DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of Group I, claims 1-3, 5, and 7-9, in the reply filed on 2/10/2026 is acknowledged. Because applicants 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 § 818.01(a)).
Claims 4, 6, 10, and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/10/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 6/23/2026 has been considered. An initialed copy of said IDS is enclosed herein.
Drawings
The drawings filed 8/22/2023 are accepted.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5, 8, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/068798 (herein referred to as “Shimizu”) in view of Inoue (US 2022/0235182) and JP2019/127450 (herein referred to as “Hanasaki”).
Shimizu teaches a photochromic curable composition comprising (B) a polyrotaxane compound (herein understood to read on the claimed “a radically polymerizable monomer component”), and (C) a photochromic compound (0016). The composition may further comprise a silsesquioxane polymerizable monomer (0076).
Shimizu does not teach the composition should further comprise a siloxane having an acyclic polysiloxane bond, and at least one of a radically polymerizable group and a group reactive with a radically polymerizable group. However, Inoue teaches a polyrotaxane composition comprising a reaction product of a polyrotaxane and a polysiloxane compound (0025-0026) wherein the polysiloxane compound crosslinks the polyrotaxane (0041-0043). The polysiloxane compound may comprise functional groups such as carboxylic acid (0077) and may comprise PDMS (0078). Said teaching is understood to read on the claimed “siloxane having an acyclic polysiloxane bond, and at least one of a radically polymerizable group and a group reactive with a radically polymerizable group” and the elected species of claim 3. Such compositions satisfy a demand for a highly concentrated polyrotaxane compatible with silicones, having excellent elastic properties, and exhibit high insulating properties (0014). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add a siloxane having an acyclic polysiloxane bond, and at least one of a radically polymerizable group to the composition of Shimizu. The motivation for doing so would have been compositions containing such polysiloxanes satisfy a demand for a highly concentrated polyrotaxane compatible with silicones, having excellent elastic properties, and exhibit high insulating properties.
Shimizu also does not teach the photochromic curable composition further comprising a reactive hindered amine compound having at least one reactive group selected from the group consisting of a radically polymerizable group and a group reactive with the radically polymerizable group. However, Hanasaki teaches a photochromic curable composition comprising: (A1) a first hindered amine compound having at least 1 reactive group selected from the group consisting of a radical polymerizable group and a group reactive with the radical polymerizable group. The hindered amine (meth)acrylate compound provides curable composition capable of forming photochromic optical component having excellent durability, photochromic properties, and surface hardness when used in amounts of 0.1-20pbm. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to include 0.1-20pbw of a reactive hindered amine compound having at least one reactive group selected from the group consisting of a radically polymerizable group in view of the teachings of Hanasaki. The motivation for doing so would have been to form a photochromic component having excellent durability, photochromic properties, and surface hardness.
With regards to claim 2, none of the references explicitly teaches the amount of the siloxane relative to 100 parts by mass of the radically polymerizable monomer component is 0.01 parts by mass or more and 10 parts by mass or less. However, Inoue teaches the amount of polyrotaxane relative to the polysiloxane may be varied in order to obtain a product with the desired properties such as insulating properties, and elastic properties (0097-0098). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to vary the amount of polysiloxane compound added to Shimizu in order to optimize the properties of the resulting composition.
With regards to claim 5, Shimizu teaches the radically polymerizable monomer component comprises a polyrotaxane compound having a radically polymerizable group (0033-0044).
With regards to claim 8, Shimizu teaches the photochromic curable composition may further comprise a non-reactive hindered amine compound having neither radically polymerizable group nor group reactive with a radically polymerizable group (0145).
With regards to claim 9, Shimizu teaches the photochromic curable composition may further comprise toluene or xylene (see preparation examples)-herein understood to read on the claimed “ an organic compound having a boiling point of 80°C or higher and 200°C or lower and a Hildebrand SP value of 8.0 or more and 10.0 or less” (see 0027 of published application).
Response to Arguments
Applicants’ arguments filed 9/2/2026 have been fully considered but they are not persuasive.
Rejections Under 35 U.S.C. § 103
With regards to the rejection of claims under 35 U.S.C. § 103 as being unpatentable over Shimizu (WO 2015/068798) in view of Inoue (US 2022/0235182) and Hanasaki (JP 2019-127450), applicant submits that both the Shimizu and Hanasaki references are silent about the objective of the claimed invention, that is, obtaining a cured product having high uniformity and excellent appearance in which formation of fine wrinkle-like streaks is prevented or reduced. Said argument is noted but is not persuasive as the claims are not implicitly or explicitly limited with regards to uniformity or appearance or prevention of wrinkle-like streaks. Applicant argues the photochromic curable composition of amended claim 1 includes a reactive hindered amine compound (hereinafter the component (E1)) which reduces bleed-out from a cured product; thus, the appearance defects of the cured product will be prevented or reduced. Said argument is noted but is not persuasive as counsel’s argument cannot take the place of evidence. Applicants argue the effects of the claimed photochromic curable composition are evident from a comparison of Examples 3 and 4 of the specification. In Examples 3 and 4, photochromic curable compositions are prepared in the same manner except that Example 3 uses HALS-1 (a non-reactive hindered amine compound having no reactive group) and Example 4 uses HALS-2
(a reactive hindered mine compound having a reactive group, which corresponds to the component (E1). Said argument is noted but is not persuasive as said showing is not commensurate in scope with the pending claims are the examples only demonstrate as single composition. Furthermore, said result does not seem to be unexpected based upon the teachings of Hanasaki.
Thus, applicants’ arguments are not persuasive, and the claims remain rejected for the reasons set forth herein.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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