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 .
Status of Claims
Claims 15, 24, and 27-29 have been amended. Claims 1-14 and 16 have been canceled. Claims 15, 17-29 have been examined on the merits.
Response to Arguments
Applicant’s arguments, see Pages 11-12, filed 01/30/2026, with respect to the previous 35 U.S.C. § 112(a) rejections are not persuasive, as detailed below.
Applicant’s arguments, see Page 9-10, filed 01/30/2026, with respect to ” With regard to the assertion on page 3 that the drawings in Figure 5 would be confusing to one of ordinary skill in the art, Applicant respectfully traverses this assertion. Specifically, Figure 5 shows a ring. The specification describes in paragraph 0046 that "This external shape is destined to come in contact with a piece of equipment during a further step of the process, typically one of coating the surfaced lens. For instance, the external shape of the surfaced lens is held by a ring used to immerse the surfaced lens in a coating material." Thus, Figure 5 shows the ring that is used to hold the lens and used to immerse the lens in coating material. Thus, Figure 5 clearly shows a ring as is recited in the claim.”, the examiner disagrees. Figure 5, submitted 05/21/2025, merely shows two concentric circles. One of ordinary skill in the art would not be able to determine Fig. 5 is a ring configured for holding a lens. Applicant cited paragraph 0046 discloses: "This external shape is destined to come in contact with a piece of equipment during a further step of the process, typically one of coating the surfaced lens. For instance, the external shape of the surfaced lens is held by a ring used to immerse the surfaced lens in a coating material.". As disclosed below, page 1, lines 22-23 of the specification discloses: “in particular in terms of equipment used to hold the lens which has been cribbed, e.g. for the coating thereof.”. The ring is used for the coating process which happens after the lens has been cribbed and outside the steps in the claim. For at least these reasons the 35 U.S.C. § 112(a) rejections are not withdrawn.
Applicant’s arguments, see Pages 9-10, filed 01/30/2026, with respect to the previous 35 U.S.C. § 112(b) rejections are not persuasive. As detailed below, the limitations are unclear.
Applicant’s arguments, see Pages 10-12, filed 01/30/2026, with respect to the previous 35 U.S.C. § 103 rejections are not persuasive.
With respect to: “Joseph does not…There is no step cribbing configuration that is enabled or not enabled in Joseph”. As detailed below, Joseph, as best understood with the disclosed language claims, teaches the limitations.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15, 17-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 15 and 29 recite:
“wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring, wherein said at least one discrete value of preferred diameter being previously determined such that the surfaced lens comes into contact with and be held by said ring”.
Claim 28 recites:
“wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring, wherein said discrete value of preferred diameter being previously determined such that the surfaced lens comes into contact with said ring”.
Claims 15 and 29 then recite:
“choosing the crib diameter based on the temporary crib diameter,”.
Claim 28 then recites”
“choose the crib diameter based on the temporary crib diameter”.
At the bottom of independent claims 15, 28, and 29 recite:
“choosing the crib diameter based on the temporary crib diameter”;
“if the step cribbing configuration is enabled”;
“if the step cribbing configuration is disabled”.
The method claims are directed towards prior to cribbing.
Page 5, lines 7-9 of the specification discloses:
“This external shape is destined to come in contact with a piece of equipment during a further step of the process, typically one of coating the surfaced lens. For instance, the external shape of the surfaced lens is held by a ring used to immerse the surfaced lens in a coating material.”.
Page 1, lines 16-18 of the specification discloses: “This operation is usually performed so that the resulting surfaced lens may then be more easily held during following steps, which typically include one during which the lens is immersed in a coating fluid while it is held by a device such as a ring.”.
Page 1, lines 22-23 of the specification discloses: “in particular in terms of equipment used to hold the lens which has been cribbed, e.g. for the coating thereof.”.
As pointed out above, the “ring” holds the “surfaced lens” after being cribbed and used exclusively to coat the lens. There is no “coating” step recited in any of the claims.
Page 5, lines 24-26 of the specification discloses: “For instance, the grinding module and the cutting module are movable relative to a body of the generator by which the lens blank BLA is held. For instance, to that end, the lens blank BLA is secured to a support which is held by the generator. Advantageously, the lens blank BLA is held in a manner which advantageously allows the lens blank to be moved relative to the body of the generator, typically to rotate relative thereto.”
The “lens blank” is held, according to the specification, by the “generator”, and not specifically the disclosed “ring”. The claimed language is not consistent with the specification and therefore, new matter.
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 15, 17-29 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 15, 28, and 29 recite the limitation:
“selecting at least one discrete value of preferred diameter for the surfaced lens, the selecting being based on at least one further operation which is designed to be applied to the surfaced lens”;
“wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring, wherein said at least one discrete value of preferred diameter being previously determined such that the surfaced lens comes into contact with and is held by said ring;”; “being previously determined such that the surfaced lens comes into contact with said ring” (Claim 28).
As claimed, “based on at least one further operation” is how the “at least one discrete value of preferred diameter” is obtained. The next limitation recites: “during said at least one further operation…. Wherein said at least one discrete value of preferred diameter being previously determined for the surfaced lens”.
It is unclear how the “at least one discrete value of preferred diameter” are determined.
It is also unclear what is required by the limitation of: “wherein said at least one discrete value of preferred diameter being previously determined such that the surfaced lens comes into contact with and is held by said ring”.
And as stated above, the specification discloses in Page 5, lines 7-9; Page 1, lines 16-18; and Page 1, lines 22-23, the ring is used after being cribbed and used exclusively to coat the lens.
Claims 15 and 28 recite:
“obtaining a previously determined step cribbing parameter specifying whether a step cribbing configuration is enabled for the operation of surfacing”.
The only mention in the specification for a “step cribbing parameter” is page 7, lines 9-12 and page 10, lines 15-18.
They respectively disclose: “The configuration data CFGD advantageously include a step cribbing parameter which defines whether a step cribbing configuration is enabled for the surfacing, whereby the crib diameter Denb is chosen among at least one predetermined discrete value Val,. It should be noted that there may be a single discrete value.”.
“During a step T4, which preferably takes places after the steps T1 to T3, it is determined whether the step cribbing configuration is enabled for the surfacing SURF. This operation is carried out based on the configuration data CFGD. In practice, the step cribbing parameter is analyzed to see whether this is the case or not.”
It is unclear what and how the previously determined step cribbing parameter is obtained and what/how it chooses the step cribbing configuration to be enabled or disabled.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 15, 17-29 are rejected under 35 U.S.C. 103 as being unpatentable over Joseph (US 20090135371).
Regarding these claims Joseph teaches:
Referring to Claim 15: Joseph teaches a method of preparing a lens blank for an operation of surfacing of said lens blank configured to transform the lens blank into a surfaced lens at the end thereof for further transformation into a lens having a lens shape and intended to be coupled to a frame ([0033]), the operation of surfacing including processing the lens blank so that the surfaced lens exhibits a crib diameter, the method being implemented using a processing module and comprising:
selecting at least one discrete value of preferred diameter for the surfaced lens, the selecting being based on at least one further operation which is designed to be applied to the surfaced lens
(“Equation (VI) may be used to determine if the EA.sub.min has been exceeded, EA<EA.sub.min. In the case that it is exceeded, adjustments can be made to one or more of the cribbed diameter size, the cribbed diameter location, or the targeted lens center thickness 20 and then a new iteration of the steps of the method.” [0032, 0033]),
wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring (“A circular disk of bonding alloy is commonly formed between the lens blank and a holding block to attach the lens blank to the holding block prior to cribbing, cutting, or surfacing. The size of the alloy can be any one of a variety of diameters. The alloy is an expensive, low melting point, heavy metal.” [0032]), wherein said at least one discrete value of the diameter being previously determined (“It is desirable to maintain greater than a minimum amount of lens material, or minimum alloy allowance, AA.sub.min, between the uncut lens perimeter, represented by the blunt edge contour B 310, and the alloy perimeter such that alloy cutting is avoided. The contour representing the perimeter of the alloy can be represented as a set of points A and the alloy allowance can be defined by a set of distances” [0032]) for such that the surfaced lens comes into contact with and is held by said ring;
obtaining a previously determined step cribbing parameter specifying whether a step cribbing configuration is enabled for the operation of surfacing;
obtaining input data which define the lens shape and include a plurality of reference points defined on the lens blank and which together identify an optical center of the lens (“a plurality of a set of points”; “a prism reference point”; “lens center thickness” [0005, 0007, 0008, 0028]); based on the input data, defining a temporary crib diameter so that said temporary crib diameter satisfies a set of constraints which includes at least:
a first constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to be suitable to be processed into said lens (“thickness requirement” [0027, 0028]), and
a second constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to include the plurality of reference points ([0030]); and
wherein the crib diameter is chosen as corresponding to the smallest discrete value which is larger than the temporary crib diameter (“The method can further comprise using at least one of a plurality of a set of points meeting a minimum alloy allowance requirement to determine the contour for cutting the uncut lens blank.” [0008]; “using the minimum edge thickness to determine a thickness requirement” ; “determining a third set of points that describe a diameter contained within the cribbed diameter” [0011]).
but is silent on choosing the crib diameter based on the temporary crib diameter;
wherein, during said choosing the crib diameter the choosing includes that:
if the step cribbing configuration is enabled for the operation of surfacing, said crib diameter is chosen among the at least one predetermined discrete value and is specifically greater than the temporary crib diameter, and if the step cribbing configuration is disabled for the operation of surfacing, said crib diameter is chosen to be specifically equal to the temporary crib diameter.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: crib diameter is chosen among the at least one predetermined discrete value can be less than, equal, or greater than the temporary crib diameter.
As disclosed in paragraph 0032 of Joseph: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Claim 17. Joseph as modified teaches the method of claim 15, further comprising obtaining a surface extension parameter specifying whether a surface extension configuration is enabled for the operation of surfacing and, when the surface extension configuration is enabled for the operation of surfacing ([0003, 0004]), generating a surface file to be used during the operation of surfacing for generating the lens shape so that the lens shape is circular with a diameter corresponding to the crib diameter ([0007]).
Referring to Claim 18: Joseph as modified teaches the method of claim 17, wherein the crib diameter is chosen as corresponding to the smallest discrete value which is greater than the temporary crib diameter, and wherein said one or more predetermined discrete value comprises a single value of diameter for the surfaced lens, based on at least one further operation which is intended to be applied to the surfaced lens ([0011]).
Referring to Claim 19: Joseph as modified teaches the method of claim 15, wherein the temporary crib diameter is chosen as the smallest value which satisfies said set of constraints ([0016, 0007]).
Referring to Claim 20: Joseph as modified teaches the method of claim 15, wherein the set of constraints includes a third constraint according to which the temporary crib diameter is greater than or equal to a minimum crib diameter of an apparatus intended to be used to reduce the diameter of the lens blank during the operation of surfacing ([0016, 0007]).
Referring to Claim 21: Joseph as modified teaches the method of claim 15, However, is silent on for satisfying the first constraint, the temporary crib diameter is specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape. As disclosed in paragraph 0032 of Joseph: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph as modified with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph as modified by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 22: Joseph as modified teaches the method of claim 21. However, is silent on wherein the lens shape parameter is specifically equal to twice the radius of the lens shape when the generated lens shape is circular.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: more, less, or equal to twice the radius of the lens shape when the generated lens shape is circular. As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph as modified with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph as modified by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 23: Joseph as modified teaches the method of claim 21. However, is silent on wherein the lens shape parameter is specifically taken equal to twice the sum of a maximum radius of the lens and of a margin defined based on a shape of the frame the lens is intended to be coupled to.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: the lens shape parameter is specifically taken more than, less than, or equal to twice the sum of a maximum radius of the lens. As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph as modified with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph as modified by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 24: Joseph as modified teaches the method of claim 15, and further teaches a point of the lens blank which is the farthest away from said center, from the plurality of reference points defined on the lens blank and which together identify an optical center of the lens (“the farthest point from the geometric center of the lens at any given angular position” [0025, 0026]);
However, Joseph as modified is silent on wherein for satisfying the second constraint, the temporary crib diameter is greater than or equal to a reference parameter defined specifically based on twice a distance between a center of the lens shape in a blocking and turning referential of the lens blank during the operation of surfacing.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: the temporary crib diameter is greater than or equal to a reference parameter defined specifically based on twice a distance between a center of the lens shape. As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph as modified with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph as modified by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 25: Joseph as modified above teaches the method of claim 24. However, is silent on wherein the reference parameter is specifically equal to twice the sum of said distance and of a predetermined margin.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: less than, greater than or equal to twice the sum of said distance and of a predetermined margin. As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph as modified with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph as modified by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 26: Joseph as modified teaches a non-transitory computer-readable medium ([0026) comprising a computer program stored thereon and including instructions for the implementation of the method according to claim 15 when the instructions are executed by a processor ([0010-16]).
Referring to Claim 27: Joseph as modified teaches a method of surfacing a lens blank configured to transform the lens blank into a surfaced lens at the end thereof for further transformation into a lens having a lens shape and intended to be coupled to a frame, the method of surfacing a lens blank comprising:
preparing the lens blank for surfacing using the method of preparing the lens blank according to claim 15 to obtain a crib diameter; and surfacing the lens blank, said surfacing the lens blank including processing the lens blank so that the surfaced lens exhibits the crib diameter (Figs 1, 3, and 4; [0010-16]).
Referring to Claim 28: Joseph teaches a device for preparing a lens blank for an operation of surfacing of said lens blank configured to transform the lens blank into a surfaced lens having a lens shape at the end thereof for further transformation into a lens to be coupled to a frame ([0033]), the operation of surfacing including processing the lens blank so that the surfaced lens exhibits a crib diameter, the device comprising:
a processing module configured to:
store and select at least one discrete value of preferred diameter for the surfaced lens, selection being based on at least one further operation which is intended to be applied to the surfaced lens (“Equation (VI) may be used to determine if the EA.sub.min has been exceeded, EA<EA.sub.min. In the case that it is exceeded, adjustments can be made to one or more of the cribbed diameter size, the cribbed diameter location, or the targeted lens center thickness 20 and then a new iteration of the steps of the method.” [0032, 0033]), wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring (“A circular disk of bonding alloy is commonly formed between the lens blank and a holding block to attach the lens blank to the holding block prior to cribbing, cutting, or surfacing. The size of the alloy can be any one of a variety of diameters. The alloy is an expensive, low melting point, heavy metal.” [0032]), wherein said at least one discrete value of preferred diameter being previously determined (“It is desirable to maintain greater than a minimum amount of lens material, or minimum alloy allowance, AA.sub.min, between the uncut lens perimeter, represented by the blunt edge contour B 310, and the alloy perimeter such that alloy cutting is avoided. The contour representing the perimeter of the alloy can be represented as a set of points A and the alloy allowance can be defined by a set of distances” [0032]) such that the surfaced lens comes into contact with said ring,
obtain a previously determined step cribbing parameter specifying whether a step cribbing configuration is enabled for the operation of surfacing,
based on input data which define the lens shape and include a plurality of reference points defined on the lens blank and which together identify an optical center of the lens (“a plurality of a set of points”; “a prism reference point”; “lens center thickness” [0005, 0007, 0008, 0028]), define a temporary crib diameter so that said temporary crib diameter satisfies a set of constraints which includes at least:
a first constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to be suitable to be processed into said lens (“thickness requirement” [0027, 0028]),
a second constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to include the plurality of reference points, and choose the crib diameter based on the temporary crib diameter ([0030]),
wherein the crib diameter is chosen as corresponding to the smallest discrete value which is larger than the temporary crib diameter (“The method can further comprise using at least one of a plurality of a set of points meeting a minimum alloy allowance requirement to determine the contour for cutting the uncut lens blank.” [0008]; “using the minimum edge thickness to determine a thickness requirement” [0011]).
But is silent on the processing module being configured to choose the crib diameter so that;
if the step cribbing configuration is enabled for the operation of surfacing, said crib diameter is chosen among the at least one predetermined discrete value and is specifically greater than the temporary crib diameter, and
if the step cribbing configuration is disabled for the operation of surfacing, said crib diameter is chosen to be specifically equal to the temporary crib diameter.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: crib diameter is chosen among the at least one predetermined discrete value and can be less than, equal, or greater than the temporary crib diameter.
As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph with reasonable expectations of success.
It would have been obvious to have modified the invention of Joseph by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
Referring to Claim 29: Joseph teaches a method of preparing a lens blank for an operation of surfacing of said lens blank configured to transform the lens blank into a surfaced lens at the end thereof for further transformation into a lens having a lens shape and intended to be coupled to a frame ([0033]), the operation of surfacing including processing the lens blank so that the surfaced lens exhibits a crib diameter, the method being implemented using a processing module and comprising:
selecting at least one discrete value of a diameter for the surfaced lens, the selecting being based on at least one further operation which is designed to be applied to the surfaced lens (“Equation (VI) may be used to determine if the EA.sub.min has been exceeded, EA<EA.sub.min. In the case that it is exceeded, adjustments can be made to one or more of the cribbed diameter size, the cribbed diameter location, or the targeted lens center thickness 20 and then a new iteration of the steps of the method.” [0032, 0033]), wherein during said at least one further operation, an external edge of the surfaced lens is intended to be held by a ring (“A circular disk of bonding alloy is commonly formed between the lens blank and a holding block to attach the lens blank to the holding block prior to cribbing, cutting, or surfacing. The size of the alloy can be any one of a variety of diameters. The alloy is an expensive, low melting point, heavy metal.” [0032]), wherein said at least one discrete value of the diameter being previously determined (“It is desirable to maintain greater than a minimum amount of lens material, or minimum alloy allowance, AA.sub.min, between the uncut lens perimeter, represented by the blunt edge contour B 310, and the alloy perimeter such that alloy cutting is avoided. The contour representing the perimeter of the alloy can be represented as a set of points A and the alloy allowance can be defined by a set of distances” [0032]) such that the surfaced lens comes into contact with and is held by said ring;
obtaining input data which define the lens shape and include a plurality of reference points defined on the lens blank and which together identify an optical center of the lens (“a plurality of a set of points”; “a prism reference point”; “lens center thickness” [0005, 0007, 0008, 0028]); based on the input data, defining a temporary crib diameter so that said temporary crib diameter satisfies a set of constraints which includes at least:
a first constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to be suitable to be processed into said lens (“thickness requirement” [0027, 0028]), and
a second constraint whereby the temporary crib diameter is large enough for the surfaced lens having said temporary crib diameter to include the plurality of reference points ([0030]);
wherein the crib diameter is chosen as corresponding to the smallest discrete value which is larger than the temporary crib diameter (“The method can further comprise using at least one of a plurality of a set of points meeting a minimum alloy allowance requirement to determine the contour for cutting the uncut lens blank.” [0008]; “using the minimum edge thickness to determine a thickness requirement”; “determining a third set of points that describe a diameter contained within the cribbed diameter” [0011]) or said crib diameter is chosen to be equal to the temporary crib diameter.
But is silent on choosing the crib diameter based on the temporary crib diameter, wherein, during said choosing the crib diameter, said crib diameter is chosen among the at least one predetermined discrete value and is greater than the temporary crib diameter.
Per MEPE 2143-E, choosing from a finite number of identified predictable solutions, with a reasonable expectation of success supports a conclusion of obviousness. In the instant case, the finite number of identified predictable solutions are: crib diameter is chosen among the at least one predetermined discrete value can be less than, equal, or greater than the temporary crib diameter.
As disclosed on paragraph 0032: “The size of the alloy can be any one of a variety of diameters.”; “adjustments can be made to one or more of the alloy diameter,”; therefore, changes can easily be made without any change in the operation of the method of preparing a lens blank system of Joseph with reasonable expectations of success.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Joseph by the temporary crib diameter being specifically taken as greater than or equal to a lens shape parameter defined based on twice a maximum radius of the lens shape for the purpose of, as it is known in the art, having the appropriate sized lens diameter and shape which is suitable for fitting in a particular application.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 CHRISTOPHER SOTO whose telephone number is (571)272-8172. The examiner can normally be reached Monday-Friday, 8a.m. - 5 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Carter can be reached at 571-272-4475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CHRISTOPHER SOTO
Examiner
Art Unit 3723
/CHRISTOPHER SOTO/Examiner, Art Unit 3723
/JOEL D CRANDALL/Examiner, Art Unit 3723
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