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 . Per amendment dated 12/10/25, claims 1-3, 5-14 are currently pending in the application, with claims 6-11 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-3, 5, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. (US 2003/0158284 A1, of record).
Regarding claims 1, 5, 12-14, Zheng teaches a curable photochromic composition comprising ethylenically unsaturated compounds, and at least one photochromic dye (Ab.). Zheng teaches a composition comprising: 2 to 80 parts by weight of compound (ii) of formula (II) and 2 to 60 parts by weight of a reactive diluent (iii), based on 100 parts by weight of ethylenically unsaturated components (i)-(iv) therein, and a photochromic dye ([0016]-[0030], ref. claims 1, 6).
Disclosed compound (ii) of formula (II) has the following structure:
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Additionally, disclosed small genus of reactive diluents includes 1,6-hexanediol di(meth)acrylate [0027].
Zheng is silent on a composition comprising (1) a compound of Formula (II) having claimed molecular weight in claimed amount as component A, and (2) a compound of Formula (I) as component B.
Regarding (1), given the teaching that R5-R7 may be H or C1 alkyl, and m is least 1 in Formula (II), Zheng’s compounds of formula (II) may have any molecular weight, including those that overlap in scope with claimed component (A).
Regarding (2), Zheng teaches 1,6-hexanediol di(meth)acrylate as a reactive diluent, i.e., a low viscosity liquid. It is noted that 1,7-heptanediol diacrylate (reads on claimed Formula 1, i.e., m=7, R1=R2=H) is a homolog of 1,6-hexanediol diacrylate, differing from the claimed species by a methylene group. Moreover, 1,7-heptanediol diacrylate, 1,8-octanediol acrylate and 1,9-nonanediol diacrylate which fall within the scope of the claimed are also structurally similar to 1,6-hexanediol diacrylate. It is noted that Zheng’s 1,6-hexanediol diacrylate as a reactive diluent has a viscosity of 5-8 mPa.s, and 1,9-nonanediol diacrylate also has a similar viscosity range of 8-10 mPa.s.
It would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare Zheng’s composition comprising a compound of formula (II) having any value of m, and a reactive diluent, such as a diacrylate compound which is a homolog or has structural similarities with 1,6-hexanediol diacrylate, including those of the claimed invention. For instance, a skilled artisan would reasonably expect 1,7-heptanediol diacrylate which is a homolog of 1,6-hexanediol diacrylate, or 1,9-nonanediol diacrylate having structural similarity and a viscosity comparable to that of 1,6-hexanediol diacrylate, to be capable of functioning as a reactive diluent in Zheng’s compositions, absent evidence to the contrary. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Regarding claim 2, Zheng teaches a composition comprising: (iv) a multi-functional (meth)acrylate having three or more (meth)acrylate functional groups, such as trimethylolpropane tri(meth)acrylate, pentaerythritol tri(meth)acrylate, glyceryl tri(meth)acrylate pentaerythritol tetra(meth)acrylate etc., i.e., acyclic (meth)acrylates (ref. claim 1).
Regarding claim 3, Zheng teaches a small genus of reactive diluents that includes 1,6-hexanediol di(meth)acrylate), isobornyl (meth)acrylate, 2-phenoxyehtyl acrylate and 2-hydroxyethyl (meth)acrylate (ref. claim 1), i.e., equivalence thereof. It is further noted that isobornyl (meth)acrylate, 2-phenoxyehtyl acrylate and 2-hydroxyethyl (meth)acrylate have a viscosity of less than 100 cP.
It would have been within the level of ordinary skill in the art to prepare a composition comprising a combination of reactive diluents, such as a combination of 1,9-nonanediol diacrylate with any of isobornyl (meth)acrylate, 2-phenoxyethyl acrylate and 2-hydroxyethyl (meth)acrylate. It is noted that said reactive diluents have similar viscosity values. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). MPEP 2144.06.
Response to Arguments
In view of the amendment and arguments dated 12/10/25, all rejections set forth in the final office action dated 9/12/25 are withdrawn. Additionally, Applicant’s arguments with respect to claim rejections and applied art have been duly considered.
Applicant argues that claim 1 as amended now limits "m" to an integer of 7 or more in component B, while "m" of 1,6-hexanediol di(meth)acrylate is "6" and that 1,6-hexanediol di(meth)acrylate is outside the scope of the present claims. Since no other compound is disclosed or suggested by Zheng within the terms of the presently-claimed invention, Applicant requests that the rejection be withdrawn.
In response, although 1,6-hexanediol di(meth)acrylate falls outside of the scope of present claims, for reasons stated in the rejection set forth above, a skilled artisan would have found it obvious to utilize reactive diluents that are homologs and/or have structural similarities to 1,6-hexanediol di(meth)acrylate, including those of the claimed invention, absent objective evidence to the contrary.
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights