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 05/01/2026.
3. Claims 1, 9-17 are pending. Claims 1, 9-17 are under examination on the merits. Claims 1,10 are amended. Claims 2-8 are cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1, 9-17 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Information Disclosure Statement
6. The information disclosure statements submitted on 02/25/2026, and 05/06/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1, 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al. (US Pub. No. 2012/0138876 A1, hereinafter “’876”)
Regarding claim 1: ‘876 teaches a photochromic compound (Page 31, compound 24) corresponding to similar exemplary compound 1 and exemplary compound 5. ‘876 does not expressly teach R represents an unsubstituted aliphatic monocyclic ring with 6 or less carbon, including a carbon atom at the 13-position of an indeno-fused naphthopyran.
PNG
media_image1.png
244
392
media_image1.png
Greyscale
PNG
media_image2.png
268
228
media_image2.png
Greyscale
PNG
media_image3.png
268
260
media_image3.png
Greyscale
However, ‘876 teaches a photochromic compound represented by the following formula (10) (Page 12, [0117]),
PNG
media_image4.png
196
328
media_image4.png
Greyscale
wherein R13 and R14 may be bonded together to form a cyclic structure. The cyclic structure formed by bonding together R13 and R14 is preferably an aliphatic hydrocarbon ring having 4 to 10 carbon atoms forming the ring. Further, an aromatic hydrocarbon ring such as benzene or naphthalene may be condensed to the aliphatic hydrocarbon ring. The aliphatic hydrocarbon ring may have an alkyl group having 1 to 5 carbon atoms or alkoxy group having 1 to 9 carbon atoms as a substituent. The following rings are preferred from the viewpoint of fading speed. In the rings shown below, the carbon atom (spiro carbon atom) having two bonds at the lowest position corresponds to a carbon atom of the five-membered ring to which R13 and R14 are bonded (Page 13, [0121])
PNG
media_image5.png
210
330
media_image5.png
Greyscale
In an analogous art of the photochromic composition comprising a photochromic 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 photochromic compound by ‘876, so as to include R represents an unsubstituted aliphatic monocyclic ring with 6 or less carbon, including a carbon atom at the 13-position of an indeno-fused naphthopyran, and would have been motivated to do so with reasonable expectation that this would result in providing photochromic durability and fading speed (Page 13, [0122]).
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 9 : ‘876 teaches a photochromic composition (Page 8, [0081]), comprising the photochromic compound (Page 8, [0080]-[0081]).
Regarding claim 10: ‘876 teaches the photochromic composition (Page 8, [0081]), further comprising one or more photochromic compounds selected from another of the group consisting of: Exemplary Compound 1, Exemplary Compound 2, Exemplary Compound 3, Exemplary Compound 4. and Exemplary Compound 5 (Page 8, [0081];Page 30, [0213]).
Regarding claim 11: ‘876 teaches a photochromic article (Page 20, [0165]); Page 21, [0174]) comprising a cured product obtained by curing the photochromic composition (Page 19, [0160]).
Regarding claim 12: ‘876 teaches the photochromic article (Page 20, [0165]; Page 21, [0174]), further comprising: a substrate (Page 20, [0163]; Page 20, [0165]), and a photochromic layer which is the cured product (Page 19, [0150]).
Regarding claims 13,17: ‘876 teaches the photochromic article (Page 20, [0165]; Page 21, [0174]), wherein the photochromic article is spectacles comprising the spectacle lens (Page 20, [0165]; Page 20, [0167]-[0168]).
Regarding claims 14-16: ‘876 teaches (Page 20, [0165]; Page 21, [0174]), wherein the photochromic article is a goggle lens or a visor part of a sun visor or a shield member of a helmet (Page 21, [0174]).
It is submitted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
9. Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kasai et al. (US Pub. No. 2012/0138876 A1, hereinafter “’876”) as applied to claim 1,and further in view of Barry Van Gemert (US Pat. No. 5,645,767, hereinafter “’767”).
Regarding claims 14-16: The disclosure of ‘876 is adequately set forth in paragraph 8 above and is incorporated herein by reference. This rejection is applied in the interest of advancing prosecution in the event it can be shown that ‘876 does not expressly teach the photochromic article is a goggle lens or a visor part of a sun visor or a shield member of a helmet.
However, ‘767 teaches the photochromic composition comprising the organic photochromic naphthopyrans may be used alone, in combination with other naphthopyrans or in combination with one or more other appropriate complementary organic photochromic materials (Col. 12, lines 32-36). ‘767 teaches the photochromic article, further comprising: a substrate, a photochromic layer which is the cured product (Col. 13, lines 40-58). Furthermore, ‘767 teaches the naphthopyran compounds represented by graphic formula I may be used in those applications in which organic photochromic substances may be employed, such as optical lenses, e.g., vision correcting ophthalmic lenses and plano lenses, face shields, goggles, visors, camera lenses, windows, automotive windshields, aircraft and automotive transparencies, e.g., T-roofs, sidelights and backlights, plastic films and sheets, textiles and coatings, e.g., coating compositions such as paints, and verification marks on security documents, e.g., documents such as banknotes, passports and drivers' licenses for which authentication or verification of authenticity may be desired (Col. 11, lines 32-45).
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 photochromic coating from the selection of naphthopyran compounds based on its suitability for its intended use has generally been held to be prima facie obvious (MPEP §2144.07).
Response to Arguments
10. Applicant’s arguments with respect to claims 1, 9-17 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
11. 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
12. 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
05/15/2026
bijan.ahvazi@uspto.gov
Prosecution Insights