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 .
Election/Restrictions
Applicant’s election without traverse of a photochromic composition comprising a structure of formula c in the reply filed on 2026 January 5 is acknowledged. A search of this formula has been conducted.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2022 December 7 and 2024 September 24 were submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner.
Claim Objections
Claim 3 is objected to because of the following informalities: a structure of formula ( c ) is illegible because it is gray and the variables attached to it are difficult to read.
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Additionally, this claim is objected to because each set of variables should be on its own one [see MPEP 37 CFR 1.75(i)]. Variables R1-R18, L, and chain should each be recited in more readable manner.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “iso(thio)cyanate” has unclear metes and bounds because the term in parentheses is interpreted as “such as” and does not limit the term. Consequently, this term is interpreted as an isocyanate. If Applicants intend that his term represent both ideas. The text “iso(thio)cyanate” should be written as --isocyanate or thiocyanate--.
Claims 1, 2, and 4-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the structural requirements of each photochromic compound of photochromic composition (A); the structural requirements of a group that Is substituted by at least two isocyanate or thiocyanate groups; and the structural requirements of a bi or higher functional active compound. Photochromic compound (i) comprises a chromophore and monovalent or divalent organic group comprising at least one occurrence of a polysiloxane or polyoxyalkylene chain. The only distinction for photochromic compound (ii) is that is not the same as photochromic compound (i). Photochromic compound (iii) has a chromophore (b) that is not the same as chromophore a. Chromophores a and b do not have clear metes or bounds because their respective structural limitations are not recited in the claims.
BRANNOCK (Journal of the American Chemical Society, 1964, 29, 2579-2582) describes active hydrogen compounds that react with carbonyl compounds (page 2580). Are these active hydrogen compounds intended to be present in a composition of claim 1?
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Claim 3 recites the limitations general formulae (c ) to (f). There is insufficient antecedent basis for this limitation in the claim because claim 1 does not recite what the structural metes and bounds of chromophore a and b.
Claim Rejections - 35 USC § 102
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.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ZHU (Fibers and Polymers, 2012, 13(9), 1179-1184) describes a molded photochromic lens (page 1180, column 1, paragraph 3, figure 2, table 1). Since claims 8-10 are product by process claims, the method recited does not limit the product.
Conclusion
Claims 1-14 are not allowed.
The following is a statement of reasons for the indication of allowable subject matter: MIURA (EP 0629656, published 1994 December 12, cited in IDS) describes a photochromic composition comprising chromene and fulginimide (page 13, example 1, lines 17-45). This composition does not anticipate or render obvious a composition of claim 1 because there is no isocyanate or thiocyanate present in the composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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