DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on November 27, 2024, July 7, 2025 and June 1, 2026 have been considered by the examiner.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tadashi (JP H07-168209).
With regard to independent claim 8, Tadashi teaches a method of producing an electrochromic element (page 4, paragraph [0001]) in which a lens substrate and an electrochromic film are laminated together (Figure 1, elements J and K), wherein a surface power distribution of the electrochromic element is measured (page 9, paragraph [0026], wherein power of the EC spectacle is measured), and a rear surface of the lens substrate on a side opposite to a side on which the electrochromic film is arranged is polished on the basis of a measurement result thereof (page 9, paragraph [0027], wherein the plastic lens is ground and polished in response to the measured power).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tadashi (JP H07-168209).
With regard to independent claim 1, although Tadashi teaches an electrochromic element (Figure 1, element G) in which a lens substrate and an electrochromic film are laminated together (Figure 1, elements J and K),wherein an absolute value of a difference between a maximum value and a minimum value of a transmission power is 0.30 D or less (page 9, paragraph [0027] wherein the power of the EC spectacle is within +/- 0.09 D), Tadashi fails to explicitly teach wherein the transmission power difference is specified as being within a 40 mm x 40 mm range. However, it should be noted that one of routine skill in the art, without undue experimentation, would recognize that the transmission power would be measured in the region, i.e., center of the lens, critical to providing the best visual correction for a wearer wherein a 40 mm x 40 mm area is common for a standard spectacle lens, such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify the main area of a spectacle lens to effectively correct a wearer’s vision.
With regard to dependent claim 2, Tadashi teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 1 above, and further teaches such an electrochromic element wherein the absolute value of the difference between the maximum value and the minimum value of the transmission power in all of the 40 mm x 40 mm range at the center of the surface is 0.15 D or less (page 9, paragraph [0027] wherein the power of the EC spectacle is within +/- 0.09 D).
With regard to dependent claim 6, Tadashi teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 1 above, and further teaches a lens for spectacles wherein such an electrochromic element is used (page 4, paragraph [0001]).
With regard to dependent claim 7, Tadashi teaches all of the claimed limitations of the instant invention as outlined above with respect to dependent claim 6 above, and further teaches spectacles, wherein a plurality of the lenses for spectacles are used (page 5, paragraph [0006], wherein sunglasses inherently have multiple lenses to provide protection for a left eye and a right eye).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Tadashi (JP H07-168209), as applied to claim 8 above.
With regard to dependent claim 10, Tadashi teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 8 above, and further teaches such a method wherein polishing is performed so that an absolute value of a difference between a maximum value and a minimum value of a transmission power is 0.30 D or less (page 9, paragraphs [0026] and [0027] wherein the power of the EC spectacle is within +/- 0.09 D), Tadashi fails to explicitly teach wherein the transmission power difference is specified as being within a 40 mm x 40 mm range. However, it should be noted that one of routine skill in the art, without undue experimentation, would recognize that the transmission power would be measured in the region, i.e., center of the lens, critical to providing the best visual correction for a wearer wherein a 40 mm x 40 mm area is common for a standard spectacle lens, such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify the main area of a spectacle lens to effectively correct a wearer’s vision.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tadashi (JP H07-168209), as applied to claim 8 above, further in view of Kim et al (U.S. Patent Publication 2018/0231857).
With regard to dependent claim 11, although Tadashi teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 8 above, and further teaches such a method comprising: a process of forming the electrochromic element (page 4, paragraph [0001]);a process of using a molding process (page 6, paragraph [0013]); a process of measuring a surface power distribution of the electrochromic element (page 9, paragraph [0027]); and a process of polishing the rear surface based on a measurement result of the surface power distribution (page 9, paragraph [0027]), Tadashi fails to explicitly teach a process of arranging the electrochromic element in a mold to injection-mold the lens substrate. In a related endeavor, Kim et al teaches a method of producing an electrochromic element (page 1, paragraph [0002]) wherein the method comprises a process of arranging the electrochromic element in a mold to injection-mold the lens substrate (page 6, paragraph [0085]), such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to modify the method, as taught by Tadashi, with the process of injection-molding, as taught by Kim et al, as one or a number of known alternatives in the production of an electrochromic element.
Allowable Subject Matter
Claim 3 is allowed.
Claims 4, 5 and 9 are 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 a statement of reasons for the indication of allowable subject matter: The prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of the independent claims, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper.
With regard to independent claim 3, although the prior art teaches an electrochromic element in which a lens substrate and an electrochromic film are laminated together, the prior art fails to teach such an electrochromic element wherein a surface of the electrochromic film has an undulation, and a rear surface of the lens substrate on a side opposite to a surface on which the electrochromic element film is arranged undulates along a shape of the surface.
With regard to dependent claim 4, although the prior art teaches an electrochromic element in which a lens substrate and an electrochromic film are laminated together, wherein an absolute value of a difference between a maximum value and a minimum value of a transmission power in all of a 40 mm x 40 mm range at a center of a surface is 0.30 D or less, the prior art fails to teach such an electrochromic element wherein the rear surface if the lens substrate on the side opposite to the side which the electrochromic film is arranged is polished to undulate along the shape of the surface.
With regard to dependent claim 5, claim 5 is allowable as it depends, directly or indirectly, from dependent claim 4 and therefore inherits all of the limitations of the claim from which it depends.
With regard to dependent claim 9, although the prior art teaches a method of producing an electrochromic element in which a lens substrate and an electrochromic film are laminated together, wherein a surface power distribution of the electrochromic element is measured, and a rear surface of the lens substrate on a side opposite to a side on which the electrochromic film is arranged is polished on the basis of a measurement result thereof, the prior art fails to teach such a method wherein the surface power distribution is measured with a reflection power, a polished shape relative to the rear surface is measured on the basis of a reflection power distribution, and the rear surface is polished in accordance with the polished shape.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Meynen et al (U.S. Patent Publication 2023/0324718) and Yutani et al (U.S. Patent Publication 2022/0035218) both teach electrochromic lenses.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRYL J COLLINS whose telephone number is (571) 272-2325. The examiner can normally be reached M-Th 5:30 a.m. - 4:00 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky L Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DARRYL J COLLINS/Primary Examiner, Art Unit 2872
22 June 2026
Prosecution Insights