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. This Office Action is responsive to the amendment filed on 01/02/2025.
3. Claims 1-4, 9-12, 14-25 are pending. Claims 1-4, 9-12, 14-25 are under examination on the merits. Claims 1, 9, 23-25 are amended. Claims 21-25 are newly added. Claims 5-8,13 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-4, 9-12, 14-25 have 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. Claims 1-4, 9-12, 14-15, 17-18, 21-25 are rejected under 35 U.S.C. 103 as being unpatentable Molock et al. (US Pub. No. 2006/0227287 A1, hereinafter “’287”) in view of Chopra et al. (US Pub. No.2012/0053341 A1, hereinafter “’287, hereinafter “’341”)
Regarding claims 1-4,9-12,14-15: ‘629 teaches a photochromic composition comprising a polymerizable mixture (Page 1, [0008]) including more than one photochromic compound (Page 5, [0018]) such as photochromic compounds VII or X, wherein R1 and R2 are methyl group, B1 and B2 are represents a substituted or unsubstituted phenyl group, R3 to R6 are hydrogen atom (i.e., General Formula A) (Page 4, [0016], photochromic compounds VII or X), photochromic compound XII or XIII, wherein R7 and R8 are methyl group, R9 to R12 are hydrogen atom, B3 and B4 are a substituted or unsubstituted phenyl group, R13 and R14 are an electron-donating group (General Formula B) (Page 5, [0016], photochromic compound XII). ‘629 does not expressly teach the photochromic compound of General Formula C), wherein R15 and R16 are substituted or unsubstituted alkyl group, R17, R19 to R20, B5 and B6 are hydrogen atom or a substituent, R18 represents a hydrogen atom or electron-withdrawing group, and one of R21 and R22 represents a hydron atom and the other represents an electron-donating.
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However, ‘341 teaches a photochromic compound such as the indeno-fused naphthopyran, 3,3-bis-(4-methoxyphenyl)-6-morpholino-11-fluoro-13,13-dimethyl-3H,13H-in- deno[2,1-f]naphtho[1,2-b]pyran, may be represented by the following general formula (A) (Page 8, [0067]) with benefit of providing to develop photochromic materials having a closed-form absorption spectrum for electromagnetic radiation that is shifted to longer wavelengths (i.e., "bathochromically shifted"). A photochromic material having a bathochromically shifted closed-form absorption spectrum, will typically undergo the desired closed-form to open-form transformation at longer wavelengths than a conventional photochromic material. As such, in environments that are substantially shielded from electromagnetic radiation having wavelengths ranging from about 320 nm to about 390 nm (e.g., behind an automotive windshield), it may be desirable to employ photochromic materials having a closed-form absorption spectrum that is bathochromically shifted to wavelengths greater than 390 nm, which would then be capable of undergoing the desired closed-form to open-form transformation (at wavelengths greater than 390 nm).
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In an analogous art of the photochromic 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 the photochromic composition by ‘287 so as to include the photochromic compound, wherein R15 and R16 are substituted or unsubstituted alkyl group, R17, R19 to R20, B5 and B6 are hydrogen atom or a substituent, R18 represents a hydrogen atom or electron-withdrawing group, and one of R21 and R22 represents a hydron atom and the other represents an electron-donating as taught by ’341, and would have been motivated to do so with reasonable expectation that this would result in providing to develop photochromic materials having a closed-form absorption spectrum for electromagnetic radiation that is shifted to longer wavelengths (i.e., "bathochromically shifted"). A photochromic material having a bathochromically shifted closed-form absorption spectrum, will typically undergo the desired closed-form to open-form transformation at longer wavelengths than a conventional photochromic material. As such, in environments that are substantially shielded from electromagnetic radiation having wavelengths ranging from about 320 nm to about 390 nm (e.g., behind an automotive windshield), it may be desirable to employ photochromic materials having a closed-form absorption spectrum that is bathochromically shifted to wavelengths greater than 390 nm, which would then be capable of undergoing the desired closed-form to open-form transformation (at wavelengths greater than 390 nm).
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 17: ‘629 teaches a photochromic (Page 1, [0008]), further comprising a polymerizable compound (Page 6, [0025]; Page 6, [0027]; Page 8, [0052]).
Regarding claim 18: ‘629 teaches a photochromic article comprising a cured product obtained by curing the photochromic composition (Page 5, [0020]; Page 8, [0052]).
Regarding claim 21: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph above and is incorporated herein by reference. ‘341 teaches the photochromic compound in the General formula C, R18 represents an electron-withdrawing group selected from the group consisting of a halogen atom such as indeno-fused naphthopyran, 3,3-bis-(4-methoxyphenyl)-6-morpholino-11-fluoro-13,13-dimethyl-3H,13H-in- deno[2,1-f]naphtho[1,2-b]pyran (Page 8, [0067]).
Regarding claim 22: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph above and is incorporated herein by reference. ‘341 teaches the photochromic compound in the General formula C, R18 represents an electron-withdrawing group selected from the group consisting of a halogen atom, and R17, R19, and R20 represent hydrogen atoms such as indeno-fused naphthopyran, 3,3-bis-(4-methoxyphenyl)-6-morpholino-11-fluoro-13,13-dimethyl-3H,13H-in- deno[2,1-f]naphtho[1,2-b]pyran (Page 8, [0067]).
Regarding claim 23: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph above and is incorporated herein by reference. ‘278 teaches the photochromic compound VII in the General formula A, B1 and B2 each independently represent a substituted or unsubstituted phenyl group. ‘278 does not expressly teach the substituted phenyl group has one substituents selected from the group consisting of morpholino group in photochromic compound VII.
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However, ‘287 teaches the photochromic compound III in the General formula A, B1 and B2 each independently represent a substituted or unsubstituted phenyl group, wherein the substituted phenyl group has one substituents selected from the group consisting of methoxy group.
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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 24: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph above and is incorporated herein by reference. ‘278 teaches the photochromic compound XIII in the General formula B, B3 and B4 each independently represent a substituted or unsubstituted phenyl group, and the substituted phenyl group has one substituents selected from the group consisting of morpholino group (Page 15, [0016], photochromic compound XIII).
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Regarding claim 25: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph above and is incorporated herein by reference. ‘341 teaches the photochromic compound in the General formula C, B5 and B6 each independently represent a substituted phenyl group having substituents selected from the group consisting of methoxy group such as indeno-fused naphthopyran, 3,3-bis-(4-methoxyphenyl)-6-morpholino-11-fluoro-13,13-dimethyl-3H,13H-in- deno[2,1-f]naphtho[1,2-b]pyran (Page 8, [0067]).
8. Claims 16, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable Molock et al. (US Pub. No.2006/0227287 A1, hereinafter “’287”) in view of Chopra et al. (US Pub. No. 2012/ 0053341 A1, hereinafter “’287, hereinafter “’341”) as applied to claim 1,and further in view of Barry Van Gemert (US Pat. No. 5,645,767, hereinafter “’767”).
Regarding claim 16: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘278 in view of ‘341 does not expressly teach a total content of the compound represented by General Formula B and the compound represented by General Formula C is more than a content of the compound represented by General Formula A on a mass basis.
However, ‘287 teaches the photochromic amount used depends often upon the thickness of the contact lens, the intensity of color desired upon irradiation thereof. Typically, the more photochromic material incorporated, the greater the color intensity is up to a certain limit. There is a point after which the addition of any more material will not have a noticeable effect. The concentration of photochromic compound in the polymerizable mixture is selected based on a number of considerations such as the photochromic efficiency of the photochromic compound, the solubility of the photochromic compound in the polymerizable mixture, the thickness of the lens, and the desired darkness of the lens when exposed to light. Preferred concentrations of the photochromic compound in the polymerizable mixture are from about 0.1 to about 15 weight %, more preferably from about 1% to about 10 weight %, based upon the weight of all components in the polymerizable mixture (Page 5, [0017]).
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 discovery 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 submitted 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 or temperature 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.
Regarding claims 19-20: The disclosure of ‘278 in view of ‘341 is adequately set forth in paragraph 8 above and is incorporated herein by reference. ‘278 in view of ‘341 does not expressly teach the photochromic article, further comprising: a substrate, a photochromic layer which is the cured product, wherein the photochromic article is a spectacle lens, a lens for goggles, a visor portion of a sun visor, a shield member of a helmet
However, ‘767 teaches the photochromic composition comprising the organic photochromic naphthopyrans may be used alone, in combination with other naphthopyrans or in combination with one or more other appropriate complementary organic photochromic materials (Col. 12, lines 32-36). ‘278 teaches the photochromic article, further comprising: a substrate, a photochromic layer which is the cured product (Col. 13, lines 40-58). Further, ‘767 teaches the naphthopyran compounds represented by graphic formula I may be used in those applications in which organic photochromic substances may be employed, such as optical lenses, e.g., vision correcting ophthalmic lenses and plano lenses, face shields, goggles, visors, camera lenses, windows, automotive windshields, aircraft and automotive transparencies, e.g., T-roofs, sidelights and backlights, plastic films and sheets, textiles and coatings, e.g., coating compositions such as paints, and verification marks on security documents, e.g., documents such as banknotes, passports and drivers' licenses for which authentication or verification of authenticity may be desired (Col. 11, lines 32-45).
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 coating from the selection of naphthopyran compounds based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07).
Response to Arguments
9. Applicant’s arguments with respect to claims 1-4, 9-12, 14-25 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
10. 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 extension fee 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 date of this final action.
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
01/20/2026
bijan.ahvazi@uspto.gov