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 .
Response to Amendment
Newly amended claims 2026 July 22 containing claims 1, 2, 4, 5, and 7-14 are examined on the merits. The 35 U.S.C. 112 and 102 rejections are overcome for the following reasons: the claims have been amended to define the meted and bounds of the photochromic elements and isocyanate groups; the “such as” language is no longer present; and claims 8-10 depend on amended claim 1, which now has structures recited for PC1.
Claim Objections
Claims 1, 2, 4, 5, and 7-14 are objected to because of the following informalities: the images of subgenera ( c ) through (f) are low quality and difficult to read clearly. It appears one of the ring bonds in (f) is almost non-existent. The attached variables are also hard to read. The better images are based on a magnification of the structures on page 8 of the specification.
Present Image
Better Quality Image
PNG
media_image1.png
128
150
media_image1.png
Greyscale
( c )
PNG
media_image2.png
457
537
media_image2.png
Greyscale
PNG
media_image3.png
144
164
media_image3.png
Greyscale
( d )
PNG
media_image4.png
512
587
media_image4.png
Greyscale
PNG
media_image5.png
124
180
media_image5.png
Greyscale
( e )
PNG
media_image6.png
449
677
media_image6.png
Greyscale
PNG
media_image7.png
204
134
media_image7.png
Greyscale
( f )
PNG
media_image8.png
781
455
media_image8.png
Greyscale
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.
Claims 1, 2, 4, 5, and 7-14 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.
When examined variables a and b are both zero, variable PC1 is not present because variable c depends on examined variable a being one. Therefore, it is not present in this situation. In this situation, what are the three photochromic compounds of photochromic composition ( A )?
Claims 1, 2, 4, 5, and 7-14 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 elements beside a polysiloxane chain or a polyoxyalkylene chain. What other chemical elements are part of the Chain group in general formula ( a )?
Improper Markush Rejection
Claims 1, 2, 4, 5, and 7-14 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of formulae ( c ) through (f ) is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: each polycyclic structure has different requirements and/or different locations of heteroatoms in each structure. Formula ( c ) is different from formula ( d ) due to the different locations of oxygen within the ring and the C(phenyl)2 ring group. Formula ( e ) requires two ring N-heteroatoms and one ring O-heteroatom. Formula ( f ) requires a pentacyclic ring in which one ring contains N and O as ring heteroatoms. When each of these different ring systems is analyzed in terms of general formula ( a ) and the number of components contained in photochromic composition ( A ), the composition has improper Markush problems.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Conclusion
Claims 1, 2, 4, 5, and 7-14 are not allowed.
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 NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 8:00 AM to 4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
Prosecution Insights