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. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/29/2026 has been entered.
3. Claims 12-20, 23 are pending. Claims 12-20, 23 are under examination on the merits. Claims 12-13 are amended. Claims 1, 4, 6-11, 21-22 are cancelled. Claim 23 is newly added. Claims 2-3, 5 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 The objections and rejections not addressed below are deemed withdrawn.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.
Claim Rejections - 35 USC § 103
6. 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 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 Nelson et al. (US Pat. No. 6,296,785 B1, hereinafter “’785”).
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 (a) 3,3-di(4-methoxyphenyl)-6,11-difluoro-13,13-dimethyl-3H,13H-indeno[2',3':- 3,4]naphtho[1,2-b]pyran corresponding to the instant compound 4 of General Formula A (Col. 23, lines 54-55; Col. 51, Claim 18, lines 6-7). ‘751 does not expressly teach one or more compounds represented by General Formula B as set forth.
However, ‘785 teaches a photochromic indeno-fused naphthopyran compound such as
(i) 3-(4-methoxyphenyl)-3-(4-morpholinophenyl)-6,7-dimethoxy-13,13-dimethyl-3H ,13H-indeno[2,1-f]naphtho[1,2-b]pyran corresponding to the instant compound 11 of General Formula B (Col. 29, lines 59-61; Col. 60, Claim 5, lines 36-39) with benefit of providing a single photochromic compound exhibits a blended activated hue. In the preparation of photochromic articles with a desired activated hue, a combination of complementary photochromic compounds each having an activated visible absorption maximum may be used. The activated visible absorption maxima of the various compounds are thereby blended to achieve the desired activated color. By employing a compound having two activated visible absorption maxima, fewer distinct compounds are required to achieve a blend of activated visible absorption maxima to produce the desired activated hue, e.g. neutral color. In addition, the blended activated hue of a compound is particularly suitable for use in photochromic articles having a brown activated hue due to the greater optical density of band A (420-500 nm) than the optical density of band B (500-650 nm) (Col. 52, lines 18-33).
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 ’785, and would have been motivated to do so with reasonable expectation that this would result in providing a single photochromic compound exhibits a blended activated hue. In the preparation of photochromic articles with a desired activated hue, a combination of complementary photochromic compounds each having an activated visible absorption maximum may be used. The activated visible absorption maxima of the various compounds are thereby blended to achieve the desired activated color. By employing a compound having two activated visible absorption maxima, fewer distinct compounds are required to achieve a blend of activated visible absorption maxima to produce the desired activated hue, e.g. neutral color. In addition, the blended activated hue of a compound is particularly suitable for use in photochromic articles having a brown activated hue due to the greater optical density of band A (420-500 nm) than the optical density of band B (500-650 nm) as suggested by ‘785 (Col. 52, lines 18-33).
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 ‘785 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 ‘785 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 ‘785 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 ‘785 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 ‘785 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).
‘785 teaches the photochromic article, wherein the photochromic article is a spectacle lens (Col. 29, lines 19-30).
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 ‘785 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).
‘785 teaches the photochromic article, wherein the photochromic article is a lens for goggles (Col. 29, lines 19-30).
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 ‘785 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).
‘785 teaches the photochromic article, wherein the photochromic article is a visor portion of a sun visor (Col. 29, lines 19-30).
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 ‘785 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).
‘785 teaches the photochromic article, wherein the photochromic article is a shield member of a helmet (Col. 29, lines 19-30).
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 ‘785 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).
‘785 teaches spectacles comprising the spectacle lens (Col. 29, lines 19-30).
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
8. 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.
Examiner Information
9. 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
05/12/2026
bijan.ahvazi@uspto.gov
Prosecution Insights