DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/10/2026 has been entered.
3. Claims 1, 5-17 are pending. Claim 1 is under examination on the merits. Claim 1 is amended. Claims 2-4 are cancelled. Claims 5-17 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claim 1 has been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 103
6. 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.
7. Claim 1 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Yoshida et al. (US Pub. No. 2017/0285474 A1, hereinafter “’474”) in view of Miyasaka et al. (US Pub. No. 2011//0159430 A1, hereinafter “’430”).
Regarding claim 1: ‘474 teaches a polymerizable composition such as a photosensitive resin composition (Page 2, [0018]-[0022]), which is a polymerizable composition for an optical article (Page 2, [0023]), comprising: a component A: an acyclic methacrylate having a molecular weight of 500 or more such as (A3) methacrylic acid/benzyl methacrylate/2-ethylhexyl acrylate = 19/58/23 (weight) copolymer, 46% solid MEK solution Weight-average molecular weight: 70,000, acid equivalent: 450 (Page 18, [0227]; Table 2, Example 9; Page 22, Table 4, (A3), wherein a content of the component A is 55.6 mass% based on a total amount of (meth)acrylates contained in the composition (i.e., A3(50)+B1(15)+B9(15)+B14(10)=90), and a component B such (B14) tricyclodecane dimethanol dimethacrylate (NK Ester DCP, product name of Shin-Nakamura Chemical Co., Ltd.), wherein a content of the component B is 11.1 mass% or less based on a total amount of (meth)acrylates contained in the composition (Page 18, [0227]; Table 2, Example 9). ‘474 does not expressly teach the polymerizable composition comprising a photochromic compound.
However, ‘430 teaches as a photosensitive resin composition for an optical article (Page 1, [0001]), comprising a photochromic compound (Page 8, [0096]) with benefit of providing a curable photochromic photosensitive resin composition (Page 8, [0096]-[0098])
In an analogous art of the a polymerizable composition, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify a polymerizable composition by ‘474, so as to include a photochromic compound as taught by ‘430, and would have been motivated to do so with reasonable expectation that this would result in providing a curable photochromic photosensitive resin composition as suggested by ‘430 (Page 8, [0096]-[0098]).
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made, since choosing an appropriate photochromic compound of a known material based on its suitability for its intended use is within the level ordinary skill in the art, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
8. Claim 1 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Nagoh et al. (US Pat. No. 8,066,917 B2, hereinafter “’’917”)
Regarding claim 1: ‘917 teaches a photochromic curable composition (Col. 1, lines 5-8) for plastic optical goods (Col. 1, lines 50-53) comprising [A] not less than 0.1 part and less than 5 parts by mass of a specific radically polymerizable monomer having an epoxy group, [B] 1.0 to 15 parts by mass of a specific polyfunctional radically polymerizable monomer, [C] 1.0 to 30.0 parts by mass (i.e., overlapping ranges) of a specific di(meth)acrylate monomer such as ACHD: ethoxylated cyclohexanedimethanol diacrylate (average chain length of ethylene glycol chains of 4) (Col. 23, lines 64-65), [D] more than 50.0 parts and not more than 97.9 parts by mass (i.e., overlapping ranges) of a (meth)acrylate monomer except the components [A] to [C] and/or a thio(meth)acrylate monomer such as U4HA: `U-4HA` of Shin-Nakamura Chemical Co., Ltd., tetrafunctional urethane (meth)acrylate (acryl equivalent of 149, molecular weight of 596) (Col. 24, lines 7-9) or U122P: `U-122P` of Shin-Nakamura Chemical Co., Ltd., bifunctional urethane methacrylate (acryl equivalent of 550, molecular weight of 1,100) (Col. 24, lines 20-22), and [E] 0.001 to 10 parts by mass of a photochromic compound based on 100 parts by mass of the total of the polymerizable monomers (Col. 24, lines 50-67).
Thus, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)
9. Claim 1 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Shimada et al. (US Pub. No. 2020/0142220 A1, hereinafter “’’220”)
Regarding claim 1: ‘220 teaches a polymerizable composition (Page 13, [0194]) for an optical article such as a photochromic lens (Page 13, [0203]; Page 13, [0205], Example 3), comprising: 40 parts by mass of polyethylene glycol diacrylate having an average molecular weight of 708 (component A) (Page 13, [0204], Example 2) is added to the a radically polymerizable composition containing 68 parts by mass of DCP (tricyclodecane dimethanol dimethacrylate; a componenet B, 20 parts by mass of NPG (neopentyl glycol dimethacrylate), and 12 parts by mass of TMPT (trimethylolpropane trimethacrylate)(Page 13, [0194]). ‘220 does not expressly teach a content of the component A is 50.0 mass% or more based on a total amount of (meth)acrylates contained in the composition, and wherein a content of the component B is 5.0 mass% or more and 25.0 mass% or less based on a total amount of (meth)acrylates contained in the composition.
However, ‘220’s disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the type and amount of polymer such as
high hardness monomers, low hardness monomers, and medium hardness monomers (Page 11, [0169}, can be appropriately mixed for use) (variables) for a polymer protective layer-forming coating liquid (affect) can effectively control the cured state of the polymer protective layer to have sufficient hardness (particularly cross-section hardness) in order to ensure softness of the photochromic layer and ensure sufficient strength of the entire layer including the photochromic layer and the protective layer (property) (Page 11, [0168]-[0169]), establishing that the type and amount of the polymer, and the polymer protective layer-forming coating liquid
are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."), and the polymer protective layer-forming coating liquid is recognized as a result-effective variable before determining that optimum ranges of said variable might be characterized as routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
It is submotted that generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. 5 Appeal2017-008153 Application 14/465,917 Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range).
Response to Arguments
10. Applicant’s arguments with respect to claim 1 has been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
10/02/2026
bijan.ahvazi@uspto.gov
