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/EP2022/071153, filed on 07/28/2022. The preliminary amendment filed on 01/27/2025 is entered and acknowledged by the Examiner.
3. Applicant’s election of Group I, claims 1-15 with traverse in the reply filed on 09/09/2026 is acknowledged. Applicant notes that no objection for lack of unity was raised in the corresponding PCT Application No. PCT/EP2022/071153. This is found persuasive, and thus the restriction requirement between inventions Group I (claims 1-15), and Group II (claim 16), as set forth in the Office action mailed on 08/12/2026, is hereby withdrawn and claim 16 is hereby rejoined and fully examined for patentability under 37 CFR 1.104.
4. Claims 1-16 are pending. Claims 1-16 are under examination on the merits.
Information Disclosure Statement
5. The information disclosure statements submitted on 01/27/2025, and 07/08/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the examiner has considered the information disclosure statements.
Claim Rejections - 35 USC § 112
6. 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.
7. Claims 1-16 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 applicant regards as the invention. Claim 1 recites the limitation "with hydrazide groups” in line 6, and line 11, respectively. There is insufficient antecedent basis for this limitation in the claim. Claims 2-16 being depended on claim 1 are rejected as well.
For the purpose of examination against the prior art, claim 1 is construed to recite “with the at least two hydrazide groups”.
8. Claim 3 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 applicant regards as the invention. Claim 3 recites the limitation "comprising at least two hydrazide groups " in line 2. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination against the prior art, claim 3 is construed to recite “comprising the at least two hydrazide groups”.
9. Claim 4 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 applicant regards as the invention. Claim 4 recites the limitation "are reactive with carbonyl groups" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
For the purpose of examination against the prior art, claim 4 is construed to recite “are reactive with said carbonyl groups”.
Claim Rejections - 35 USC § 102
10. 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.
11. Claims 1, 4, 8, 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ambrose et al. (US Pub. No.2011/0177352 A1, hereinafter “’352”).
Regarding claim 1: ‘352 discloses a curable photochromic composition (Page 6, [0062]) comprising: (a) a photochromic compound (Page 6, [0060]), (b) a hydrazide functional material comprising at least two hydrazide groups that are reactive with carbonyl groups selected from ketone groups and aldehyde groups such as adipic acid dihydrazide (Page 8, [0083], Table 1, Charge #10; Page 11, Claim 11), (c) a first carbonyl-functional component (i.e., acrylic-latex) comprising a (meth)acrylate polymer (i.e., acrylate monomers, Page 8, [0083], Table 1, Charge #2; Page 10, Claim 1, (a) acrylic copolymer resin particles) having at least two carbonyl groups that are reactive with hydrazide groups, wherein each carbonyl group of said first carbonyl-functional component is independently selected from ketone groups and aldehyde groups (i.e., diacetone acrylamide, Page 8, [0083], Table 1, Charge #2), and (d2) a non-reactive component that is free of functional groups that are reactive with said hydrazide functional material, said first carbonyl-functional component, and said second carbonyl-functional component such as DI water (Page 8, [0083], Table 1, Charge #10; emulsion in water, Page 2, [0017]). ‘352 discloses in the coating compositions, after the composition is applied to a substrate and as water in the emulsion evaporates, the hydrazide groups and the carbonyl groups crosslink as a result of dehydration condensation to form a cured film (Page 5, [0053]).
Regarding claim 4: ‘352 discloses the curable photochromic composition (Page 6, [0062]), wherein said hydrazide functional material comprises 2 hydrazide groups that are reactive with carbonyl groups selected from ketone groups and aldehyde groups such as adipic acid dihydrazide (Page 8, [0083], Table 1, Charge #10; Page 11, Claim 11).
Regarding claim 8: ‘352 discloses the curable photochromic composition (Page 6, [0062]), wherein the (meth)acrylate polymer of said first carbonyl-functional component comprises ketone functional (meth)acrylamide monomer residues such as diacetone acrylamide, Page 8, [0083], Table 1, Charge #2).
Regarding claims 11-12: ‘352 discloses the curable photochromic composition (Page 6, [0062]), wherein said non-reactive component has, a Tg of less than 50°C, when said non-reactive component is an amorphous polymeric non-reactive component, or a melting point of less than 50°C, when said non-reactive component is a crystalline non-reactive component such as DSX-1550 (i.e., non-ionic polyurethane rheology modifier).
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 2-3, 5 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Ambrose et al. (US Pub. No.2011/0177352 A1, hereinafter “’352”) as applied to claim 1 above, and further in view of Weis et al. (US Pub. No. 2024/0117215 A1, hereinafter “’215”).
Regarding claims 2-3: The disclosure of ‘352 is adequately set forth in paragraph 11 above and is incorporated herein by reference. ‘352 does not expressly teach the curable photochromic composition, wherein said hydrazide functional material has a hydrazide equivalent weight of from 250 g/mole to 10,000 g/mole, and a Mw of from 500 g/mole to 50,000 g/mole, and wherein said hydrazide functional material comprises a polyurethane comprising at least two hydrazide groups that are reactive with carbonyl groups selected from ketone groups and aldehyde groups.
However, ‘215 teaches a crosslinker composition prepared from a reaction mixture comprising: (a) a prepolymer comprising a reaction product of a prepolymer mixture comprising: (i) a polyfunctional isocyanate, and (ii) a first compound comprising two or more active hydrogen groups; and (b) a polyfunctional hydrazide, wherein the crosslinker composition is not self-crosslinkable, wherein the crosslinker composition has an acid value of at least 15 based on total resin solids of the crosslinker composition (Page 16, Claim 1), wherein said hydrazide functional material has a hydrazide equivalent weight of from 250 g/mole to 10,000 g/mole (Page 4, [0037]; Page 5, [0049]), and a Mw of from 500 g/mole to 50,000 g/mole (Page 6, [0056]), and wherein said hydrazide functional material comprises a polyurethane comprising at least two hydrazide groups that are reactive with carbonyl groups selected from ketone groups and aldehyde groups (Page 4, [0041]; Page 6, [0064]) with benefit of providing to produce a crosslinker from a crosslinker composition that includes a polyfunctional hydrazide to improve crosslinking, adhesion, stain resistance, and/or durability (Page 1, [0002]).
In an analogous art of the curable 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 modify the curable photochromic composition by ‘352, so as to include hydrazide functional material has a hydrazide equivalent weight of from 250 g/mole to 10,000 g/mole, and a Mw of from 500 g/mole to 50,000 g/mole, and wherein said hydrazide functional material comprises a polyurethane comprising at least two hydrazide groups that are reactive with carbonyl groups selected from ketone groups and aldehyde groups as taught by ‘215, and would have been motivated to do so with reasonable expectation that this would result in providing to produce a crosslinker from a crosslinker composition that includes a polyfunctional hydrazide to improve crosslinking, adhesion, stain resistance, and/or durability as suggested by ‘215 (Page 1, [0002]).
Regarding claim 5: The disclosure of ‘352 in view of ‘215 is adequately set forth in paragraph above and is incorporated herein by reference. ‘215 teaches at least some
hydrazide groups of said hydrazide functional material are independently and reversibly blocked
with an aldehyde having a formula weight of less than 250 g/mole, or a ketone having a formula
weight of less than 250 g/mole (Page 6, [0055]).
14. Claims 6-7, 9-10, 13-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Ambrose et al. (US Pub. No.2011/0177352 A1, hereinafter “’352”) as applied to claim 1 above, and further in view of Reddy et al. (US Pub. No. 2023/0323011 A1, hereinafter “’011”).
Regarding claim 7: The disclosure of ‘352 is adequately set forth in paragraph 11 above and is incorporated herein by reference. ‘352 does not expressly teach the curable photochromic composition, wherein said first carbonyl-functional component comprises at least two ketone groups, and said second carbonyl-functional component comprises at least one ketone group.
However, ‘011 teach a curable photochromic composition(Page 1, [0002]), comprising: (a) a component comprising one or more carbonyl group-containing compounds having a number average molecular weight (Mn) of at least 500 g/mole, wherein each carbonyl group is independently a ketone group or an aldehyde group, (b) a polyamine compound having at least two primary amine groups per molecule, and (c) a polyisocyanate compound, wherein the component (a) comprises: (i) a compound having 1 to 4 carbonyl groups per molecule and an equivalent weight of 500 to 30,000 g/mole (Page 4, [0049]) or (ii) a compound having 2 or more carbonyl groups per molecule and an equivalent weight of 130 to 480 g/mole (Page 5, [0051]) or (iii) a mixture of (i) and (ii) (Page 16, Claim 2) with benefit of providing to develop curable compositions, especially curable photochromic compositions that provide cured photochromic layers having improved hardness without a reduction in photochromic performance (Page 1, [0005]).
In an analogous art of the curable 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 modify the curable photochromic composition by ‘352, so as to include first carbonyl-functional component comprises at least two ketone groups, and said second carbonyl-functional component comprises at least one ketone group as taught by ‘011, and would have been motivated to do so with reasonable expectation that this would result in providing cured photochromic layers having improved hardness without a reduction in photochromic performance as suggested by ‘011 (Page 1, [0005]).
Regarding claim 6: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ’011 teaches the curable photochromic composition, wherein the mole ratio of total combined primary and secondary amine group equivalents of the polyamine compound (b) to total carbonyl group equivalents of the carbonyl group-containing compounds of component (a) is at least 1:2, such as at least 1:1, or at least 2:1, or at least 3:1, or at least 6:1 (Page 6, [0068]).
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 amine group for hydrazide group 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 9: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ’011 teaches the curable photochromic composition, wherein the (meth)acrylate polymer of said first carbonyl-functional component has a carbonyl equivalent weight of from 165 g/mole to 550 g/mole, and a Mw of from 1000 g/mole to 10,000 g/mole (Page 5, [0051]; Page 5, [0059]; Page 12, [0150]), Example 10; Page 12, Table 2, Ex.18).
Regarding claim 10: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ’011 teaches the curable photochromic composition, wherein said second carbonyl-functional component has an equivalent weight of from 580 g/mole to 10,000 g/mole, and a Mw of from 580 g/mole to 40,000 g/mole (Page 4, [0049]-[0050]; Page 11, [0134], Example 3; Page 12, Table 2, Ex.18).
Regarding claim 13: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ‘011 teaches the curable photochromic composition, wherein said second carbonyl-functional component and said non-reactive component are present in a combined amount of from 10 percent by weight to 50 percent by weight, based on total resin solids of said curable photochromic composition (i.e., 43.78% in [0154], Table 3, Ex.20).
Regarding claim 14: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ‘011 teaches the curable photochromic composition, wherein said second carbonyl-functional component is present, and said non-reactive component is optionally present (Page 4, [0049]-[0050]; Page 11, [0134], Example 3; Page 12, Table 2, Ex.18; [0154], Table 3, Ex.20).
Regarding claim 15: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ‘011 teaches the curable photochromic composition, wherein said photochromic compound (a) comprises at least one of naphthopyrans, benzopyrans, phenanthropyrans, indenonaphthopyrans, spiro(indoline) naphthoxazines, spiro(indoline)pyridobenzoxazines, spiro(benzindoline)pyridobenzoxazines, spiro(benzindoline)naphthoxazines, spiro(indoline)-benzoxazines, fulgides, fulgimides, or diarylethenes (Page 8, [0086]; Page 16, Claim 7)
Regarding claim 16: The disclosure of ‘352 in view of ‘011 is adequately set forth in paragraph above and is incorporated herein by reference. ‘011 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 9, [0099]-[0100]; Page 17, Claim 12).
Examiner Information
15. 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
09/30/2026
bijan.ahvazi@uspto.gov
