DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species PG-E (claims 80-82, 94, 103-109, 111, 113-115) in the reply filed on 11 November 2025 is acknowledged.
Claims 90-93, 95-102, 110, and 112 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11 November 2025.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 80-82 and 105 is/are rejected under 35 U.S.C. 103 as being unpatentable over Branda et al. (WO 2013/152425), as cited on the IDS.
Regarding claim 80; Branda et al. teaches switching materials and compositions for making the same comprising a photohardenable compound such as polymers or prepolymers with reactive groups that may crosslink intramolecularly or intermolecularly [0054], switchable compound, such as a diarylethene having a polycyclic fused ring with a carbonyl group (see structure below):
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wherein Z is S [0067] and R3 is (exhibits photoinitiating properties) [0071].
The Examiner makes note that “wherein the photoswitchable photoinitiator is activatable by exposure to light having a first wavelength and light having a second wavelength to induce a crosslinking or polymerization reaction in the photohardenable resin component at an intersection of the lights of the two wavelengths…” is merely requires the photoswitchable compound to be capable of said function.
Branda et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Branda et al. does not specifically disclose an embodiment containing the photoswitchable photoinitiator having a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring member. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a photoswitchable composition containing photoswitchable photoinitiator having a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring member based on the invention of Branda et al., and would have been motivated to do so since Branda et al. suggests that the photoswitchable composition can contain a switching component comprising both a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring [0067-0071].
Regarding claim 81; Branda et al. teaches the composition further comprises Irgagure® 819 (co-initiator) [Exs; 0130-0134].
Regarding claim 82; Branda et al. fails to explicitly teach composition exhibits non-Newtonian rheological behavior. However, Branda et al. teaches employing other polymers in the composition, such as poly(methyl methacrylate) [0061], which exhibits non-Newtonian rheological behavior. Thus, it is the Examiner’s position, that the incorporation of poly(methyl methacrylate) to the composition as taught by Branda et al., will necessarily possess non-Newtonian rheological behavior.
Regarding claim 105; Branda et al. teaches the composition further comprises Irgagure® 819 (co-initiator) [Exs; 0130-0134].
Claim(s) 106-109 and 115 is/are rejected under 35 U.S.C. 103 as being unpatentable over Branda et al. (WO 2013/152425), as cited on the IDS.
Regarding claim 106, 107, and 109; Branda et al. teaches switching materials and compositions for making the same comprising a photohardenable compound such as polymers or prepolymers with reactive groups that may crosslink intramolecularly or intermolecularly [0054], switchable compound, such as a diarylethene having a polycyclic fused ring with a carbonyl group (see structure below):
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wherein Z is S [0067], each R1 and R2 is F [0068-0070], and R3 is (exhibits photoinitiating properties) [0071].
The Examiner makes note that “wherein the photoswitchable photoinitiator is activatable by exposure to light having a first wavelength and light having a second wavelength to induce a crosslinking or polymerization reaction in the photohardenable resin component at an intersection of the lights of the two wavelengths…” is merely requires the photoswitchable compound to be capable of said function.
Branda et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Branda et al. does not specifically disclose an embodiment containing the photoswitchable photoinitiator having a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring member. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a photoswitchable composition containing photoswitchable photoinitiator having a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring member based on the invention of Branda et al., and would have been motivated to do so since Branda et al. suggests that the photoswitchable composition can contain a switching component comprising both a diarylethene molecule and a polycyclic group including at least two fused rings of atoms, having a double bonded oxygen attached to a carbon atom ring [0067-0071].
Regarding claim 107; the claim requires wherein R groups on any two adjacent ring members of X and/or Y may comprise atoms for completing a ring structure, thus an optional limitation.
Regarding claim 115; Branda et al. teaches the composition further comprises Irgagure® 819 (co-initiator) [Exs; 0130-0134].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 80, 94, 103, 104, 106-109, 111, and 113-114 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 22, 24, 27-28, 90, 92-94, 98-100 of copending Application No. 18/945127 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to the same art specific subject matter, namely photohardenable compositions comprising P-type photochromic photoswitchable photoinitiators. The essential difference between the instant application and the copending application is that the copending application is directed to a method of forming an object using the photohardenable composition, while the instant application is directed to the photohardenable composition. Although the copending application teaches additional method steps, it requires all of the claimed components of the photohardenable composition, thus reading on the instantly claimed application. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990); MPEP 2131.02(II).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 80-82, 94, 105-106, and 115 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 77, 79, 81-84, 96, 97, 101 of copending Application No. 18/944951 in view of Punpongsanon et al. (“ColorMod: Recoloring 3D Printed Objects using Photochromic Inks” In Proceedings of CHI’18, Conference on human factors in computing systems, April 21-26, 2018; Montreal, QC, Canada). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to the same art specific subject matter, namely photohardenable compositions comprising photochromic photoswitchable photoinitiators. The essential difference between the instant application and the copending application is that the instant application requires a diarylethene molecule, while the instant application requires a generic photochromic molecule comprising one or more rings of atoms wherein one or more of the rings of atoms includes one or more substituents. The copending application does explicitly require a diarylethene molecule. Punpongsanon et al. teaches 3D photochromic inks for use in three dimensional printing, comprising a photohardenable composition comprising a base ink, a photoinitiator, and a photochromic diarylethene dye (DAE-0001, -0004, 0068) [p6, col2, para4]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the diarylethene ink molecule, as taught by Punpongsanon et al., as the photochromic molecule of the copending application, and would have been motivated to do so in order to achieve recoloration by selective tuning, as suggested by Punpongsanon et al. [p11, col2, para3].
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Irie et al. (“Diarylethenes for Memories and Switches” Chem. Rev. 2000, 100, 1685-1716) teaches diarylethenes for memories and photoswitches, however fails to teach a photoswitchable photoinitiator comprising a polycyclic group having a double bonded oxygen atom attached to a carbon atom ring member.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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