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
Receipt is acknowledged of the amendment filed 5/21/2026. Claim 1 is amended, claims 28-30 are new, and claims 1-4, 6, 9-12, 18-21, 23-25, 27-30 are currently pending.
Allowable Subject Matter
Claims 1-4, 6, 9-12, 18-21, 23-25 and 27 are allowed.
The following is an examiner' s statement of reasons for allowance: the prior art of record, taken alone or in combination with other references, neither teaches nor suggests the claim ophthalmic lens comprising a convex front surface having a substantially uniform radius of curvature other than at a first location of a first concavity and a second location of a second concavity therein, and each of the first concavity and the second concavity has a depth defined as a maximum orthogonal distance between a hypothetical reference surface corresponding to the substantially uniform radius of curvature of the convex front surface and a deepest point of the respective concavity, the depth being between about 30 microns and about 50 microns, in the context of the further limitations (Claim 1).
The closest references, Wichertle (previously-cited), explicitly fail to teach and are not combinable to suggest the following limitation(s) to meet the claimed invention: a particular depth of concavity, as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim 29 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The reason for indication of allowable subject matter is analogous to that stated above.
Election/Restrictions
Newly submitted claim 30 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: geometric relationships defined by eyelid interaction, and not merely slope, defined the originally-filed invention distinctly from the newly-presented claimed invention. Additionally, absent a clear reference, the metes and bounds of the geometry defined by “deepest” (Claim 30) presents a likely indefiniteness upon cursory review that adds to the burden to examination and further supports restriction between inventions.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 30 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 29 is objected to because of the following informalities: there is a typographical error in including “(“ in Line 4. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 28 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pat. 4,256,369 to Wichterle (hereinafter Wichterle).
Regarding claim 28, Wichterle discloses an ophthalmic lens, comprising: a convex front surface (front surface, Figs. 1-4) having a substantially uniform radius of curvature (“a toric central portion 2 having a maximum radius curvature R1 in the plane passing through to section lines A--A, and a minimum curvature in the plane passing through the section lines B--B”, Figs. 1-4) other than at a location of a first concavity and a second location of a second concavity therein (“two roughly cylindrically concave strips 3 extend parallel to the plane of minimum curvature on either side of the toric portion 2 being spaced from each other distance corresponding to the width of the optical zone, i.e., at least 4 mm, but preferably 7-9 mm”, Figs. 1-4), and a rear surface (rear surface, Fig. 1-4) that opposes the front surface and defines a thickness therebetween, and wherein the concavity is dispose at a position configured to receive therein an upper eyelid wiper of a wearer of the ophthalmic lens (“two roughly cylindrically concave strips 3 extend parallel to the plane of minimum curvature on either side of the toric portion 2 being spaced from each other distance corresponding to the width of the optical zone, i.e., at least 4 mm., but preferably 7-9 mm”, “transition zones are preferably between 0.5 to 2 mm”, “shaping produces only minimum irritation to the eye and its lids by the outer surface of the lens”; cols. 3-4), wherein the second concavity is disposed at a position configured to receive therein a lower eyelid wiper of the wearer of the ophthalmic lens (“two roughly cylindrically concave strips 3 extend parallel to the plane of minimum curvature on either side of the toric portion 2 being spaced from each other distance corresponding to the width of the optical zone, i.e., at least 4 mm., but preferably 7-9 mm”, “transition zones are preferably between 0.5 to 2 mm”, “shaping produces only minimum irritation to the eye and its lids by the outer surface of the lens”; cols. 3-4), wherein a vertical, longitudinal axis extending through the center point of the ophthalmic lens intersects the first concavity at a first point and the second concavity at a second point (Figs. 1-2), the first point and the second point being disposed on opposite sides of the center point along the vertical, longitudinal axis (Figs. 1-2) and wherein the second concavity is configured to enable an approximately equal interaction with the lower eyelid wiper during upgaze and downgaze (R3 is circular and therefore inherently exhibits equal curvatures for upgaze and downgaze, Figs. 1-4; col. 3, ln. 4-col. 4, ln. 28).
The claim requires “an approximately equal interaction with the lower eyelid wiper during upgaze and downgaze”. A person having ordinary skill in the art would understand movement of eyelid wipers to vary during downgaze and upgaze and to not be limited as purely inferior or superior to a starting/primary position. While the Applicant’s cited references evidences movement of the lower eyelid 3-4mm inferior to a primary position during downgaze, the more relevant inquiry is the relative motion between the pupil and the eyelid during downgaze and upgaze and not the relative motion of the eyelid to a primary position. Movement of the eyelids relative to the pupil accounts for a means by which the eye interacts with the ophthalmic lens concavities. When there is movement of the eyelids relative to the ophthalmic lens, there is interaction with surfaces based, at least in part, on the slope of the surfaces. In the case of the Wichterle lens and cylindrical concavities, slopes of the surfaces within the concavities are at least “approximately equal” on account of the definition of a cylinder. With approximately equal cylindrical slopes interacting with the eyelids during relative motion toward the center of the ophthalmic lens and away from the center of the ophthalmic lens, the Wichterle lens is inherently capable of the claimed function/operation.
The claim requires “wherein a vertical, longitudinal axis extending through the center point of the ophthalmic lens intersects the first concavity at a first point and the second concavity at a second point”. A person having ordinary skill in the art would understand that language to limit the use and function of the structure and would not differentiate the apparatus over prior art apparatuses used differently. The orientation of the axes and concavities in Wichterle’s contact lens address astigmatism in the eye, but the claimed invention is not patentably distinct from the prior art device.
Additionally, the prosecution history clarifies outstanding issues in various discussions providing context to the above rejection.
Response to Arguments
Applicant's arguments filed 5/21/2026 do not specifically challenge the previously applied prior art in view of new 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 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 J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872
Prosecution Insights