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 .
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.
Claim(s) 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al. US 2021/0147621 A1.
Yamada discloses thermoplastic polycarbonate resins (para [0107]) with high refractive index, low birefringence, and balanced heat resistance and moldability (para [0001]).
Regarding claims 1-4, 7 and 15, Yamada teaches (reference claim 25), polycarbonate resin which includes at least one repeat units of formulas (8) to (6) as shown below:
PNG
media_image1.png
101
358
media_image1.png
Greyscale
PNG
media_image2.png
177
392
media_image2.png
Greyscale
PNG
media_image3.png
198
364
media_image3.png
Greyscale
Wherein R13 to R18 can be hydrogen atoms and Y is a divalent group and can be a isopropyl group (Yamada para [0220]) (such that formula (8) is a polycarbonate repeat unit derived from bisphenol A, BPA)
Yamada’s use of the phrase at least one, implies that all the above three repeat units (8), (7) and (6) can be incorporated into the polycarbonate backbone, which meets the claimed first, second and third units of Chemical Formula 1, 2 and 3 respectively,
Yamada’s structure (8) (or repeat unit derived from BPA) corresponds to applicant’s Chemical Formula 1 with, X1 and X2 as O atoms, R1 to R4 as hydrogen, R11 and R12 as C1 alkyl group, R101 and R102 as hydrogen with both r101 and r102 as 2, both m and n as 0, p=1.
Yamada’s structure (7) (or unit derived from 9,9-bis[4-(2-Hydroxyethoxy)phenyl]fluorene (BPEF), Yamada para [0217]) meets applicant’s Chemical Formula 2, with X5 to X8 as O, L1 and L2 as substituted C6 arylene group, with R13 and R14 as hydrogen, both r13 and r14 as 4, with Z3 and Z4 as C2 alkylene group, both m’ and n’ as 1, p’=1 (and meets instant claim’s 7 Chemical Formula 2-2, where both R28 and R27 are hydrogen and with both r27 and 28 as 4).
Yamada’s structure (6) (or unit derived from 2,2'-bis(2-Hydroxyethoxy)-1,1 '-binaphthyl, para [0219]) reads on the required Chemical Formula 3, with X9 to X12 as O, with Z5 and Z6 as C2 alkylene group, R15 and R16 as hydrogen, both r15 and r16 as 2, both m’’ and n’’ as 1, p’’=1.
Yamada is silent on the high shear viscosity measurements of the polycarbonate resin. However, obvious polycarbonate of Yamada derived from the required repeat units corresponding to Chemical Formula 1, 2 and 3, would be expected to possess the high shear viscosity property as defined (instant claims 1, 4 and 15). Applicant’s attention is directed to the case laws: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990.
Regarding claim 5, Yamada teaches (reference claim 28) refractive index range of 1.660 to 1.730. Yamada provides several examples of polycarbonate resins (page 22, Table 3) where the refractive index values are measured at 589 nm (nD, para [0175]), are between 1.67 and 1.75. As discussed, when addressing claims 1-4, Yamada’s polycarbonate resin generated from the required units, would be expected to meet the claimed refractive index values measured at 587nm.
Regarding claim 6, Yamada does not address the melt index of the polycarbonate resins. However, since the prior art compositions are being utilized for similar end products, such as optical lens (Yamada para [0251] and instant specification, page 11, Advantageous effects, lines 22-25), it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to optimize the polycarbonate compositions such that they exhibit similar melt index to achieve efficient moldability and processability.
Regarding claim 8, Yamada teaches (para [0082]) fluorene-based diols which result in repeat units corresponding to Chemical Formula 2. Yamada notes that two or more different type of fluorene-based monomers may be used in combination. Yamada discloses Example 1 (page 20, Table 1), where the repeat units are derived from 9,9-bis[4-(2-Hydroxyethoxy)phenyl]-2,7-diphenylfluorene (BPDP2) (para [0215]) and 9,9-bis[4-(2-Hydroxyethoxy)phenyl]fluorene (BPEF) both of which correspond to two second units of Chemical Formula 2.
Per Yamada’s disclosure, inclusion of additional polycarbonate repeat unit generated from 9,9-bis[4-(2-Hydroxyethoxy)phenyl]-2,7-diphenylfluorene (BPDP2) along with BPEF, to the polycarbonate resin, as discussed when addressing claim 1, would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention.
Regarding claims 9 and 11, Yamada discloses diol monomers (paras [0220], [0217], and [0219]): 2,2-bis( 4-Hydroxyphenyl)propane (BPA), 9,9-bis[4-(2-Hydroxyethoxy)phenyl]fluorene (BPEF) and 2,2'-bis(2-Hydroxyethoxy)-1,1'-binaphthyl (BHEB), which correspond to the required compounds and read on Chemical Formula 1a, 2a and 3a respectively.
BPA meets Chemical Formula 1a, with both X1 and X2 as O, R1 to R4 as hydrogen, both R11 and R12 are C1 alkyl group, both R101 and R102 as hydrogen, with both r101 and r102 as 2, and both m and n as 0.
BPEF meets Chemical Formula 2a, with X5 to X8 as O, L1 and L2 as C6 arylene group, Z3 and Z4 as C2 alkylene, with R13 and R14 as hydrogen, both r13 and r14 as 4, both m’ and n’ as 1.
BHEB meets Chemical Formula 3a, with X9 to X12 as O, with Z5 and Z6 as C2 alkylene group, R15 and R16 as hydrogen, both r15 and r16 as 2, both m’’ and n’’ as 1.
As discussed, when addressing claims 1-4, Yamada renders obvious the polycarbonate resin generated from the three type of repeat units (derived from Chemical Formula 1a, 2a and 3a) and the high shear viscosity as required.
Yamada teaches a method of producing polycarbonate resin, where the diol components are polymerized in the presence of a carbonate ester with diphenyl carbonate as the preferred polycarbonate precursor (para [0110]-[0111]). Diphenyl carbonate meets Chemical Formula A, with both Rb1 and Rb2 as phenyl groups and both a1 and a2 as 1 (instant claim 11).
Regarding claim 10, Yamada provides Example 27 (Table 3, page 22) where three diols at 50mol%, 25mol% and 25 mol% are utilized to create a polycarbonate resin. Yamada notes that the invention is not limited by the examples (para [0167]).
Per Yamada’s disclosure, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized diols corresponding to the Chemical Formula 1a, 2a, and 3a (as discussed when addressing claim 9) at 50 mol%, 25 mol% and 25 mol% respectively, similar to Example 27, for the same application of generating a polycarbonate with high refractive index, low birefringence, and balanced heat resistance and moldability (para [0001])
Regarding claims 12-14, Yamada teaches optical lens derived from polycarbonate resin, meeting the claimed requirement (reference claims 31 and 32 and para [0022]).
Regarding claim 16, Yamada teaches (para [0062]) Abbe’s number values of 15 to 18, which are calculated at wavelengths 486 nm, 589 nm and 656 nm. Yamada’s polycarbonate resin as discussed when addressing claims 1-4 above, would be expected to meet the Abbe’s number as defined by the claim.
Regarding claim 17, Yamada teaches polycarbonate resin with Tg of 140 to 185 oC, meeting the claimed requirement (reference claim 27).
Regarding claim 18, Yamada teaches Example 1 (para [0192]) polymerization of a polycarbonate resin where two diols (BPDP2 at 0.05 mol and BPEF at 0.05) with total 0.1 mol amount are reacted with 0.1 mol of diphenyl carbonate (DPC), leading to 100 parts by mol of polycarbonate precursor (DPC) with respect to 100 part by mol of total diols.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized DPC at the same level as Example 1 with respect to 100 parts by mol of total diols corresponding to the Chemical Formula 1a, 2a, and 3a (as discussed when addressing claim 9).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 and 5 of copending Application No. 18/703,095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach a polycarbonate resin with the required repeat units corresponding to Chemical Formula 1, 2 and 3.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, 8-11 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, and 7-10 of copending Application No. 18/729,793 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach a polycarbonate resin and the method of preparing the polycarbonate with the required repeat units corresponding to Chemical Formula 1, 2 and 3, with overlapping shear viscosity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi (Riviere) Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.M.D./
Examiner
Art Unit 1765
/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765
Prosecution Insights