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/KR2023/020485, filed on 12/13/2023, which is entitled to and claims the benefit of priority of KR App. No. 10-2022-0184007, filed 12/26/2022. The preliminary amendment filed on 10/16/2024 is entered and acknowledged by the Examiner.
3. Claims 1-15 are pending. Claims 1-15 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statement submitted on 10/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statement.
Drawings
5. The drawings are received on 10/16/2024. These drawings are acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 10/16/2024 under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 3, 5 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The trademark or trade name, “SYLGARD 184”, used in claim 3 as a limitation to identify an elastomer curing agent does not comply with the requirements of 35 U.S.C. 112, second paragraph. Ex parte Simpson. 218 USPQ 1020 (Bd. App. 1982).
Additionally the trademark or trade name, “Triton X-100”, and “Thesit”, used in claim 5 as a limitation to identify a surfactant does not comply with the requirements of 35 U.S.C. 112, second paragraph. Ex parte Simpson. 218 USPQ 1020 (Bd. App. 1982).
Thus, the use of trademark or trade name would render the claims indefinite. A trademark is a source indicator; it is not a specific material. The materials covered by a particular trademark can change over time. Additionally, since the applicants do not use generic language, it is not clear if other materials are acceptable or covered by the scope of the claim.
9. Claim 12 is 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 12 recites “wherein when the photochromic element is discolored, the photochromic element exhibits a transmittance of approximately 45% to approximately 75% with respect to light having a wavelength of 593 nm”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of photochromic element that the transmittance at a wavelength of 593 nm is measured, thus claim 12 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
10. Claim 13 is 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 13 recites “wherein when the photochromic element is discolored, the photochromic element exhibits a transmittance change of approximately 30% or more with respect to light having a wavelength of approximately 593 nm based on a transmittance before discoloration”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of photochromic element that the transmittance at a wavelength of 593 nm is measured, thus claim 13 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope.
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 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hiraren et al. (US Pub. No. 2013/0215488 A1, hereinafter “’488”).
Regarding claim 9: ‘488 discloses a photochromic composition as the adhesive layer for binding the optical sheets or the optical films (Page 1, [0001]), wherein the photochromic composition comprising (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as
hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]) as shown in the photochromic composition mixture 6 below (Page 36, photochromic composition mixture 6; Page 40, Claim 10). ‘488 discloses an additional of other component such as a surfactant (Page 18, [0197]).
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Regarding claims 10-11: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. ‘488 is silent regarding discoloration of the photochromic element is carried out within approximately 1 minute, preferably within approximately 10 minutes.
However, since ‘488 discloses the identical or substantially identical photochromic composition as the adhesive layer for binding the optical sheets or the optical films (Page 1, [0001]), wherein the photochromic composition comprising (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]), and an additional of other component such as a surfactant (Page 18, [0197]) 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 inherently/implicitly be achieved by ‘488 (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. 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 (CCPA 1975).
Regarding claim 12: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. ‘488 is silent regarding when the photochromic element is discolored, the photochromic element exhibits a transmittance of approximately 45% to approximately 75% with respect to light having a wavelength of 593 nm.
However, since ‘488 discloses the identical or substantially identical photochromic composition as the adhesive layer for binding the optical sheets or the optical films (Page 1, [0001]), wherein the photochromic composition comprising (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]), and an additional of other component such as a surfactant (Page 18, [0197]) 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., light transmittance would inherently/implicitly be achieved by ‘488 (i.e., when the photochromic element is discolored, the photochromic element exhibits a transmittance of approximately 45% to approximately 75% with respect to light having a wavelength of 593 nm). “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 (CCPA 1975).
Regarding claim 13: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. ‘488 is silent regarding when the photochromic element is discolored, the photochromic element exhibits a transmittance change of approximately 30% or more with respect to light having a wavelength of approximately 593 nm based on a transmittance before discoloration.
However, since ‘488 discloses the identical or substantially identical photochromic composition as the adhesive layer for binding the optical sheets or the optical films (Page 1, [0001]), wherein the photochromic composition comprising (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]), and an additional of other component such as a surfactant (Page 18, [0197]) 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., light transmittance would inherently/implicitly be achieved by ‘488 (i.e., when the photochromic element is discolored, the photochromic element exhibits a transmittance change of approximately 30% or more with respect to light having a wavelength of approximately 593 nm based on a transmittance before discoloration). “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 (CCPA 1975).
Regarding claim 14: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. ‘488 is silent regarding the photochromic element exhibits a tensile strain of approximately 350% or more based on a tensile strength of approximately 1 MPa.
However, since ‘488 discloses the identical or substantially identical photochromic composition as the adhesive layer for binding the optical sheets or the optical films (Page 1, [0001]), wherein the photochromic composition comprising (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]), and an additional of other component such as a surfactant (Page 18, [0197]) 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 inherently/implicitly be achieved by ‘488 (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. 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 (CCPA 1975).
Regarding claim 15: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. 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 (i.e., an artificial skin comprising a photochromic element).
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 1-8 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hiraren et al. (US Pub. No. 2013/0215488 A1, hereinafter “’488”) in view of Momota et al. (JP 2022-166771 A, machine translation, hereinafter “’771”).
Regarding claim 1: ‘488 teaches a production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the photochromic composition comprising mixing (A) a polyurethane-urea resin having an urea bond in the molecular chain such as W5 (Page 31, Table 10), (B) a photochromic compound (Page 22, [0278]), and (D) an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]) as shown in the photochromic composition mixture 6 above (Page 36, photochromic composition mixture 6; Page 40, Claim 10). ‘488 teaches an additional of other component such as a surfactant (Page 18, [0197]). ‘488 does not expressly teach the order of sequence of adding ingredients.
However, 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 2: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the polymer resin includes a polymer resin selected from the group consisting of polyurethane (Page 31, Table 10; Page 36, photochromic composition mixture 6; Page 40, Claim 24).
Regarding claim 3: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the curing agent includes an isocyanate compound having at least one isocyanate group in the molecule such as hexamethylene-1,6-diisocyanate (the molecular weight 168)(i.e., curing agent; Page 23, [0290]) as shown in the photochromic composition mixture 6 above (Page 36, photochromic composition mixture 6; Page 40, Claim 24).
Regarding claim 4: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the photochromic dye includes a substance selected from the group consisting of naphthopyran (Page 22, [0278]), as shown in the photochromic composition mixture 6 above (Page 36, photochromic composition mixture 6; Page 40, Claim 10).
Regarding claim 5: The disclosure of ‘488 is adequately set forth in paragraph above and is incorporated herein by reference. ‘448 teaches the photochromic composition comprising the surfactant such as any of nonionic, anionic, cationic can be used, however it is preferable to use nonionic surfactants from the point of the solubility to the photochromic compositions (Page 19, [0198]). ‘488 does not expressly teach the surfactant includes a substance selected from the group consisting as set forth.
However, ‘771 teaches a photochromic optical article is provided which is formed,
by joining a pair of inorganic material made plates(A) and (A') for an optical article, via a photochromic adhesive layer (B) including a photochromic compound (Ba) and a resin component (Bb), a polarizing film (C), and an adhesive layer (D) made of a cured body of a photocurable composition. By forming such a laminated form, the photochromic optical article having excellent photochromic properties and adhesion can be provided (Page 2/65, Abstract). ‘771 teaches adhesive layer (B) comprises a surfactant such as alkyltrimethylammonium salts, and dialkyldimethylammonium salts (Page 44/65, [0229]).
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 the substitution of equivalents (i.e., in view of the art recognized functional equivalence of the two surfactants) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC).
Regarding claim 6: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the blending amount of D component (i.e., the curing agent) in the photochromic composition is suitably 0.01 to 20 parts by weight with respect to 100 parts by weight of A component from the point of the adhesion, the heat resistance and the photochromic characteristics (Page 18, [0194]).
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 7: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the blending amount of B component in the photochromic composition is suitably 0.01 to 20 parts by weight with respect to 100 parts by weight of A component from the point of the photochromic characteristic. In order to maintain the photochromic characteristics such as the color optical density or the durability or so while sufficiently maintaining the adhesion between the optical base material such as plastic film or so, the added amount of B component is preferably 0.5 to 10 parts by weight and more preferably 1 to 7 parts by weight with respect to 100 parts by weight of A component (Page 16, [0171]).
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 8: ‘488 teaches the production method of the optical article comprising a photochromic composition (Page 1, [0001]), wherein the surfactant, it may be used by mixing two or more thereof. The added amount of the surfactant is preferably within the range of 0.001 to 5 parts by weight with respect to 100 parts by weight of the polyurethane-urea resin (A component) (Page 19, [0199]).
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.
15. Claim 15 is rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Hiraren et al. (US Pub. No. 2013/0215488 A1, hereinafter “’488”) 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 ‘488 is adequately set forth in paragraph 12 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 ‘488 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 ‘488, 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]).
Examiner Information
16. 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
07/01/2026
bijan.ahvazi@uspto.gov
Prosecution Insights