DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 08/14/2025 is acknowledged. In light of amendments, new grounds of rejection are set forth below. 1, 4 and 9-13 are examined on the merits in this office action.
Information Disclosure Statement
Information Disclosure Statement (IDS) submitted on 10/14/2025 is considered and signed IDS form is attached.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9, 12 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites “the component (3) comprises polyester oligomer hexaacrylate and/or polyethylene glycol diacrylate”. While there is support for polyester oligomer hexaacrylate as high hardness monomer (component 2) (see paragraphs 0013, 0021 of the present specification), there is no support for polyester oligomer hexaacrylate as low hardness monomer (component 3). Further, while there is support for a specific polyester oligomer hexaacrylate such as EB6A as low hardness monomer (component 3) used in a specific amount (see paragraph 0050 of present specification), there is no support for broad recitation of polyester oligomer hexaacrylate used in any amount as low hardness monomer (component 3). While there is support for a specific polyethylene glycol diacrylate having a specific average molecular weight as low hardness monomer (see paragraph 0050 of present specification), there is no support for broad recitation of any polyethylene glycol diacrylate as low hardness monomer.
Claim 12 recites “the component (2) in an amount of 5 mass% or more”. While there is support for the component (2) (high hardness monomer) in amount of 5 to 95 mass% (see paragraph 0038 of the present specification), there is no support for broad recitation of the component (2) (high hardness monomer) in amount of 5 mass% or more.
Claim 13 recites “the component (3) comprises polyester oligomer hexaacrylate and/or polyethylene glycol diacrylate”. While there is support for polyester oligomer hexaacrylate as high hardness monomer (component 2) (see paragraphs 0013, 0021 of the present specification), there is no support for polyester oligomer hexaacrylate as low hardness monomer (component 3). Further, while there is support for a specific polyester oligomer hexaacrylate such as EB6A as low hardness monomer (component 3) used in a specific amount (see paragraph 0050 of present specification), there is no support for broad recitation of polyester oligomer hexaacrylate used in any amount as low hardness monomer (component 3). While there is support for a specific polyethylene glycol diacrylate having a specific average molecular weight as low hardness monomer (see paragraph 0050 of present specification), there is no support for broad recitation of any polyethylene glycol diacrylate as low hardness monomer.
Claim 13 recites “the component (2) in an amount of 5 mass% or more”. While there is support for the component (2) (high hardness monomer) in amount of 5 to 95 mass% (see paragraph 0038 of the present specification), there is no support for broad recitation of the component (2) (high hardness monomer) in amount of 5 mass% or more.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 recites “…and a hydroxy compound such as diethylene glycol…”. In light of the “such as” language, the scope of the claim is confusing because it is not clear whether the diethylene glycol is a limitation required to be met in the claim. See MPEP 2173.05(d).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Asai et al. (JP 2008058932 A cited in IDS) in view of Van Gemert (5,645,767). It is noted that the disclosures of Asai et al. are based on a machine translation (cited in IDS) of the reference.
Regarding claims 1, 4 and 9-13, Asai et al. disclose a photochromic lens comprising a photochromic film on a lens base, wherein the photochromic film is a cured layer comprising a photochromic dye (photochromic compound) and a photocurable component comprising plurality of polymerizable monomers (see Abstract and paragraphs 0008, 0023, 0024). The photocurable component comprises a radical polymerizable monomer having an L-scale Rockwell hardness of 60 or more as homopolymer (high hardness monomer) and a radical polymerizable monomer having an L-scale Rockwell hardness of 40 or less as homopolymer (low hardness monomer) (see paragraph 0024). The thickness of the photochromic film is 20 to 60 microns (see paragraph 0089). The Martens hardness of an outer surface of the photochromic film is 0.1 or more (see paragraph 0018) which is measured in mgf/µm2 (see Table 1, 3rd row of original JP 2008058932 document) and which corresponds to a Martens hardness of at least 100 kgf/mm2.
The lens base can be made of polycarbonate resin (see paragraph 0090). The lens base is a plastic lens substrate for spectacles (see paragraph 0090). The photochromic lens is suitable as a spectacle lens (see paragraph 0117). Therefore, Asai et al. disclose a spectacle lens. Accordingly, it would have been obvious to one of ordinary skill in the art to prepare spectacles comprising the spectacle lens, and thereby arrive at the claimed invention.
The high hardness monomer includes trimethyolpropane trimethacrylate (component 2) (see paragraph 0032). The high hardness monomer can also include neopentyl glycol di(methacrylate) (component 1) (see paragraph 0037). The amount of high hardness monomer is 5 to 95 wt% of the radically polymerizable monomers (see paragraph 0049). That is, the amount of trimethyolpropane trimethacrylate (component 2) can be 5 to 95 wt% or the amount of neopentyl glycol di(methacrylate) (component 1) can be 5 to 95 wt%. Further, a mixture of high-hardness monomers can be used (see paragraphs 0049). Therefore, it would have been obvious to one of ordinary skill in the art to use each of neopentyl glycol di(methacrylate) (component 1) and trimethyolpropane trimethacrylate (component 2) in amount of 5 to 95 wt%, such that the total amount of high hardness monomers remains 5 to 95 wt%.
The low hardness monomer includes alkylene glycol diacrylates such as trialkylene glycol diacrylate, tetralkylene glycol diacrylate or nonylalkylene glycol diacrylate, wherein alkyl group can be methyl or ethyl (see paragraph 0043). That is, the low hardness monomer can be polyethylene glycol diacrylate (component 3). A specific example of low hardness monomer includes polyethylene glycol diacrylate (see page 0098, Example 1). As evidenced by the present specification, polyethylene glycol diacrylate is low hardness monomer (see paragraph [0050] of the present specification). The amount of low hardness monomer (component 3) is 5 to 70 wt% of the radically polymerizable monomers (see paragraph 0049). That is, the amount of polyethylene glycol diacrylate (component 3) is 5 to 70 wt%.
Accordingly, Asai et al. disclose neopentyl glycol di(methacrylate) (component 1) in amount of 5 to 95 wt%, trimethyolpropane trimethacrylate (component 2) in amount of 5 to 95 wt% and polyethylene glycol diacrylate (component 3) in amount of 5 to 70 wt% relative to total amount of components (1) to (3).
Asai et al. do not disclose the photochromic dye (photochromic compound) as presently claimed.
Van Gemert discloses photochromic indeno-fused naphthopyran compound (see Abstract). The photochromic indeno-fused naphthopyran compound has a high molar absorptivity in the UV, an acceptable fade rate without the addition of acids or bases, a high activated intensity, a high coloration rate and activated colors ranging from orange to blue/gray (see col. 1-2, lines 61-71 and col. 2, lines 16-20). The photochromic indeno-fused naphthopyran compound is suitable for optical applications such as lenses (see col. 15, lines 15-20).
In light of motivation for using a photochromic indeno-fused naphthopyran compound disclosed by Van Gemert as described above, it therefore would have been obvious to one of ordinary skill in the art to use photochromic indeno-fused naphthopyran compound of Asai et al. as the photochromic dye (photochromic compound) in Asai et al. in order to provide a high molar absorptivity in the UV, an acceptable fade rate without the addition of acids or bases, a high activated intensity, a high coloration rate and activated colors ranging from orange to blue/gray, and thereby arrive at the claimed invention.
Accordingly, Asai et al. in view of Van Gemert discloses the photochromic film comprising component (1), component (2) and component (3) identical to that presently claimed with the amounts overlapping with that presently claimed. Therefore, within the overlapping ranges, the photochromic film of Asai et al. in view of Van Gemert necessarily inherently has a surface Martens hardness as presently claimed.
Claims 1, 4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Asai et al. (JP 2008058932 A cited in IDS) in view of Van Gemert (5,645,767). It is noted that the disclosures of Asai et al. are based on a machine translation (cited in IDS) of the reference.
Regarding claims 1, 4 and 9-13, Asai et al. disclose a photochromic lens comprising a photochromic film on a lens base, wherein the photochromic film is a cured layer comprising a photochromic dye (photochromic compound) and a photocurable component comprising plurality of polymerizable monomers (see Abstract and paragraphs 0008, 0023, 0024). The photocurable component comprises a radical polymerizable monomer having an L-scale Rockwell hardness of 60 or more as homopolymer (high hardness monomer) and a radical polymerizable monomer having an L-scale Rockwell hardness of 40 or less as homopolymer (low hardness monomer) (see paragraph 0024). The thickness of the photochromic film is 20 to 60 microns (see paragraph 0089). The Martens hardness of an outer surface of the photochromic film is 0.1 or more (see paragraph 0018) which is measured in mgf/µm2 (see Table 1, 3rd row of original JP 2008058932 document) and which corresponds to a Martens hardness of at least 100 kgf/mm2.
The lens base can be made of polycarbonate resin (see paragraph 0090). The lens base is a plastic lens substrate for spectacles (see paragraph 0090). The photochromic lens is suitable as a spectacle lens (see paragraph 0117). Therefore, Asai et al. disclose a spectacle lens. Accordingly, it would have been obvious to one of ordinary skill in the art to prepare spectacles comprising the spectacle lens, and thereby arrive at the claimed invention.
The high hardness monomer includes neopentyl glycol di(methacrylate) (component 1) (see paragraph 0037). The amount of high hardness monomer is 5 to 95 wt% of the radically polymerizable monomers (see paragraph 0049). That is, the amount of neopentyl glycol di(methacrylate) (component 1) is 5 to 95 wt%.
The low hardness monomer includes alkylene glycol diacrylates such as trialkylene glycol diacrylate, tetralkylene glycol diacrylate or nonylalkylene glycol diacrylate, wherein alkyl group can be methyl or ethyl (see paragraph 0043). That is, the low hardness monomer can be polyethylene glycol diacrylate (component 3). A specific example of low hardness monomer includes polyethylene glycol diacrylate (see page 0098, Example 1). As evidenced by the present specification, polyethylene glycol diacrylate is low hardness monomer (see paragraph [0050] of the present specification). The amount of low hardness monomer (component 3) is 5 to 70 wt% of the radically polymerizable monomers (see paragraph 0049). That is, the amount of polyethylene glycol diacrylate (component 3) is 5 to 70 wt%.
The photocurable component also comprises an epoxy-based monomer such as glycidyl methacrylate (component 2) (see paragraph 0050). As evidenced by the present specification, glycidyl methacrylate is a high hardness monomer having an L-scale Rockwell hardness of homopolymer of 60 or more (see paragraph [0027] of the present specification). The amount of the epoxy-based monomer is 0.01 to 30 wt% in the photocurable component (see paragraph 0053). That is, the amount of glycidyl methacrylate (component 2) is 0.01 to 30 wt%.
Accordingly, Asai et al. disclose neopentyl glycol di(methacrylate) (component 1) in amount of 5 to 95 wt%, glycidyl methacrylate (component 2) in amount of 0.01 to 30 wt% and polyethylene glycol diacrylate (component 3) in amount of 5 to 70 wt% relative to total amount of components (1) to (3).
Asai et al. do not disclose the photochromic dye (photochromic compound) as presently claimed.
Van Gemert discloses photochromic indeno-fused naphthopyran compound (see Abstract). The photochromic indeno-fused naphthopyran compound has a high molar absorptivity in the UV, an acceptable fade rate without the addition of acids or bases, a high activated intensity, a high coloration rate and activated colors ranging from orange to blue/gray (see col. 1-2, lines 61-71 and col. 2, lines 16-20). The photochromic indeno-fused naphthopyran compound is suitable for optical applications such as lenses (see col. 15, lines 15-20).
In light of motivation for using a photochromic indeno-fused naphthopyran compound disclosed by Van Gemert as described above, it therefore would have been obvious to one of ordinary skill in the art to use photochromic indeno-fused naphthopyran compound of Asai et al. as the photochromic dye (photochromic compound) in Asai et al. in order to provide a high molar absorptivity in the UV, an acceptable fade rate without the addition of acids or bases, a high activated intensity, a high coloration rate and activated colors ranging from orange to blue/gray, and thereby arrive at the claimed invention.
Accordingly, Asai et al. in view of Van Gemert discloses the photochromic film comprising component (1), component (2) and component (3) identical to that presently claimed with the amounts overlapping with that presently claimed. Therefore, within the overlapping ranges, the photochromic film of Asai et al. in view of Van Gemert necessarily inherently has a surface Martens hardness as presently claimed.
Response to Arguments
Applicant's arguments filed 08/14/2025 have been fully considered. In light of amendments, new grounds of rejections are set forth above. All arguments are moot in light of new grounds of rejections.
In light of amendments, previous 112(a) paragraph rejections are withdrawn. However, new 112(a) paragraph rejections are set forth above in light of amendments.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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