DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 1-17 are currently pending. Claims 5-17 have previously been withdrawn as being drawn to non elected inventions. Claims 1-4 are currently under examination. This office action is in response to the amendment filed on 08/19/2025.
Claim Interpretation
3. The claim limitation of claim 1 “wherein a content of the component B is 25.0 mass% or less” is interpreted by it broadest reasonable interpretation that this content can be 0 % meaning that component B need not be present in the composition
Claim Rejections - 35 USC § 102
4. 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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
4. Claim(s) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mori (US 20060071203 A1).
Concerning claims 1 and 3 Mori teaches a coating composition which can be applied to a substrate suck as a plastic lens so as to form a photochromic coating layer having good photochromic properties (abstract) which would correspond to a polymerizable composition for an optical article. Mori further teaches coating compositions (paragraph 0220 Table 1 example J) which comprise 5 parts of methacryloyloxypropyltimethoxysilane 50 parts of BPE 2, 2’-bis(4-methacryloyloxyethoxyphenyl)propane, 10 parts of Me PEGMA methyl ether polyethylene glycol methacrylate having an average molecular weight of 1,000, 15 parts EB6A a polyester oligomer hexacrylate 10 parts of glycidyl methacrylate and 10 parts by weight of hydroxypivalic acid neopentyl glycol diacrylate as well as 3 parts of a chomene compound which is a photochromic compound (paragraphs 0204, 0156-0185, 0220 Table 1 example J). The methyl ether polyethylene glycol methacrylate having an average molecular weight of 100 corresponds to the claimed component A, and the hydroxypivalic acid neopentyl glycol diacrylate corresponds to a bifunctional (meth)acrylate containing one or more branch structures and does not contain a cyclic structure of component B ii. The hydroxypivalic acid neopentyl glycol diacrylate is present in an amount of 10 parts per 100 parts of (meth)Acrylate components and so is present in an amount of 10 mass % based on a total amount of (meth)acrylates contained in the composition which is within the claimed range of less than 25 mass%. As such the example J of Mori teaches each of the claimed components of the composition and so teaches the claimed composition.
Concerning claim 2 Mori further teaches a composition (paragraph 0221 Table 2 coating agent U ) which comprises a silicon containing compound, trimethyloyltrimethoxy methacrylate, Bisphenol A ethoxylated diacrylate, methyl ether polyethylene glycol methacrylate having a molecular weight of 1000 and glycidyl methacrylate with a photochromic compound (paragraph 0155-179).
The compound of methyl ether polyethylene glycol methacrylate having a molecular weight of 1000 corresponds to the claimed component A.
The component B having the claimed structure is present in an amount of 0 mass % which is within the claimed range. As such the composition of Mori meets the claimed limitations.
5. Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (US 8,576,471 B2) as evidenced by Sanyo Corporation (Sanyo Corporation of America “NK-ester & NK-oligo Monomer & Oligomer” 2024 accessed on 12/04/2025 at https://sanyocorp.com/wp-content/uploads/2024/11/nkester_nkoligo.pdf)
Concerning claims 1-2 Chen teaches liquid casting compositions for producing photochromic optical elements (abstract). Chen further teaches an exemplary polymerizable composition (Column 16 lines 45-68 and column 17 lines 1-15) that comprises several photochromic dyes as well as monomers of 50 parts of NK ester 2G, 30 parts of NK ester 14 G, and 20 parts of NK oligo U-2PPA which has a structure of
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Chen teachers that NK ester 14G and NK ester 2G are poly(alkylene oxide) dimethacrylate (column 4 lines 35-55).
Sanyo Corporation teaches that NK ester 14G has a molecular weight of 736 and has a structure of ( pg 3)
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And that NK ester 2G has a structure of
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As such the composition comprises a component B i of 20 parts out of 100 (meth)Acrylate components or 20 mass% of a alicyclic bifunctional (meth)acrylate of NK oligo U-2-PAA. The NK ester 14G corresponds to component A which is an acyclic methacrylate having a molecular weight of 500 or more.
As such the example of Chen teaches the claimed components in the claimed amounts and so teaches the claimed composition.
6. Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Momoda (US 2003/0036579 A1).
Concerning claims 1-3 Momoda teaches a curable composition that comprises radically polymerizable monomer and a photochromic compound (paragraph 0017) which can be used to make a spectacle lens (paragraph 0001) which is an optical article.
Momoda teaches an example of this composition which comprises monomers of BPE and MEPEGMA (475) as well as a photochromic compound (paragraph 0150 Table 3 example 6) where BPE corresponds to 2,2-bis (4-methacryloyloxyethoxyphenyl) propane (paragraph 0127) and MePEGMA (475) is methyl ether polyethylene glycol methacrylate having an average molecular weight of 1,000 (paragraph 0126). The monomer of MePEGMA (475) which is methyl ether polyethylene glycol methacrylate having an average molecular weight of 1,000 correspond to the claimed component A which is an acyclic methacrylate having a molecular weight of 500 or more.
The composition (paragraph 0150 Table 3 example 6) is indicated to include 20 parts by weight of trimethyloyl propane trimethacrylate (paragraph 0117) 40 parts of methacryloyloxypropyl trimethoxysilane (paragraph 0121) 10 parts of BPE, 3 parts of 4G tetraethylene glycol dimethacrylate, 10 parts of MePEGMA (475), 10 parts of glycidyl methacrylate, 6 parts of alpha methyl styrene and 1 part of alphamethyl styrene dimer as well as 0.03 parts of the photochromic compound. This corresponds to a composition that comprises 10 parts of BPE and a total of 93 parts of (meth)acrylate compounds for an amount of approximately 10.8 wt% of BPE based on a total amount of (meth)Acrylates contained in the composition.
Momoda teaches the polymerizable composition as is stated above which includes monomers BPE and MEPEGMA (475) as well as a photochromic compound (paragraph 0150 Table 3 example 6) where BPE corresponds to 2,2-bis (4-methacryloyloxyethoxyphenyl) propane (paragraph 0127) and MePEGMA (475) is methyl ether polyethylene glycol methacrylate having an average molecular weight of 1,000 (paragraph 0126). The monomer of MePEGMA (475) which is methyl ether polyethylene glycol methacrylate having an average molecular weight of 1,000 correspond to the claimed component A which is an acyclic methacrylate having a molecular weight of 500 or more.
The claimed components B as are claimed are present in the composition in an amount which is 0 mass% which is within the claimed range. As the amount of component B is 0 it can have either of the claimed structures and so would meet the limitations of claims 2 and 3.
As Momoda teaches component the photochromic compound and component A as being present and Component B as being present within the claimed range at an amount of 0% Momoda teaches the claimed composition.
7. Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Welch (US 2002/0076549 A1).
Concerning claim 1-4Welch teaches a photochromic coating (abstract) and teaches an example of a composition which comprises 1.55 g of a product of part A, 2.0 g or BPEO DMA and 3 g of PEG400 DMA (paragraph 0100). The part A is indicated to include 20 g of NMP, 10 g a Photochromic compound 1 1.25 g of Vazo-52 and 0.05g of FC-431 (paragraph 0099). BP 4EO DMA is indicated to be Bisphenol A ethoxylated dimethacrylate (paragraph 0076) NMP is indicated to be N-methylpyrrolidone solvent and Photochromic No 1 is indicated to be photochromic pyran compound that exhibits a blue color when irradiated with ultraviolet light (paragraph 0077), FC-431 is indicated to be a fluorinated surfactant (paragraph 0091), VAzo-52 is indicated to be a vinyl polymerization catalyst of 2,2’ azobis(2,4-dimethylpentanenitrile) (paragraph 0099) and PEG 400 DMA is indicated to be polyethylene e glycol dimethacrylate having a number average molecular weight of approximately 508 (paragraph 0100).
The Photochromic No 1 would be the claimed photochromic compound.
The PEG 400 DMA which is indicated to be polyethylene glycol dimethacrylate having a number average molecular weight of approximately 508 would correspond to the claimed component A.
The BP 4EO DMA is indicated to be Bisphenol A ethoxylated dimethacrylate.
As this composition comprises methacrylate a compounds and a vinyl polymerization catalyst this composition is considered to be a polymerizable composition. Moreover this composition is indicated to be used as a coating for lenses (paragraph 0115 Table 1) so this composition would be a polymerizable composition for an optical article.
There is a total of 5 g of methacrylate compounds in this composition of which 3 g are which is the PEG400 DMA compound of component A which would correspond to 60% by mass of the total amount of the (meth)Acrylates contained in the composition. This would correspond to 40 mass% of Bisphenol A ethoxylated dimethacrylate based on the total amount of the (meth)acrylates contained in the composition.
The claimed components B as are claimed are present in the composition in an amount which is 0 mass% which is within the claimed range. As the amount of component B is 0 it can have either of the claimed structures and so would meet the limitations of claims 2 and 3.
As such Welch teaches the claimed limitations.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
8. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 8,576,471 B2) as evidenced by Sanyo Corporation (Sanyo Corporation of America “NK-ester & NK-oligo Monomer & Oligomer” 2024 accessed on 12/04/2025 at https://sanyocorp.com/wp-content/uploads/2024/11/nkester_nkoligo.pdf).
Chen as is evidenced by Sanyo Corporation teaches the polymerizable composition of claim 1.
Chen does not specifically teach an example that comprises the component A in an amount of 50.0 mass% or more based on a total amount of the (meth)acrylates contained in the composition.
Chen teaches liquid casting compositions for producing photochromic optical elements (abstract). Chen further teaches an exemplary polymerizable composition (Column 16 lines 45-68 and column 17 lines 1-15) that comprises several photochromic dyes as well as monomers of 50 parts of NK ester 2G, 30 parts of NK ester 14 G, and 20 parts of NK oligo U-2PPA which has a structure of
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Chen teachers that NK ester 14G and NK ester 2G are poly(alkylene oxide) dimethacrylate (column 4 lines 35-55).
Sanyo Corporation teaches that NK ester 14G has a molecular weight of 736 and has a structure of ( pg 3)
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And that NK ester 2G has a structure of
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As such the composition comprises a component B i of 20 parts out of 100 (meth)Acrylate components or 20 mass% of a alicyclic bifunctional (meth)acrylate of NK oligo U-2-PAA. The NK ester 14G corresponds to component A which is an acyclic methacrylate having a molecular weight of 500 or more.
Chen further teaches that the general composition includes 20 to 60 parts of weight of the polymerizable composition of a polyethylene glycol monomer having 2 to 4 ethylene glycol groups, 15 to 60 parts by weight of a polyethylene glycol di(meth)Acrylate monomer having 5 to 20 ethylene glycol groups, 0 to 40 parts by weight of the polymerizable a urethane (meth)acrylate monomer and 0.02 to 0. Photochromic compound (column 7 lines 40-68 and column 8 lines 10). As such the NK ester 14G of the example of Chen which is component A corresponds to the polyethylene glycol di(meth)Acrylate monomer having 5 to 20 ethylene glycol groups which can be present in an amount of 15 to 60 parts by weight. The amount of (meth)acrylate can be present in an amount of 75 parts by weight which would correspond to a maximum amount of component A of 80 mass % based on the total amount of (meth)acrylates. Even in 100 parts of methacrylate are used the maximum amount of the component A is 60 mass % based on the (meth)acrylates. As such the amount of the polyethylene glycol di (meth)acrylate monomer having 5 to 20 ethylene glycol groups which in the example of Chen is NK ester 14G that corresponds to component A is taught to be an overlapping range with the claimed range of 50 mass% or more.
In the case where the claimed ranges "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). See MPEP 2144.05.I.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the amount of the component A in the exemplary composition of Chen to have the claimed amount of component A because Chen teaches an overlapping range with the claimed range of the amount of components A.
Response to Arguments
9. Applicant's arguments filed 08/19/2025 have been fully considered but they are not persuasive. Applicant argues with regard to the rejection over Momoda that a feature of the content of the component B is 25 mass % or less based on a total amount of (meth)Acrylates contained in the composition. In example 2 of Momoda the monomer BPE is identified as “component C” Momoda describes that the content of component C is required to be limited to 30 to 98.5 wt% that is the lower limit of component C is well above the maximum of 25.0 mass% specified in amended claim 1. It would not have been obvious to one of ordinary skill in the art to so drastically reduce the content of Momoda’s BPE monomer well below the stated minimum in order to arrive at the claimed invention with any reasonable expectation of success.
This argument is not found to be persuasive as Momoda does not teach that BPE is the only part of component C . Component C is indicated to be “another radically polymerizable monomer” and the examples of Momoda indicates that multiple different monomers are used as the component C (paragraph 0137 and Paragraph 0148 Table 1 various examples). Moreover though Modoma teaches that the amount of high hardness bifunctional monomer is preferably 30 to 90 wt% based on the total weight of all the radically polymerizable monomers (paragraph 0053) Modoma specifically indicates the bifunctional polymerizable monomers may be used in a combination of two or more (paragraph 0052). This does not restrict the use of the BPE monomer to 30 wt% or more or the cyclohexyl alternative monomer used in the rejection above. Additionally Momoda teaches a composition (paragraph 0150 Table 3 example 6) which is indicated to include 20 parts by weight of trimethyloyl propane trimethacrylate (paragraph 0117) 40 parts of methacryloyloxypropyl trimethoxysilane (paragraph 0121) 10 parts of BPE, 3 parts of 4G tetraethylene glycol dimethacrylate, 10 parts of MePEGMA (475), 10 parts of glycidyl methacrylate, 6 parts of alpha methyl styrene and 1 part of alphamethyl styrene dimer as well as 0.03 parts of the photochromic compound. This corresponds to a composition that comprises 10 parts of BPE and a total of 93 parts of (meth)acrylate compounds for an amount of approximately 10.8 wt% of BPE based on a total amount of (meth)Acrylates contained in the composition. This amount of BPE is within the claimed range of less than 25 mass% and as was stated in the previous rejection it would have been obvious to one of ordinary skill in the art at the time of filling to alter this BPE monomer to use cyclohexyl groups instead of phenyl groups as these groups are indicated to be alternatives to one another. Moreover the BPE monomer is not a monomer having the structure of component B. The claim as is currently drafted does not require that component B be present only that it be present in an amount of less than 25.0 mass% which includes 0 mass%. As such the claims as currently drafted only require that a photochromic compound and component A be present in the composition. The examples of Mori as is indicated in the rejection above provide such compositions. As such the rejection provided above is maintained.
Applicant argues with regard to the rejection over Welch that a feature of amended claim 1 is that a content of the component B is 25.0 mass% or less based on a total amount of (meth)acrylates contained in the composition which distinguishes the claims over Welch. Example 12 of Welch relied upon int eh office action gives a content of BP 4EO DMA of 40 mass% which is much higher than the maximum content of component B in amended claim 1. It would not have been obvious to one of ordinary skill in the art to so drastically reduce the content of Welch’s BP 4EO DMA well below the stated about in order to arrive at the claimed invention with any reasonable expectation of success.
This argument is not found to be persuasive as Welch teaches that the photochromic coating composition comprises a photochromic component with at least two difunctional methacrylate monomers (paragraph 01017) the first of which has a structure of (paragraph 0018)
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where A can be a straight or branched chain alkylene, phenylene or a group of
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Where
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can be a benzene or a cyclohexane group and X can be one of several groups that need not include an aromatic ring (paragraphs 0019-0024).
The second monomer is indicated to have a structure of (paragraph 0025).
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As such Welch teaches that an alterative to the Bisphenol A ethoxylated dimethacrylate monomer is a monomer that is an alicyclic bifunctional (meth)acrylate monomer where the phenyl groups of the bisphenol A group are replaced with cyclohexyl groups.
Welch further teaches that these two difunctional (meth)acrylate compounds are present in a weight ratio of I:II of from greater than 10:90 to less than 90:10 (paragraph 0017). This would indicate that the component B would be present in an amount of from greater than 10 % to less than 90% by mass and the component A would be present in an amount of from greater than 10 % to less than 90% by mass which are overlapping ranges with the claimed ranges of the monomers.
As such one of ordinary skill in the art would be motivated to give the claimed amount of component B because Welch teaches an overlapping range with the claimed range of the amount of Component B. Also Welch teaches that the aromatic bifunctional (meth)acrylate monomer can have as an alternative an alicyclic bifunctional (meth)acrylate.
Moreover the aromatic bifunctional (meth)Acrylate monomer is not a monomer having the structure of component B. The claim as is currently drafted does not require that component B be present only that it be present in an amount of less than 25.0 mass% which includes 0 mass%. As such the claims as currently drafted only require that a photochromic compound and component A be present in the composition. The example of Welch indicated above teaches such a composition. As such the rejection provided above is maintained.
Conclusion
10. Claims 1-4 are rejected. No claims are currently allowable.
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 DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763