by general formula (1), and general formula (3).
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‘710 teaches 9,9-bis(4-hydroxy-3-methylphenyl)fluorene (BCFL, BCF), and 9,9-bis( 4-(2-hydroxyethoxy)phenyl) fluorene (BPEF) (Page 5/15, Fluorene compound, lines 36-52) are used as fluorene compounds that have a structural unit represented by general formula (1), and that α,α'-bis(4-hydroxyphenyl)-m-diisopropyl benzene (bisphenol M) (BPM) (Page 6/15, lines 12-19) is used as a dihydroxy compound that has a structural unit represented by general formula (3). The examples a polymer PC(2) having a molar ratio of 50:50 BCF (BCFL) as a constituent unit (C) and BPM as a constituent unit (A) (Page 11/15, PC(2), lines 1-13), and a polymer PC(3) having a molar ratio of 80:20 BPEF as a constituent unit (B) and 2,2-bis(4-hydrxyphenyl) propanoic (BPA) as a constituent unit (A) (Pages 11-12/15, PC(3), lines 1-10). ‘710 does not expressly teach an example of a copolymer of BPEF and BPM.
Unit (A) Unit (B)
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Unit (C)
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However, 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 it is held that it is prima facie obvious to combine two compositions such as PC(2) BCF+ BMP & PC(3) BPEF+ BPA, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 3: ‘710 teaches the optical lens (Page 2/15, [0002]), wherein the percentage of the constituent unit (A) in all constituent units in the thermoplastic resin is 5% to 50% by mole (Page 6/15, lines 12-19; Page 11/15, PC(2), lines 1-13).
Regarding claim 4: ‘710 teaches the optical lens (Page 2/15, [0002]), wherein the percentage of the constituent unit (B) in all constituent units in the thermoplastic resin is 11% to 95% by mole (Page 5/15, Fluorene compound, lines 10-14; Page 11/15, PC(2), lines 1-13).
Regarding claim 5: ‘710 teaches the optical lens (Page 2/15, [0002]), wherein the percentage of the constituent unit (C) in all constituent units in the thermoplastic resin is 0% to 50% by mole (Page 5/15, Fluorene compound, lines 10-14; Page 11/15, PC(2), lines 1-13).
Regarding claim 6: ‘710 teaches the optical lens (Page 2/15, [0002]), wherein the thermoplastic resin has Tg of 120°C to 160°C (i.e.,156°C, Page 11/15, PC(2), lines 1-13; i.e., 145°C, Pages 11-12/15, PC(3), lines 1-10).
Regarding claims 9-10: The disclosure of ‘710 is adequately set forth in paragraph above and is incorporated herein by reference. ‘710 teaches the thermoplastic resin composition having the fluorene skeleton has high transparency, molding fluidity, molding stability, and moist heat stability, it is possible to mold a thin optical member which has been conventionally difficult to perform injection molding, and it is possible to provide a thinner optical member (Page 13/15, [0006], Table 1). The thermoplastic resin composition having the fluorene skeleton is particularly suitable for a lens such as a camera lens for a portable camera, a pickup lens microphone lower Rayleigh lens, a projector lens, a Fresnel lens, or the like. ‘710 does not expressly teach the thermoplastic resin has a mass change percentage of 0.47% or less, and a dimensional change percentage of 0.060% or less.
However, since ‘710 discloses the identical or substantially identical optical lens comprising a thermoplastic resin as the recited claimed, one of ordinary skill in the art at the time of invention was made, would have expected that the thermoplastic resin properties would be the same as claimed (i.e., the thermoplastic resin has a mass change percentage of 0.47% or less, and a dimensional change percentage of 0.060% or less). If there is any difference between the product of ‘710 and the product of the instant claims the difference would have been minor and obvious. “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).
"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)
8. Claims 7-8 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Shigematsu et al. (JPWO2014054710 A1, machine translation, hereinafter “’710”) as applied to claim 1 above, and further in view of Kato et al. (US Pub. No. 2017/0044312 A1, hereinafter “’312”).
Regarding claims 7-8: The disclosure of ‘710 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘710 does not expressly teach the thermoplastic resin has a refractive index (nD) of 1.600 to 1.660, and an Abbe number of 21.0 to 27.0.
However, ‘312 teaches a resin produced by polycondensation, which comprises a structural unit having a specific binaphthyl skeleton and a structural unit having a specific fluorene structure, and a resin composition (Page 1, [0001]). ‘710 teaches the refractive index (nD) of the polycarbonate resin at 23° C at a wavelength of 589 nm is preferably 1.640 to 1.680, more preferably 1.645 to 1.675, and even more preferably 1.650 to 1.670 and is suitable as an optical lens material (Page 10, [0095]). ‘710 teaches the Abbe number (ν) of the polycarbonate resin is preferably 24 or less, more preferably 23 or less, and even more preferably 22 or less (Page 10, [0096]) with benefit of providing a high refractive index and a low Abbe number, and in addition, has effects of reducing a birefringence value and reducing optical distortion of an optical molded body (Page 7, [0063]).
In an analogous art of the optical lens comprising a thermoplastic resin, 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 thermoplastic resin by ‘710, so as to include thermoplastic resin comprising structural units derived from a different monomers as taught by ‘312, and would have been motivated to do so with reasonable expectation that this would result in providing a high refractive index and a low Abbe number, and in addition, has effects of reducing a birefringence value and reducing optical distortion of an optical molded body as suggested by ‘312 (Page 7, [0063]).
Response to Arguments
9. Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that a machine translation JP'710 has a black stripe across the top that obscures some of the disclosure. Thus, some disclosure is obscured, and therefore unavailable to the Applicant, and not in the written record of this application.
The examiner has provided a clean copy of the machine translation to facilitate Applicant's review of the document relied upon in the Office Action.
In response to the Applicant’s argument that Applicant submits that the Office Action's citation to WO'710 (Page 5/15, lines 10-14) appears incorrect. Applicant shall assume that the Office Action intended to refer to WO'710 (Page 5/15, lines 36-52 with the section entitled) as "<Fluorene compound>."
The examiner has corrected the Office Action's citation (Page 5/15, lines 36-52).
In response to the Applicant’s argument that that apparently nothing in WO'710 discloses or suggests using two or more fluorene monomers. WO'715 only describes the use of a single fluorene compound, and does not disclose or suggest that mixtures of fluorene compounds can be used in a single thermoplastic resin.
The examiner respectfully disagrees.WO’710 teaches the examples a polymer PC(2) having a molar ratio of 50:50 BCF (BCFL) as a constituent unit (C) and BPM as a constituent unit (A) (Page 11/15, PC(2), lines 1-13), and a polymer PC(3) having a molar ratio of 80:20 BPEF as a constituent unit (B) and 2,2-bis(4-hydrxyphenyl) propanoic (BPA) as a constituent unit (A) (Pages 11-12/15, PC(3), lines 1-10). WO’710 further teaches a thermoplastic resin containing a constituent (A) derived from a monomer represented by the general formula (1) may be used alone or in combination of two or more (Page 6/15, lines 12-19; Page 11/15, PC(2), lines 1-13). 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 it is held that it is prima facie obvious to combine two compositions such as PC(2) [BCF+ BMP] & PC(3) [BPEF+ BPA], each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
10. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Examiner Information
11. 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
02/26/2026
bijan.ahvazi@uspto.gov