Curable Photochromic Composition Including a Segmented Polymer

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 08/31/2026. 3. Claims 1-15 are pending. Claims 1-15 are under examination on the merits. Claims 1-2,4,6,13 are amended. 4. The objections and rejections not addressed below are deemed withdrawn. 5. Applicant's arguments filed 08/31/2026 have been fully considered but they are not persuasive, thus claims 1-15 stand rejected as set forth in Office action dated 06/03/2026 and further discussed in the Response to Arguments below. 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, 5-6, 14-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Xie et al. (CN 106433608 A, machine translation, hereinafter “’608”). Regarding claim 1: ‘608 teaches a curable photochromic composition (Page 6/36, [0002]) comprising: (a) a photochromic compound (Page 8/36, [0013]), (b) a trialkoxysilane functional material having at least two trialkoxysilane groups such as the mixture of γ-glycidyl propyltrimethoxysilane, γ-aminopropyltrimethoxysilane, 3,4-epoxycyclohexylethyitrimethoxy silane, dimethyldiethoxysilane, aminoethyltrimethoxysilane, and 3-(trimethoxysilyl)propy) methacrylate (Page 25/36, [0095]), and (c) a segmented polymer comprising, at least one first segment, and at least one second segment, wherein, (i) each the at least one first segment independently comprises at least one of a (meth)acrylic polymer segment with a weight-average molecular weight of 500-50000 and a hydroxyl value of 20-270 (Page 22/36, [0090]), and (ii) each the at least one second segment independently comprises at least one of, a polycarbonate segment such as ABA polyols where A represents a polycarbonate block and B is a urethane block (Page 16/36, [0066]) with benefit of providing the use of thermosetting polymers, thermoplastic polycarbonates and highly crosslinked optical polymer materials as plastic substrates for photochromic articles, and further to minimize the time required for the photochromic materials contained in the coating to activate and fade (Page 7/36, [0007]). 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 selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Regarding claim 2: ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), wherein the at least one first segment comprises hydroxyl groups (Page 22/36, [0090]). Regarding claim 3: ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), wherein the polyacrylic acid polyol has a weight-average molecular weight of 500-50000 and a hydroxyl value of 20-270 in the segmented polymer (i.e., a hydroxyl number of less than 35; Page 22/36, [0090]). 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 4: The disclosure of ‘608 is adequately set forth in paragraph 12 above and is incorporated herein by reference. ‘608 does not expressly teach the at least one second segment is present in the segmented polymer in an amount of from 50 percent by weight to 90 percent by weight, based on total weight of the segmented polymer. However, ‘608 teaches in one non-limiting embodiment, the degree of crosslinking can be 5%-100% of full crosslinking. In an alternative, non-limiting embodiment, the degree of crosslinking can be 30%-95% of full crosslinking, for example 35%-95%, 50%-95%, or 50%-85% (Page 11/36, [0036]). 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 mixing ratio of the at least one second segment based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Regarding claim 5: ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), wherein the polyacrylic acid polyol has a weight-average molecular weight of 500-50000 in the segmented polymer (i.e., the segmented polymer has a Mw of 35,000 to 250,000; Page 22/36, [0090]). 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 6: ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), wherein each the at least one second segment independently comprises, the polycarbonate segment, a polycarbonate-polyester segment, a polycarbonate-polyurethane segment, and a polycarbonate-polyester-polyurethane segment (Page 16/36, [0066]; Page 17/36, [0070]). Regarding claim 14: ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), further comprising a catalyst that catalyzes the formation of siloxane linkages (Page 25/36, [0095]). Regarding claim 15: ‘608 teaches an article comprising: (A) a substrate, and (B) a photochromic layer over at least one surface of the substrate, wherein the photochromic layer is formed from the curable photochromic composition (Page 12/36, [0040]; Page 27/36, [0110]; Page 28/36, [0112]). 8 Claims 7-14 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Xie et al. (CN 106433608 A, machine translation, hereinafter “’608”) as applied to claim 1 above, and further in view of Ogihara et al.(US Pub. No. 2004/0180222 A1, hereinafter “’222”). Regarding claims 7-9: The disclosure of ‘608 is adequately set forth in paragraph 7 above and is incorporated herein by reference. ‘608 teaches a curable photochromic composition (Page 6/36, [0002]) comprising a trialkoxysilane functional material having at least two trialkoxysilane groups (Page 25/36, [0095]). ‘608 does not expressly teach the trialkoxysilane functional material is represented by the Formula (I) as set forth, wherein n is from 2 to 4, and R¹ comprises at least one of polyvalent aliphatic hydrocarbon residue. However, ‘222 teaches a composition for film formation which can be formed into a porous film (Page 1, [0002]) comprising 1,1,1-tris(trimethoxysilylmethyl)ethane, wherein R1 is polyvalent aliphatic hydrocarbon residue (Page 3, [0046]) with benefit of providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased (Page 2, [0027]). In an analogous art of the film 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 modify the trialkoxysilane functional material by ‘608, so as to include the trialkoxysilane functional material is represented by the Formula (I) as set forth as taught by ‘222, and would have been motivated to do so with reasonable expectation that this would result in providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased as suggested by ‘222 (Page 2, [0027]). 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 trialkoxysilane functional materials) 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 claims 10-13: The disclosure of ‘608 in view of ‘222 is adequately set forth in paragraph above and is incorporated herein by reference. ‘608 in view of ‘222 does not expressly teach the trialkoxysilane functional material comprises Si in an amount of from 5.0 to 16.0 percent by weight, based on solids weight of the trialkoxysilane functional material, wherein a weight ratio of the trialkoxysilane functional material to the segmented polymer is from 80:20 to 50:50, preferably, from 75:25 to 60:40, and wherein the curable photochromic composition comprises a total amount of second segments of from 10 percent by weight to 45 percent by weight, based on total solids weight of the curable photochromic composition. However, ‘608 teaches in one non-limiting embodiment, the degree of crosslinking can be 5%-100% of full crosslinking. In an alternative, non-limiting embodiment, the degree of crosslinking can be 30%-95% of full crosslinking, for example 35%-95%, 50%-95%, or 50%-85% (Page 11/36, [0036]). ‘222 teaches a composition for film formation which can be formed into a porous film (Page 1, [0002]) comprising 1,1,1-tri(4-trimethoxysilylmethyl)ethane, wherein R1 is polyvalent aliphatic hydrocarbon residue (Page 3, [0046]) with benefit of providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased (Page 2, [0027]). 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 mixing ratio of the at least one second segment based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Regarding claim 14: The disclosure of ‘608 in view of ‘222 is adequately set forth in paragraph above and is incorporated herein by reference. ‘608 teaches the curable photochromic composition (Page 6/36, [0002]), further comprising a catalyst that catalyzes the formation of siloxane linkages (Page 25/36, [0095]). ‘222 teaches a composition for film formation which can be formed into a porous film (Page 1, [0002]) comprising 1,1,1-tri(4-trimethoxysilylmethyl)ethane, wherein R1 is polyvalent aliphatic hydrocarbon residue (Page 3, [0046]) with benefit of providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased (Page 2, [0027]). Response to Arguments 9. Applicant's arguments filed 08/31/2026 have been fully considered but they are not persuasive In response to Applicant’s argument that the Example 1 of King, which includes A-187 coupling agent includes one trimethoxysilane group and the rejection should be withdrawn. The examiner respectfully disagrees. The Applicant's argument is rendered moot since the claim rejection by King’617 is deemed withdrawn. In response to Applicant’s argument that the claim rejection as being unpatentable over Xie’608 should be withdrawn because ‘608 only teaches one trimethoxysilane group. The examiner respectfully disagrees. The instant claim 1 recites “a trialkoxysilane functional material having at least two trialkoxysilane groups”, wherein the term trialkoxysilane functional material should be given its ordinary meaning and broadest reasonable interpretation. While it is understood that applicant is entitled to be his/her own lexicographer, it is incumbent upon applicant to clearly and distinctly set forth that for which is regarded as the invention. The examiner interpreted a trialkoxysilane functional material comprising the mixture of two trialkoxysilane groups (i.e., broadest reasonable interpretation), and NOT trialkoxysilane functional material with two trialkoxysilane groups. ‘608 teaches a curable photochromic composition (Page 6/36, [0002]) comprising: (a) a photochromic compound (Page 8/36, [0013]), (b) a trialkoxysilane functional material having at least two trialkoxysilane groups such as the mixture of γ-glycidyl propyltrimethoxysilane, γ-aminopropyltrimethoxysilane, 3,4-epoxycyclohexyl ethyitrimethoxy silane, dimethyldiethoxysilane, aminoethyltrimethoxysilane, and 3-(trimethoxysilyl)propy) methacrylate (Page 25/36, [0095]). Thus, with regard to the instant claim 1 limitation, when given its broadest interpretation, reads on ‘608’s trialkoxysilane functional material having at least two trialkoxysilane groups. In response to Applicant’s argument that Ogihara’222 fails to teach the trialkoxysilane functional group material of formula (I) as set forth. The examiner respectfully disagrees. ‘222 teaches a composition for film formation which can be formed into a porous film (Page 1, [0002]) comprising 1,1,1-tris(trimethoxysilyl methyl)ethane, wherein R1 is polyvalent aliphatic hydrocarbon residue (Page 3, [0046]) with benefit of providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased (Page 2, [0027]). In an analogous art of the film 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 modify the trialkoxysilane functional material by ‘608, so as to include the trialkoxysilane functional material is represented by the Formula (I) as set forth as taught by ‘222, and would have been motivated to do so with reasonable expectation that this would result in providing the addition of the crosslinking agent having three or four functional silicon atoms per molecule thereof, so that the mechanical strength is increased as suggested by ‘222 (Page 2, [0027]). 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 trialkoxysilane functional materials) 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). 10. 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 09/14/2026 bijan.ahvazi@uspto.gov