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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/08/2025 has been entered.
3. Claims 27-33 are pending. Claims 27-33 are under examination on the merits. Claim 27 is amended. Claims 1, 8-11, 21-26 are cancelled. Claims 28-33 are newly added. Claims 2-7, 12-20 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 27-33 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Information Disclosure Statement
6. The information disclosure statements submitted on 06/24/2025, and 07/24/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Claim Rejections - 35 USC § 103
7. 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. Claims 27-33 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Nelson et al. (US Pat. No., 6,296,785 B1 hereinafter “’785”).
Regarding claim 27: ‘785 teaches a photochromic indeno-fused naphthopyran compound such as (i) 3-(4-methoxyphenyl)-3-(4-morpholinophenyl)-6,7-dimethoxy-13,13-dimethyl-3H ,13H-indeno[2,1-f]naphtho[1,2-b]pyran (Col. 29, lines 59-61), corresponding to R30 and R31 (13-position) both represent a methyl group, R32 to R35 (12 to 9 position) all represent a hydrogen atom, R36 and R37 (7 and 6-position) are methoxy group, and both B7 and B8 (3-position) are a substituted phenyl group with one morpholine group as the substituent. ‘785 does not expressly teach R30 and R31 (13-position) both represent an ethyl group in any working examples.
However, 785 teaches preferably, R1 and R2 corresponding to R30 and R31 (13-position) are each selected from the group consisting of C1-C4 alkyl (Col. 6, lines 13-14; Col. 54, line1-4, Claim 2). ‘785 teaches a photochromic indeno-fused naphthopyran compound such 3-(4-methoxyphenyl)-3-(4-morpholinophenyl)-6,7-dimethoxy-13-hydroxy-13-ethyl-3H,13H-indeno[2,1-f]naphtho[1,2-b]pyran having ethyl group corresponding to R31 (13-position).
Therefore, 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 it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claim 28: ‘785 teaches a photochromic composition comprising at least one photochromic compound, wherein the photochromic compound is the recited photochromic compound (Col. 29, lines 19-30; Col. 31, lines 30-34; Col. 34, lines 54-64; Col. 61, Claims 11-12).
Regarding claim 29: ‘785 teaches a photochromic composition, further comprising a polymerizable compound (Col. 33, lines 36-58; Col. 62, Claims 13,23) such as a dimethacrylate monomers, ethoxylated trimethylol propane triacrylate monomers, urethane acrylate monomers, and vinylbenzene monomers, styrene, polymers, i.e., homopolymers and copolymers, mono- or polyfunctional, e.g., di- or multi-functional, acrylate and/or methacrylate monomers (Col. 32, lines 41-51).
Regarding claim 30: ‘785 teaches a photochromic article comprising a cured product obtained by curing the photochromic composition (Col. 31, lines 54- 67 to Col. 32, lines 1-5; Col. 62, Claim 13).
Regarding claim 31: ‘785 teaches the photochromic article, comprising a substrate and a photochromic layer which is the cured product (Col. 31, lines 54- 67 to Col. 32, lines 1-5; Col. 62, Claim 13).
Regarding claim 32: ‘785 teaches the photochromic article, which is a spectacle lens, a goggle lens, a visor part of a sun visor, or a shield member of a helmet (Col. 29, lines 19-30; Col. 33, lines 37-45).
Regarding claim 33: ‘785 teaches eyeglasses comprising the spectacle lens (Col. 2, lines 49-52; Col. 29, lines 19-30; Col. 33, lines 37-45).
Response to Arguments
9. Applicant’s arguments with respect to claims 27-33 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Examiner Information
10. 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
08/13/2025
bijan.ahvazi@uspto.gov