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 Office Action is responsive to the amendment filed on 01/22/2026.
3. Claims 1-13, 15-16 are pending. Claims 1-13, 15-16 are under examination on the merits. Claim 1 is amended. Claims 14 is cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive, thus claims 1-13, 15-16 stand rejected as set forth in Office action dated 10/22/2025 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 1-13, 15-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 1 recites “an optical article 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, wherein the first functional layer (A) contains the first compound”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of optical article that the transmittance is measured, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2-13, 15-16 being depended on claim 1 are rejected as well.
Claim Rejections - 35 USC § 103
8. 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.
9. Claims 1-12, 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 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.
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]) 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 3: 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]) contains at least one stabilizer (page 27, [0483]).
‘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]).
Regarding claim 4: ‘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: ‘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 claims 11-12: 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 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]).
Regarding claim 15: ‘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: ‘258 teaches spectacles with the spectacle lens Page 1, [0002]; Page 1, [0005]; Page 22, [0410]; Page 29, [0514]).
10. 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
11. Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that it is not necessary for claim 1 to recite the thickness of the article as it would be understood by a person of ordinary skill in the art (POSA).
The examiner respectfully disagrees. The thickness of optical article is an important factor when the transmittance is measured such as Examples 1, 23-25 of the instant application (see US Pub. No. 2024/0209254 A1, Page 39, Table 8).
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In response to the Applicant’s argument that both JP'258 and JP'173 fail to disclose or suggest: a blue film and a yellow film with the recited CIE1976 (L*, a*, b*) values, measuring Rl and R2 values as recited, and a ratio of Rl/R2 of 0.9 pr more and 2.0 or less. Thus, in order to compensate for this shortcoming of the cited documents, the Office Action cites the current specification a though it were prior art.
The examiner respectfully disagrees. The instant application is used as a guide as how to calculate 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).
12. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Examiner Information
13. 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
02/10/2026
bijan.ahvazi@uspto.gov