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 preliminary amendment dated 7/31/23, claims 1-18 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group 1, claim 1-4, 11, drawn to a method of producing a polymerizable composition; and
Group II, claims 5-10, 14-18, drawn to a method of producing a photochromic article.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I and II lack unity of invention because even though the Groups I and II require the technical feature of producing a polymerizable composition, this technical feature is not a special technical feature because the prior art to Jeong et al. (KR 20070069689 A, machine translation) teaches a mixture comprising a photochromic dye and monomer(s) that is homogenized to form a uniform pre-emulsion by a using an ultrasonic homogenizer, and polymerizing the mixture (lines 229-253, 308-313).
In response to a request for an oral election by telephone (2/24/26), Mr. Travis Howell (voice message, 2/26/26) made a provisional election, without traverse, to prosecute the invention of Group I (claims 1-4, 11). Affirmation of this election must be made by applicant in replying to this Office action. Claims 5-10, 12-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Rejections - 35 USC § 102 and 103
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeong et al. (KR 20070069689 A, machine translation).
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).
In light of above, presently cited claims are anticipated by the reference.
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong et al. (KR 20070069689 A, machine translation).
The discussion on Jeong from paragraph 10 above is incorporated herein by reference. Jeong further teaches a mixture comprising a monomer and a photochromic dye, treated with an ultrasonic grinder and heated at a temperature of 60 to 90oC to polymerize the miniemulsion (Examples).
Jeong is silent on a method wherein mixing is performed at claimed temperature.
Given the teaching in Jeong on providing for uniformly mixed and emulsified compositions comprising a monomer, e.g., butyl methacrylate, and a photochromic dye, 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 perform the mixing, prior to onset of polymerization, at temperatures capable of providing for optimal dissolution/dispersion of components/photochromic dye, including at a temperature as claimed so as to provide for well-integrated photochromic dye-polymer microparticles, absent evidence to the contrary.
Claims 1-3, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Tardieu et al. (US 2003/0100672 A1), in view of Jeong et al. (KR 20070069689 A, machine translation).
Regarding claims 1, 3, Tardieu a method comprising mini-emulsion polymerization of a composition comprising one or more monomers, such as (meth)acrylates, and a photochromic compound, such as chromenes and spiroxazenes (read on photochromic dyes) (Ab., 0051]-[0077], ref. claims). Tardieu teaches obtaining mini-emulsions in a micro-fluidizer, and subjecting to degassing under nitrogen for 30 min at 60oC, with stirring [0087]-[0091], and use of the prepared latexes for coating substrates, e.g., optical lenses (Ab, [0083]).
Tardieu is silent on a method comprising mixing using an ultrasonic homogenizer as claimed.
Incorporating the discussion on Jeong from paragraph 10 above, Jeong teaches encapsulated polymer microparticles containing a photochromic dye, for use in optical applications (Ab., lines 407-410). Jeong also teaches providing for uniformly mixed emulsion compositions comprising a monomer and a photochromic dye using a microfluidizer or an ultrasonic homogenizer, i.e., equivalence thereof.
Given the teaching in Jeong on a microfluidizer or an ultrasonic homogenizer as being equally suitable for forming mini-emulsions in polymerizable compositions, and the teaching in Tardieu on suitable polymerizable compositions and obtaining mini-emulsions with a microfluidizer, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for a polymerizable composition by mixing a photochromic compound and one or more monomers, with an ultrasonic homogenizer in lieu of a microfluidizer, based on their art recognized equivalence, absent evidence to the contrary. It is prima facie obvious to substitute equivalents known for the same purpose, so long as the equivalency is recognized in the prior art. In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.
Regarding claim 2 and 11, although Tardieu and Jeong are silent on the claimed lower limit of mixing temperature, it would have been obvious to a skilled artisan to perform the mixing in an ultrasonic homogenizer, prior to the onset of polymerization, at temperatures capable of providing for optimal dissolution/dispersion of components/photochromic dye, including at a temperature as claimed, absent evidence to the contrary.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable Tardieu et al. (US 2003/0100672 A1), in view of Jeong et al. (KR 20070069689 A, machine translation) and Shimada et al. (WO 2020/203865 A1).
At the outset, it is noted that the WIPO publication of Shimada is relied upon for date purposes, while US 12,319,839 B2 is relied upon as its English equivalent.
The discussions on Tardieu and Jeong from preceding paragraphs as applied to claim 1 are incorporated herein by reference.
Although Tardieu and Jeong are silent on an acyclic methacrylate having a molecular weight of 500 or more, 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, Example 1).
In view of the advantages taught in Shimada, 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 a non-cyclic difunctional methacrylate having a molecular weight of 500, alone or in combination with disclosed higher functional methacrylates, in Tardieu’s polymerizable mini-emulsions, as modified by Jeong.
Conclusion
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