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 application is a 371 of PCT/US2021/036066, filed on 09/30/2021, which is entitled to and claims the benefit of priority of JP Patent App. No. 2021-054000, filed 03/26/2021. The preliminary amendment filed on 07/31/2023 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group II, claims 1-3, 10 in the reply filed on 08/07/2015 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
4. Claims 1-14 are pending. Claims 1-3, 10 are under examination on the merits. Claims 4-9, 11-14 are withdrawn to a non-elected invention from further consideration.
Information Disclosure Statement
5. The information disclosure statements submitted on 10/31/2023, 03/12/2025, 07/29/ 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Priority
6. Receipt is acknowledged of papers submitted on 07/31/2023 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1-3, 10 are rejected under 35 U.S.C. 103(a) as being unpatentable over He et al (US Pub. No. 2012/0156521 A1, hereinafter “’521”) in view of Jibin Lin (US Pub. No. 2002/0007078 A1, hereinafter “’078”).
Regarding claims 1-3,10: ‘521 teaches a method of producing a polymerizable composition (Page 25, [0226]) comprising mixing a quantity of CE1-6 compound as indeno-fused naphthopyran compound calculated to yield a 1.5x10-3 molal solution, 50 grams of a monomer blend of 4 parts ethoxylated bisphenol A dimethacrylate (BPA 2EO DMA), 1 part poly(ethylene glycol) 600 dimethacrylate, and 0.033 weight percent 2,2'-azobis(2-methyl propionitrile) (AIBN) to producing a polymerizable composition. ‘521 does not expressly teach
an indeno-fused naphthopyran compound particles having a degree of crystallization of 10.00% or less, preferably 7.00% or less, and a maximum primary particle size of 200 µm or less.
However, ‘078 teaches a photochromic article comprising in combination, a polymeric organic host material and a composition comprising a photochromic amount of the naphthopyran compound (Page 1, [0002]). ‘078 clearly teaches that the molecular size, melting point and solvent solubility of the photochromic compound can have a large influence on the preparation of the photochromic product, deteriorating the performance of the photochromic compound if not incorporated into the plastic substrate with sufficient uniformity and sufficient depth (Page 1, [0008]-[0009]). This 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 (Page 1, [0009]). Therefore, it can be seen that reducing the size of the molecule and increasing the solubility have an important role in improving the performance of photochromic products and are a common pursuit in the art. It is well known that amorphous products are generally more soluble than crystalline products. Therefore, reducing the degree of crystallization and reducing the particle size, thereby increasing the solubility of the product, is a routine practice for those skilled in the art.
In an analogous art of a method of producing a photochromic polymerizable 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 degree of crystallization of the indeno-fused naphthopyran compound particles by ‘521, so as to include an indeno-fused naphthopyran compound particles having a degree of crystallization of 10.00% or less, preferably 7.00% or less, and a maximum primary particle size of 200 µm or less as taught by ‘078, and would have been motivated to do so with reasonable expectation that this would result in providing amorphous products which are generally more soluble than crystalline products. Therefore, reducing the degree of crystallization and reducing the particle size, thereby increasing the solubility of the product as suggested by ‘078 (Page 1, [0009]).
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
09/05/2025
bijan.ahvazi@uspto.gov