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 01/06/2026.
3. Claims 1-15 are pending. Claims 1-15 are under examination on the merits. Claim 1 is amended.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1-15 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 § 102
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.
7. Claims 1-3, 6, 8-10, 12-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over Turpen et al. (WO 2020/094772 A1, hereinafter “’772”).
Regarding claim 1: ‘722 discloses a photochromic composition (Page 1, [0002]), comprising 3-(4 methoxyphenyl)-3-phenyl-7-methoxy-11-cyano-13,13-diethyl-3H,13Hindeno[2' ,3' :3,4]naphtho[1 ,2-b ]pyran (Page 20, lines 29-30) corresponding to a photochromic compound of instant General Formula 1, and 3-(4-butoxyoxyphenyl)-3-(4-methoxyphenyl)-6-7-dimethoxy-11-(4- trifluoromethylphenyl)-13,13 di-n-propyl-3H,13Hindeno[2' ,3' :3,4]naphtho[1 ,2-b ]pyran (Page 20, lines 25-26) corresponding to a photochromic compound of instant General Formula B (combination (a)(ii) or (a)(iv)).
Regarding claim 2: ‘722 discloses the photochromic composition (Page 1, [0002]), wherein R13 and R14 each independently represent an electron-donating group such as 6-7-dimethoxy moiety corresponding to a photochromic compound of instant General Formula B (Page 20, lines 25-26).
Regarding claim 3: ‘722 discloses the photochromic composition (Page 1, [0002]), wherein the electro-withdrawing group is 11-cyano in the instant General Formula 1 (Page 20, lines 29-30), and 11-(4- trifluoromethylphenyl) in the instant General Formula B (Page 20, lines 25-26).
Regarding claim 6: ‘722 discloses the photochromic composition (Page 1, [0002]), B7 and B8 in General Formula 1 each independently represent a substituted or unsubstituted phenyl group such as 3-(4 methoxyphenyl)-3-phenyl (Page 20, lines 29-30).
Regarding claim 8: ‘722 discloses the photochromic composition (Page 1, [0002]), further comprising a polymerizable compound such as acrylic polyol (Page 36, Table 1; Page 37, lines 10-14).
Regarding claim 9: ‘722 discloses a photochromic article comprising a cured product obtained by curing the photochromic composition (Page 37, [0149], lines 19-25).
Regarding claim 10: ‘722 discloses a photochromic article, comprising: a substrate; and a photochromic layer which is the cured product (Page 38, [0150], lines 3-9).
Regarding claim 12: ‘722 discloses the photochromic article, wherein the photochromic article is a lens for goggles (Page 5, [0020], lines 1-7).
Regarding claim 13: ‘722 discloses the photochromic article, wherein the photochromic article is a visor portion of a sun visor (Page 5, [0020], lines 1-7).
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 4-5, 7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Turpen et al. (WO 2020/094772 A1, hereinafter “’772”) as applied to claim 1 above, and further in view of Chopra et al. (US Pub. No. 2007/0138449 A1, hereinafter “’449”).
Regarding claims 4-5,7: The disclosure of ‘772 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ’772 does not expressly teach the halogen atom is a fluorine atom, the perfluoroalkyl group is a trifluoromethyl group, and B7 and B8 in General Formula 1 each independently represent a substituted phenyl group, and the substituted phenyl group has one or more substituents selected from the group consisting of a methoxy group.
However, ‘449 teaches photochromic materials comprising indeno-fused naphthopyrans having an electron-withdrawing substituent (Page 1, [0001]) in 6-position and 11-poisition (Page 2, [0014]) such as 3,3-di(4-methoxyphenyl)-6,11-difluoro-13,13-dimethyl-3H,13H-indeno[2',3':- 3,4]naphtho[1,2-b]pyran (Page 13, [0077]). ‘449 teaches R17 in 11-position of structure III, may be, for example: hydrogen, fluoro, chloro, bromo, perfluoroalkyl, perfluoroalkoxy, cyano group (Page 10, [0069]) with benefit of providing the photochromic materials that display faster fade rates, bathochromic shift, and higher performance ratings compared to comparable indeno-fused naphthopyrans without the electron-withdrawing substituents (Page 2, [0010])
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 ‘772, so as to include the photochromic compound, R33 (11-posiiton), and R37 (6-position) is electron-withdrawing groups as taught by ‘449, and would have been motivated to do so with reasonable expectation that this would result in providing the photochromic materials that display faster fade rates, bathochromic shift, and higher performance ratings compared to comparable indeno-fused naphthopyrans without the electron-withdrawing substituents as suggested by ‘449 (Page 2, [0010]).
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 substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two
electron-withdrawing groups) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
10. Claims 11, 14-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Turpen et al. (WO 2020/094772 A1, hereinafter “’772”) as applied to claim 1 above, and further in view of Shimada et al. (US Pub. No. 2020/0142221 A1, hereinafter “’221”).
Regarding claims 11,14-15: The disclosure of ‘772 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘629 does not expressly teach the photochromic article is a spectacle lens or a shield member of a helmet, and spectacles comprising the spectacle lens.
However, ‘221 teaches an optical article comprising: a substrate, a protective film on the substrate, and a photochromic layer between the substrate and the protective film (Page 1, [0002]). ‘221 teaches the optical article is structure of a spectacle lens (with power, without power), it can also be applied to a goggle lens for a goggle that has one lens to cover the eyes instead of two (left and right) lens, or a member corresponding to a visor (brim) portion, which is different from a lens shape of a typical spectacle lens, in the case where the visor (brim) portion has photochromism. The structure can also be applied to the structure of helmet shield member. The member corresponding to a visor portion or the shield member includes a plastic substrate, such as polycarbonate (Page 11, [0177]).
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 apply the photochromic composition by ‘772, so as to include the photochromic article such as spectacle lens or a shield member of a helmet, and spectacles comprising the spectacle lens as taught by ‘221, and would have been motivated to do so with reasonable expectation that this would result in providing an optical articles such as a spectacle lens including a photochromic layer having photochromism as suggested by ‘221 (Page 1, [0002]).
11. Claims 10-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Turpen et al. (WO 2020/094772 A1, hereinafter “’772”) as applied to claim 1 above, and further in view of Barry Van Gemert (US Pat. No. 5,645,767, hereinafter “’767”).
Regarding claims 10-15: The disclosure of ‘772 or ‘722 in view of ’221 is adequately set forth in paragraphs 7 and 10 above and is incorporated herein by reference. This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘772 or ‘722 in view of ’221 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). ‘767 teaches the photochromic article, further comprising: a substrate, a photochromic layer which is the cured product (Col. 13, lines 40-58). Furthermore, ‘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
12. Applicant’s arguments with respect to claims 1-15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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
01/25/2026
bijan.ahvazi@uspto.gov