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 .
Response to Amendment
The amendments to the claims, in the submission dated 02/24/2026, are acknowledged and accepted. Claim 1 has been amended. Claims 2-4 and 6 have been previously cancelled by the applicant. Claims 1, 5, and 7-55 are pending (with claims 24-54 withdrawn).
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.
Claim 1 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended independent claim 1 now includes the limitation “the matrix material at least partially encompassing side surfaces of the metasurface building elements”, but the degree to which the side surfaces of the metasurface building elements are partially encompassed by the matrix material is not provided in the claims. Therefore, a person of ordinary skill would not be appraised as to what degree the encompassing of the matrix material upon the surfaces of the metasurface building elements would be considered as infringing on the instant invention. For purposes of examination, Examiner will assume any degree of contact between the matrix or substrate on which the metasurface building materials, or the equivalents, are disposed will satisfy the limitation as currently recited.
Claims 5, 7-23, and 55 depend on claim 1, either directly or indirectly, and inherit at least the same deficiencies. Appropriate clarification and correction is required.
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.
Claims 1, 5, 7-13, 15-16, 18, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Macinnis US PGPub 2019/0183635 A1 (of record, see Office action dated 12/19/2024, hereinafter, “Macinnis”) in view of AlQattan, Bader, Ali K. Yetisen, and Haider Butt. "Direct laser writing of nanophotonic structures on contact lenses." ACS Nano 12.6 (2018): 5130-5140 (of record, see Office action dated 12/01/2025, hereinafter, “AlQattan”).
Regarding amended independent claim 1, Macinnis discloses an ophthalmic lens, comprising:
a curved lens body (Fig. 1, implant 100 includes lens body 102, par. [0047], and implant 100 may be formed with posterior convexity, pars. [0059-60], therefore Macinnis discloses a curved lens body); and
a metasurface array disposed on a surface of the curved lens body, the metasurface array comprising an arrangement of metasurface building elements dimensioned from an optical wavelength and configured across the lens body and tuned to define an optical characteristic of the ophthalmic lens (Fig. 1, implant 100 includes metalens 104 encapsulated by body 102, and metalens 104 is comprised of subwavelength structures 108 arranged on substrate 106 that interact with visible light, par. [0047], and substrate 106 may have posterior convexity, par. [0060], therefore Macinnis discloses the equivalent of a metasurface array disposed on the surface of a curved lens body tuned to define an optical characteristic of the ophthalmic lens), wherein the optical characteristic comprises:
a reduction of glare the lens by reducing a halo effect,
a reduction of a lens aberration (subwavelength structures of metalens 104 are customized to correct eye conditions, such as spherical and chromatic aberration, par. [0092], therefore Macinnis discloses an ophthalmic lens with a metasurface array that reduces aberration of a lens), or
an expansion of an angle of a vertical or horizontal field of view;
wherein the metasurface building elements on a first portion of the surface of the lens body have different physical characteristics from the metasurface building elements on a second portion of the surface of the lens body (metalens 104 may include multiple zones, wherein different distributions of subwavelength structures in one zone may have one or more dimensions or distribution patterns that differ from one or more other zones, par. [0054], therefore Macinnis discloses the equivalent of metasurface building elements having different physical characteristics on different portions of the surface of the lens body) and
wherein the metasurface array further comprises a matrix material for holding the metasurface building elements in a desired orientation (Macinnis discloses the subwavelength structures have dimensions that are less than the wavelengths of the radiation and are arranged in a pattern which alters an incoming wavefront in a nonrefractive, non-diffractive manner by virtue of the composition, shape, orientation, height and diameter of the structures, par. [0035], therefore the desired orientation of subwavelength structures is maintained by at least the substrate, i.e., matrix, on which the subwavelength structures are disposed, and Macinnis further discloses the substrate of the metalens may be any suitable substantially light-transmissive or transparent material, such as a substantially transparent polymer such as silicone, hydrophobic or hydrophilic acrylic, or a hydrogel, and the substrate may also be a high refractive index polymer nano-composite material which may be an organic matrix with high refractive inorganic nanoparticles combined to create a substrate, par. [0043]), the matrix material at least partially encompassing side surfaces of the metasurface building elements (Fig. 1, implant 100, metalens 104 is comprised of subwavelength structures 108 arranged on substrate 106, par. [0047], therefore the structures 108 must be in contact with the surface or surfaces of structures 108 as best understood by the Examiner, see rejection of claim 1 under 35 U.S.C. § 112 above).
Macinnis does not disclose the metasurface array defining an environment-facing surface of the ophthalmic lens (as shown in Fig. 2, implant 100 includes metalens 104 comprised of subwavelength structures 108 arranged on substrate 106 and encapsulated by body 102, therefore the metalens 104 does not define an environment-facing surface of implant 100), and Macinnis does not explicitly disclose the matrix material comprising polydimethylsiloxane (Macinnis discloses silicone hydrogels for the substrate of the metalens disclosed therein, refer to at least par. [0043], but does not specify polydimethylsiloxane for the substrate).
In the same field of invention, AlQattan discloses a holographic laser ablation method to produce optical nanostructures on contact lenses (see Fig. 1, page 5131, first column, last paragraph thereof). Synthetic black dye on the contact lens surface was selectively ablated to form a holographic nanograting structure (page 5132, first column, first paragraph). The nanostructures were fabricated on the contact lenses (see at least Figs. 1c and 1d thereof).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of AlQattan to the disclosure of Macinnis and used a laser interference system to produce nanostructures directly on a variety of soft and hard materials to produce low-cost optical nanostructures rapidly by direct laser interference patterning (AlQattan, page 5131, first column). The prior art combination therefore teaches and renders obvious the limitation the metasurface array defining an environment-facing surface of the ophthalmic lens, as the method taught by AlQattan requires fabrication of the nanostructures directly on the environment-facing surface of a contact lens.
Though Macinnis does not specifically disclose polydimethylsiloxane for the matrix material of the metasurface array, Macinnis does teach the use of silicone hydrogels (pars. [0033], [0043]), and it is known in the art that polydimethylsiloxane is a silicone polymer that is optically clear and used in optical components such as contact lenses.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have selected polydimethylsiloxane from the general class of silicone polymers used in ophthalmic devices, because Macinnis teaches the use of silicone polymers in the ophthalmic device disclosed therein, and because these materials are known materials and possess the known properties of being optically clear and non-toxic, and the use thereof in an ophthalmic device would have been predictable to one of ordinary skill in the art. The benefits of the use of polydimethylsiloxane in an ophthalmic device include flexibility for mechanical folding and insertion into an eye while also being inert and therefore safe for use with human tissues.
Furthermore, AlQattan teaches contact lenses fabricated from polydimethylsiloxane (page 5137, second column, first paragraph, Materials and Methods).
Therefore, additionally and/or alternatively, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of AlQattan to the disclosure of Macinnis and used polydimethylsiloxane for the substrate 106 of the implant 100, because AlQattan teaches polydimethylsiloxane is an example of an appropriate biocompatible material for use in ophthalmic devices such as contact lenses (page 5137, second column, first paragraph, Materials and Methods).
Regarding dependent claim 5, Macinnis in view of AlQattan (hereinafter, “modified Macinnis”) discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the aberration characteristic comprises one or both of a chromatic aberration or a monochromatic aberration (Macinnis discloses subwavelength structures of metalens 104 are customized to correct eye conditions, such as spherical and chromatic aberration, par. [0092]).
Regarding dependent claim 7, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein metasurface building elements of the arrangement include dimensions less than a wavelength of light traversing the lens body (Macinnis teaches a metalens as disclosed therein is a lens with an array of structures on a substrate that interact with electromagnetic radiation, the structures having dimensions that are less than the wavelength or wavelengths of the electromagnetic radiation which the array is intended to alter by the composition, shape, orientation, height, diameter, or other such dimensions of the structures, and refers to these structures as subwavelength structures, par. [0035]).
Regarding dependent claim 8, modified Macinnis discloses the ophthalmic lens of claim 7, and Macinnis further discloses wherein the dimensions of the metasurface building elements include a height dimension of the metasurface building elements (Macinnis par. [0035], height is one of the dimensions of the structures comprising the metalens that is disclosed).
Regarding dependent claim 9, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein arrangement of the metasurface building elements include a collection of nano-posts (subwavelength structures comprising the metalens 104 may be referred to as nanostructures and the nanostructures of the metalens may take the form of nanopillars, Macinnis par. [0035], equivalent to nano-posts).
Regarding dependent claim 10, modified Macinnis discloses the ophthalmic lens of claim 9, and Macinnis further discloses wherein the collection of nano-posts include nano-posts of dissimilar shapes (subwavelength structures alter an incoming wavefront in a nonrefractive, non-diffractive manner by virtue of the shape of the structures, among other characteristics, par. [0035], and Macinnis discloses metalens 104 may include multiple zones, with structures in different regions having different dimensions, par. [0054], equivalent to nano-posts of dissimilar shapes).
Regarding dependent claim 11, modified Macinnis discloses the ophthalmic lens of claim 9, and Macinnis further discloses wherein the collection of nano-posts include nano-posts of dissimilar orientations (subwavelength structures alter an incoming wavefront in a nonrefractive, non-diffractive manner by virtue of the orientation of the structures, among other characteristics, par. [0035], and in Fig. 1 Macinnis teaches the subwavelength structures 108 may be arranged with various tilt angles relative to one another, par. [0052], thus teaching nanostructures with dissimilar orientations across the metalens).
Regarding dependent claim 12, modified Macinnis discloses the ophthalmic lens of claim 9, and Macinnis further discloses wherein the collection of nano-posts define a first density of metasurface building elements on the first portion of the lens body and a second density of metasurface building elements on the second portion of the lens body that is different than the first density (Macinnis Fig. 2 depicts intraocular implant in a side view, and metalens 104 has a circular area 112 that does not include subwavelength structures, and other areas that do include subwavelength structures, thus teaching two different densities of subwavelength structures across the lens body of implant 100).
Regarding dependent claim 13, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the lens body comprises a focal point, the arrangement of metasurface building elements being configured to modify the focal point (nanostructures may be in the form of nanopillars which act as subwavelength light phase shifters to focus light, Macinnis par. [0035], thus disclosing the metasurface building elements are configured to modify the focal point of the lens to which they are applied).
Regarding dependent claim 15, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the ophthalmic lens is an intraocular device (Figs. 1 and 2, implant 100 is an intraocular lens implant, Macinnis par. [0065]).
Regarding dependent claim 16, modified Macinnis discloses the ophthalmic lens of claim 15, and Macinnis further discloses wherein the lens body is substantially flat (Figs. 1 and 2 of Macinnis, substrate 106 is flat, par. [0060]).
Regarding dependent claim 18, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the ophthalmic lens is a contact lens (see at least Fig. 4, ophthalmic device 201 is a contact lens, pars. [0070], [0086]).
Regarding dependent claim 21, modified Macinnis discloses the ophthalmic lens of claim 18, and Macinnis further discloses wherein the contact lens includes a hydrogel component (substrate 106 may be hydrogel, Macinnis pars. [0043-44], [0046], [0071], [0074], [0086], and refer to claims 8 and 12).
Regarding dependent claim 22, modified Macinnis discloses the ophthalmic lens of claim 18, and Macinnis further discloses wherein the contact lens is a molded lens (Macinnis discloses a molding process for metalens encapsulation in a contact lens, par. [0086], and see Fig. 7).
Regarding dependent claim 23, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the ophthalmic lens is at least partially formed from a titanium dioxide material (Macinnis discloses metalens structures of TiO2 for the nanostructures, pars. [0038-40], [0047]).
Claims 14 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Macinnis in view of AlQattan as applied to claim 1 above, and further in view of Collins et al. US Patent 6,045,578 (of record, see Office action dated 03/10/2023, hereinafter, “Collins”).
Regarding dependent claim 14, modified Macinnis discloses the ophthalmic lens of claim 13, but the prior art combination does not disclose wherein the modified focal point is configured to control myopia progression.
In the same field of invention, Collins teaches that corrective lenses are used to alter the gross focus of the eye to render a clearer image at the retina (col. 1, lines 24-28 thereof), and Collins discloses a prosthetic lens apparatus of optical characteristics to alter the spherical aberration of the retinal image of an eye so as to influence eye growth (col. 3, lines 39-44 thereof).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Collins to the disclosure of Macinnis and recognized the implant 100, by modifying the focal point of the lens relative to the user’s eye, would lead to altering the progression of focusing disorders of the eye, such as myopia (Collins, col. 1, lines 8-9).
Regarding dependent claim 19, modified Macinnis discloses the ophthalmic lens of claim 18, but the prior art combination does not specifically disclose wherein the contact lens includes one of a rigid gas permeable ocular lens or a scleral lens.
In the same field of invention, Collins teaches the prosthetic lens disclosed therein may comprise a spectacle lens, rigid contact lens, or soft contact lens (col. 3, lines 43-44 thereof).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Collins to the disclosure of Macinnis to recognize ophthalmic lenses, such as ophthalmic device 201, fall into two general categories, soft or rigid, and would recognize the selection of rigid gas permeable or scleral lenses (which are larger hard contact lenses that rest on the user’s sclera rather than the cornea) would be a choice for the ophthalmic device disclosed by Macinnis.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Macinnis in view of AlQattan as applied to claim 1 above, and further in view of Jow et al. US PGPub 2019/0094570 A1 (of record, see Office action dated 12/01/2025, hereinafter, “Jow”).
Regarding amended dependent claim 17, modified Macinnis discloses the ophthalmic lens of claim 15, but the prior art combination does not specifically disclose wherein the lens includes a portion having a thickness of 0.25 mm or less.
However, Macinnis discloses the thickness of the metalens 104 may on the order of microns (i.e., since one millimeter is equivalent to one thousand micrometers, the metalens of Macinnis is on the order of 0.001 mm to 0.100 mm as best understood by the Examiner), depending on the thickness of the substrate 106 (Macinnis par. [0053]), and further discloses the overall thickness of intraocular lens implant 100 may be substantially less than conventional intraocular lens implants, which typically have a thickness of approximately one millimeter or more (Macinnis par. [0053]). Macinnis also teaches that reducing the thickness of the implanted device, such as implant 100, may be desirable (Macinnis pars. [0032-34]) and that a reduced thickness may reduce the necessary size of the incision of the eye (Macinnis pars. [0033], [0038]).
Therefore, while Macinnis does not specifically teach the lens includes a portion having a thickness of 0.25 mm or less, the prior art does teach reduced thickness is preferable.
In a related field of invention, Jow discloses eye-mountable device 200, shown in at least Fig. 2A and 2B thereof, with dimensions similar to a vision correction or cosmetic contact lens having a thickness of 0.1 to 0.5 mm (par. [0034] thereof). It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a commercially-available contact lens such that the thickness would be between 0.1 mm and 0.5 mm, which overlaps the disclosed range of up to 0.25 mm.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Jow to the disclosure of Macinnis and noted that contact lenses have a thickness of between at least 0.1 mm and up to 0.5 mm, overlapping the claimed range of 0.25 mm or less, and that the dimensions of contact lens may be selected according to the size and shape of the corneal surface of the wearer’s eye (Jow, par. [0034]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Macinnis in view of AlQattan as applied to claim 1 above, and further in view of Pugh et al. US PGPub 2014/0277433 A1 (of record, see Office action dated 03/10/2023, hereinafter, “Pugh”).
Regarding dependent claim 20, modified Macinnis discloses the ophthalmic lens of claim 18, but the prior art combination does not specifically disclose wherein the contact lens is a hybrid lens, including a soft periphery.
In the same field of invention, Pugh teaches the periphery 155 of the ophthalmic lens 150 disclosed therein may be a soft skirt material, including, for example, a hydrogel material (Pugh, par. [0056]).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Pugh to the disclosure of Macinnis to design a hybrid lens with a rigid center, such as the media insert 100 disclosed by Pugh, to provide vision correction (Pugh, par. [0043]) and to add a soft skirt material to the periphery to keep the lens centered on the eye of the user, and to increase comfort of the lens for the user by using biocompatible material (Pugh, par. [0056]).
Claim 55 is rejected under 35 U.S.C. 103 as being unpatentable over Macinnis in view of AlQattan as applied to claim 1 above, and further in view of Willis et al. US PGPub 2019/0000610 A1 (of record, see Office action dated 12/19/2024, hereinafter, “Willis”).
Regarding dependent claim 55, modified Macinnis discloses the ophthalmic lens of claim 1, and Macinnis further discloses wherein the lens body is rollable or foldable (Fig. 1, metalens 104 may be foldable, par. [0050]), and wherein the lens body when folded or rolled is configured to be passed through an incision into the eye (implanting an intraocular lens requires making an incision in the eye, pars. [0003], [0033-34], [0038]).
The prior art combination does not specifically disclose the incision for insertion of an intraocular implant, such as implant 100, is between 1 to 2 mm. However, Macinnis does disclose reducing the size of the incision and the size of the device to be implanted reduces trauma to the eye, and that foldable lens implants may further reduce required incision sizes (par. [0033]).
In the same field of invention, Willis discloses an intraocular lens 212 that is surgically inserted into an eye of a patient. Willis discloses incision 300, shown in at least Fig. 3A thereof, is between 1.8 mm and 4.0 mm (Willis, par. [0099]).
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In this case, Willis discloses an incision size ranging from 1.8 mm to 4.0 mm, overlapping the claimed range of 1 to 2 mm. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose to minimize the size of the implant device, such as implant device 100 disclosed by Macinnis, such that the required incision size for inserting the implant would be minimized at 1.8 mm, which overlaps the disclosed range of 1 to 2 mm, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, incision size is an art recognized results effective variable in that incisions into the eye cause trauma to the eye, as taught by Macinnis in at least par. [0033]. Thus, one would have been motivated to optimize the implant size and the incision size for implantation of the device, because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.”
Response to Arguments
Applicant’s arguments, see pages 9-16 of Remarks, filed 02/24/2026, have been fully considered but they are not persuasive.
With regard to the obviousness rejections based on Macinnis and AlQattan, Applicant has argued that Macinnis fails to teach or suggest that the metalens 104 includes a matrix material for holding subwavelength structures 108 in a desired orientation, and that Macinnis fails to teach or suggest the matrix material (i.e., polymer substrate 106) at least partially encompasses side surfaces of the subwavelength structures 108 and that Macinnis does not teach or suggest the substrate 106 includes or is composed of polydimethylsiloxane. Applicant has noted in their Remarks that they have considered whether Macinnis would teach or suggest the limitations of amended claim 1 if polymer substrate 106 were alleged as the matrix material of claim 1, but argue that substrate 106 would not at least partially encompass side surfaces of the subwavelength structures 108. Applicant points to Fig. 2 of Macinnis, where Macinnis teaches that the subwavelength structures 108 are attached to a surface of the substrate 106, and Applicant further notes that Macinnis teaches the substrate 106 is a polymer substrate, but Applicant argues that Macinnis does not teach or suggest using polydimethylsiloxane for the substrate 106 or any other components of implants 100. Applicant further argues that the secondary reference AlQattan does not teach or suggest a matrix material that is used to hold metasurface building elements in a desired orientation, that the matrix material at least partially encompasses side surfaces of the metasurface building elements, or that the matrix material includes polydimethylsiloxane. However, Applicant admits that AlQattan teaches polydimethylsiloxane as a contact lens material, but argues that AlQattan does not teach or suggest that polydimethylsiloxane can be used as a matrix material that at least partially encompasses side surfaces of metasurface building elements and is used to hold the metasurface building elements in a desired orientation. Examiner respectfully disagrees.
The limitation “the matrix material at least partially encompassing side surfaces of the metasurface building elements” is indefinite as noted in the rejection above, because the degree to which the side surfaces of the metasurface building elements are partially encompassed by the matrix material is not provided in the claims. The degree of partial encompassing could range from just over zero to fully encompassing the metasurface building elements within the matrix. For purposes of examination, Examiner has assumed any degree of contact between the matrix or substrate on which the metasurface building materials, or the equivalents, are disposed will satisfy the limitation as currently recited. Examiner further notes that with respect to orientation of an element, all surfaces can be considered and reasonably labeled as “side surfaces”, as the surface of a metasurface building element in contact with the substrate or matrix might be reasonably and accurately labeled as the bottom “side surface”, if the references to top and bottom are meaningful in distinguishing surfaces of metasurface building elements for purposes of fabrication. Until the indefiniteness of the partial nature of the encompassing of the matrix or substrate on the metasurface building elements is resolved, the prior art teaches the invention as currently claimed.
With regard to the obviousness rejection based on Macinnis, AlQattan, and Collins, Applicant has argued that claims 14 and 19 depend directly or indirectly from claim 1 and are allowable at least insofar as claims 14 and 19 depend from a patentably distinct independent claim. As noted above, claim 1 is not patentably distinct, therefore claims 14 and 19 are not allowable.
With regard to the obviousness rejection based on Macinnis, AlQattan, and Jow, Applicant has argued that claim 17 depends, directly or indirectly, from claim 1 and is allowable at least insofar as claim 17 depends from a patentably distinct independent claim. As noted above, claim 1 is not patentably distinct, therefore claim 17 is not allowable.
With regard to the obviousness rejection based on Macinnis, AlQattan, and Pugh, Applicant has argued that claim 20 depends, directly or indirectly, from claim 1 and is allowable at least insofar as claim 20 depends from a patentably distinct independent claim. As noted above, claim 1 is not patentably distinct, therefore claim 20 is not allowable.
With regard to the obviousness rejection based on Macinnis, AlQattan, and Willis, Applicant has argued that Claim 55 depends, directly or indirectly, from claim 1 and is allowable at least insofar as claim 55 depends from a patentably distinct independent claim. As noted above, claim 1 is not patentably distinct, therefore claim 55 is not allowable.
No other substantial arguments were presented after page 15 of Remarks. Therefore, the prior art teaches the invention as currently claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DiBella, JR. et al US PGPub 2019/0339544 A1 discloses the use of polydimethylsiloxane in ophthalmic devices (par. [0021] thereof), and DiBella teaches polydimethylsiloxane is an example of an appropriate biocompatible material for use in ophthalmic devices such as contact lenses (DiBella, par. [0021]) and intraocular lenses (DiBella, par. [0017]).
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 Justin W Hustoft whose telephone number is (571)272-4519. The examiner can normally be reached Monday - Friday 8:30 AM - 5:30 PM Eastern Time.
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/JUSTIN W. HUSTOFT/ Examiner, Art Unit 2872
/THOMAS K PHAM/ Supervisory Patent Examiner, Art Unit 2872