DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed on January 27, 2026 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has been timely paid, the finality of the previous Office action mailed on November 10, 2025 (“previous OA”) has been withdrawn pursuant to 37 CFR 1.114. Applicant’s amendment filed on January 27, 2026 (“amendment”) has been entered.
Support for the claim 1 amendment “essentially free of additives” can be found in paragraph 0025 of the specification. The examiner further submits that applicant has disclosed in the specification (paragraph 0025) meaning of the recitation “essentially free of additives” (i.e. the film contains e.g. less than 5% by weight of any additives) such that the scope of this recitation would be clear to one of ordinary skill in the art in view of the specification.
In view of the amendment, the rejection of claims 1, 2, 4, 7, 9, 11, 14, and 15 are rejected under 35 USC 103 as being unpatentable over Norsten, Tyler (EP 2003492 A1) in view of Amino et al. (US 20140077139 A1), as set forth in the previous OA is withdrawn. Neither Norsten nor Amino teach or suggest “the thin film comprises at least 95% by weight of a photo-switchable compound and its isoforms based on the weight of the thin film”.
In view of the amendment, new rejections under 35 USC 112(a) and 35 USC 112(b) are introduced.
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 1, 2, 4, 7, 9, 11, 14, and 15 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.
As to claim 1, this claim recites “a substantially pure thin film”, “the thin film comprises at least 95% by weight of a photo-switchable compound and its isoforms based on the weight of the thin film” The specification fails to provide support for the aforementioned claim recitation. Applicant points to paragraph 0025 of the specification for support. The examiner submits that paragraph 0025 recites the following:
“In certain embodiments, the thin film comprises a single, substantially pure photo-switchable compound (as well as the isoforms thereof). As used herein, ''substantially pure'' is intended to mean that the isoforms of the compound comprise at least 95% by weight of the thin film or at least 96% by weight of the thin film, at least 97% by weight of the think film, at least 98% by weight of the thin film, or at least 99% by weight of the thin film. In certain embodiments, the thin film consists essentially of, or consists of, the photo-switchable compound isoforms.”
Based on the above, while there is support to claim that the thin film comprises at least 95% by weight of isoforms of the photo-switchable compound, there is no support to claim “substantially pure thin film” and “the thin film comprises at least 95% by weight of a photo-switchable compound and its isoforms”.
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.
Claims 1, 2, 4, 7, 9, 11, 14, and 15 are 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.
As to claim 1, this claim recites “photo-switchable compound and its isoforms”. The examiner submits that the meets and bounds of the recitation “its isoforms” are not clear. Specifically, it is unclear what compounds are encompassed by the recitation “isoforms”. Furthermore, the term “isoform” means any two or more functionally similar proteins that have a similar but not an identical amino acid sequence. See definition of “isoform” cited from Merriam-Webster dictionary. Accordingly, it is not clear what is meant by the recitation “photo-switchable compound and its isoforms”.
Response to Arguments
Applicant’s arguments submitted in the amendment have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Norsten et al. (US 20080311495 A1) discloses a photochromic material, inkless reimageable printing paper, and methods.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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, Alicia Chevalier can be reached at 571-272-1490. 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.
/ANISH P DESAI/Primary Examiner, Art Unit 1788 March 9, 2026