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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 30th, 2026, has been entered.
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 8, 10, 12-16, and 18-24 are rejected under 35 U.S.C. 103 as being unpatentable over Chopra et al (US2011/0049445 A1) in view of Obata et al (US 2011/0288231 A1).
With regards to claim 8, Chopra discloses a photochromic article such as a photochromic lens including a photochromic coating (i.e., photochromic layer) comprising indeno-fused naphthopyran (i.e., an indeno-fused naphthopyran compound (Chopra: para. [0004], [0020], [0132], [0171], and [0175]; claim 1). Chopra does not disclose fulgimide compounds, spirooxazine compounds, or chromene compounds (though per the present claim, these compounds are optional).
Chopra does not appear to further disclose the inclusion of a protective layer in the form of a cured layer obtained by curing a polymerizable composition per the present claims. However, Chopra acknowledges that additional protective layers may be applied to its coating, including protective layers which provide heat protection (Chopra: para. [0173]).
Obata is directed to a raw material composition comprising tricyclodecane dimethanol dimethacrylate as a compound (A) (i.e., a polymerizable composition comprising one or more types of (meth)acrylates, including an alicyclic bifunctional (methacrylate)) (Obata: para. [0016], [0092], and [0279]). More particularly, Obata discloses 45 to 100 mass % of compound (A) relative to the total amount of all methacrylate compounds listed (i.e., 45 to 100 mass % of compound (A), or tricyclodecane dimethanol dimethacrylate, based on the total amount of (meth)acrylates) (Obata: para. [0113]). That the composition as claimed in present claim 1 “is a polymerizable composition for forming a protective layer of a photochromic article” constitutes an intended use. It is noted that since the composition of Obata is curable to form a coating, it is technically capable of forming a protective layer of a photochromic article (i.e., as any layer is capable of providing protection to any article). Chopra and Obata are analogous art in that they are related to the same field of endeavor of optical compositions. A person of ordinary skill in the art would have found it obvious to have applied the coating of Obata to at least the photochromic layer of Chopra in order to provide improved heat protection, thermal stability, solvent resistance, and reduced cracking, which are properties desired by Chopra (Obata: para. [0005] and [0015]; Chopra: para. [0173]). It is noted that the range taught by Obata overlaps the claimed range of 87.0 mass% or more and 100 mass% or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 10, the photochromic coating is coated on a substrate (Chopra: para. [0187]).
With regards to claim 12, Chopra discloses its article as used to form a lens, such as an eyewear lens (Chopra: para. [0004]). Therefore, the article of Chopra is considered to meet the claimed intended use of “spectacle lens” (i.e., as it includes the structural properties of a spectacle lens as claimed).
With regards to claim 13, Chopra discloses its article as used to form goggles (Chopra: para. [0038]).
With regards to claim 14, Chopra discloses its article as used to form a visor (i.e., a sun visor) (Chopra: para. [0038]).
With regards to claim 15, Chopra discloses its article as used to form a lens or visor (i.e., a shield member of a helmet) (see above discussion).
With regards to claim 16, Chopra discloses its article as used to form goggles (i.e., a type of eyeglasses comprising spectacle lens) (Chopra: para. [0038]).
With regards to claim 18, Obata teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (i.e., the amount of compound (A) by total methacrylate must also be at least within this claimed range) (Obata: para. [0113]). This range overlaps the claimed range of 90.0 mass% or more and 100 mass % or less, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 19, Obata further teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (Obata: para. [0113]). This range overlaps the claimed range of 80.0 mass% or more, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 20, Obata further teaches that the amount of compound (A) ranges from 45 to 100 mass % of the formed composition (Obata: para. [0113]). This range overlaps the claimed range of 90.0 mass% or more, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 21, Obata further discloses the inclusion of a radical polymerization initiator (Obata: para. [0150]).
With regards to claim 22, Obata further discloses the inclusion of an ultraviolet absorber (Obata: para. [0183]).
With regards to claim 23, a person of ordinary skill in the art would have found it obvious to have added a (meth)acrylate to the photochromic layer of Chopra, and further, to have cured said layer, in order to provide improved heat protection, thermal stability, solvent resistance, and reduced cracking (Obata: para. [0005] and [0015]).
With regards to claim 24, a person of ordinary skill would have found it obvious to have further included pentaerythritol tetraacrylate and isobornyl methacrylate (i.e., isobornyl acrylate) to the composition, in order to provide improved crack suppression and transparency (Obata: para. [0070], [0107], [0109], and [0254]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Chopra et al in view of Obata et al as applied to claim 8 above, and in further view of Kumar et al (US 2004/0191520 A1).
With regards to claim 9, Chopra and Obata teach a photochromic article as applied to claim 8 above (see above discussion). Although Chopra and Obata teach the inclusion of a protective layer per claim 8, Chopra and Obata do not recite a thickness for the protective layer, and therefore, Chopra and Obata are not considered to teach a protective layer thickness of 10 to 45 microns.
Kumar is broadly directed to photochromic articles with reduced temperature dependency comprising a protective layer, and further, Kumar notes that protective coatings are well-known in the art of photochromic materials, which may be chosen from “a variety of materials” (Kumar: abstract; para. [0001], [0235], and [0285]). Kumar teaches that protective coatings are known in the art for the purpose of preventing scratches to photochromic articles (Kumar: para. [0279]). To this end, protective coating thickness “can vary widely” and typical protective coating thicknesses for abrasion-resistance are in the range of 0.025 to 0.5 mm (i.e., 25 to 500 microns) (Kumar: para. [0285]). Chopra, Obata, and Kumar are analogous art in that they are related to the same field of endeavor of photochromic articles comprising protective coatings. A person of ordinary skill in the art would have found it obvious to have selected from the thickness range of Kumar for the protective coating of Chopra and Obata, in order to ensure adequate abrasion resistance (Kumar: para. [0285]). Moreover, a person of ordinary skill in the art would have found it obvious to have selected from the range of Kumar, since the thickness range of Kumar is exceptionally well-known in the art (Kumar: para. [0001], [0235], [0279], and [0285]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chopra in view of Obata et al as applied to claim 10 above, and in further view of Gao et al (US 2015/0210587 A1).
With regards to claim 11, Chopra and Obata teach a photochromic article as applied to claim 10 above, the photochromic article including a substrate, photochromic layer, and protective layer laminated in order (see above discussion). However, Chopra and Obata do not appear to further disclose the lamination of an organosilicon-based cured layer.
Gao is directed to a method of coating a glass substrate used in a photochromic lens, the coating formed from a coating solution B or a coating solution C, each of which contain organosilicon compounds (i.e., organosilicon solutions) (Gao: para. [0103] and [0107]-[0108]). The coating solutions of Gao are considered well-known in the art as they are commercially available (Gao: para. [0107]-[0108]). The coating solutions of Gao result in improved contact angles after 1000 cycles of abrasion testing (i.e., the formed coatings retain dirt and smudge resistance despite exposure to abrasion) (Gao: para. [0118]-[0120]; Table 1). Chopra, Obata, and Gao are analogous art in that they are related to the same field of endeavor of protecting photochromic articles. A person of ordinary skill in the art would have found it obvious to have applied one of the coating solutions of Gao to either side of the photochromic article of Chopra and Obata (i.e., thereby forming a substrate/photochromic layer/protective layer/organosilicon-based cured layer) in order to provide improved dirt and smudge resistance which is maintained despite exposure to abrasion (Gao: para. [0118]-[0120]; Table 1).
Response to Arguments
Applicant’s arguments with respect to the grounds of rejection under 35 U.S.C. 103 over the combination of Hughes and Obata have been fully considered but they are not found persuasive. Neither Obata nor Hughes disclose or teach a photochromic article comprising indeno-fused naphthopyran. In addition, Gao does not correct this deficiency. Therefore, the grounds of rejection over Hughes and Obata (and further, over Gao) have been withdrawn. However, new grounds of rejection are made over the combination of Chopra and Obata.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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