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 02/20/2026.
3. Claims 25-26, 29, 32-33, 35-37, 39-44, 47-48 (renumbered as 57-58) are pending. Claims 25-26, 29, 32-33, 35-37, 39-44, 57-58 (numbered as 47-48) are under examination on the merits. Claims 47-48 (renumbered as 57-58) are newly added. Claims 1-24, 27-28, 30-31, 34, 38, 45-56 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive, thus claims 25-26, 29, 32-33, 35-37, 39-44, 47-48 (renumbered as 57-58) stand rejected as set forth in Office action dated 10/22/2025 and further discussed in the Response to Arguments below.
Information Disclosure Statement
6. The information disclosure statements submitted on 10/28/2025, and 02/20/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Claim Objections
7. The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 47-47 have been renumbered as claims 57-58.
Election/Restrictions
Election by Original presentation
8. Newly submitted claim 48 (renumbered as claim 58) is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 48 is directed to the following patentably distinct species:
A photochromic compound represented by the following General Formula 1
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wherein in General Formula 1, R¹ and R² are bonded to each other to form a ring structure together with the carbon atom at position 13 of indeno-fused naphthopyran, wherein the ring structure is an unsubstituted monocyclic ring structure in which the number of carbon atoms constituting the ring, including the carbon atom at position 13 of the indeno-fused naphthopyran, is from 3 or more to 6 or less,
R³ to R⁶ each independently represent a hydrogen atom or an electron-attracting group, with the proviso that at least R³ and R⁵ each represent an electron-attracting group, R⁸ represents a hydrogen atom,
R⁹ represents an electron-donating group, and
R⁷, R¹⁰, A and A' each independently represent a hydrogen atom or a substituent.
The species of claim 25 and claim 48 (renumbered as claim 58) are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each identified species. In addition, these species are not obvious variants of each other based on the current record.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification
the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter
the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
Since applicant has received an action on the merits for the originally presented invention of species of claim 25, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, the newly claim 48 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 25-26, 29, 32-33, 35-37, 39-44, 57 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata et al. (US Pub. NO. 2003/0096117 A1, hereinafter “’117”) in view of Momoda et al. (US Pub. NO. 2007/0215844 A1, hereinafter “’844”).
Regarding claims 25-26,29,35,39: ‘117 teaches a chromene compound (Page 2 [0015]) represented by Ex. No. product 34 as shown below, wherein R1 and R2 are bonded to each other to form a spiro ring structure together with the carbon atom at position 13 of indeno-fused naphthopyran, R3, R5, R6, R7, R8 and R10 represent a hydrogen atom, R4 is an electron-attracting group such as cyano group (-CN-), R9 is an electron-donating group such as piperidine moiety, and at least one of A and A’ represents a phenyl group having a substituent at a substitution position para to the carbon atom at the position bonding to a pyran ring of indeno-fused naphthopyran (Page 33, Table 9, Ex. No. product 34).’117 does not expressly teach the ring structure is an unsubstituted monocyclic ring structure in which the number of carbon atoms constituting the ring, including the carbon atom at position 13 of the indeno-fused naphthopyran, is from 3 or more to 6 or less,
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However, ‘844 teaches a chromene compound characterized by having an indeno(2,1-f)naphtho(1,2-b)pyran structure as a basic structure of chemical formula (1), in which R1 and R2 in the formula (1) are bonded together to form a ring , and are Independently (ii-1) a substituted or unsubstituted aliphatic ring having 3 to 20 carbon atoms that constitute the ring such as a cyclopentane ring or a cyclohexane ring (Page 4, [0038]) from the standpoint of quickening the fading rate, and the decreasing the initial color (Page 5, [0039]) with benefit of providing to obtain a color tone of a neutral tint when a color is developed, a high color-developing sensitivity, a fast fading rate and good photochromic resistance (Page 4, [0034]).
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In an analogous art of the photochromic composition comprising a chromene compound, 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 13 position of photochromic compound by ‘117, so as to include the unsubstituted monocyclic ring structure in which the number of carbon atoms constituting the ring, including the carbon atom at position 13 of the indeno-fused naphthopyran, is from 3 or more to 6 or less as taught by ‘844, and would have been motivated to do so with reasonable expectation that this would result in providing to exhibits a color tone of a neutral tint when it develops a color, features a high color-developing sensitivity and a high fading rate, and has a good photochromic resistance as suggested by ‘844 (Page 4, [0034]).
Therefore, 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 it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claims 32-33: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 does not expressly teach the R4 represents a trifluoromethyl group in any working example.
However, ‘117 teaches the R4 group of instant Formula 1 can be a trifluoromethyl group (Page 2, [0018]) such as Ex. No. product 27 as shown below (Page 29, Table 7, Ex. No. product 27) with benefit of providing novel chromene compounds having various substituents to exhibit a high color-developing sensitivity and a high density even when dispersed in a high-molecular matrix, and exhibiting a large fading rate, less color when deteriorated, and excellent light resistance in the photochromic properties; photochromic materials containing the chromene compounds; and use thereof (Page 3, [0030]).
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Therefore, 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 it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claims 36-37: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 does not expressly teach in General Formula 1, A and A’ each independently represent a phenyl group having an electron-donating group as a substituent at a substitution position para to the carbon atom at the position bonding to a pyran ring of indeno-fused naphthopyran.
However, ‘844 teaches a chromene compound characterized by having an indeno(2,1-f)naphtho(1,2-b)pyran structure as a basic structure, and having a substituent which is a substituted or unsubstituted aryl group such as methoxyphenyl group, and morpholine group
(Page 5, [0041]; Page 8, [0072]) with benefit of providing the photochromic compound that exhibits a color tone of a neutral tint when it develops a color, features a high color-developing sensitivity and a high fading rate, and has a good photochromic resistance (Page 4, [0034]).
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In an analogous art of a photochromic composition comprising a chromene compound, 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 3rd position of photochromic compound by ‘117, so as to include A and A’ each independently represent a phenyl group having an electron-donating group as a substituent at a substitution position para to the carbon atom at the position bonding to a pyran ring of indeno-fused naphthopyran as taught by ‘844, and would have been motivated to do so with reasonable expectation that this would result in providing to exhibits a color tone of a neutral tint when it develops a color, features a high color-developing sensitivity and a high fading rate, and has a good photochromic resistance as suggested by ‘844 (Page 4, [0034]).
Therefore, 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 it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000).
Regarding claim 40: ‘117 teaches a photochromic composition comprising the photochromic compound (Page 3, [0029]; Page 13, [0046]; Page 68, Claim 13).
Regarding claim 41: ‘117 teaches the photochromic composition, further comprising a polymerizable compound (Page 3, [0029]; Page 13, [0046]; Page 68, Claim 13).
Regarding claim 42: ‘117 teaches a photochromic article comprising a cured product obtained by curing the photochromic composition (Page 2, [0021]; Page 13, [0046]; Page 14, [053]; Page 68, Claim 11).
Regarding claim 43: ‘420 teaches the photochromic article, which is a spectacle lens, a goggle lens, a visor part of a sun visor or a shield member of a helmet (Page 2, [0021]; Page 13, [0147]; Page 68, Claim 14).
Regarding claim 44: ‘117 teaches spectacles comprising the spectacle lens (Page 2, [0021]; Page 13, [0147]; Page 68, Claim 14).
Regarding claim 57: ‘117 teaches the photochromic compound, wherein in the unsubstituted monocyclic ring structure, the number of carbon atoms constituting the ring, including the carbon atom at position 13 of the indeno-fused naphthopyran, is from 3 or more to less than 6 (Page 7, [0091]).
‘844 teaches a chromene compound characterized by having an indeno(2,1-f)naphtho(1,2-b)pyran structure as a basic structure of chemical formula (1), in which R1 and R2 in the formula (1) are bonded together to form a ring , and are Independently (ii-1) a substituted or unsubstituted aliphatic ring having 3 to 20 carbon atoms that constitute the ring such as a cyclopentane ring or a cyclohexane ring (Page 4, [0038])
Response to Arguments
11. Applicant's arguments filed 02/20/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that Kawabata‘117 specifically teaches that for the compounds therein, "Here, the number of carbon atoms must be 7 to 20 in the ring of the aliphatic hydrocarbon cyclic group when it has no substituent. The fading rate becomes small when the number of carbon atoms is 4 to 6".
The examiner respectfully disagrees. It is axiomatic that a reference must be considered in its entirety, and it is well established that the disclosure of a reference is not limited to specific working examples contained therein. In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (C.C.P.A. 1982). A reference must be considered for everything it teaches by way of technology. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also > Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). In this case, ‘117 teaches there is no particular limitation on the aliphatic hydrocarbon ring in the aliphatic hydrocarbon cyclic group that may have a substituent in (a) to (c) as set forth. However, concrete examples of the aliphatic hydrocarbon ring include, as monocyclic groups, rings having 4 to 15 carbon atoms, such as cyclobutane ring, cyclopentane ring, cyclohexane ring (Page 7, [0091]).
In response to the Applicant’s argument that one also would not have been led to proceed contrary to Kawabata and reduced the number of carbon atoms in the ring based on Momoda in view of the fact that the compound of Kawabata‘117 and the compounds of Momoda’844 have significant differences in structure. As one significant example, the compound of Kawabata includes no substituent at position 7 of the indeno-fused naphthopyran, whereas the compounds of Momoda ‘844 must have a substituted or unsubstituted aryl or heteroaryl group at the 7-position in the structure.
The examiner respectfully disagrees. 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). 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). ‘117 teaches there is no particular limitation on the aliphatic hydrocarbon ring in the aliphatic hydrocarbon cyclic group that may have a substituent in (a) to (c) as set forth. However, concrete examples of the aliphatic hydrocarbon ring include, as monocyclic groups, rings having 4 to 15 carbon atoms, such as cyclobutane ring, cyclopentane ring, cyclohexane ring (Page 7, [0091]). ‘844 teaches a chromene compound characterized by having an indeno(2,1-f)naphtho(1,2-b)pyran structure as a basic structure of chemical formula (1), in which R1 and R2 in the formula (1) are bonded together to form a ring , and are Independently (ii-1) a substituted or unsubstituted aliphatic ring having 3 to 20 carbon atoms that constitute the ring such as a cyclopentane ring or a cyclohexane ring (Page 4, [0038]) from the standpoint of quickening the fading rate, and the decreasing the initial color (Page 5, [0039]) with benefit of providing to obtain a color tone of a neutral tint when a color is developed, a high color-developing sensitivity, a fast fading rate and good photochromic resistance (Page 4, [0034]).
The comparative Example of 4, having no substitution at 7-position, and monocyclic ring at position 13 having 6 carbon atoms as shown below, indicates that fading half-life, light resistance including YI and remaining ratio(%) is very comparable to those indeno(2,1-f)naphtho(1,2-b)pyran having substitution at 7-position.
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The photochromic compound of both Kawabata‘117 and Momoda ‘844 are characterized by having an indeno(2,1-f)naphtho(1,2-b)pyran structure as a basic structure with different substitutions moiety are different position. Therefore, 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 it is held to be a prima facie case of obviousness since a person of ordinary skill in the art would have recognized the interchangeability of the element (i.e. functional group) shown in the prior art for the corresponding element disclosed in the specification wherein the side chains syntheses merely done by routine experimentation. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374, 56 USPQ2d 1305 (Fed. Cir. 2000). It is submitted that establishing a prima facie case of obviousness requires showing that one of ordinary skill in the art would have had both an apparent reason or suggestion to modify the prior art and predictability or a reasonable expectation of success in doing so. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991). “Obviousness does not require absolute predictability of success …. For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988).
12. 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 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
03/17/2026
bijan.ahvazi@uspto.gov