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 without traverse of Group I, Claims 1-6 in the reply filed on 06/25/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/05/2024, 07/16/2025 and 04/16/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
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 and 2 are rejected under 35 U.S.C. § 103 as being unpatentable over Gupta et al. (US 5,531,940) in view of Iyama et al. (JP 2012000915, Examiner has provided a machine translation) in view of Yamamoto et al. (JP 2012017363, Examiner has provided a machine translation).
Regarding claim 1, Gupta discloses a method of producing an optical member (Figure 4B), comprising:
a mold substrate (Figure 4B depicts: 43, mold) and a resin substrate (Figure 4B depicts: 41, lens preform) that are arranged to face each other (Figure 4B depicts: 43, mold and 41, lens preform, arranged to face each other as their respective faces point toward 46, layer) with a predetermined spacing therebetween (Col. 5, lines 28-37 teach: casting resin flows within and fills the space between the mold and the preform lens);
and
curing the polymerizable composition injected into the space, thereby obtaining a cured material (Col. 11, lines 1-8 teach: casting and layering resins may be cured in any manner appropriate for the composition of such materials),
Gupta fails to disclose a method with bonding a film to outer peripheral faces of a device with substrates, with a predetermined spacing therebetween thereby forming a space enclosed by the mold substrate, the resin substrate, and the film; injecting a polymerizable composition into the space; and wherein the film satisfies at least one of the following conditions:
in a case in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes, the film does not detach from the resin substrate, and
in a case in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes, the film exhibits a stretch ratio of more than 0%.
Gupta and Iyama are related because both disclose methods of producing optical member.
Iyama teaches a method a device bonding a film ([0040] teaches: 100, adhesive tape) to outer peripheral faces of with substrates with a predetermined spacing therebetween thereby forming a space enclosed by the mold substrate, the resin substrate, and the film ([0040-0041] teaches: C, cavity, formed by 100, adhesive tape to seal space between 30, molds along their circumferential direction while maintaining the distance);
injecting a polymerizable composition into the space ([0041] teaches: resin is injected into cavity to fill it);
and the film exhibits a stretch ratio of more than 0% ([0022] teaches: 100, adhesive tape includes 10, tape base material and 20, adhesive layer; [0023] teaches: 10, base material stretchable in at least the width direction; [[0055] teaches: 100, adhesive tape, stretches via 10, base material, and slides along the mold surface, thus exhibiting a stretch ratio of more than 0%).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Gupta in view of Iyama and provide a method to disclose a method with bonding a film to outer peripheral faces of a device with substrates, with a predetermined spacing therebetween thereby forming a space enclosed by the mold substrate, the resin substrate, and the film; injecting a polymerizable composition into the space; and the film exhibits a stretch ratio of more than 0%. Doing so would allow for sealing of the space between while accommodating dimensional changes of the polymerizable resin during molding, thereby reducing resin leakage and improving formation of the resulting optical member.
The modified Gupta fails to disclose a method in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes. However, optimizing temperature and duration of the heat-resistance index test to 50° C for 3 minutes would have been within the level of ordinary skill and would only involve routine experimentation. See MPEP 2144.05 II (A). “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation. ”In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation ”In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). [I]f the prior art does recognize that the variable affects the relevant property or result, then the variable is result-effective. In the case at hand, Yamamoto discusses in [0014]-[0016] and [0024] that temperature is a variable which achieves a recognized result, namely affecting the elevated-temperature holding and followability characteristics of the adhesive film during thermal expansion of the polymerizable monomer, evaluating adhesion after being left during a predetermine time under various temperature conditions, and further teaches that the adhesive film must follow thermal stress caused by expansion and contraction of the lens monomer to prevent tape peeling [0028], further Iyama discusses in [0034] the retentions, of crosslink agents, at temperature(s) around 50°C, during polymerization. Doing so would allow for maintaining adhesion of the film to the substrate under elevated-temperature molding conditions, thereby reducing film detachment and leakage of the polymerizable composition. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to disclose a method in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding claim 2, the modified Gupta discloses the method of producing an optical member according to claim 1, wherein the film satisfies both of the following conditions:
in a case in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes (Examiner notes that the same optimization motivation applied to an earlier claim, 1, also applies here, and no further analysis is required, consistent with MPEP § 2143, which permits reliance on previously articulated rationale where the combination and reasonings remain unchanged), the film does not detach from the resin substrate (Iyama: [0050] teaches: 100, adhesive tape, exhibits strong adhesive force up to a predetermined temperature, so it will not easily peel of the molds; thus the film does not detach from the resin substrate), and
in a case in which the film is bonded to the resin substrate and subjected to a heat-resistance index test at 50° C. for 3 minutes (Examiner notes that the same optimization motivation applied to an earlier claim, 1, also applies here, and no further analysis is required, consistent with MPEP § 2143, which permits reliance on previously articulated rationale where the combination and reasonings remain unchanged), the film exhibits a stretch ratio of more than 0% ([0022] teaches: 100, adhesive tape includes 10, tape base material and 20, adhesive layer; [0023] teaches: 10, base material stretchable in at least the width direction; [[0055] teaches: 100, adhesive tape, stretches via 10, base material, and slides along the mold surface, thus exhibiting a stretch ratio of more than 0%).
Allowable Subject Matter
Claims 3 and 4 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, the prior art fails to teach or suggest “glass ball tack test is performed at 80° C. using the film, a glass ball movement distance is 200 mm or less” along with the other limitations positively recited in claims 3 and 1 in a manner that would support a rejection under 35 U.S.C. § 102 or § 103, based on the prior art of record and the search requirements of MPEP § 904.
Regarding claim 4, the prior art fails to teach or suggest “wherein the polymerizable composition includes a polymerization catalyst and two or more different monomers for an optical material, a content of the polymerization catalyst is from 0.01 parts by mass to 0.1 parts by mass with respect to a total of 100 parts by mass of the two or more different monomers for an optical material, and the polymerizable composition has a viscosity of from 30 mPa·s to 1000 mPa·s as measured by a B-type viscometer under conditions of 25° C. and 60 rpm” along with the other limitations positively recited in claims 4 and 1 in a manner that would support a rejection under 35 U.S.C. § 102 or § 103, based on the prior art of record and the search requirements of MPEP § 904.
Claims 5-6 are dependent on claim 4 and therefore allowable for at least the same reasons.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Sanches et al. (US 2024/0132680), discloses adhesive polymer blends but fails to disclose the correct method conditions, Sano (US 2020/0189217) discloses methods for producing optical members but fails to disclose the proper bonding film.
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John Sipes
Examiner
Art Unit 2872
/J.C.S./Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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