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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-31 in the reply filed on December 10, 2025 is acknowledged. The traversal is on the ground(s) that the Group II claims 32-37 are directed to a product while claims 16-31 are directed to a process specially adapted for the manufacture of the product.
37 CFR 1.475(b) specifies that an international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Here the Group I and Group II claims fall under category (1) above and, moreover, under Art 27(1) {CT any designated office must accept an international application complying with the PCT requirement of unity of invention (Applicant argument/ remarks 12/10/2025 pp. 6-7).
Examiner counter argues that, while this list of categories is a necessary requirement for unity of invention analysis, ultimately unity of invention exists when there is a technical relationship among the claimed inventions involving one or more special technical features. The term "special technical features" is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art. See MPEP § 1850 I. The Requirement for “Unity Of Invention”.
Here there is lack of unity of invention as evident from an a posteriori (i.e. after taking the prior art into consideration) basis, since the technical feature common to both independent claims 16 and 32 is not a technical feature that defines a contribution over the prior art in view of Burkle (US 2009/0085235 A1) IDS 06/05/2024 and further in view of Kneeling (US 2,833, 680). See MPEP § 1850 II. Determination of “Unity Of Invention”
Applicant then argues that the examiner has not established a prima facie case of obviousness and analyzes the prior art references on a feature-by-feature basis (Applicant argument/ remarks 12/10/2025 pp. 7-12).
The examiner counter argues that these arguments are not applicable here because the Group I and Group II claims are being restricted due to the special technical feature of the claims being known in the prior art, and the search and consideration is confined to that determination. This a posteriori determination is solely for determining a lack of unity of invention leading to restriction. As the MPEP states: “the method for determining whether unity of invention exists is intended to be applied even before the commencement of the international search.” See MPEP § 1850 II. Determination of “Unity Of Invention”
The requirement is still deemed proper and is therefore made FINAL.
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) 16-17, 20, 27-28 and 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burkle (US 2009/0085235 A1) IDS 06/05/2024 in view of Kneeling (US 2,833,680) of record.
Regarding Claim 16, Burkle discloses a process for manufacturing an optical article (abs, paragraph [0011] results in an optically transparent form) comprising at least the following successive steps:
(a) producing a first optical functional element A (Fig. 1a, paragraph [0028] substrate – 15) having a first refractive index, named hereafter na (paragraphs [0010] [0032] substrate material and the coating material for the top layer should have different refractive index), by injecting in a mold of an injection molding device at least a first material Al (Fig.1a paragraph [0031] substrate material is introduced via injection channel – 16 into the cavity of the mold – 10), the first optical functional element A having at least a first main face and a second main face, said first main face including a pattern of optical microstructures (Fig. 1a paragraphs [0028] [0031] microstructures – 17 is reproduced on the surface of the substrate – 15); and
(b) applying directly onto said first main face of the first optical functional element A, a second optical functional element B via a first main face of said second optical functional element (Fig. 1a paragraph [0029] substrate – 15, where a coating material inundates the substrate – 15 produced in the mold – 10), having a second refractive index, named hereafter ns, that is distinct from na, (Fig. 1a paragraph [0032] substrate material and the coating material for the top layer should have different refractive index) by injecting into said mold at least a second material B1 (Fig. 1b paragraph [0031] coating material can be introduced via feed channel – 18 to completely fill the cavity gap – 20).
However, Burkle does not teach in its process a step between steps a) and b) comprising drying the first optical functional element where said drying step is adapted to or configured to obtain a first optical functional element having a moisture content lower than or equal to 500 PPM.
Kneeling teaches in a method for making optical laminations, that a coated plate is heated to drive off solvent content of the film formed on the plate and a second plate is laminated to the first and bonded under elevated temperature and pressure where the first step of spreading of a plastic resin solution onto a first plate by centrifugal means (Fig. 1 Col. 3 ll. 1-8, 48-54 Col. 5 ll. 20-30 plastic coated plate – 11). This centrifugal spreading operation is carried out where the humidity is less than 40% and where this step as well as any subsequent steps are adapted to eliminate moisture (Col. 5 ll. 1-9). This is followed by a next step where a slow heating is employed to drive off the solvent content and any excessive moisture is driven off (Fig. 1 Col. 5 ll. 13-20) which is then followed by the heating of a second plate to the same temperature prior to being laminated to the first plate where they are bonded (Fig. 1 Col. 5 ll. 40-58 plastic coated plate – 11, upper plate – 43). The final step ensures the removal of all traces of moisture. (Col. 6 ll. 15-24).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified Burkle with Kneeling whereby a process and optical article comprising a first optical function element with a first main face including a pattern of optical microstructures has a second optical functional element applied directly onto the first main face of the first optical functional element, as disclosed by Burkle, but would also include an additional step of drying the first optical functional element to having a lowered moisture content, as taught by Kneeling. This would be obvious to the one with ordinary skill because the deposition of moisture on the surface of the first optical function element will cause spoilage or damage to the laminated surfaces (Col. 1 ll. 40-43, Col. 5 ll. 4-9).
However, Kneeling is silent as to the moisture content being lower or equal to 500 PPM concentration.
But it would have been obvious to one having ordinary skill in the art at the time the invention was made whereby the first optical functional element of the combination of Burkle and Kneeling would have a drying step, as taught by Kneeling, configured to obtain a moisture content lower than or equal to 500 PPM since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. As stated above, one would be motivated to have an optimum value of moisture content below a threshold level of 500 PPM to prevent spoilage or damage to the laminated surfaces (Col. 1 ll. 40-43, Col. 5 ll. 4-9).
Regarding Claim 17, the combination of Burkle and Kneeling disclose all the limitations of claim 16, and, while both Burkle and Kneeling do not disclose wherein drying step (a1) is adapted to or configured to obtain a first optical functional element A having a moisture content lower than or equal to 200 PPM.
However, similar to the reasoning for claim 16, it would have been obvious to one having ordinary skill in the art at the time the invention was made whereby the first optical functional element of the combination of Burkle and Kneeling would have a drying step, as taught by Kneeling, configured to obtain a moisture content lower than or equal to 200 PPM since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. And as taught by Kneeling, one would be motivated to have an optimum value of moisture content below a threshold level of 200 PPM to prevent spoilage or damage to the laminated surfaces (Col. 1 ll. 40-43, Col. 5 ll. 4-9).
Regarding Claim 20, the combination of Burkle and Kneeling disclose all the limitations of claim 16, and Kneeling further discloses that the drying step (al) comprises at least a first drying step (a11) performed after step (a) and a second drying step (a12) performed before step (b) (Col. 8 ll. 14-21 spinning and drying steps were repeated).
Regarding Claims 27 and 28, the combination of Burkle and Kneeling disclose all the limitations of claim 16 , and while Burkle teaches that a difference between the first refractive index nA and the second refractive index nB can exist (paragraph [0010] materials for the substrate and the top layer may have a different refractive index after being cured), Burke does not disclose that this difference is equal to or higher than 0.01 nor, as in claim 28 dependent on claim 27, that this difference is equal to or higher than 0.04.
It would have been obvious to one having ordinary skill in the art at the time the invention was made for the difference between the first and the second optical functional elements to be equal to or higher than 0.01, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art One would have been motivated to find this range of the refractive index differences to be equal or higher than 0.01 or to be equal or higher than 0.04 because this difference creates a range imparting an effective antireflection effect (paragraph [0032] rendering the microstructure or nanostructure – 17 between the two optical functional elements to be effective for antireflection).
Regarding Claim 30, the combination of Burkle and Kneeling disclose all the limitations of claim 16, and, in at least one embodiment, Burkle discloses that it is possible to produce a coating on the second main face of the optical functional element A and/or on a second main face of the second optical functional element B, one or more of the following coatings: an impact-resistant primer layer, an anti-abrasion and/or anti- scratch coating, a hydrophobic coating, a hydrophilic coating and an antireflective coating (paragraph [0038] forming a top layer on one side of the substrate and then in a separate step adding a coating). This coating can be an anti-scratch coating (paragraph [0012] both sides can be made scratch-resistant)
Regarding Claim 31, the combination of Burkle and Kneeling disclose all the limitations of claim 16, but neither disclose that the optical article is an ophthalmic lens.
However, it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use, then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963).
Claim(s) 18-19 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Burkle (US 2009/0085235 A1) IDS 06/05/2024 and Kneeling (US 2,833,680) of record as applied to claim 16 above, and further in view of Nakai (JP2009181056A) with machine translation.
Regarding Claims 18 and 19, the combination of Burkle and Kneeling disclose all the limitations of claim 16, and while Kneeling discloses a drying step, it does not disclose a time lapse during which a drying step is performed.
Nakai teaches a method for manufacturing a retardation film which is a thermoplastic resin film that is used to control phase difference in a liquid crystal display device in order to widen the viewing angle (paragraphs [0002] [0003] where high levels of uniformity in optical properties are required). The thermoplastic polymer used is cellulose acylate that the drying time is more particularly preferably 2 hours or more, but Nakai also teaches that drying for more than 50 hours does not have much effect in further reducing the moisture content and there is a concern about thermal degradation of the resin (paragraph [0106]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the combination of Burkle and Kneeling with the teaching of Nakai whereby the drying step of drying the first optical functional element in order to lower moisture content lower than or equal to 500 PPM is performed during a time lapse in order to optimize the moisture content of the first optical functional element (paragraph [0106]).
However, Nakai does not disclose that its drying step is performed during a time lapse of at most 8 hours or at most 6 hours.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made for the drying step performed before step (b) of the combination of Burkle and Kneeling to be a time lapse of at most a 8 hour range as in claim 18 and at most a 6 hour range as in claim 19 dependent on claim 18, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Here the motivation would be, to the skilled artisan, that drying time optimizes the moisture content to obtain a desired moisture content but not over 8 or 6 hours so that the drying time is not extended unnecessarily or that there is danger of thermal degradation (paragraph [0106]).
Regarding Claims 25 and 26, the combination of Burkle and Kneeling disclose all the limitations of claim 16, and while Kneeling discloses a drying step, it does not disclose a time period during which a drying step is performed.
Nakai teaches a method for manufacturing a retardation film which is a thermoplastic resin film that is used to control phase difference in a liquid crystal display device in order to widen the viewing angle (paragraphs [0002] [0003] where high levels of uniformity in optical properties are required). The thermoplastic polymer used is cellulose acylate that the drying time is more particularly preferably 2 hours or more, but Nakai also teaches that drying for more than 50 hours does not have much effect in further reducing the moisture content and there is a concern about thermal degradation of the resin (paragraph [0106]).
However, Nakai does not disclose that its drying step is performed during a time period equal to or lower than 15 hours or equal or lower than 13 hours.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made for the drying step performed before step (b) of the combination of Burkle and Kneeling to be a time period of equal to or lower than 15 hours as in claim 25 and equal to or lower than 13 hours as in claim 26 dependent on claim 25, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Here the motivation would be that to the skilled artisan, drying time optimizes the moisture content to obtain a desired moisture content but not over equal or lower than 15 hours or equal or lower than 13 hours so that the drying time is not extended unnecessarily or that there is danger of thermal degradation (paragraph [0106]).
Claim(s) 21-24 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Burkle (US 2009/0085235 A1) IDS 06/05/2024 and Kneeling (US 2,833,680) of record as applied to claim 16 above, and further in view of Kimura (US 2020/0277123 A1).
Regarding Claim 21, the combination of Burkle and Kneeling disclose all the limitations of claim 16 but is silent as to the drying step being performed at a temperature below the glass transition temperature of the first material (A1).
Kimura discloses the formation of an injection molded polarizing lens (paragraph [0001]). A polarizing film is bonded to one side of a transparent protective film or sheet to form a laminated polarizing sheet (paragraph [0057]). This is heated after preliminary drying to form a three-dimensional shape along the surface of a mold (paragraphs [0074] [0075]). This heating temperature is selected to be lower than the glass transition temperature of the transparent plastic sheets (paragraphs [0076] [0077]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the combination of Burkle and Kneeling with the disclosure of Kimura whereby the drying step of the first material is performed at a temperature below the glass transition temperature of the first material.
One with ordinary skill would use this below glass transition temperature to prevent any undesirable color change in the first material (paragraph [0077]).
Regarding Claims 22, 23 and 24, the combination of Burkle and Kneeling disclose all the limitations of claim 16 but is silent as to the drying step being at a temperature below or equal to the heat deflection temperature of the first material A1, as in claim 22, at a temperature below at least 5 °C of the heat deflection temperature of the first material A1 as in claim 23 or at a temperature below at least 10 °C of the heat deflection temperature of the first material A1 as in claim 24.
Kimura discloses the formation of an injection molded polarizing lens (paragraph [0001]). A polarizing film is bonded to one side of a transparent protective film or sheet to form a laminated polarizing sheet (paragraph [0057]). This is heated after preliminary drying to form a three-dimensional shape along the surface of a mold (paragraphs [0074] [0075]). Kimura further teaches that in at least one set of polymers (polyamide resin) used as the material for the laminating polarizing sheet, it is desirable to have an optimum heat deflection temperature range where the heat deflection temperature is a reference to the amount of heat resistance (paragraph [0064]).
It would have been obvious to have combined the disclosure of Kimura with the combination of Burkle and Kneeling whereby the drying step is kept equal or below at least 5 °C or at least 10 °C the heat deflection temperature since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. One would have been motivated to have optimized this drying temperature because plastic materials with optimum heat deflection temperatures have a high enough heat resistance which results in less moisture absorption such that the moisture content is better controlled while drying (paragraphs [0080] [0081]).
Regarding Claim 29, the combination of Burkle and Kneeling disclose all the limitations of claim 16 but does not disclose the first A1 and the second material B1 comprises one or more of the followings components provided that nB is distinct from nA: polycarbonate (PC), poly (methyl methacrylate) (PMMA), cyclic olefin copolymer (COC), cyclic olefin polymers (COP), cyclic block copolymer (CBC), polyamide (PA), polymethyl-pentene (PMP), polyethylene naphthalene (PEN), polyethylene terephthalate (PET), co-polyester, poly(n-methyl methacrylimide) (PMMI), styrene/methyl methacrylate copolymer (SMMA), thermoplastic polyurethane (TPU).
Kimura discloses in its invention of the formation of an injection molded polarizing lens (paragraph [0001]), a laminated transparent polarizing sheet (paragraph [0057]). where possible materials include homopolymers of various (meth)acrylic acid esters such as polymethyl methacrylate (PMMA) (paragraph [0065]). One with ordinary skill would consider this preferable where it is desirable to have excellent heat resistance and low hygroscopic properties (paragraph [0065]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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, Abbas Rashid can be reached at 571-270-7457. 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.
/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748