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 PCT/JP2023/033027, filed on 01/31/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-013481, filed 01/31/2022. The preliminary amendment filed on 07/25/2024 is entered and acknowledged by the Examiner.
3. Claims 1-17 are pending. Claims 1-17 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 10/23/2024, and 11/26/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Priority
5. Receipt is acknowledged of papers submitted on 07/25/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Objections
6. Claim 6 is objected to because of the following informalities: It is suggested that “1-6C perfluoroalkyl" be deleted and "C1-C6 perfluoroalkyl" be inserted in its stead so as to engender claim language clarity. Appropriate correction is required.
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 1-17 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 the term “(in General Formula 1,… (including a carbon…an indeno-fused naphthopyran),…electron-withdrawing groups)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. Claims 2-17 being depended on claim 1 are rejected as well.
Double Patenting
9. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An erequest that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
10. Claims 1-3, 6-7, 9-17 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 25-26, 29, 32-33, 40-44 of copending Application No.18/567,640 (US Pub. No. 2024/0294825 A1, hereinafter ”’825”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘825 recites a photochromic compound represented by the General Formula 1 as set forth, 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 represents a hydrogen atom, R4 to R6 each independently represent a hydrogen atom or an electron-attracting group, and one or more of R4 to R6 represent an electron-attracting group, R8 represents a hydrogen atom, R9 represents an electron-donating group, and R7 , RI0, A and A' each independently represent a hydrogen atom or a substituent, wherein the electron-attracting group is selected from the group consisting of a fluorine atom and a trifluoromethyl group. ‘825 teaches photochromic composition comprising the photochromic compound, and the photochromic composition
further comprising a polymerizable compound. ‘825 teaches a photochromic article comprising a cured product obtained by curing the photochromic composition, and wherein the photochromic article is a spectacle lens, a goggle lens, a visor part of a sun visor or a shield member of a helmet. Given that the photochromic compound as presently read on the photochromic compound disclosed in ‘825 claims, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention that the scope of recited claims encompasses the scope of ‘825 claims and thus, render the present claims prima facie obvious.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections - 35 USC § 102
11. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
12. Claims 1, 6-7, 9-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Kawakami et al. (US Pub. No. 2024/0294825 A1, hereinafter “’825”).
Regarding claims 1,6: ‘825 discloses a photochromic compound represented by General Formula 1 as set forth, in General Formula 1, R represents an unsubstituted aliphatic monocyclic ring with 6 or less carbon atoms, including a carbon atom at the 13-position of an indeno-fused naphthopyran, and R1 to R8 , B, and B' each independently represent a substituent, provided that one or more of R1 to R8 represent electron-withdrawing groups (Page 7, [0067], left Col. 2nd compound; Page 64, Claims 25, 28-29).
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Regarding claim 7: ‘825 discloses the photochromic compound, wherein the halogen atom id a fluorine atom (Page 64, Claim 32).
Regarding claim 9 : ‘825 discloses a photochromic composition comprising the photochromic compound (Page 64, Claim 40).
Regarding claim 10: ‘825 discloses the photochromic composition, further comprising a polymerizable compound (Page 64, Claim 41).
Regarding claim 11: ‘825 discloses a photochromic article comprising a cured product obtained by curing the photochromic composition (Page 64, Claim 42).
Regarding claim 12: ‘825 discloses the photochromic article, further comprising: a substrate, and a photochromic layer which is the cured product (Page 47, [0076]).
Regarding claims 13,17: ‘825 discloses spectacles comprising the spectacle lens (Page 64, Claims 44).
Regarding claims 14-16: ‘825 discloses the photochromic is a goggle lens or a visor part of a sun visor or a shield member of a helmet (Page 64, Claim 43).
Claim Rejections - 35 USC § 103
13. 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.
14. Claims 1-3, 6, 9-13, 17 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 claim 1: ‘117 teaches a photochromic 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 (i.e., electron-withdrawing 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 6 or less carbon atom.
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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 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 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 claim 2: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches the photochromic compound, wherein in General Formula 1, R5 to R8 all represent a hydrogen atom as Ex. No. product 27 as shown below (Page 29, Table 7, Ex. No. product 27)
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Regarding claim 3: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches the photochromic compound according to claim 1, wherein, in General Formula 1, R2 represents an electron-withdrawing group such as CF3 and R1 and R3 to R8 all represent a hydrogen atom as Ex. No. product 27 as shown above (Page 29, Table 7, Ex. No. product 27).
Regarding claim 6: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘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 claim 9 : The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches a photochromic composition comprising the photochromic compound (Page 3, [0029]; Page 13, [0046]; Page 68, Claim 13).
Regarding claim 10: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches the photochromic composition, further comprising a polymerizable compound (Page 3, [0029]; Page 13, [0046]; Page 68, Claim 13).
Regarding claim 11: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘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 12: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches the photochromic article, further comprising: a substrate, and a photochromic layer which is the cured product (Page 12, [0135]; Page 13, [0145]; (Page 14, [0157]).
Regarding claim 13: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph above and is incorporated herein by reference. ‘117 teaches spectacles comprising the spectacle lens (Page 2, [0021]; Page 12, [1036]; Page 13, [0145]; Page 68, Claim 14).
Regarding claim 17: ‘117 teaches spectacles comprising the spectacle lens (Page 2, [0021]; Page 12, [1036]; Page 13, [0145]; Page 68, Claim 14).
15. Claims 4, 6-7 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. 2007/02 15844 A1, hereinafter “’844”) as applied to claim 1,and further in view of Cho et al. (JP 2005-187420 A, machine translation, hereinafter “’420”).
Regarding claims 4, 6-7: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph 14 above and is incorporated herein by reference. ‘117 in view of ‘844 does not expressly teach the photochromic compound, wherein, in General Formula 1, R1 and R3 each independently represent an electron-withdrawing group including fluorine atom and R2 and R4 to R8 all represent a hydrogen atom.
However, ‘420 teaches a chromene compound represented by the following formula (1) (Page 16/56, [0028]), wherein R6 can be halogen atom or a cyano group (Page 21/56, [0052]), p indicating the substitution number of R5 is an integer of 0 to 3 (Page 22/56, [0053]), and q representing the substitution number of the R6 is an integer of 0 to 4 (Page 23/56, [0057]), and R7 is an electron-withdrawn group such as fluorine atom (F) (Page 25/56, [0068]) with benefit of providing photochromic compound coloring to neutral color without carrying out tone adjustment by using other photochromic compound, having low initial coloring, high coloring sensitivity, fast discoloration rate and good photochromic endurance when used in order to impart a photochromic property e.g. to a plastic lens for glasses (Page 11/46, [0014]).
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In an analogous art of the photochromic 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 10, 12-positions of photochromic compound by ‘117, so as to include in General Formula 1, R1 and R3 each independently represent an electron-withdrawing group and R2 and R4 to R8 all represent a hydrogen atom as taught by ‘420, and would have been motivated to do so with reasonable expectation that this would result in providing photochromic compound coloring to neutral color without carrying out tone adjustment by using other photochromic compound, having low initial coloring, high coloring sensitivity, fast discoloration rate and good photochromic endurance when used in order to impart a photochromic property e.g. to a plastic lens for glasses as suggested by ‘420 (Page 11/46, [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).
16. Claims 5-8 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”) as applied to claim 1,and further in view of Chopra et al. (US Pub. No. 2007/0138449 A1, hereinafter “’449”).
Regarding claim 5: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph 14 above and is incorporated herein by reference. ‘117 in view of ‘844 does not expressly teach the photochromic compound, wherein, in General Formula 1, R2 and R7 each independently represent an electron-withdrawing group and R1, R3 to R6, and R8 all represent a hydrogen atom.
However, ‘449 teaches photochromic materials comprising indeno-fused naphthopyrans having a first electron-withdrawing substituent (R2, 11-position) such as fluorine atom and, a second electron-withdrawing substituent (R7, 6-position) such as fluorine atom as shown below
(Page 3, Fig. 1A; Page 3, Fig. 4) with benefit of providing the photochromic materials may display faster fade rates, bathochromic shift, and higher performance ratings compared to comparable indeno-fused naphthopyrans without the electron-withdrawing substituents (Page 2, [0010]).
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In an analogous art of the photochromic 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 6, 11-positions of photochromic compound by ‘117, so as to include in General Formula 1, R2 and R7 each independently represent an electron-withdrawing group and R1, R3 to R6, and R8 all represent a hydrogen atom as taught by ‘449, and would have been motivated to do so with reasonable expectation that this would result in providing the photochromic materials may display faster fade rates, bathochromic shift, and higher performance ratings compared to comparable indeno-fused naphthopyrans without the electron-withdrawing substituents as suggested by ‘449 (Page 2, [0010]).
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 8: The disclosure of ‘117 in view of ‘844 is adequately set forth in paragraph 12 above and is incorporated herein by reference.’117 teaches the photochromic compound, wherein the perfluoroalkyl group is a trifluoromethyl group as Ex. No. product 27 as shown below (Page 29, Table 7, Ex. No. product 27).
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17. Claims 14-16 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”) 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 ‘117 in view of ‘844 is adequately set forth in paragraph 14 above and is incorporated herein by reference. ‘117 in view of ‘844 does not expressly teach the photochromic article, further comprising: a substrate, a photochromic layer which is the cured product, wherein the photochromic article is a spectacle lens, a lens for goggles, a visor portion of a sun visor, 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).
Examiner Information
18. 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
10/08/2025
bijan.ahvazi@uspto.gov