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.
Claims 1-2, 5-8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi et al (US 20200017617).
Taniguchi discloses a copolymer comprising 18.5 parts of Macromonomer 1, 51.8 parts of EA, 9.7 parts of MM-Zn1 and 20 parts of FM-0711 (see Table 2, Entry A-1 at 0454).
where:
Macromonomer 1 contains Methyl (meth)acrylate (MMA) (see 0439);
Macromonomer 2 75 parts of MMA , 25 parts of 2 - methoxyethyl (meth) acrylate (2 – MTMA) (see 0441, meeting the limitations of claims 7 and 16) having molecular weight of 3800, meeting the limitations of claims 5 and 6 (see 0442);
MM – Zn 1 contains 85.4 parts of propylene glycol methyl ether ( PGM ), 40.7 parts of zinc oxide , 43.1 parts of methacrylic acid and 36.1 parts of acrylic acid (see 0434);
FM-0711 is polysiloxane block - containing polymerizable monomer (see 0445).
Thus, Taniguchi discloses claimed entities (A) and (B).
The reference further teaches monomer (c1) comprising such hydrophilic monomer as 2-hydroxyethyl (meth)acrylate (see 0215), which is the same monomer as used by Applicant.
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use 2-hydroxyethyl (meth)acrylate in Taniguchi’s composition, since it clearly named in the reference.
Claims 9-13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Imafuku (US 20160282516) in view of Taniguchi et al.
Imafuku discloses a method for fabricating a curable silicone-containing copolymer molded article and silicone-hydrogel contact (see Abstract).
Thew reference teaches a polymerization of 15 mass % of Macromer A, 30 mass % of 3Si-GMA, 5 mass % of HEMA and 50 mass %) of NVP (see Embodiment 1 at 0224),
where
Macromer A is obtained is acrylate terminated silicon containing oligomer (see Synthesis Example 3 at 0218), meeting the limitations of claim 9;
3Si-GMA is (3-methacryloxy-2-hydroxypropoxy)- propylbis(trimethylsiloxy)methylsilane (see 0207)
NVP is N-vinyl-2-pyrrolidone (i.e. hydrophilic monomer (b), see 0208)
HEMA is 2-hydroxyethyl methacrylate (monomer (g)), which is equivalently replaceable with 2-MEA: 2-methoxyethylacrylate (see 0210), meeting the limitations of claims 7 and 16.
In reference to claim 12, Imafuku discloses a method for producing a silicone hydrogel, which includes steps of post-processing with following polymerization, wherein a silicone hydrogel molded article obtained by hydrating the silicone-containing copolymer molded article (see claim 12).
Regarding claim 13, Imafuku teaches a hydrophobic cavity surface (see claim 13).
Imafuku fails to teach a macromonomer comprising 2-MEA. Instead, the reference teaches that the monomer above in a mixture of with other reagents.
Taniguchi discloses a copolymer comprising 18.5 parts of Macromonomer 1, 51.8 parts of EA, 9.7 parts of MM-Zn1 and 20 parts of FM-0711 (see Table 2, Entry A-1 at 0454)
where:
Macromonomer 1 contains Methyl (meth)acrylate (MMA) (see 0439);
Macromonomer 2 75 parts of MMA , 25 parts of 2 - methoxyethyl (meth) acrylate (2 – MTMA) (see 0441, meeting the limitations of claims 7 and 16) having molecular weight of 3800, meeting the limitations of claims 5 and 6 (see 0442).
Taniguchi teaches that it is possible to provide a macromer which enables formation of an organic solvent solution with a high solid content and a low viscosity and formation of a coating film with an excellent hardness (see 0012).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use a 2-MTMA containing macromonomer Imafuku’s composition in order to obtain a composition with high solid content and a low viscosity forming a coating film with an excellent hardness.
Claims 3, 15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Taniguchi as applied to claims 1-2, 5-8 and 16 above, and further in view of Tomida et al (WO 2020261502, published on 2020-12-30, cited herein with identical US 20220244428).
Taniguchi teaches methoxyethyl (meth) acrylate. However, the reference fails to teach methoxymethyl (meth) acrylate, methoxypropyl (meth) acrylate and methoxybutyl (meth) acrylate and their content in the composition.
Tomida discloses an ophthalmic medical device (see Abstract) comprising an (meth)acrylate terminated silicone - containing monomer (see 0166), a hydrophilic acrylate -containing monomer (see 0174).
Tomida teaches such hydrophobic monomers as methoxyethyl (meth) acrylate, methoxymethyl (meth) acrylate, methoxypropyl (meth) acrylate and methoxybutyl (meth) acrylate (see 0190), where the hydrogel composition for lens manufacturing has up to 40% wt. of the hydrophobic monomer content above (see 0193).
Note that methoxyethyl (meth) acrylate, methoxymethyl (meth) acrylate, methoxypropyl (meth) acrylate and methoxybutyl (meth) acrylate can be considered as homologs.
In general, "when chemical compounds have "very close" structural similarities and similar utilities, without more a prima facie case may be made, In re Wilder, 563 F.2d 457 (CCPA 1957); i.e., obviousness may be based solely upon structural similarity (an established structural relationship between a prior art compound and the claimed compound, as with homologs). See In re Duel, 51 F.3d 1552, 1559 (Fed. Cir. 1995). The necessary motivation to make the claimed compound, and thus the prima facie case of obviousness, arises from the reasonable expectation that compounds similar in structure will have similar properties. In re Gyurik, 596 F.2d 1012, 1018 (CCPA 1979).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to interchangeably use methoxyethyl (meth) acrylate, methoxymethyl (meth) acrylate, methoxypropyl (meth) acrylate and methoxybutyl (meth) acrylate, since they are structural homologs.
Tomida discloses that the content ratio of the hydrophobic monomer in the monomer components is appropriately set in accordance with physical properties that the ophthalmic medical device is desired to have and its applications (see 0193).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Tomida’s percentage of the hydrophobic monomer if appropriate, in order to achieve desired physical properties.
Allowable Subject Matter
Claim 4 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Seach for prior art does not result in a reference , which discloses amount of a structural unit (A) of 70% by mass or more.
The closest prior art is represented by Tomida et al.
However, the reference above discloses only up to 40 % mass of component (A) in the composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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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.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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