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 .
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 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.
Claims 1-21 are pending. Applicant’s previous election of Group II claims 12-18 and 21 still applies and claims 1-11, 19-20 remain withdrawn.
Response to Amendment
Applicant’s amendment of 02/25/25 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 12-18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qin et al. (U.S. 2007/0122626) in view Hiroyuki et al. (WO 2018/105593, see machine translation).
Regarding claims 12-18 and 21, Qin teaches a lens comprising first and second substrate layers formed from a thermosetting cast resin (inherently from polymerizable monomers, as in claims 12 and 17) with a photochromic film therebetween, comprising a photochromic layer (having a photochromic dye) sandwiched by protective layers on either side of the photochromic layer (see abstract, FIG. 1, FIG. 2A, [0015]-[0027]).
Qin does not explicitly disclose UV absorber in the second protective layer and not in the first protective layer, or the claimed polarizer, or the particular claimed materials, however, Hiroyuki is also directed to a photochromic film that is intended to be placed between two substrates in order to form a lens and teaches that the photochromic film may include a polarizing layer of polyvinyl alcohol (as in claims 13, 14, 18, and 21) in order to provide polarization to the lens, and teaches that the protective layers on either side of the photochromic layer may be made of cellulose triacetate (as in claims 15 and 16) and may include UV absorbers in one or both of the protective layers in order to protect the polarizer and protect the lens from hue and color shading ([0010], [0013], [0016], [0019]-[0020], [0029], [0043], [0051]-[0052], in [0052] the photochromic compound may be included in the adhesive layer(s), such that the photochromic film may comprise: a non UV absorbing protective layer/photochromic adhesive layer/polarizing layer/adhesive/UV absorbing protective layer). Thus, it would have been obvious to have used a polarizing layer in the photochromic film of Qin as taught by Hiroyuki in order to provide polarization to the lens, and to have included UV absorbers in at least one of the protective layers of Qin as taught by Hiroyuki to protect the polarizer and protect the lens from hue and color shading, and to have used the particular materials of Hiroyuki for the polarizer and protective layers of modified Qin because Hiroyuki teaches that they are suitable for providing the desired polarizing and protective functionality for lenses.
The resulting lens of modified Qin will receive incident light at all angles and thus (for the light that enters through the side of the article that has the protective layer without UV absorbers) incident light will pass through the photochromic layer before passing through the UV absorbing protective layer.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that Qin teaches away from the claimed structure in [0027] but is merely referring to a preferred embodiment in Qin. Qin is not limited to its preferred embodiments and the preferred embodiments do not constitute a teaching away from the non-preferred embodiments. Indeed, because the embodiment in [0027] is merely preferred and not indicated as being required in Qin, Qin is implicitly teaching that the non-preferred embodiments are within the scope of Qin (otherwise, Qin would just say that the protective layers should not include UV absorbers without using the word “preferably”).
Applicant then makes arguments against Hiroyuki on the basis the Hiroyuki calls for UV absorber in the protective layer on the opposite side of the “incident light” compared to the non-UV absorber containing protective layer in the present claims. First, the distinction between the UV absorbing and non-UV absorbing protective layers is only recited in claim 16 (claim 12 allows for both protective layers to include UV absorbers). Second, the portion cited by Applicant from Hioryuki is also merely a preferred embodiment and Hiroyuki is not limited to this embodiment (in [0013] Hiroyuki teaches that either or both of the protective layers may include UV absorber). Third, the basis for the whole argument depends on a definition of which side of the article receives incident light but Applicant is ignoring that the rejection explains there is no limitation on this in the claims and that incident light would be passing through the lens from all angles.
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787