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 02/09/2026.
3. Claims 1-11 are pending. Claims 1-2, 5-11 are under examination on the merits. Claims 3-4 are withdrawn to a non-elected invention from further consideration.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive, thus claims 1-2, 5-11 stand rejected as set forth in Office action dated 12/11/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 102/103
6. 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.
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 1-2, 8, 10-11 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Qin et al. (WO 03/044022 A1, hereinafter “’022”).
Regarding claims 1-2: ‘022 discloses a water-soluble photochromic naphthopyran compound (Page 1, lines 6-9) having a general structural formula represented by Example 5 (Page 27, lines 8-10). ‘022 is silent with regard to a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
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It is submitted that If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Pertaining specifically to claim 1, since ‘022 discloses the identical or substantially identical the water-soluble photochromic naphthopyran compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. reversible photochromic behavior, would inherently/implicitly be achieved by ‘022 (i.e., the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment). If there is any difference between the product of ‘022 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 8: ‘022 discloses a photochromic mixture comprising at least one photochromic naphthopyran compound, wherein the weight percent of the photochromic naphthopyran compound in the mixture is greater than 0.01% (Page 27, lines 1-3).
Regarding claim 10: ‘022 discloses the photochromic mixture, wherein the mixture displays photochromic property upon UV or visible light irradiation, and wherein the photochromism is thermodynamically reversible (Page 1, lines 17-24).
Regarding claim 11: ‘022 discloses the water-soluble photochromic naphthopyran compound (Page 1, lines 6-9), wherein an absorption peak in UV/vis absorption spectrum ranges from 100 nm to 1500 nm (Page 27, lines 1-7, Table 1).
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8. Claims 1-2, 6-7, 11 are rejected under 35 U.S.C. 102 (a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bekere et al. (Chromenes involving a two-photon absorbing moiety: photochromism via intramolecular resonance energy transfer, New J. Chem., 2016, 40, 1143-1148, hereinafter “’Bekere”).
Regarding claims 1-2: Bekere discloses a water-soluble photochromic naphthopyran compound (Page 1143, Abstract, lines 1-6) having a general structural as shown below (Page 1144, Scheme 1). Bekere is silent with regard to a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
It is submitted that If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
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Pertaining specifically to claim 1, since Bekere discloses the identical or substantially identical the water-soluble photochromic naphthopyran compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. reversible photochromic behavior, would inherently/implicitly be achieved by Bekere (i.e., the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment). If there is any difference between the product of Bekere and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 6: Bekere discloses the water-soluble photochromic naphthopyran compound (Page 1143, Abstract, lines 1-6), wherein the conformation of the molecule can be changed to ring-open form upon UV or visible light irradiation, and can be thermodynamically changed backward to the ring-close form (Page 1145, left Col., Scheme 2).
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Regarding claim 7: Bekere discloses the water-soluble photochromic naphthopyran compound (Page 1143, Abstract, lines 1-6), wherein the water solubility of the compound is greater than or equal to 10 mg L-1 (Page 1145, Figs. 2-3; in the range of 1.2x10-5 to 10-4).
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Regarding claim 11: Bekere discloses the water-soluble photochromic naphthopyran compound (Page 1143, Abstract, lines 1-6), wherein an absorption peak in UV/vis absorption spectrum ranges from 100 nm to 1500 nm (Page 1145, Fig. 2).
Claim Rejections - 35 USC § 103
9. 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.
10. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Qin et al. (WO 03/044022 A1, hereinafter “’022”) as applied to claim 1 above, and further in view of Iftime et al. (US Pub No. 2006/0222973 A1, hereinafter “’973”).
Regarding claim 5: The disclosure of ‘022 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘022 does not expressly teach the water-soluble photochromic naphthopyran compound having sulfonic acid substituents.
However, ‘973 teaches suitable as the photochromic material are benzo and naphtho pyrans (Chromenes) of general formulas (the closed form may be colorless/weakly colored; the open form may be differently colored) (Page 9, [0087])
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wherein one, two, three or more substituents may be optionally present at the 1, 2, 3 and 4 positions, wherein the substituents and R1 and R2 are each, independently of the other, selected from the group consisting of amine groups, including primary, secondary, and tertiary amines; hydroxy groups; alkylthio groups, preferably with from about 1 to about 50 carbon atoms and more preferably with from about 1 to about 30 carbon atoms; ester groups; amide groups; carboxylic acid groups; sulfonic acid groups; and the like (Page 9, [0087]).
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 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.
11. Claims 7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Qin et al. (WO 03/044022 A1, hereinafter “’022”) as applied to claim 1 above, and further in view of Anil Kumar (US Pat. No. 5,879,592, hereinafter “’592”).
Regarding claims 7,9: The disclosure of ‘022 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘022 does not expressly teach the water solubility of the compound is greater than or equal to 10 mg L-1,
However, ‘592 teaches a water soluble photochromic naphthopyran and benzopyran compounds having an alkylaminoalkylamino group on the naphtho- or benzo-portions and/or pyran portions thereof (Col. 1, lines 6-7). ‘592 teaches the water solubility of the naphthopyrans and benzopyrans depends on the ratio of the number of hydrophilic moieties to the number of hydrophobic moieties thereon (Col. 9, lines 63-66). The compounds having only two quaternary ammonium salt functionalities in the R1 group are soluble in water at about 1 gram per liter (Col. 10, lines 3-6).
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 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.
Response to Arguments
12. Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Qin‘022 fails to disclose a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
The examiner respectfully disagrees. ‘022 discloses a water-soluble photochromic naphthopyran compound (Page 1, lines 6-9) having a general structural formula represented by Example 5 (Page 27, lines 8-10). ‘022 is silent with regard to a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
It is submitted that If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Pertaining specifically to claim 1, since ‘022 discloses the identical or substantially identical the water-soluble photochromic naphthopyran compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. reversible photochromic behavior, would inherently/implicitly be achieved by ‘022 (i.e., the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment). If there is any difference between the product of ‘022 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
In response to the Applicant’s argument that the present invention has successfully overcome the interference of the aqueous environment to realize a "water-phase + visible light induction" mechanism.
The examiner respectfully disagrees. The Applicant’s argument lacks persuasive merit at least because the claims do not include language that requires the interference of the aqueous environment to realize a "water-phase + visible light induction" mechanism. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]pplicant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”)
In response to the Applicant’s argument that Beker fails to disclose a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
The examiner respectfully disagrees. Bekere discloses a water-soluble photochromic naphthopyran compound (Page 1143, Abstract, lines 1-6) having a general structural as shown below (Page 1144, Scheme 1). Bekere is silent with regard to a visible-light-induced limitation in preamble, and wherein the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment.
It is submitted that If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Pertaining specifically to claim 1, since Bekere discloses the identical or substantially identical the water-soluble photochromic naphthopyran compound as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. reversible photochromic behavior, would inherently/implicitly be achieved by Bekere (i.e., the water-soluble photochromic naphthopyran compound displays reversible photochromic behavior under visible light irradiation in an aqueous solution at a neutral pH environment). If there is any difference between the product of Bekere and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
In response to the Applicant’s argument that the combination of Qin’022 and Iftime’973 fails to meet these requirements for the following reasons because claim 5 is directed to a specific group of structures (A-1 to A-15) that are meticulously engineered to achieve a synergistic effect: achieving water solubility while simultaneously shifting the molecular energy levels to allow for induction by visible light in a neutral aqueous state.
The examiner respectfully disagrees. The disclosure of ‘022 is adequately set forth in paragraph 7, and the above paragraph under response to arguments are incorporated herein by reference. ‘022 does not expressly teach the water-soluble photochromic naphthopyran compound having sulfonic acid substituents.
However, ‘973 teaches suitable as the photochromic material are benzo and naphtho pyrans (Chromenes) of general formulas (the closed form may be colorless/weakly colored; the open form may be differently colored) (Page 9, [0087])
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wherein one, two, three or more substituents may be optionally present at the 1, 2, 3 and 4 positions, wherein the substituents and R1 and R2 are each, independently of the other, selected from the group consisting of amine groups, including primary, secondary, and tertiary amines; hydroxy groups; alkylthio groups, preferably with from about 1 to about 50 carbon atoms and more preferably with from about 1 to about 30 carbon atoms; ester groups; amide groups; carboxylic acid groups; sulfonic acid groups; and the like (Page 9, [0087]).
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 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.
In response to the Applicant’s argument that the Qin’022 in view of Kumar ’592 fails to teach the water solubility of the compound is greater than or equal to 10 mg L-1,
The examiner respectfully disagrees. The disclosure of ‘022 is adequately set forth in paragraph 7, and the above paragraph under response to arguments are incorporated herein by reference. ‘022 does not expressly teach ‘022 does not expressly teach the water solubility of the compound is greater than or equal to 10 mg L-1,
However, ‘592 teaches a water soluble photochromic naphthopyran and benzopyran compounds having an alkylaminoalkylamino group on the naphtho- or benzo-portions and/or pyran portions thereof (Col. 1, lines 6-7). ‘592 teaches the water solubility of the naphthopyrans and benzopyrans depends on the ratio of the number of hydrophilic moieties to the number of hydrophobic moieties thereon (Col. 9, lines 63-66). The compounds having only two quaternary ammonium salt functionalities in the R1 group are soluble in water at about 1 gram per liter (Col. 10, lines 3-6).
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 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.
13. 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
14. 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
03/11/2026
bijan.ahvazi@uspto.gov