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 CON of App. No. PCT/JP2023/022175, filed on 06/15/2023, which is entitled to and claims the benefit of priority of JP Patent App. No. 2022-098334, filed 06/17/2022. The
3. Claims 1-4 are pending. Claims 1-4 are under examination on the merits.
Information Disclosure Statement
4. The information disclosure statements submitted on 12/27/2024 and 07/01/2026 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 12/16/2024. This drawing is acceptable.
Priority
6. Receipt is acknowledged of papers submitted on 01/07/2025 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 1-4 are 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 1 recites “a transmittance of the spectacle lens at a wavelength of 556 nm is 65 to 80%”, wherein applicant fails to articulate by sufficiently distinct functional language, the thickness of spectacle lens that the transmittance at a wavelength of 556 nm is measured, thus claim 1 constitutes indefinite subject matter as per the metes and bounds of said phrase engenders indeterminacy in scope. Claims 2-4 being depended on claim 1 are rejected as well.
Claim Rejections - 35 USC § 103
9. 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.
10. Claims 1-4 are rejected under 35 U.S.C. 103(a)(1) as being unpatentable over Yuasa et al. (JP2009-109579 A, machine translation, hereinafter “’579”) in view of Read de Alaniz et al. (US Pub. No. 2019/0127345 A1, hereinafter “’345”).
Regarding claims 1-2: ‘579 teaches a spectacle lens (Page 5/23, [0001]) comprising: a lens base, and a resin layer disposed on the lens base (Page 1/23, Abstract), wherein the resin layer contains a colorant (page 13/23, [0027]) and a resin (Page 6/23, [0007]), the resin contains a repeating unit 1 derived from silsesquioxane having a polymerizable group (Page 7/23, [0012]) and a repeating unit 2 derived from a monofunctional monomer (Page 11/23, [0019])a mass ratio of the repeating unit 1 to the repeating unit 2 is 60/40 to 95/5 (Page 17/23, [0048], Table 3, Example 5). ‘579 does not expressly teach a compound represented by Formula (A), and a transmittance of the spectacle lens at a wavelength of 556 nm is 65 to 80%, preferably 68 to 79%.
However, ‘345 teaches the negative photochromatic materials (Page 1, [0003]) of one or more of the following chemical structure as shown below (Page 2, [0019]) may be included in a highly tunable photoswitch system that can undergo a color change from a colored state to completely clear state, while maintaining synthetic routes and high tunability (Page 2, [0017]). One example includes Donor Acceptor Stenhouse Adducts (DASA), which are a class of photoswitches that can be synthesized easily in two steps from commercially available starting materials. DASAs are considered negative photochromes, in that they reside in a conjugated colored form and, upon visible light irradiation, cyclize into a colorless form. DASAs absorb long wavelength visible light (545 or 570 nm), have high fatigue resistance, show a significant polarity change, and have a large volume change during the switching process (Page 2, [0017]).
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In an analogous art of the spectacle lens, 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 by the colorant by ‘579, so as to include the negative photochromatic compound as taught by ‘345, and would have been motivated to do so with reasonable expectation that this would result in providing the negative photochromatic compounds in that they reside in a conjugated colored form and, upon visible light irradiation, cyclize into a colorless form. DASAs absorb long wavelength visible light (545 or 570 nm), have high fatigue resistance, show a significant polarity change, and have a large volume change during the switching process as suggested by ‘345(Page 2, [0017]).
Pertaining to claims 1-2, since the combination of ‘579 in view of ‘345 teaches substantially identical spectacle lens as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e., light transmittance, would be expected to be the same as claimed (i.e., a transmittance of the spectacle lens at a wavelength of 556 nm is 65 to 80%, preferably 68 to 79%). If there is any difference between the product of ‘579 in view of ‘345 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 (CCP A 1975).
Regarding claims 3-4: The disclosure of ‘579 in view of ‘345 is adequately set forth in paragraph above and is incorporated herein by reference. ‘579 in view of ‘345 does not expressly teach when the spectacle lens is irradiated by using a halogen lamp at an illuminance of 90 W/cm² for 240 seconds, an average transmittance of the spectacle lens before the irradiation in a wavelength range of 530 to 570 nm is defined as T31 (%), and an average transmittance of the spectacle lens after the irradiation in the wavelength range of 530 to 570 nm is defined as T32 (%), T3 represented by Formula (3) is 10 to 20%:
ΔT3 = T32 - T31 Formula (3).
Pertaining to claims 3-4, since the combination of ‘579 in view of ‘345 teaches substantially identical spectacle lens as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention was made that the claimed effects and physical properties, i.e., light transmittance, would be expected to be the same as claimed (i.e., when the spectacle lens is irradiated by using a halogen lamp at an illuminance of 90 W/cm² for 240 seconds, an average transmittance of the spectacle lens before the irradiation in a wavelength range of 530 to 570 nm is defined as T31 (%), and an average transmittance of the spectacle lens after the irradiation in the wavelength range of 530 to 570 nm is defined as T32 (%), T3 represented by Formula (3) is 10 to 20%: ΔT3 = T32 - T31 Formula (3)”. If there is any difference between the product of ‘579 in view of ‘345 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 (CCP A 1975).
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
08/15/2026
bijan.ahvazi@uspto.gov
Prosecution Insights