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
Claims 4-10 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/12/2025.
Claim Rejections - 35 USC § 112
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.
Claims 1-3 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “said photochromic lens has a second surface facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses; said second surface comprising another first portion.” However, it is unclear how the second surface can comprise “another first portion.” Specifically, as the “first portion” is defined as a first of two portions it is unclear what construction is required to be “another first portion.” Additionally, as the claim has defined “at least a first portion” it is unclear if the “another first portion” is a part of the “at least a first portion” or a different first portion.” Moreover, as the “first portion” is defined to be on the first surface, it is unclear how the “another first portion” can be on the second surface. Further, it is unclear if the “another first portion” is intended to be any additional portion with a reflecting material coating or if any “portion” of the lens would read on the claimed “another first portion.” For the purposes of examination, any lens with a portion having a reflecting material coating on the second surface will be interpreted as reading on the claimed limitation.
Claims 2-3 are rejected as being dependent upon claim 1 and failing to cure the deficiencies of the rejected base claim.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pine et al. (U.S. PG-Pub No. 2021/0173228; hereinafter – “Pine”) in view of Schauer (U.S. Patent. No. 9,494,806).
Regarding claim 1, Pine teaches a photochromic lens for glasses, comprising photochromic dyes (1),
wherein said photochromic dyes (10) are suitable for passing from a not activated state to an activated state (See e.g. Figs. 1-5; Paragraph 0022),
wherein said activated state of said photochromic dyes provides that photochromic dyes change color when hit by an electromagnetic radiation (See e.g. Figs. 1-5; Paragraph 0022),
wherein said photochromic lens comprises at least a first portion (20) and at least a second portion (10) (See e.g. Figs. 1-5; Paragraphs 0023-0025),
wherein said at least a first portion provides a reflecting material coating (11) reflecting said electromagnetic radiation (See e.g. Figs. 1-5; Paragraphs 0023-0025: “there are dichromic mirror pattern(s) 20 on convex exterior surface 12 of photochromic eyewear lens 10 illustrating various opacity levels for dichromic mirror patterns 20”),
wherein said at least a second portion (10) is devoid of said coating (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said photochromic lens provides a first surface comprising said at least a first portion and said at least a second portion (See e.g. Figs. 1-3; Paragraphs 0055-0056), and
wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said photochromic lens has a second surface facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses (See e.g. Figs. 1-3; Paragraphs 0055-0056).
Pine fails to explicitly disclose that the second surface comprises another first portion.
However, Schauer teaches an eyeglass lens including a transparent disk with a mirrored surface comprising at least a first portion (5) and at least a second portion (region outside of 5), wherein said at least a first portion provides a reflecting material coating (5) reflecting electromagnetic radiation, wherein said at least a second portion (region outside of 5) is devoid of said coating, wherein said lens provides a first surface (3, 13) comprising said at least a first portion and said at least a second portion, wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses, wherein said lens has a second surface (4, 12) facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses and wherein said second surface comprises another first portion (6, 7) (See e.g. Figs. 1-4; C. 3, L. 57 – C. 4, L. 35).
Schauer teaches this additional first portion on the second surface for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes” (C. 1, L. 63 – C. 2, L. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Pine with the additional first portion on the second surface of Schauer for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes,” as taught by Schauer (C. 1, L. 63 – C. 2, L. 3), and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 2, Pine in view of Schauer teaches the photochromic lens according to claim 1, as above.
Pine further teaches that said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer (Paragraphs 0027-0028: “The process now consists of two burning minerals, silicon dioxide (SIO2) and zirconium dioxide (ZRO2); The first layer, SIO2, gets applied by the electronic beam (EB Gun) and has a deposition thickness of 48.86 nanometers (NM); The second layer, ZRO2, gets evaporated and applies a deposition of 49.83 NM on top of the first layer”).
Claim(s) 1 is/are additionally rejected under 35 U.S.C. 103 as being unpatentable over Archambeau et al. (U.S. PG-Pub No. 2012/0242954; hereinafter – “Archambeau”) in view of Schauer.
Regarding claim 1, Archambeau teaches a photochromic lens for glasses, comprising photochromic dyes (1),
wherein said photochromic dyes (1) are suitable for passing from a not activated state to an activated state (See e.g. Figs. 1-3; Paragraphs 0024 and 0055-0056),
wherein said activated state of said photochromic dyes provides that photochromic dyes change color when hit by an electromagnetic radiation (See e.g. Figs. 1-3; Paragraphs 0024 and 0055-0056),
wherein said photochromic lens comprises at least a first portion (8) and at least a second portion (3) (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said at least a first portion provides a material coating (8) blocking said electromagnetic radiation (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said at least a second portion (3) is devoid of said coating (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said photochromic lens provides a first surface comprising said at least a first portion and said at least a second portion (See e.g. Figs. 1-3; Paragraphs 0055-0056), and
wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses (See e.g. Figs. 1-3; Paragraphs 0055-0056),
wherein said photochromic lens has a second surface facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses (See e.g. Figs. 1-3; Paragraphs 0055-0056).
Archambeau fails to explicitly disclose that the material coating is a reflecting material coating reflecting said electromagnetic radiation and that the second surface comprises another first portion.
However, Schauer teaches an eyeglass lens including a transparent disk with a mirrored surface comprising at least a first portion (5) and at least a second portion (region outside of 5), wherein said at least a first portion provides a reflecting material coating (5) reflecting electromagnetic radiation, wherein said at least a second portion (region outside of 5) is devoid of said coating, wherein said lens provides a first surface (3, 13) comprising said at least a first portion and said at least a second portion, wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses, wherein said lens has a second surface (4, 12) facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses and wherein said second surface comprises another first portion (6, 7) (See e.g. Figs. 1-4; C. 3, L. 57 – C. 4, L. 35).
Schauer teaches this additional first portion on the second surface for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes” (C. 1, L. 63 – C. 2, L. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Archambeau with the reflecting material coating and additional first portion on the second surface of Schauer for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes,” as taught by Schauer (C. 1, L. 63 – C. 2, L. 3), and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pine in view of Schauer, as applied to claim 1 above, and further in view of Ang et al. (U.S. PG-Pub No. 2016/0231594; hereinafter – “Ang”).
Regarding claim 2, Pine in view of Schauer teaches the photochromic lens according to claim 1, as above.
Pine further teaches that said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer (Paragraphs 0027-0028: “The process now consists of two burning minerals, silicon dioxide (SIO2) and zirconium dioxide (ZRO2); The first layer, SIO2, gets applied by the electronic beam (EB Gun) and has a deposition thickness of 48.86 nanometers (NM); The second layer, ZRO2, gets evaporated and applies a deposition of 49.83 NM on top of the first layer”).
While Pine teaches the requisite high and low refraction index layers, given the indefiniteness rejections above and in the interest of compact prosecution, Examiner further submits reference Ang.
Ang teaches an optical article with gradient photochromism comprising a photochromic lens with a reflecting material coating, wherein said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer (Paragraphs 0031-0035).
Ang teaches these high and low refraction index layers as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum” (Paragraph 0021).
Therefore, even if Pine did not teach a low refraction index layer and a high refraction index layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Pine with the high and low refraction index layers of Ang as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum,” as taught by Ang (Paragraph 0021).
Regarding claim 3, Pine in view of Schauer and Ang teaches the photochromic lens according to claim 2, as above.
Pine further teaches that said at least a first layer is comprised of silicon dioxide (Paragraphs 0027-0028).
Pine fails to explicitly disclose that said at least a second layer is comprised of titanium dioxide.
However, Ang further teaches that said at least a first layer is comprised of silicon dioxide and said at least a second layer is comprised of titanium dioxide (Paragraphs 0031-0035).
Ang teaches these silicon dioxide and titanium dioxide layers as a suitable choice of materials which “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum” (Paragraph 0021).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Pine with silicon dioxide and titanium dioxide layers of Ang as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum,” as taught by Ang (Paragraph 0021), and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Claim(s) 2-3 is/are additionally rejected under 35 U.S.C. 103 as being unpatentable over Archambeau in view of Schauer as applied to claim 1 above, and further in view of Ang.
Regarding claim 2, Archambeau in view of Schauer teaches the photochromic lens according to claim 1, as above.
Archambeau and Schauer fail to explicitly disclose that said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer.
However, Ang teaches an optical article with gradient photochromism comprising a photochromic lens with a reflecting material coating, wherein said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer (Paragraphs 0031-0035).
Ang teaches these high and low refraction index layers as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum” (Paragraph 0021).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Archambeau with the high and low refraction index layers of Ang as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum,” as taught by Ang (Paragraph 0021).
Regarding claim 3, Archambeau in view of Schauer and Ang teaches the photochromic lens according to claim 2, as above.
Archambeau and Schauer to explicitly disclose that said at least a first layer is comprised of silicon dioxide and said at least a second layer is comprised of titanium dioxide.
However, Ang further teaches that said at least a first layer is comprised of silicon dioxide and said at least a second layer is comprised of titanium dioxide (Paragraphs 0031-0035).
Ang teaches these silicon dioxide and titanium dioxide layers as a suitable choice of materials which “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum” (Paragraph 0021).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Archambeau with silicon dioxide and titanium dioxide layers of Ang as it “allows inhibiting photochromism in a graded fashion while providing for anti-reflection properties in the visible range of the spectrum,” as taught by Ang (Paragraph 0021), and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (See MPEP 2144.07).
Claim(s) 1-3 is/are additionally rejected under 35 U.S.C. 103 as being unpatentable over Ang in view of Schauer.
Regarding claim 1, Ang teaches a photochromic lens for glasses, comprising photochromic dyes,
wherein said photochromic dyes are suitable for passing from a not activated state to an activated state (Paragraphs 0027-0029),
wherein said activated state of said photochromic dyes provides that photochromic dyes change color when hit by an electromagnetic radiation (Paragraphs 0027-0029),
wherein said photochromic lens comprises at least a first portion and at least a second portion (Paragraphs 0027-0031),
wherein said at least a first portion provides a reflection material coating reflecting said electromagnetic radiation (Paragraphs 0027-0034),
wherein said photochromic lens provides a first surface comprising said at least a first portion and said at least a second portion (Paragraphs 0027-0034), and
wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses (Paragraphs 0027-0034),
wherein said photochromic lens has a second surface facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses (Paragraphs 0027-0034).
Ang fails to explicitly disclose that said at least a second portion is devoid of said coating and that the second surface comprises another first portion.
However, Schauer teaches an eyeglass lens including a transparent disk with a mirrored surface comprising at least a first portion (5) and at least a second portion (region outside of 5), wherein said at least a first portion provides a reflecting material coating (5) reflecting electromagnetic radiation, wherein said at least a second portion (region outside of 5) is devoid of said coating, wherein said lens provides a first surface (3, 13) comprising said at least a first portion and said at least a second portion, wherein said first surface faces outward from the glasses, wherein outward is a direction away from a person wearing the glasses, wherein said lens has a second surface (4, 12) facing inward from the glasses, wherein inward is a direction towards the person wearing the glasses and wherein said second surface comprises another first portion (6, 7) (See e.g. Figs. 1-4; C. 3, L. 57 – C. 4, L. 35).
Schauer teaches this additional first portion on the second surface for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes” (C. 1, L. 63 – C. 2, L. 3).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the photochromic lens of Ang with the second portion devoid of a coating and additional first portion on the second surface of Schauer for “creating an improved disk with mirrored regions, in which the mirrored regions are clearly recognizable from the side facing away from the eyes, on the one hand, and on the other hand, no disruptions of the view through it are present on the side facing the eyes,” as taught by Schauer (C. 1, L. 63 – C. 2, L. 3), and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 2, Ang in view of Schauer teaches the photochromic lens according to claim 1, as above.
Ang further teaches that said coating is a multilayer coating comprising at least a first layer facing the outside of said lens and at least a second layer facing the inside of said lens, wherein said at least a first layer is a low refraction index layer, and wherein said at least a second layer is a high refraction index layer (Paragraphs 0031-0035).
Regarding claim 3, Ang in view of Schauer teaches the photochromic lens according to claim 2, as above.
Ang further teaches that said at least a first layer is comprised of silicon dioxide and said at least a second layer is comprised of titanium dioxide (Paragraphs 0031-0035).
Response to Arguments
Applicant’s arguments, see pages 4-6, filed 04/03/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102 in view of Pine have been fully considered but are moot upon further consideration and a new ground(s) of rejection made in view of Pine and Schauer, as detailed above and necessitated by Applicant’s amendments.
Applicant’s arguments, see pages 6-8, filed 04/03/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 in view of Archambeau and Hsu have been fully considered but are moot upon further consideration and a new ground(s) of rejection made in view of Archambeau and Schauer, as detailed above and necessitated by Applicant’s amendments.
Applicant’s arguments, see pages 8-10, filed 04/03/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 in view of Ang and Hsu have been fully considered but are moot upon further consideration and a new ground(s) of rejection made in view of Ang and Schauer, as detailed above and necessitated by Applicant’s amendments.
Moreover, regarding Applicant’s arguments that the secondary reference failed to teach a photochromic lens, Examiner respectfully notes that the secondary reference is not relied upon for teaching a photochromic lens. 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 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 Nicholas R Pasko whose telephone number is (571)270-1876. The examiner can normally be reached M-F 8 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Kraig can be reached at 571-272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Nicholas R. Pasko
Primary Examiner
Art Unit 2896
/Nicholas R. Pasko/Primary Examiner, Art Unit 2896
Prosecution Insights