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 08/24/2026.
3. Claims 1, 3-4, 7, 9-11,14-15 are pending. Claims 1, 3-4, 7, 9-11,14-15 are under examination on the merits. Claims 1, 3, 9 are amended. Claims 2, 5-6, 8, 12-13 are cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant’s arguments with respect to claims 1, 3-4, 7, 9-11,14-15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1, 3-4, 7, 9-11, 14-15 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Chiu et al. (US Pub. No. 2014/0118681 A1, hereinafter “’681”) in view of Park et al. (US Pub. No. 2019/0214593 A1, hereinafter “’593”).
Regarding claims 1,3: ‘681 teaches a manufacturing method for a photochromic element such as a temporary photochromic patch for an ophthalmic lens (Page 1, [0002]), the manufacturing method comprising: mixing a polymer resin such as dimethylsiloxane and a curing agent such as dimethyl methylhydrogen siloxane, adding a photochromic dye to the resultant mixture (Page 2, [0025]; Page 4, claim 1). ‘681 does not expressly teach adding a surfactant to a mixture to which the photochromic dye is added, wherein the polymer resin includes polydimethylsiloxane (PDMS) and the surfactant is represented by the following Chemical Formula,
PNG
media_image1.png
114
298
media_image1.png
Greyscale
wherein n is an integer greater than or equal to 1 and represents the number of oxyethylene repeating units, wherein a content of the curing agent is 10 parts by weight with respect to 100 parts by weight of the polymer resin, and wherein a content of the surfactant is 0.3 parts by weight with respect to 100 parts by weight of the mixture containing the polymer resin and the curing agent.
However, ‘593 teaches an adhesive transparent electrode (Page 1, [0002]) includes a substrate and an adhesive silicone-based polymer matrix, in which a metal nanowire network is embedded, wherein the adhesive silicone-based polymer matrix includes a silicone-based polymer including a silicone-based polymer base such as polydimethylsiloxane base (Page 4, [0066]), a silicone-based polymer crosslinker such as a polydimethylsiloxane crosslinker (Page 4, [0067], and a non-ionic surfactant such as 4-(1,1,3,3-tetramethylbutyl)phenyl-polyethylene glycol represented by Formula 3 (Page4, [0069]). ‘593 teaches when the silicone-based polymer is polydimethylsiloxane, the dispersing solution 160 may be prepared by mixing a polydimethyl siloxane base, a polydimethylsiloxane crosslinker, and a non-ionic surfactant in a weight ratio of 10:1:0.01 to 10:1:0.08, particularly in a weight ratio of 10:1:0.03 to 10:1:0.05 (Page 4, [0065]) with benefit of providing to control the properties of polydimethylsiloxane, which does not exhibit a great transmittance difference compared to existing polydimethylsiloxane, even with a small amount of additive and enabling easy processing due sufficiently low viscosity of liquid before hardening (Page 1, [0008]).
PNG
media_image2.png
164
448
media_image2.png
Greyscale
In an analogous art of the composition comprising polydimethylsiloxane, 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 composition by ‘681, so as to include adding a surfactant to the mixture of polymer resin, the curing agent, and the photochromic dye as taught by ‘593, and would have been motivated to do so with reasonable expectation that this would result in providing an adhesive transparent electrode having high adhesiveness and thus being capable of being attached to the skin without an additional adhesive, and having adhesiveness maintained even after repeated detachment and attachment, and a method of fabricating the adhesive transparent electrode (Page 1, [0010]), and further to provide an adhesive transparent electrode allowing easy control of the properties of a silicone-based polymer with a very small amount of non-ionic surfactant due to use of a non-ionic surfactant as suggested by ‘593 (Page 1, [0010]).
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
selection of any order of mixing ingredients (i.e., changes in sequence of adding ingredients is a prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Regarding claim 4: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph above and is incorporated herein by reference. ‘681 teaches any known optical photochromic dye can be used. For example, naphthopyrans, fulgides, benzopyrans, fulgimides, spironaphthopyrans, spirobenzoxazines, spironaphthoxazines, spirobenzopyrans, and combinations. The dyes can be blended to achieve different performance or cosmetic characteristics (Page 2, [0027]).
Regarding claim 7: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph above and is incorporated herein by reference. ‘681 teaches a content of the photochromic dye is approximately 0.1 to approximately 10 parts by weight with respect to 100 parts by weight of the mixture containing the polymer resin and the curing agent (Page 2, [0026]).
Thus, the subject as a whole would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, see In re Malagari, 182 U.S.P.Q 549.
Regarding claim 9: ‘681 teaches a photochromic element such as a temporary photochromic patch for an ophthalmic lens (Page 1, [0002]), comprising: mixing a polymer resin such as dimethylsiloxane and a curing agent such as dimethyl methylhydrogen siloxane, adding a photochromic dye to the resultant mixture (Page 2, [0025]; Page 4, claim 1). ‘681 does not expressly teach a surfactant, wherein the polymer resin includes polydimethylsiloxane (PDMS) and the surfactant is represented by the following Chemical Formula,
PNG
media_image1.png
114
298
media_image1.png
Greyscale
wherein n is an integer greater than or equal to 1 and represents the number of oxyethylene repeating units, wherein a content of the curing agent is 10 parts by weight with respect to 100 parts by weight of the polymer resin, and wherein a content of the surfactant is 0.3 parts by weight with respect to 100 parts by weight of the mixture containing the polymer resin and the curing agent.
However, ‘593 teaches an adhesive transparent electrode (Page 1, [0002]) includes a substrate and an adhesive silicone-based polymer matrix, in which a metal nanowire network is embedded, wherein the adhesive silicone-based polymer matrix includes a silicone-based polymer including a silicone-based polymer base such as polydimethylsiloxane base (Page 4, [0066]), a silicone-based polymer crosslinker such as a polydimethylsiloxane crosslinker (Page 4, [0067], and a non-ionic surfactant such as 4-(1,1,3,3-tetramethylbutyl)phenyl-polyethylene glycol represented by Formula 3 (Page4, [0069]). ‘593 teaches when the silicone-based polymer is polydimethylsiloxane, the dispersing solution 160 may be prepared by mixing a polydimethyl siloxane base, a polydimethylsiloxane crosslinker, and a non-ionic surfactant in a weight ratio of 10:1:0.01 to 10:1:0.08, particularly in a weight ratio of 10:1:0.03 to 10:1:0.05 (Page 4, [0065]) with benefit of providing to control the properties of polydimethylsiloxane, which does not exhibit a great transmittance difference compared to existing polydimethylsiloxane, even with a small amount of additive and enabling easy processing due sufficiently low viscosity of liquid before hardening (Page 1, [0008]).
PNG
media_image2.png
164
448
media_image2.png
Greyscale
In an analogous art of the composition comprising polydimethylsiloxane, 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 composition by ‘681, so as to include adding a surfactant to the mixture of polymer resin, the curing agent, and the photochromic dye as taught by ‘593, and would have been motivated to do so with reasonable expectation that this would result in providing an adhesive transparent electrode having high adhesiveness and thus being capable of being attached to the skin without an additional adhesive, and having adhesiveness maintained even after repeated detachment and attachment, and a method of fabricating the adhesive transparent electrode (Page 1, [0010]), and further to provide an adhesive transparent electrode allowing easy control of the properties of a silicone-based polymer with a very small amount of non-ionic surfactant due to use of a non-ionic surfactant as suggested by ‘593 (Page 1, [0010]).
It is held that a prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850,205 USPQ 1069, 1072 (CCPA 1980).
Regarding claims 10-11: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph above and is incorporated herein by reference. ‘681 teaches it would be desirable to be able to transform a pair of existing clear eyeglasses into photochromic lens within a few minutes at the offices of an eye care professional (ECP) (Page 2, [0022]). ‘681 in view of ‘593 does not expressly teach discoloration of the photochromic element is carried out within approximately 1 minute, preferably within approximately 10 minutes.
However, since ‘681 in view of ‘593 teaches the identical or substantially identical photochromic composition as the adhesive layer 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., discoloration of the photochromic element would be expected to be the same as claimed (i.e., discoloration of the photochromic element is carried out within approximately 1 minute, preferably within approximately 10 minutes). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. If there is any difference between the product of 681 in view of ‘593 and the product of the instant claims the difference would have been minor and obvious. “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 composition, 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 (CCPA 1975).
Regarding claim 14: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph above and is incorporated herein by reference. 681 in view of ‘593 does not expressly teach the photochromic element exhibits a tensile strain of approximately 350% or more based on a tensile strength of approximately 1 MPa.
However, since ‘681 in view of ‘593 teaches the identical or substantially identical photochromic composition as the adhesive layer 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., a tensile strain would be expected to be the same as claimed (i.e., the photochromic element exhibits a tensile strain of approximately 350% or more based on a tensile strength of approximately 1 MPa). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. If there is any difference between the product of 681 in view of ‘593 and the product of the instant claims the difference would have been minor and obvious. “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 composition, 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 (CCPA 1975).
Regarding claim 15: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph above and is incorporated herein by reference. ‘681 in view of ‘593 teaches an artificial skin comprising a photochromic element (Page 2, [0035]-[0036], Figs 10-11).
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.
8. Claim 15 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Chiu et al. (US Pub. No. 2014/0118681 A1, hereinafter “’681”) in view of Park et al. (US Pub. No. 2019/0214593 A1, hereinafter “’593”) as applied to claim 9 above, and further in view of Kim et al.(US Pub. No. 20220162223 A1, hereinafter “’223”).
Regarding claim 15: The disclosure of ‘681 in view of ‘593 is adequately set forth in paragraph 7 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 ‘681 in view of ‘593 does not show an artificial skin comprising a photochromic element.
However, ‘223 teaches spiropyran (SP) is a molecular sensor showing a change in color or fluorescence in response to force, and a self-monitoring smart material capable of detecting strain, stress and damage can be obtained by coupling spiropyran with an organic or inorganic material. A spiropyran self-monitoring material is a smart material capable of detecting damage autonomously, and is advantageous in that it requires no external equipment and power source, allows continuous and active monitoring, and is less affected by external environment, such as temperature and humidity. Such a spiropyran self-monitoring material has been given many attentions as a material having high potential applicability in the fields of stress and strain sensors, detection of damage, artificial skin, or the like (Page 1, [0003]; Page 4, [0051]-[0052]) with benefit of providing a spiropyran composite having significantly improved mechano-sensitivity (Page 1, [0009]).
In an analogous art of the 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 apply the photochromic composition by ‘681, so as to include
an artificial skin comprising a photochromic element as taught by ‘233, and would have been motivated to do so with reasonable expectation that this would result in providing a spiropyran composite having significantly improved mechano-sensitivity as suggested by ‘223 (Page 1, [0009]).
Response to Arguments
9. Applicant’s arguments with respect to claims 1, 3-4, 7, 9-11,14-15 have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
10. 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
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
09/02/2026
bijan.ahvazi@uspto.gov
Prosecution Insights