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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/30/2026 has been entered.
3. Claims 1, 4-10, 13, 15-16 are pending. Claims 1, 4-10, 13, 15-16 are under examination on the merits. Claim 1 is amended. Claims 2-3, 11-12 are cancelled. Claims 14 is previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive, thus claims 1, 4-10, 13, 15-16 stand rejected as set forth in Office action dated 02/13/2026 and further discussed in the Response to Arguments below.
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 1, 4-10, 15-16 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Kawato et al. (US Pub. No. 2019/0211258 A1, hereinafter “’258”) in view of Mori et al. (JP 2018-097173 A, machine translation, hereinafter “’173”).
Regarding claims 1-2: ‘258 teaches an optical article such as photochromic lens (Page 1, [0001]) containing a photochromic compound, and a first compound such as copper atom-having tetraazaporphyrin compound having an absorption peak in a wavelength range of 550 to 600 nm (Page 1, [0005]-[0006]; Page 29, [0531], Fig. 1), having a laminate structure (Page 28, [0501]) in which (A) a first functional layer containing at least a photochromic compound, the first compound, and (B) a lens substrate are as one layer, having a luminous transmittance of 30% or more in the state with no photochromic compound coloration, having a luminous transmittance of 25% or less in the state with photochromic compound coloration, and having a minimum transmittance of 0.1 to 20% in a wavelength range of 550 to 600 nm in a state with photochromic compound coloration (Page 29, [0531], Fig. 1; (Page 31, Table 1). ‘258 teaches the optical article (Page 1, [0001]) contains at least one stabilizer (page 27, [0483]). ’258 does not expressly teach the lens substrate and the first functional layer comprising the photochromic compound, and the first compound are independently exist, and when a blue film with L* of 69, a* of -42, and b* of -34 and a yellow film with L* of 81, a* of 0, and b* of 85, relating to the hue in the CIE1976 (L*, a*, b*) color space are photographed with a hyperspectral camera through the optical article in which the photochromic compound is colored, and when the average reflectance at a wavelength of 420 to 519 nm in photographing the blue film is referred to as R1, and the average reflectance at a wavelength of 580 to 595 nm in photographing the yellow film is referred to as R2, the ratio of R1 to R2 (R1/R2) is 0.9 or more and 2.0 or less, wherein either (i) the first functional layer (A) contains the first compound, or (ii) the optical article independently has a second functional layer (C) that contains the first compound, and in the case of (ii), the optical article has any other layer between the first functional layer (A) and the second functional layer (C), and wherein the thickness of the lens substrate (B) is 0.5 to 30 mm.
However, ‘173 teaches the form and the production method of the photochromic optical article (Page 28/65, [0120]) such as an article produced by a method of dissolving a photochromic compound in a polymerizable monomer and polymerizing the solution by light and/or heat to directly mold a photochromic optical article such as a lens (i.e., a kneading method; Page 28/65, [0121]) or an article produced by a method in which a resin layer having a photochromic compound dispersed therein is provided on the surface of a plastic molded article such as a lens by coating or casting, and the resin layer is cured by light and/or thermal polymerization (i.e., a lamination method; Page 28/65, [0122]) or an article produced by bonding two optical sheets with an adhesive layer formed of an adhesive resin in which a photochromic compound is dispersed (i.e., a binder method which is a kind of laminate; Page 28/65, [0123]). ’173 teaches the optical article, independently having a second functional layer (C) that contains the first compound, or the optical article, having any other layer between the first functional layer (A) and the second functional layer (C) (Page 32/65, [0144]), wherein the first functional layer (A) contains at least one stabilizer selected from the group consisting of a UV absorbent, a hindered amine-type light stabilizer, and a singlet oxygen quencher (Page 35/65, [0161]), and wherein the thickness of the lens substrate (B) is 0.5 to 30 mm (Page 33/64, [0145]) with benefit of providing an optical laminate comprising a photochromic optical article having both characteristics of anti-glare property and transparency even under a condition where light having wavelengths shorter than those of 380 nm is shielded (Page 8/65, [0009]).
In an analogous art of the photochromic optical article, 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 optical article by ‘258, so as to include the substrate and the first functional layer comprising the photochromic compound, and the first compound are independently exist as taught by ‘173, and would have been motivated to do so with reasonable expectation that this would result in providing an optical laminate comprising a photochromic optical article having both characteristics of anti-glare property and transparency even under a condition where light having wavelengths shorter than those of 380nm is shielded as suggested by ‘173 (Page 8/65, [0009]).
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 choosing an appropriate functional layer of a known material such a photochromic compound, the first compound based on its suitability for its intended use is within the level ordinary skill in the art.
With regard to the hue in the CIE1976 (L*, a*, b*) color space and the average reflectance at a certain wavelength, considering the instant specification (US Pub. No. 2024/0209254 A1, Page 40, [0459, Table 9; Page 41, [0460]) in Example 1 in which the photochromic compound and the first compound are in the same layer and a stabilizer is not used (Page 25, [0341, Example 1), or Example 10 in which the layer including the photochromic compound and the layer including the first compound are in contact and a stabilizer is not used (Page 27, [0373], Example 10), the photochromic persistence is 10%, and Rl/R2 is 0.7 (Page 29, Table 2). As indicated in the section dealing with claims 3 and 5 of instant claims, the use of a stabilizer is a well-known feature, and a person skilled in the art could have easily conceived of adopting the above well-known feature, since ‘258 teaches the optical article (Page 1, [0001]) contains at least one stabilizer (Page 27, [0483]), and an antioxidant (Page 27, [0483]), and ‘173 teaches the optical article, the first functional layer (A) contains at least one stabilizer selected from the group consisting of a UV absorbent, a hindered amine-type light stabilizer, and a singlet oxygen quencher (Page 35/65, [0161]), and an antioxidant (Page 35/65, [0161]), thereby setting the ratio of Rl/R2 to obtain a recited value of 0.9 or more and 2.0 or less is within the level ordinary skill in the art.
Furthermore, since ‘258 in view of ‘173 teaches substantially identical optical article comprising a photochromic compound, and a first compound having an absorption peak in a wavelength range of 550 to 600 nm as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e. the hue in the CIE1976 (L*, a*, b*) color space and the average reflectance, would be the same as claimed (i.e., when a blue film with L* of 69, a* of -42, and b* of -34 and a yellow film with L* of 81, a* of 0, and b* of 85, relating to the hue in the CIE1976 (L*, a*, b*) color space are photographed with a hyperspectral camera through the optical article in which the photochromic compound is colored, and when the average reflectance at a wavelength of 420 to 519 nm in photographing the blue film is referred to as R1, and the average reflectance at a wavelength of 580 to 595 nm in photographing the yellow film is referred to as R2, the ratio of R1 to R2 (R1/R2) is 0.9 or more and 2.0 or less). If there is any difference between the product of ‘258 in view of ‘173 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical composition, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 4: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘258 teaches the optical article (Page 1, [0001]), wherein the first compound contains a copper atom-having tetraazaporphyrin compound such as PD-311S (Page 11, [053]; Page 29, [0531, Example 1).
Regarding claim 5: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘258 teaches the optical article (Page 1, [0001]), wherein the first functional layer (A) contains an antioxidant (Page 27, [0483]).
‘173 teaches the optical article, wherein the first functional layer (A) contains an antioxidant (Page 35/65, [0161]).
Regarding claim 6: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference.’173 teaches the optical (Pages 6-7/65, [0003]-[0005]) ,wherein the photochromic compound contains: a compound which, when a toluene solution thereof is prepared as a measurement sample so as to have a controlled concentration of 1.0 mmol/l at 23°C, has an absorbance at 420 nm of less than 0.100, and has an absorbance at 430 nm of less than 0.015 (Page 20/65, [0078]; Page 20/65, [0081]).
Regarding claim 7: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘173 teaches the thickness of the first functional layer (A) is 10 to1000 µm (Page 31/65, [0140]).
Regarding claim 8: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘258 teaches the optical article (Page 1, [0001]), further having a polarization functional layer (D) having a polarization function (Page 28, [0494]-[0495]).
‘173 teaches the optical article, further having a polarization functional layer (D) having a polarization function (Page 35/66, [0162]).
Regarding claim 9: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference.’173 teaches the optical (Pages 6-7/65, [0003]-[0005]) ,wherein the photochromic compound contains: a compound which, when a toluene solution thereof is prepared as a measurement sample so as to have a controlled concentration of 1.0 mmol/l at 23°C, has an absorbance at 420 nm of less than 0.100, and has an absorbance at 430 nm of less than 0.015 (Page 20/65, [0078]; Page 20/65, [0081]).
Regarding claim 10: ‘258 teaches the optical article (Page 1, [0001]), containing a dye (Page 27, [0483]).
Regarding claim 15: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘258 teaches a spectacle lens formed of the optical article (Page 1, [0002]; Page 1, [0005]; Page 22, [0410]; Page 29, [0514]).
Regarding claim 16: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph above and is incorporated herein by reference. ‘258 teaches spectacles with the spectacle lens Page 1, [0002]; Page 1, [0005]; Page 22, [0410]; Page 29, [0514]).
8. Claim 13 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Kawato et al. (US Pub. No. 2019/0211258 A1, hereinafter “’258”) in view of Mori et al. (JP2018-097173 A, machine translation, hereinafter “’173”) as applied to claim 1 above, and further in view of
Mikami et al. (JP2013-114162 A, machine translation, hereinafter “’162”).
Regarding claim 13: The disclosure of ‘258 in view of ‘173 is adequately set forth in paragraph 9 above and is incorporated herein by reference. ‘258 in view of ‘173 does not expressly teach the optical article having a gradation region where the color changes gradually.
However, ‘162 teaches the optical article having a gradation region where the color changes gradually (Page 5/14, [0005]) with benefit of providing a spectacle lens in which the color continuously changes (exhibits a gradation color) under light irradiation in the region subjected to the acid treatment (Page 10/14, [0025]).
In an analogous art of the photochromic optical article, 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 optical article by ‘258, so as to include the optical article having a gradation region where the color changes gradually as taught by ‘162, and would have been motivated to do so with reasonable expectation that this would result in providing a spectacle lens in which the color continuously changes (exhibits a gradation color) under light irradiation in the region subjected to the acid treatment as suggested by ‘162 (Page 10/14, [0025]).
Response to Arguments
9. Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that US'258 does not disclose an embodiment in which a layer containing a photochromic compound exists independently from the lens substrate, nor does it disclose an embodiment in which a layer containing the first compound exists independently from the lens substrate, and JP'173 merely shows an embodiment in which the photochromic compound is contained in a layer separate from the lens substrate, but does not disclose that the first compound (such as a tetraazaporphyrin compound) is contained in a layer separate from the lens substrate.
The examiner respectfully disagrees. In response to applicant's arguments against the references individually, 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). The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The rejection is based on the combination of ‘258 in view of ‘173. ‘258 teaches an optical article such as photochromic lens (Page 1, [0001]) containing a photochromic compound, and a first compound such as copper atom-having tetraazaporphyrin compound having an absorption peak in a wavelength range of 550 to 600 nm (Page 1, [0005]-[0006]; Page 29, [0531], Fig. 1), having a laminate structure (Page 28, [0501]) in which (A) a first functional layer containing at least a photochromic compound, the first compound, and (B) a lens substrate are as one layer. ’258 does not expressly teach the lens substrate and the first functional layer comprising the photochromic compound, and the first compound are independently separate layer.
However, ‘173 teaches the form and the production method of the photochromic optical article (Page 28/65, [0120]) such as an article produced by a method of dissolving a photochromic compound in a polymerizable monomer and polymerizing the solution by light and/or heat to directly mold a photochromic optical article such as a lens (i.e., a kneading method; Page 28/65, [0121]) or an article produced by a method in which a resin layer having a photochromic compound dispersed therein is provided on the surface of a plastic molded article such as a lens by coating or casting, and the resin layer is cured by light and/or thermal polymerization (i.e., a lamination method; Page 28/65, [0122]) or an article produced by bonding two optical sheets with an adhesive layer formed of an adhesive resin in which a photochromic compound is dispersed (i.e., a binder method which is a kind of laminate; Page 28/65, [0123]). ’173 teaches the optical article, independently having a second functional layer (C) that contains the first compound, or the optical article, having any other layer between the first functional layer (A) and the second functional layer (C) (Page 32/65, [0144]), wherein the first functional layer (A) contains at least one stabilizer selected from the group consisting of a UV absorbent, a hindered amine-type light stabilizer, and a singlet oxygen quencher (Page 35/65, [0161]), and wherein the thickness of the lens substrate (B) is 0.5 to 30 mm (Page 33/64, [0145]) with benefit of providing an optical laminate comprising a photochromic optical article having both characteristics of anti-glare property and transparency even under a condition where light having wavelengths shorter than those of 380 nm is shielded (Page 8/65, [0009]). In this case, nevertheless, the combination of ‘258 in view of ‘173 is deemed to teach the optical device. In an analogous art of the photochromic optical article, 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 optical article by ‘258, so as to include the substrate and the first functional layer comprising the photochromic compound, and the first compound are independently exist as taught by ‘173, and would have been motivated to do so with reasonable expectation that this would result in providing an optical laminate comprising a photochromic optical article having both characteristics of anti-glare property and transparency even under a condition where light having wavelengths shorter than those of 380 nm is shielded as suggested by ‘173 (Page 8/65, [0009]).
In response to the Applicant’s argument that Applicant submits that both US'258 and JP'173 fail to recognize the problem identified in the present specification, and therefore fail to disclose or suggest that the photochromic performance persistence may be reduced depending on how the first compound is incorporated into the optical article.
The examiner respectfully disagrees It is submitted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare the recited coloring composition and show the product (i.e., the optical article) is actually different from and unexpectedly better than the teachings of the references. The declaration should include a description of precisely what was tested. It must include both the invention as claimed, and the closest prior art. A description of all of the test conditions such as test results should be clearly indicated. The results must include both the results of the test performed on the invention as claimed, and the results of the test performed on the closest prior art, an analysis of the test results. Furthermore, the comparison must be under the substantially the same conditions except for the novel features of the invention, and precisely what was done should be recited in the declaration, e.g., the actual steps carried out, the materials employed, and the results obtained should be spelled out. Nothing concerning the work relied upon should be left to conjecture. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
Examiner Information
10. 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