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 08/18/2026.
3. Claims 12-20, 23 are pending. Claims 12-20, 23 are under examination on the merits. Claim 23 is amended. Claims 1-11, 21-22 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 12-20, 23 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Information Disclosure Statement
6. The information disclosure statements submitted on 05/08/2026, 06/04/2026, and 07/10/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Claim Rejections - 35 USC § 102
7. 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.
8. Claims 12-20, 23 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kawakami et al. (US Pub. No. 2023/0340318 A1, hereinafter “’318”).
Regarding claim 23: ‘318 discloses a photochromic composition (Page 1, [0002]; Page 20, [0067]) comprising one or more compounds represented by General Formula A selected from the group consisting of the following compound 1, compound 2, compound 3, compound 5, compound 6, and compound 7 (Page 21, [0078]), and one or more compounds represented by General Formula B selected from the group consisting of the following compound 8, compound 9, compound 10, compound 12, compound 13, compound 14, and compound 15 (Page 62, [0086]; Page 111, [0159], Examples 21-40, Table 3).
Regarding claim 12: ‘318 discloses the photochromic composition (Page 1, [0002]; Page 20, [0067]), wherein the compound represented by General Formula B is more than the compound represented by General Formula A on a mass basis with the mass ration of 4:1
(Page 111, Example 38, Table 3).
Regarding claim 13: ‘318 discloses the photochromic composition (Page 1, [0002]; Page 20, [0067]), further comprising a polymerizable compound (Page 114, Claim 16).
Regarding claim 14: ‘318 discloses a photochromic article (Page 111, [0153]) comprising a cured product obtained by curing the photochromic composition (Page 110, [0148]; Page 114, Claim 17).
Regarding claim 15: ‘318 discloses the photochromic article (Page 111, [0153]), further comprising: a substrate, and a photochromic layer which is the cured product (Page 111, [0152]; Page 114, Claim 18).
Regarding claim 16: ‘318 discloses the photochromic article (Page 111, [0153]), wherein the photochromic article is a spectacle lens (Page 104, [0126]; Page 111, [0153]; Page 114, Claim 19).
Regarding claim 17: ‘318 discloses the photochromic article (Page 111, [0153]), wherein the photochromic article is a lens for goggles (Page 104, [0126]; Page 114, Claim 19).
Regarding claim 18: ‘318 discloses the photochromic article (Page 111, [0153]), wherein the photochromic article is a visor portion of a sun visor (Page 104, [0126]; Page 114, Claim 19).
Regarding claim 19: ‘318 discloses the photochromic article (Page 111, [0153]), wherein the photochromic article is a shield member of a helmet (Page 104, [0126]; Page 114, Claim 19).
Regarding claim 20: ‘318 discloses spectacles comprising the spectacle lens (Page 104, [0126]; Page 111, [0153]; Page 114, Claim 20).
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. Claims 23, 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chopra et al. (US Pat. No. 7,556,751 B2, hereinafter “’751”) in view of Kasai et al. (US Pub. No. 2012/0138876 A1, hereinafter “’876”).
Regarding claim 23: ‘751 teaches a photochromic composition (i.e., the term "photochromic composition" refers to a photochromic material in combination with one or more other material, which may or may not be a different photochromic material; Col. 1, lines 58-62), comprising a photochromic material such as (d) 3-(4-methoxyphenyl)-3-(4-morpholinophenyl)-6,11-difluoro-13,13-dimethyl-3- H,13H-indeno[2',3':3,4]naphtho[1,2-b]pyran corresponding to the instant compound 5 of General Formula A (Col. 23, lines 62-64; Col. 51, Claim 18, lines 13-15). ‘751 does not expressly teach one or more compounds represented by General Formula B as set forth.
However, ‘876 teaches a photochromic indeno-fused naphthopyran compound such as
(i) 3-(4-methoxyphenyl)-3-(4-methoxyophenyl)-6,7-dimethoxy-13,13-dimethyl-3H ,13H-indeno[2,1-f]naphtho[1,2-b]pyran corresponding to the instant compound 8 of General Formula B (i.e., formula 2; Page 15, right Col. 1st compound) with benefit of providing to develop a gray or brown color and achieve excellent photochromic properties, another chromene compound represented by the formula (2) is preferably used in combination. Further, a chromene compound having an absorbance due to thermochromism of 0.03 or less and the absorption end at 380 to 410 nm is particularly preferred to provide high transparency (Page 9, [0085]).
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 ‘751 so as to include the one or more photochromic compounds represented by General Formula B as taught by ’876, and would have been motivated to do so with reasonable expectation that this would result in providing to develop a gray or brown color and achieve excellent photochromic properties, another chromene compound represented by the formula (2) is preferably used in combination. Further, a chromene compound having an absorbance due to thermochromism of 0.03 or less and the absorption end at 380 to 410 nm is particularly preferred to provide high transparency as suggested by ‘876 (Page 9, [0085]).
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 prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 12: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 does not expressly teach a content of the compound represented by General Formula B is more than a content of the compound represented by General Formula A on a mass basis.
However, ‘751 teaches the photochromic materials may be used in amounts (or ratios) such that the organic material or substrate into which the photochromic materials are incorporated or otherwise connected exhibits desired optical properties. For example, the amount and types of photochromic materials may be selected such that the organic material or substrate may be clear or colorless when the photochromic material is in the closed-form (i.e., in the bleached or unactivated state) and may exhibit a desired resultant color when the photochromic material is in the open-form (that is, when activated by actinic radiation) (Col. 32, lines 60-67 to Col. 33, lines 1-4). ‘751 teaches the precise amount of the photochromic material to be utilized in the various photochromic compositions and articles is not critical provided that a sufficient amount is used to produce the desired effect. It should be appreciated that the particular amount of the photochromic material used may depend on a variety of factors, such as but not limited to, the absorption characteristics of the photochromic material, the color and intensity of the color desired upon activation, and the method used to incorporate or connect the photochromic material to the substrate, thus he amount of the photochromic material that is incorporated into an organic material may range from 0.01 to 40 weight percent based on the weight of the organic material (Col. 33, lines 4-18).
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 claim 13: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic composition (Col. 1, lines 58-62), further comprising a polymerizable compound (Col. 26, lines 16-20; Col. 27, lines 25-65).
Regarding claim 14: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches a photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6).comprising a cured product obtained by curing the photochromic composition (Col. 27, lines 40-42; Col. 29, lines 49-59)
Regarding claim 15: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6), further comprising: a substrate; and a photochromic layer which is the cured product (Col. 28, lines 50-56),
Regarding claim 16: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6), wherein the photochromic article is a spectacle lens (Col. 25, lines 62-67 to Col. 26, lines 1-5).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 17: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6), wherein the photochromic article is a lens for goggles (Col. 25, lines 62-67 to Col. 26, lines 1-5).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 18: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6), wherein the photochromic article is a visor portion of a sun visor (Col. 25, lines 62-67 to Col. 26, lines 1-5).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 19: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches the photochromic article (Col. 25, lines 40-67 to Col. 26, lines 1-6), wherein the photochromic article is a shield member of a helmet (Col. 25, lines 62-67 to Col. 26, lines 1-5).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 20: The disclosure of ‘751 in view of ‘876 is adequately set forth in paragraph above and is incorporated herein by reference. ‘751 teaches spectacles comprising the spectacle lens (Col. 25, lines 62-67 to Col. 26, lines 1-5).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Response to Arguments
11. Applicant’s arguments with respect to claims 12-20, 23 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
12. 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
13. 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
09/01/2026
bijan.ahvazi@uspto.gov
