DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. 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 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.
Application Status
This office action is in response to Applicant’s response filed 4/6/2026.
Claims 1-2, 4-8, 21, 23-30, 32-35, and 37-38 are currently pending; claims 21 and 23-29 have been withdrawn; claims 1-2, 4-8, 30, 32-35, and 37-38 are being examined.
Claim Rejections - 35 USC § 112
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.
Claims 1-2, 4-8, 30, 32-35, and 37-38 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.
Regarding claim 1:
Claim 1 recites (i) “an insertion gap recessed from the top planar surface and extending around a remainder of the periphery of the lens receiving area” and (ii) “the first seal portion and the second seal portion complete a seal around an entirety of the lens receiving area”. Following the rationale of the PTAB decision dated 6/6/2023, which is analogous to the current claim language, the insertion gap limitation renders the claims indefinite. The following is taken from page 5 of that decision:
In the instant Appeal, the scope of claim 1 is unclear, because the recitation of "a portion of the periphery where no first seal is present" that is "configured to allow a flow of fluid after the formation of the first seal portion" appears to be negated by the recited "second seal portion" that "includ[es] the portion of the periphery," and the recitation "wherein the second seal portion together with the first seal portion complete a seal around the lens receiving area."
In the instant case, the “insertion gap recessed from the top planar surface and extending around a remainder of the periphery of the lens receiving area” (see the unsealed insertion gap 357 in FIG. 9) appears to be negated by the recited “the first seal portion and the second seal portion complete a seal around an entirety of the lens receiving area” (which would eliminate any gap). Following the board’s position that the “portion of the periphery where no first seal is present” (i.e., gap) renders the claim indefinite because the claims are drawn to a package that is fully sealed, claim 1 is similarly rejected as being indefinite.
Claims depending from claim 1 are therefore also rejected as being dependent on a rejected claim.
Response to Arguments
Applicant’s remarks have been carefully considered but are largely moot due to the new grounds of rejection made in this action, necessitated by amendment. MPEP 2173.06 II states “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”. For this reason, the well-established prior art rejections of the previous office actions are withdrawn pending the submission properly defined claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIUSH SEIF whose telephone number is (408)918-7542. The examiner can normally be reached on Monday-Friday 9:30 AM-6:00 PM PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THANH K TRUONG can be reached on 571-272-4472. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731
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