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 .
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) 1-5, 7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taichi et al. (JP 2019-127450).
Regarding claims 1 and 9, Taichi discloses a photochromic curable composition comprising a hindered amine compound having a radically polymerizable group (0032-0033), a polyrotaxane compound, i.e. a radically polymerizable monomer, (0101) and a photochromic compound (0106). Further, Taichi comprises other components such as sebacic acid(1,2,2,6,6-pentamethyl-4-piperidyl ester)diester (0175-0176). Given that Taichi discloses the same compound as disclosed in the specification, it is clear that the compound of Taichi would have no reactive group and the same structure as claim in present claim. Further, given that the polyrotaxane compound of Taichi does not disclose piperidyl group, it is clear that polyrotaxane compound of Taichi does not have piperidyl group in polyrotaxane compound.
In light of the overlap between the claimed photochromic curable composition and the photochromic curable composition disclosed by Taichi, it would have been obvious to one of ordinary skill in the art to use a photochromic curable composition that is both disclosed by Taichi and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 2, Taichi discloses the photochromic curable composition of claim 1, comprising 0.01 to 20 parts by mass of hindered amine compound relative to 100 parts by mass of the radically polymerizable monomer component (0022).
Regarding claim 3, Taichi discloses the photochromic curable composition of claim 1 wherein given that Taichi discloses 0.01 to 20 parts by mass of hindered amine compound and 0.1% is 70% by mass of polyrotaxane component, the ratio of polyrotaxane component to hindered amine compound would overlap the claimed ratio.
Regarding claim 4, Taichi discloses the photochromic curable composition of claim 1, wherein Taichi discloses the same formula for hindered amine compound (0038-0040).
Regarding claim 5, Taichi discloses the photochromic curable composition of claim 1, wherein the content of the polyrotaxane component in the radically polymerizable monomer component is 0.1% is 70% by mass (0122).
Regarding claim 7, Taichi discloses the photochromic curable composition of claim 1, further comprising surfactant, i.e. leveling agent, (0124).
Regarding claim 10, Taichi discloses the photochromic curable composition of claim 1, further comprising toluene, i.e. organic compound, (0060). Given that Taichi discloses the same organic compound as disclosed in the present specification, it is clear that the organic compound of Taichi would inherently have the same properties as claimed in present claim.
Regarding claim 11, Taichi discloses the photochromic curable composition of claim 10 but does not disclose amount of the organic compound.
Since the instant specification is silent to unexpected results, the specific amount of organic compound is not considered to confer patentability to the claims. As the solution is a variable that can be modified, among others, by adjusting the amount of the organic compound, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of the organic compound in composition of Taichi to obtain the desired solubility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taichi et al. (JP 2019-127450) in view of Shimizu et al (US 2016/0116765).
Regarding claim 6, Taichi discloses photochromic curable composition of claim 1 but does not disclose silsesquioxane having acryloyl group.
Shimizu discloses photochromic curable composition comprising polyfunctional (meth)acrylatesilsesquioxane to obtain strength and excellent photochromic properties (0296, 0298).
It would have been obvious to one of ordinary skill in the art to use polyfunctional (meth)acrylatesilsesquioxane of Shimizu in the composition of Taichi to obtain strength and excellent photochromic properties.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taichi et al. (JP 2019-127450) in view of Yamamoto et al. (US 2018/0251657).
Regarding claim 12, Taichi discloses the photochromic curable composition of claim 1, wherein Taichi discloses an optical substrate (0030), a photochromic resin layer that is a cure product of the photochromic curable composition of claim 1 (0030) and a primer layer disposed between the optical substrate and the photochromic resin layer (0179-0182). However, Taichi does not disclose polyurethane resin based primer layer.
Yamamoto discloses an optical substrate, primer coat layer and photochromic coat layer (fig. 4) wherein the primer coat layer comprises polyurethane resin to obtain improved adhesion between layers (0063-0064).
It would have been obvious to one of ordinary skill in the art to use the specific primer layer of Yamamoto between the optical substrate and a photochromic resin layer of Taichi to obtain improved adhesion between layers.
Claim(s) 1 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taichi et al. (JP 2019-127450) in view of Tani et al. (US 2017/0037220).
Regarding claims 1 and 9, Taichi discloses a photochromic curable composition comprising a hindered amine compound having a radically polymerizable group (0032-0033), a polyrotaxane compound, i.e. a radically polymerizable monomer, (0101) and a photochromic compound (0106).
Taichi fails to disclose the second hindered compound as presently claimed.
Tani discloses resin composition comprising light stabilizer such as bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate to prevent degradation of the composition (0146-0149). Given that Tani discloses the same compound as disclosed in the specification, it is clear that the compound of Tani would have no reactive group and the same structure as claim in present claim.
It would have been obvious to one of ordinary skill in the art to use the light stabilizer of Tani in the composition of Taichi to prevent degradation of the composition.
Regarding claim 2, Taichi discloses the photochromic curable composition of claim 1, comprising 0.01 to 20 parts by mass of hindered amine compound relative to 100 parts by mass of the radically polymerizable monomer component (0022).
Regarding claim 3, Taichi discloses the photochromic curable composition of claim 1 wherein given that Taichi discloses 0.01 to 20 parts by mass of hindered amine compound and 0.1% is 70% by mass of polyrotaxane component, the ratio of polyrotaxane component to hindered amine compound would overlap the claimed ratio.
Regarding claim 4, Taichi discloses the photochromic curable composition of claim 1, wherein Taichi discloses the same formula for hindered amine compound (0038-0040).
Regarding claim 5, Taichi discloses the photochromic curable composition of claim 1, wherein the content of the polyrotaxane component in the radically polymerizable monomer component is 0.1% is 70% by mass (0122).
Regarding claim 7, Taichi discloses the photochromic curable composition of claim 1, further comprising surfactant, i.e. leveling agent, (0124).
Regarding claim 10, Taichi discloses the photochromic curable composition of claim 1, further comprising toluene, i.e. organic compound, (0060). Given that Taichi discloses the same organic compound as disclosed in the present specification, it is clear that the organic compound of Taichi would inherently have the same properties as claimed in present claim.
Regarding claim 11, Taichi discloses the photochromic curable composition of claim 10 but does not disclose amount of the organic compound.
Since the instant specification is silent to unexpected results, the specific amount of organic compound is not considered to confer patentability to the claims. As the solution is a variable that can be modified, among others, by adjusting the amount of the organic compound, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of the organic compound in composition of Taichi to obtain the desired solubility (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Applicant argues that Taichi discloses sebacic acid(1,2,2,6,6-pentamethyl-4-piperidyl ester)diester in comparative examples. However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Further, “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Applicant argues that Shimizu does not remedy the deficiency of Taichi. However, note that while Shimizu does not disclose all the features of the present claimed invention, Shimizu is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely photochromic curable composition comprising polyfunctional (meth)acrylatesilsesquioxane to obtain strength and excellent photochromic properties, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that neither Taichi nor Tani teaches using two different hindered amine compounds A1 and A2. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, note that while Tani does not disclose all the features of the present claimed invention, Tani is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely light stabilizer such as bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate to prevent degradation of the composition, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Taichi has demonstrated in examples that A2 was used instead of the A1, a photochromic cured body become turbid after the accelerated storage test. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Further, it is noted that Taichi does not provide any evidence that show a photochromic body become turbid after the accelerated storage test.
Applicant argues that the teachings of Taichi discourage of using A2 in the photochromic composition and thus Taichi teaches away using light stabilizer of Tani. However, it is noted that there is no examples in Taichi regarding the mixture of A1 and A2 and therefore Taichi has not established any evidence to support that Taichi teaches away using light stabilizer of Tani.
Applicant argues that Tani is directed to a polycarbonate resin composition which contains no radical polymerizable monomer unlike Taichi, there is not necessarily a motivation to use the light stabilizer disclosed in Tani in the composition of Taichi. Applicants’ are reminded that according to MPEP 2141.01 (a), a reference may be relied on as a basis for rejection of an applicants’ invention if it is “reasonably pertinent to the particular problem with which the inventor is concerned.” A reasonably pertinent reference is further described as one which “even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Tani is, therefore, a reasonably pertinent reference, because it teaches light stabilizer such as bis(1,2,2,6,6-pentamethyl-4-piperidyl) sebacate to prevent degradation of the composition, which is a function especially pertinent to the invention at hand.
Applicant argues that Yamamoto do not remedy the deficiency of Taichi. However, note that while Yamamoto does not disclose all the features of the present claimed invention, Yamamoto is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely the primer coat layer comprises polyurethane resin to obtain improved adhesion between layers, and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787