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/US2023/013259, filed on 03/30/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-058879, filed 03/31/2022. The preliminary amendment filed on 09/11/2024 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 12/04/2024, 07/29/2025, and 11/04/2025 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 09/11/2024. This drawing is acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 09/11/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Rejections - 35 USC § 102
7. 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.
8. Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimada et al. (US Pub. No. 2022/0289878 A1, hereinafter “’878”).
Regarding claim 1: ‘878 discloses a polymerizable composition for an optical article (Page 1, [0002]), comprising: two or more (meth)acrylates such as 68 parts by mass of polyethylene glycol dimethacrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more (Page 5, [0048], Example 1; in Formula 2, n=14, R represents an ethylene group, a molecular weight of 736) as the component A (Page 2, [0019]), 20 parts by mass of 1,9-nonane diol diacrylate (Page 5, [0048], Example 1; in Formula 1, R1 and R2 represent a hydrogen atom, m=9, a molecular weight of 268) as the component B (Page 2, [0021]), and a photochromic compound (Page 5, [0049], Example 1), wherein the two or more (meth)acrylates include at least a multifunctional (meth)acrylate such as 12 parts by mass of trimethylolpropane trimethacrylate (a molecular weight of 296) (Page 5, [0048], Example 1) as the component C, and wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is {([(68/736)x2]+[(20/268)x2]+[(12/296)x3])/100 x(100/94.90)}x1000= 4.81 mmol/g (Page 5, [0048], Example 1; Page 6, [0050], Example 1).
Regarding claim 2: ‘878 discloses the polymerizable composition for an optical article (Page 1, [0002]), wherein the two or more (meth)acrylates include a monofunctional (meth)acrylate having a molecular weight of 150 or less such as monofunctional butyl (meth)acrylate (MW. 142.19 g/mol), and monofunctional glycidyl (meth)acrylate (MW. 142.15 g/mol) as the component D (Page 3, [0028]).
Regarding claims 3-4: ‘878 discloses the polymerizable composition for an optical article (Page 1, [0002]), wherein the polyalkylene glycol moiety of the component A is selected from the group consisting of a polyethylene glycol moiety and a polypropylene glycol moiety such as 68 parts by mass of polyethylene glycol dimethacrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more (Page 5, [0048], Example 1; in Formula 2, n=14, R represents an ethylene group, a molecular weight of 736) as the component A (Page 2, [0019]).
Regarding claims 5-8: ‘878 discloses the polymerizable composition for an optical article (Page 1, [0002]), wherein the component A is a bifunctional such as 68 parts by mass of polyethylene glycol dimethacrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more (Page 5, [0048], Example 1; in Formula 2, n=14, R represents an ethylene group, a molecular weight of 736) as the component A (Page 2, [0019]).
Regarding claim 9: The disclosure of ‘878 is adequately set forth in paragraph above and is incorporated herein by reference. ‘878 is silent regarding the polymerizable composition for an optical article, wherein the viscosity at a temperature of 25°C is 20 mPa:s or more.
However, since ‘878 discloses the identical or substantially identical polymerizable composition for an optical article, comprising: two or more (meth)acrylates, and a photochromic compound, wherein the two or more (meth)acrylates include at least a multifunctional (meth)acrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more, and wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is 3.50 mmol/g or more as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. viscosity, would inherently/implicitly be achieved by ‘878 (i.e., the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 10: ‘878 discloses an optical article (Page 4, [0039]) comprising: a substrate, and a photochromic layer obtained by curing the polymerizable composition for an optical article (Page 4, [0039]; Page 5, [0043]; Page 8, Claim 6).
Regarding claim 11: ‘878 discloses an optical article (Page 4, [0039]) comprising: a substrate, and a photochromic layer obtained by curing the polymerizable composition for an optical article (Page 4, [0039]; Page 5, [0043]; Page 8, Claim 6). ‘878 is silent regarding the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more.
However, since ‘878 discloses the identical or substantially identical polymerizable composition for an optical article, comprising: two or more (meth)acrylates, and a photochromic compound, wherein the two or more (meth)acrylates include at least a multifunctional (meth)acrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more, and wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is 3.50 mmol/g or more as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. viscosity, would inherently/implicitly be achieved by ‘878 (i.e., the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 12: ‘878 discloses the optical article (Page 4, [0039]), which is a spectacle lens (Page 5, [0045]; Page 8, Claim 7).
Regarding claim 13: ‘878 discloses the optical article (Page 4, [0039]), which is a goggle lens, a visor part of a sun visor or a shield member of a helmet (Page 5, [0045]; Page 8, Claims 8-10).
Regarding claim 14: ‘878 discloses eyeglasses comprising the spectacle lens (Page 5, [0046]; Page 8, Claim 11).
9. Claims 1-12, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyazaki et al. (WO 2021/172511, equivalent to US Pub. No. 2023/0109024 A1, hereinafter “’024”).
Regarding claim 1: ‘024 discloses a polymerizable composition for an optical article (Page 1, [0001]), comprising a photochromic compound and A components and other components shown in Table 1 such that 26 mmol is achieved for 100 g of the A components, and thus a photochromic curable composition is obtained (Page 20, [0176], Example 1, Table 1). The A component comprises 50 parts by mass of a component A1 of trimethylolpropane triacrylate (TMPT, MW:296; Page 16, [0141]), 49 parts by mass of a component A2 of polyethylene glycol dimethacrylate (PEG14, MW:736; Page 16, [0143]), and 1 part by mass of a component A3 of glycidyl methacrylate (GMA, MW:142; Page 16, [0149]), wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is {([(49/736)x2]+[(1/142)x1]+[(50/296)x3])/100 x(100/(100+4.3+26))}x1000= 4.97 mmol/g (Page 5, [0048], Example 1; Page 6, [0050], Example 1).
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Regarding claim 2: ‘024 discloses the polymerizable composition for an optical article (Page 1, [0001]), wherein the two or more (meth)acrylates include a monofunctional (meth)acrylate having a molecular weight of 150 or less such as monofunctional methyl acrylate, monofunctional ethyl acrylate, monofunctional butyl (meth)acrylate (MW. 142.19 g/mol), and monofunctional glycidyl (meth)acrylate (MW. 142.15 g/mol) as the component A3 (Page 3, [0063]).
Regarding claims 3-4: ‘024 discloses the polymerizable composition for an optical article (Page 1, [0001]), wherein the polyalkylene glycol moiety of the component A2 is selected from the group consisting of a polyethylene glycol moiety and a polypropylene glycol moiety such as
49 parts by mass of a component A2 of polyethylene glycol dimethacrylate (PEG14, MW:736; Page 16, [0143]; Page 20, [0176], Example 1, Table 1).
Regarding claims 5-8: ‘024 discloses the polymerizable composition for an optical article (Page 1, [0001]), wherein the component A2 is a bifunctional such as 49 parts by mass of a component A2 of polyethylene glycol dimethacrylate (PEG14, MW:736; Page 16, [0143]; Page 20, [0176], Example 1, Table 1).
Regarding claim 9: The disclosure of ‘024 is adequately set forth in paragraph above and is incorporated herein by reference. ‘024 is silent regarding the polymerizable composition for an optical article, wherein the viscosity at a temperature of 25°C is 20 mPa:s or more.
However, since ‘’024 discloses the identical or substantially identical polymerizable composition for an optical article, comprising: two or more (meth)acrylates, and a photochromic compound, wherein the two or more (meth)acrylates include at least a multifunctional (meth)acrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more, and wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is 3.50 mmol/g or more as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. viscosity, would inherently/implicitly be achieved by ‘’024 (i.e., the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 10: ‘024 discloses an optical article (Page 15, [0128]) comprising: a substrate, and a photochromic layer obtained by curing the polymerizable composition for an optical article (Page 15, [0128]; Page 16, [0135]; Page 20, [0178], Example 1).
Regarding claim 11: ‘024 discloses an optical article (Page 15, [0128]) comprising: a substrate, and a photochromic layer obtained by curing the polymerizable composition for an optical article (Page 15, [0128]; Page 16, [0135]; Page 20, [0178], Example 1). ‘024 is silent regarding the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more.
However, since ‘024 discloses the identical or substantially identical polymerizable composition for an optical article, comprising: two or more (meth)acrylates, and a photochromic compound, wherein the two or more (meth)acrylates include at least a multifunctional (meth)acrylate containing a polyalkylene glycol moiety and having a molecular weight of 500 or more, and wherein the (meth)acryloyl group content in the polymerizable composition for an optical article is 3.50 mmol/g or more as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e. viscosity, would inherently/implicitly be achieved by ‘878 (i.e., the viscosity of the polymerizable composition for an optical article at a temperature of 25°C is 20 mPa-s or more). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 197 5).
Regarding claim 12: ‘024 discloses the optical article (Page 15, [0128]), which is a spectacle lens (Page 1, [0003]; Page 23, Claim 11).
Regarding claim 14: ‘024 discloses eyeglasses comprising the spectacle lens (Page 1, [0003]; Page 1, [0005]; Page 23, Claim 11).
Prior-Art Cited But Not Applied
10. Any prior-art reference which is cited on FORM PTO-892 but not applied is cited of interest to show the general state of the prior-art at the time of the application’s invention. Please see Momoda et al. (US Pub. No. 2004/0220292 A1), and Hanasaki et al. (JP2019127 450 A, machine translation).
Examiner Information
11. 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
11/20/2025
bijan.ahvazi@uspto.gov