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 application is a 371 of App No. PCT/JP2023/000163, filed on 01/06/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-005343, filed 01/17/20 22. The preliminary amendment filed on 07/16/2024 is entered and acknowledged by the Examiner.
3. Claims 1-14 are pending. Claims 1-14 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 07/16/2024, 08/29/2024, and 04/15/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Drawings
5. The drawing is received on 07/16/2024. This drawing is acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 07/16/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 3, 9 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 applicant regards as the invention. Claim 3 recites the limitation "R5 and R6 substitutions groups" in Formula (4). There is insufficient antecedent basis for this limitation in the claim. Claim 9 being depended on claim 3 is rejected as well.
Claim Rejections - 35 USC § 112
9. The following is a quotation of the fourth paragraph of 35 U.S.C. 112:
Subject to the [fifth paragraph of 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
10. Claims 3,9 are rejected under 35 USC 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim, or amend the claim to place the claim in proper dependent form, or rewrite the claim in independent form. Claim 3, as written, depends on claim 1, which recites “R5 and R6 substitutions groups” in Formula (4), however, based on the content of the claim 1, the R5 and R6 substitutions are hydrogen moiety. Thus claim 3 as being of improper dependent form for failing to further limit the subject matter of a previous claim 1. Claim 9 being depended on claim 3 is rejected as well.
Claim Rejections - 35 USC § 103
11. 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.
12. Claims 1-7, 9-14 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over He et al. (US Pub. No. 2011/0143141 A1, hereinafter “’141”) in view of Miyazaki et al. (US Pub. No. 2023/0242808 A1, hereinafter “’808”).
Regarding claims 1-7,14: ‘141 teaches the photochromic compounds as shown in Example 13 (Page 36, [0322], Example 13), and Example 16 (Page 38, [0330], Example 16), wherein M is C, R2 is an alkyl group comprising a halogen atom as a substituent such as trifluoromethyl (CF3), and R1 is either fluorine (F) or alkoxyalkyl moiety (OCH3). ‘141 does not expressly teach R1 or R2 is a group represented by Formula (2) as set forth such as (-CH2-(O-CH2)a-O-CH3).
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However, ‘808 teaches a compound represented by the Formula (2) (Page 2, [0043]), wherein (C) R8 and R9 coressponding to the instant R1 and R2 groups, are each independently selected from an alkoxyalkyl coressponding to the instant Formula (2) when a=0, (i.e., CH2-O-CH3) (Page 3, [0088]) with benefit of providing a photochromic compound that has small temperature dependence, exhibits high color optical density even under high temperature as in summer, is capable of keeping constant color tones at the time of color development and fading, and is excellent in photochromic durability (Page 1, [0014]).
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In an analogous art of a photochromic composition, 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 compound by ‘141, so as to include R1 or R2 is a group represented by Formula (2) as taught by ‘808, and would have been motivated to do so with reasonable expectation that this would result in providing a photochromic compound that has small temperature dependence, exhibits high color optical density even under high temperature as in summer, is capable of keeping constant color tones at the time of color development and fading, and is excellent in photochromic durability as suggeted by ‘808 (Page 1, [0014]).
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 10: ‘141 teaches a curable composition (Page 22, [0170] comprising: the photochromic compound, at least one selected from the group consisting of a radical polymerizable monomer, a cationic polymerizable monomer, a compound having a polymerization reactive group, and a (thio)urethane(urea) polymer (Page 22, [170]; Page 24, [0191]).
Regarding claim 11: ‘141 teaches an optical article comprising a cured product of the curable composition (Page 24, [0195]).
Regarding claim 12: ‘141 teaches a lens comprising the photochromic compound (Page 1, [0005]; Page 24, [0195]).
Regarding claim 13: ‘141 teaches eyeglasses comprising the lens (Page 1, [0004]; Page 24, [0195]).
Allowable Subject Matter
13. Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
The most pertinent prior art known by the Examiner is He et al. (US Pub. No. 2011/0143141 A1, hereinafter “’141”).
‘141 teaches the photochromic compounds as shown in Example 13 (Page 36, [0322], Example 13), and Example 16 (Page 38, [0330], Example 16), wherein M is C, R2 is an alkyl group comprising a halogen atom as a substituent such as trifluoromethyl (CF3), and R1 is either fluorine (F) or alkoxyalkyl moiety (OCH3). 141 does not expressly teach R1 and R2 are each independently a group represented by Formula (2b) -Q²¹-(OCH₂CH₂)a1-OQ²³ (2b). Therefore, the instant claims are distinguished over the prior art.
Prior art of record, taken alone or in combination, do not teach or fairly suggest the claimed photochromic compound of formula (1), wherein R1 and R2 are each independently a group represented by Formula (2b) below:
-Q²¹-(OCH₂CH₂)a1-OQ²³ (2b)
Wherein Q²¹ is a linear alkylene group having 1 or more and 5 or less carbon atoms; and Q²³ is a linear alkyl group having 1 or more and 5 or less carbon atoms; and a1 is 1 or more and 10 or less.
Examiner Information
14. 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
06/30/2026
bijan.ahvazi@uspto.gov
Prosecution Insights