DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 6/12/26, claims 1-19 are currently pending in the application, with claims 5-18 being withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 103
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.
Claims 1-3, 11, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (KR 20070069689 A, machine translation, of record), in view of Heller et al. (US 5955520 A) and Lin (2002/0007078 A1).
Jeong teaches a mixture comprising a photochromic dye and monomers (read on polymerizable compounds) that are uniformly mixed and emulsified using a microfluidizer, Gaulin homogenizer, ultrasonic homogenizer etc., to a particle size of 20-100 nm (page 8, lines 229-253, 308-313, Example 1, ref. claims). Thus, an ultrasonic homogenizer is taught with sufficient specificity in a small genus of mixers. Jeong further teaches a mixture comprising butyl methacrylate and a photochromic dye, treated with an ultrasonic grinder (reads on a homogenizer) (Example 5).
Jeong is open to photochromic dyes, such as naphthopyran, benzopyran, spiropyran etc. (lines 246-248).
Jeong is silent on a method comprising (1) mixing a photochromic dye and the monomer is performed at claimed temperature, (2) wherein said photochromic dye being an indene fused-naphthopyran compound as claimed.
Regarding (2), in a related field of endeavor, Heller teaches novel photochromic indeno-fused naphthopyran compounds having advantages, such as demonstrating a bathochromic shift for the wavelength in the visible spectrum at which the maximum absorption of the activated (colored) form of the photochromic compound, i.e., the lambda max (Vis), occurs, thereby resulting in activated colors ranging from orange to blue/gray, a high molar absorptivity (or molar extinction coefficient) in the UV, an acceptable fade rate without the addition of acids or bases, a high activated intensity, and a high coloration rate (col. line 48-col. 2, line 6).
Regarding (1), in a related field of endeavor, Lin teaches photochromic naphthopyran compounds for optically clear articles, such as ophthalmic lenses or other plastic transparencies (Ab., [0002]). Lin teaches that the extent to which the photochromic compounds penetrate the polymeric substrate is dependent upon the characteristics of the photochromic compounds, such as the molecular size, melting point, and carrier matrix solubility of the photochromic compounds as well as the receptivity of the polymeric substrate all affect the ease of incorporation of the photochromic compounds, that if the photochromic compounds are not incorporated into the plastic substrate with sufficient uniformity and to a sufficient depth, it can result in poor performance of the photochromic compound, e.g., inadequate reversible color change of the photochromic article and non-neutral color formation. Depending on the solubility of the photochromic compound in the inbibition composition, crystals may form and cause cosmetic defects on the surface of the photochromic article [0008]-[0009].
Given the teaching in Heller on advantages of photochromic indeno-fused naphthopyran compounds, and given the teaching in Jeong on providing a uniformly mixed and emulsified compositions comprising a monomer and a photochromic dye by using an ultrasonic homogenizer, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to include Hellers’ indeno-fused naphthopyran dye as the photochromic compound in Jeong’s mixing step with the monomer in the ultrasonic homogenizer.
Additionally, given the teaching in Lin on the impact of size and solubility of the photochromic compound in the inbibition composition, it would have been obvious to one of ordinary skill in the art, to decrease the particle size and to increase the solubility of the photochromic compound, such as of indeno-fused naphthopyran dye, by mixing in an ultrasonic homogenizer at elevated temperatures, including at those of the claimed invention, absent evidence to the contrary.
Claims 1-4, 11 and 19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Shimada et al. (WO 2020/203865 A1, of record), in view of Lin (US 2002/0007078 A1) and Jeong et al. (KR 20070069689 A, machine translation, of record).
At the outset, it is noted that the WIPO publication of Shimada is relied upon for date purposes, while US 12,319,839 B2 (of record) is relied upon as its English equivalent.
Shimada teaches forming coating compositions comprising a photochromic dye and methacrylate monomers containing a photochromic compound and (meth)acrylates containing a non-cyclic difunctional methacrylate having a molecular weight of 500 for enabling the photochromic layer have excellent photoresponsiveness, alone, or in combination with the disclosed higher functional methacrylates (Ab., col. 5, lines 57-59). The components of the composition may be mixed in any order (col. 5, lines 57-59), and disclosed Example 1 is drawn to a composition comprising (meth)acrylate monomers and indeno-fused naphthopyran compound.
Shimada is silent on a method comprising mixing a photochromic dye and the monomer at claimed temperature in an ultrasonic homogenizer.
In a related field of endeavor, Lin teaches photochromic naphthopyran compounds for optically clear articles, such as ophthalmic lenses or other plastic transparencies (Ab., [0002]). The discussion on Lin from paragraph 7 above is incorporated herein by reference.
Jeong teaches a mixture comprising a photochromic dye and monomers (read on polymerizable compounds) that are uniformly mixed and emulsified using a microfluidizer, Gaulin homogenizer, ultrasonic homogenizer etc., to a particle size of 20-100 nm (page 8, lines 229-253, 308-313, Example 1, ref. claims).
Given the teaching in Lin on the impact of size and solubility of the photochromic compound in the inbibition composition, and the teaching in Jeong on ultrasonic homogenizer for providing for small particle sizes, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to mix Shimada’s polymerizable composition comprising the claimed dye and a monomer in an ultrasonic homogenizer at elevated temperatures, including at the claimed temperatures, so as to reduce the particle size and/or solubilize the photochromic compound, absent evidence to the contrary.
Response to Arguments
In view of the amendment dated 6/12/26, the rejections of record are withdrawn and new grounds of rejections are presented herein above. Applicant’s arguments have been duly considered and addressed to the extent pertinent to the rejections above.
Applicant argues as follows:
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It is noted that the combination of cited references above target the importance of particle size and solubility of the photochromic dye particles in the compositions, and render obvious the claimed invention for reasons stated in the rejections above. Additionally, in considering a showing of allegedly unexpected results, obvious and expected properties must be weighed against unobvious and unexpected properties in any determination of patentability such that when a reference clearly provides motivation to make a given change, the burden is shifted to applicant to demonstrate that any unobvious and unexpected results are not merely secondary in nature. In re Nolan 193 USPQ 641 CCPA 1977.
Furthermore, in considering the data in Table 1, as an initial matter, it is not clear which specific indeno-fused naphthopyrans are relied upon in the inventive compositions. Even so, the data on record would be limited to the mixing of specific monomers and specific indeno-fused naphthopyrans in specific amount, and the limited data is not reasonably representative of claim 1, which is of a much broader scope.
Conclusion
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
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