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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
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 10-14 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 10-14, 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 0.1 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. disclose the photochromic dye (photochromic compound) is present in amount of 0.01 to 20 parts by mass per 100 parts by mass of the curable component (see paragraph 0066). Accordingly, the amount of photochromic compound is 0.01 to 17 wt% in the photochromic layer or a curable composition for preparing the photochromic layer.
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 10-14 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 10-14, 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 0.1 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. disclose the photochromic dye (photochromic compound) is present in amount of 0.01 to 20 parts by mass per 100 parts by mass of the curable component (see paragraph 0066). Accordingly, the amount of photochromic compound is 0.01 to 17 wt% relative to 100 mass% of a total amount of the curable composition (curable composition for preparing the photochromic layer).
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 declaration and arguments filed 06/02/2026 have been fully considered but they are not persuasive because of following reasons.
Applicant respectfully submits that the claimed range of 8.0 kgf/mm² or more produces unexpected results that rebut the Office's prima facie case of obviousness. Specifically, as demonstrated in the attached Rule 132 Declaration, Applicant has conducted testing comparing the weatherability of an eyeglass lens having a surface Martens hardness of 5.0 kgf/mm² (shown in Table 2-1 of the specification) with an eyeglass lens having a surface Martens hardness of 8.0 kgf/mm². The eyeglass lens having a surface Martens hardness of 5.0 kgf/mm2 exhibited a DDarkness of 11.7%, while the eyeglass lens having a surface Martens hardness of 8.0 kgf/mm² exhibited a DDarkness of 3.9%, representing an approximately 67% improvement in weatherability. This dramatic improvement in weatherability at the claimed hardness of 8.0 kgf/ mm² or more would not have been expected by a person of ordinary skill in the art, particularly in view of Asai's teaching, specifically in view of paragraph [0018] of Asai which teaches that the surface Martens hardness is more preferably 0.1 to 5 mgf/µm² (i.e., 0.1 to 5 kgf/ mm²). If anything, Asai teaches away from the claimed range.
While Asai et al. disclose Martens hardness is more preferably 0.2 to 5 mgf/µm² (0.2 to 5 kgf/mm²), Asai et al. also disclose Martens hardness is preferably 0.1 mgf/µm² or more (0.1 kgf/mm² or more) (see paragraph 0018). It is noted that "nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims." In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). Accordingly, Asai et al. does not teach away from the claimed range.
Further, the data is not persuasive given that the data is not commensurate with the scope of present claims given that (i) the examples recite neopentyl dimethacrylate as component (1) (see paragraph 0050 of present specification), while the present claim has broad recitation of neopentyl di(meth)acrylate as component (1), (ii) the examples recite a specific component (2) in specific amounts (see paragraph 0050 of present specification), while the present claim has broad recitation of component (2) in any amount, (iii) the examples recite a specific component (3) in specific amounts (see paragraph 0050 of present specification), while the present claim has broad recitation of component (3) in any amount, (iv) the examples recite a specific lens substrate (see paragraph 0052 of present specification), while the present claim recite any lens substrate, and (v) the examples recite a specific thickness of photochromic layer (see paragraph 0052 of present specification), while the present claim recite any thickness of photochromic layer and (vi) the examples recite Chromene 1 (chromene compound) as photochromic compound in specific amount (see paragraph 0050 of present specification), while the present claim recites an indeno-fused naphthopyran compound as photochromic compound in any amounts.
Conclusion
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/KRUPA SHUKLA/Examiner, Art Unit 1787
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