DETAILED ACTION
The instant application having Application No. 17/284,935 filed on April 13, 2021 is presented for examination by the examiner.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 18, 2026 has been entered.
The amended claims submitted February 18, 2026 in response to the office action mailed June 23, 2025 are under examination. Claims 2-7, 10-12, 15 and 18-21 are pending. Claims 1, 8-9, 13-14 and 16-17 and 22 are cancelled.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Interpretation
It is noted that claims 15 and 18-21 are drawn to an optical article which is in the statutory category of a machine. Thus, although claims 15 and 18-21 depend from claim 12 which is drawn to a process, for the purpose of interpreting claims 15 and 18-21 it is necessary to consider that all of the process steps in claim 12 are re-interpreted as product-by-process limitations. Thus, for the purpose of claims 15 and 18-21, the interpretation of the process limitations is governed by MPEP §2113. No indefiniteness issues appear to be raised by this shift in the statutory category.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, (claim 5) “wherein the optical elements protrude from the first surface of the abrasion resistant coating towards the base lens substrate” simultaneously with (claim 12): “a plurality of optical elements protruding from the second surface of said abrasion-resistant coating.” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 5-7 and 15 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.
Regarding claim 5, the limitation “ wherein the optical elements protrude from the first surface of the abrasion resistant coating towards the base lens substrate” is in direct contradiction to the limitation of claim 12: “a plurality of optical elements protruding from the second surface of said abrasion-resistant coating.” The examiner could not identify an embodiment that incorporated optical elements on both surfaces of the abrasion resistant coating (as opposed to on both surfaces of the base lens substrate) anywhere in the specification as filed. In the remarks filed February 18, 2026 the applicant pointed to the portions of the description that discuss the process of Figs. 8A-8D as providing support for the amendment where optical elements like those of claim 5 are made. However, it is Figs. 7A and 7B and the description thereof that support the amendments to claim 12. In all instances where the optical element is discussed as protruding from the first or second surfaces of the abrasion resistant coating, the language used is “protruding from one of the first and second surfaces of said abrasion resistant coating” not “one or more”, not “one or both”.
Claims 6-7 and 15 depend from claim 5 and inherit and do not mitigate the above written description issue from claim 5.
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 5-7 and 15 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.
Regarding claim 5, the limitation “ wherein the optical elements protrude from the first surface of the abrasion resistant coating towards the base lens substrate” is in direct contradiction to the limitation of claim 12: “a plurality of optical elements protruding from the second surface of said abrasion-resistant coating.” Thus it is unclear how to interpret the optical elements of claim 5. Possibilities include (a) wherein a second plurality of optical elements protrude from the first surface of the abrasion resistant coating towards the base lens substrate (and additional corresponding changes) (b) claim 12 was intended to include two molding processes as alternatives, the process of claim 12 and a process corresponding to claim 5 (c) claim 5 was intended to be cancelled. As noted above, although (a) is the simplest option, it does not appear to be supported by the specification as filed. For the purpose of considering prior art either option (a) or (b) will be considered to meet claim 5. Appropriate correction is required.
Claims 6-7 and 15 depend from claim 5 and inherit and do not mitigate the above indefiniteness issue from claim 5.
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 12, 2-6, 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bakaraju et al. WO 2018/076057 A1 (hereafter Bakaraju) in view of Blum et al. WO 1991/008104 (cited in an IDS, also denoted as WO 9108104, hereafter Blum) and Ichikawa et al. US 5,581,410 (hereafter Ichikawa).
Regarding claim 12, Bakaraju teaches “A method for manufacturing (see steps below) an optical article (page 16 lines 11-12: “FIGURE 3 J is a schematic cross sectional view of a spectacle lens surface coated with a thin film designed with ROEs and DOEs according to certain embodiments.”), comprising:
providing a base lens substrate (page 16 lines 11-12 “spectacle lens”) having a front surface and a back surface (the anterior and posterior surfaces of the spectacle lens), and a mold having a surface in which a plurality of recesses are formed (In lines 23-28 of page 45 Bakarju teaches “Figure 3 A illustrates micro lenslets 26 that are mold on the anterior portion of the spectacle lens 25. The area closer to the eye is 27 and the area exterior to the spectacle lens is 28. Micro lenslets mold on the posterior surface of the spectacle lens” emphasis added. Thus the manufacturing of the optical article includes a base lens substrate and a mold so that the microlenslets can be molded directly onto the base lens substrate. That this mold necessarily has a plurality of recesses is inherent to this direct molding process, since the direct molding results in microlenslets protruding from the base lens substrate);
forming simultaneously by molding (lines 23-28 of page 45: “the convex shaped micro lenslets are molded directly into the spectacle lens… Figure 3 A illustrates micro lenslets 26 that are mold on the anterior portion of the spectacle lens 25.” This process simultaneously forms the coating and the plurality of optical elements that are formed of the coating.), on the front surface or the back surface of the base lens substrate (page 34 lines 26-28: “sheets containing the micro lenslet arrays, ROE arrays or DOE arrays, may be located on the anterior surface of the spectacle lens, the posterior surface of the spectacle lens, embedded in the spectacle lens matrix,”), an … coating (page 16 lines 11-12: “thin film designed with ROEs”) having a first surface at an interface with the base lens substrate (page 34 line 31 to page 35 line 1: “The micro lenslet arrays, ROE arrays or DOE arrays may be applied or adhered to a spectacle lens”, thus there is a first surface of the microlens sheet or thin film that is at an interface with the base lens substrate) and a second surface opposite the first surface (the exterior surface of the microlens sheet or thin film); and
a plurality of optical elements (the micro lenslets see page 35 lines 14-22) protruding from the second surfaces of said … coating (they can protrude convexly see e.g. Fig. 3D. Note for the purpose of claims 5-7 and 15 they can also protrude concavely inwardly see Fig. 3H), the optical elements having a maximum height less than or equal to 0.1 mm (page 37 lines 16-25: “In certain embodiments, the diameter of one or more micro lenslets in the micro lenslet array may be approximately 0.01, 0.05, 0.2, 0.3, 0.5, 0.75 mm or combinations thereof. In certain embodiments, the diameter of one or more micro lenslet in the micro lenslet array may be approximately between 0.01 and 0.75 mm, 0.01 and 0.2 mm, 0.05 and 0.15 mm, 0.05 and 0.2 mm or combinations of thereof.” If the diameter is 0.2 mm, then the height, which is less than or equal to the radius of the micro lenslet, must be less than or equal to 0.1 mm, thus all of the disclosed diameters correspond to heights within the claimed range of less than or equal to 0.1 mm);
wherein the layer formed by the … coating wearing the optical elements (Fig. 3J page 16 lines 11-12: “thin film designed with ROEs”) exhibits two kinds of outer surfaces:
a first one constituted by the outer surfaces of the optical elements (page 38 lines 1-2: “In exemplary embodiments, the arrangement of the elements of the micro lenslet, refractive and/or diffractive optical element array may be circular, semi-circular, non-circular, oval” thus there is a portion of the thin film of Fig. 3J that are constituted by the outer surface of the micro lenslet, refractive and/or diffractive optical elements) comprising local curvature variations due to the shape of the optical elements(page 38 lines 1-2: “In exemplary embodiments, the arrangement of the elements of the micro lenslet, refractive and/or diffractive optical element array may be circular, semi-circular, non-circular, oval” and page 39 lines 23-35: “the shape of one or more of the micro lenslets or ROEs may be described by one or more of the following: a sphere, an asphere, extended odd polynomial, extended even polynomial, conic section, biconic section, toric surface or Zernike polynomials.”), and
a second one constituted by the surfaces of the … coating disposed between the optical elements (The microlenses are non-contiguous because the fill ratio of the micro lenslets is between 5% and 80% see page 35 lines 14-22. The thin film of Fig. 3J is shown as continuous and described as a film “with” ROEs, moreover page 34 line 23 to page 35 line 12 describes the lenslets, ROEs or DOEs as formed in sheets or layers. Thus the film also comprises regions between the optical elements.) and exhibiting fewer or no local curvature variation (The anterior surface radius in Table 2 page 52 of 4000 mm is the radius of the region between the optical elements. As shown in Figs. 3A to 3H, the overall anterior surface of the lens exhibits “fewer” local curvature variations than the optical element portions),
wherein a difference induced by the local curvature variation of an optical element compared to the second surface is at least 1D (page 40 line 25 to page 41 line 3: “In certain embodiments, the Radius of Curvature (Ri) of one or more of the micro lenslet or ROE may be at approximately 0.1, 0.5, 1, 1.5, 2, 2.5, 3, 4, 5, 10, 20, 30, 40, 50, 70, 80, 100 mm or combinations thereof. In certain embodiments, the Radius of Curvature (Ri) of one or more of the micro lenslets or ROEs may be at less than 1.5, 2, 2.5, 3, 4, 5, 10, 20, 30, 40, 50, 70, 80, 100 mm or combinations thereof. In certain embodiments, the Radius of Curvature (Ri) of one or more the micro lenslets or ROEs may between 0.1 to 1.5 mm, 0.5 to 50 mm, 0.5 to 3 mm, 1 to 10 mm, 0.5 to 4 mm, 1 to 20 mm, or combinations thereof. In certain embodiments, the Radius of Curvature (Ri) of one or more the micro lenslets or ROEs may about 1 mm, approximately 1 mm, about 0.5 mm, approximately 0.5 mm, about 1.5 mm, or approximately 1.5 mm.” These can be compared to the anterior surface radius in Table 2 page 52 of 4000 mm. Since 4000 mm = 0.25 D whereas 100 mm = 10 D, the local curvature variation is greater than 1D);
However, Bakaraju fails to teach “an abrasion resistant coating.”
“wherein the simultaneous forming of the abrasion resistant coating and the plurality of optical elements comprises:
depositing material suitable for forming an abrasion resistant coating in a malleable state on the surface of the mold and into the recesses with said material,
applying the base lens substrate on the deposited material such that the material spreads over the surface of the base lens substrate and fills the recesses, and
curing the deposited material to harden the abrasion resistant coating carrying the plurality of optical elements having a shape complementary to that of the recesses.”
Blum teaches “A method for manufacturing (see steps below) an optical article (Fig. 2 preformed lens 11 with layer 16), comprising:
providing a base lens substrate (preformed lens 11) having a front surface and a back surface (the front and back surfaces of 11), and a mold (mold 13) having a surface (major surface with an interface with carrier layer 16) in which a… [recess is] formed (cavity 14);
forming simultaneously by molding (see Fig. 2 and description thereof which simultaneously molds the abrasion resistant coating and the optical element formed thereof), on the front surface or the back surface of the base lens substrate (16 happens to cover the front surface of 11, but both surfaces can have such a feature see page 13 lines 13-15: “The methods of the present invention can be used to add a multifocal or progressive region to the front lens surface, the back lens surface or both”), an abrasion resistant coating (layer 16, page 21 line 19-25: "Certain materials used to "hardcoat" lenses ... can also be used as the resin material, thus providing a durable surface to the portions of the finished lens cast in accordance with the present invention.") having a first surface at an interface with the base lens substrate (the interface between 16 and 11) and a second surface opposite the first surface (the front surface of 16 which takes the shape of the mold 13); and
forming … [an optical element] (optical segment 12) protruding from one of the second surface of said abrasion-resistant coating (12 protrudes from the front surface of 16 which is the second surface)…
wherein the layer formed by the abrasion resistant coating wearing the optical elements exhibits two kinds of outer surfaces: a first one constituted by the outer surfaces of the optical elements (the portion of material 16 with optical segment 12) comprising local curvature variations due to the shape of the optical elements (optical segment is a local curvature variation relative to the shape of the preformed lens 11), and a second one constituted by the surfaces of the abrasion- resistant coating disposed [around] the optical elements (the portion of 16 which conforms to the shape of preformed lens 11) and exhibiting fewer or no local curvature variation (the portion of 16 which conforms to the shape of preformed lens 11 is not discussed as having curvature variations. Absent such a discussion, one of ordinary skill in the art would at once envisage that no such curvature variations are present.);
wherein the simultaneous forming of the abrasion resistant coating and the plurality of optical elements comprises:
depositing material suitable for forming an abrasion resistant coating (page 21 line 19-25): "Certain materials used to "hardcoat" lenses ... can also be used as the resin material”) … on the surface of the mold and into the recesses with said material (e.g. page 11 lines 3-6: “The mold and the preformed lens may be contacted… (b) after the resin composition is placed onto the mold” emphasis added. The resin composition being placed onto the mold fills the recess as shown in Fig. 2.),
applying the base lens substrate on the deposited material such that the material spreads over the surface of the base lens substrate and fills the recesses (e.g. page 11 lines 3-6: “The mold and the preformed lens may be contacted… (b) after the resin composition is placed onto the mold” Thus with the placement of the preform lens the resin composition assumes the shape determined by the combination of the mold and the preform lens as shown in Fig. 2.), and
curing the deposited material to harden the abrasion resistant coating carrying the… optical [element] having a shape complementary to that of the [recess] (page 25 lines 14-17: “the resin material in the resulting cavity must be cured to harden and bond with the preformed lens surface. The resin material may be cured in any manner appropriate to the composition of such material.”).”
Blum further teaches (page 1 lines 9-12): “The present invention relates to methods for quickly and inexpensively producing multifocal and progressive plastic optical quality spectacle lenses from preformed lenses of a given prescription.” On page 13 lines 18-22 Blum notes “The methods of the present invention can be used to form lenses of almost any multifocal or progressive optical configuration including without limitation bifocals, trifocals and progressive lenses.” Blum also teaches (page 21 line 19-25): "Certain materials used to "hardcoat" lenses ... can also be used as the resin material, thus providing a durable surface to the portions of the finished lens cast in accordance with the present invention."
Note that in lines 23-28 of page 45 Bakarju teaches “Figure 3 A illustrates a spectacle lens system wherein the convex shaped micro lenslets are molded directly into the spectacle lens, either on the anterior or posterior surface. Figure 3 A illustrates micro lenslets 26 that are mold on the anterior portion of the spectacle lens 25. The area closer to the eye is 27 and the area exterior to the spectacle lens is 28. Micro lenslets mold on the posterior surface of the spectacle lens are not shown in Figure 3A, however, such a design is contemplated in the present disclosure.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the thin film or sheet of the microlenslet array of Bakaraju using the method of Blum so that the desired additional structure can be quickly and inexpensively produces from preformed lenses of a given prescription as taught by Blum page 1 lines 9-12. Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Bakaraju teaches that micro lenslets of the appropriate size and shape can be manufactured by molding (see page 45 lines 23-28) and because Blum teaches that their method can be used to form lenses of almost any optical configuration without limitation (page 13 lines 18-22).
Furthermore, 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 resin that provides a hardcoat as the material of the layer of which the additional optical elements are formed as taught by Blum in the optical article of the Bakaraju-Blum combination in order to provide a durable surface to the finished lens as taught by Blum page 21 lines 19-25.
Note that the combination of limitations that the material forming the abrasion resistant coating forms the plurality of optical elements is considered to be met by the combination of references because Bakaraju teaches a plurality of optical elments formed as a molded coating, and Blum teaches making such a coating out of abrasion resistant materials.
However, Bakaraju and Blum are silent regarding the coating material being applied to the mold “in a malleable state”.
Ichikawa teaches optical elements having resin layers, where as shown in Figs. 7A-7B a resin layer 2 is formed between a mold 7 and a glass base material lens 1.
Ichikawa further teaches “depositing material … in a malleable state (col. 1 lines 28-30: “a malleable ultraviolet-hardening resin fluid.”) on the surface of the mold (see Fig. 7A) and into the [recess] (col. 4 lines 32-34: “metal mold 7 is prepared with an inverted aspherical surface”) with said material (see Fig. 7A and col. 4 lines 36-38: “To form resin layer 2, 60 mg of ultraviolet light-hardening resin fluid 2a is dripped into metal mold 7 (FIG. 7A).”),
applying the base lens substrate on the deposited material such that the material spreads over the surface of the base lens substrate and fills the [recess] (col. 4 lines 42-44: “Subsequently, lens 1 is pressed against metal mold 7, into which resin fluid 2a has been dripped, so that resin fluid 2a fills the space between metal mold 7 and lens 1.”), and
curing the deposited material to harden the… coating carrying the… optical [element] having a shape complementary to that of the [recess] (col. 4 lines 36-38 and 46-49: “ultraviolet light-hardening resin fluid 2a… Next, a 150 W xenon lamp preferably is used, from the concave surface side of lens 1, to illuminate resin layer 2 with ultraviolet rays 8 for 60 seconds (FIG. 7B).”).”
Ichikawa further teaches (col. 1 lines 26-31): “it is easy to obtain an aspherical lens having an optical surface of a desired shape, because the optical surface is formed using a malleable ultraviolet-hardening resin fluid. This method lends itself well to mass production.”
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 the resin of the coating to be in a malleable fluid state when applied to the mold as taught by Ichikawa in the method of the Bakaraju – Blum combination because Ichikawa teaches that molding a malleable ultraviolet-hardening fluid makes it easy to obtain an optical surface of a desired shape and lends itself well to mass production (Ichikawa col. 1 lines 26-31).
Note that the limitations regarding the simultaneous forming being of the plurality of optical elements and recesses of the mold are considered to be met by the combination of references because the primary reference Bakaraju already teaches a plurality of optical elements being molded, and thus when taken in combination the mold itself has recesses, plural, in order to make the plurality of optical elements. Similarly, the limitations “material suitable for forming an abrasion resistant coating in a malleable state” is considered to be met by the combination of references because Blum teaches use of a resin that is suitable to form an abrasion resistant coating, and Ichikawa teaches that the optical resin should be in a malleable fluid state in order to be molded into the desired shape.
Regarding claim 2, the Bakaraju – Blum – Ichikawa combination teaches “the method according to claim 12,” and Bakaraju further teaches “wherein the thickness of a layer composed of the abrasion resistant coating and the optical elements protruding thereof is maximal at the optical elements (page 46 lines 21-24 “Figure 3D illustrates a spectacle lens system wherein the convex shaped micro lenslets 36 are printed onto the spectacle lens 37 in order to form the spectacle lens 38, either on the anterior or posterior surface.”).”
Regarding claim 3, the Bakaraju – Blum – Ichikawa combination teaches “The method according to claim 12,” and Bakaraju further teaches “wherein the … coating is formed of the same material as the material from which the optical elements are formed (page 34 lines 23-28: “micro lenslet arrays, ROE arrays or DOE arrays may be manufactured in sheets that may be made up of at least 1, 2, 3, 4 or 5 layers. The sheets may then be cut or configured to properly fit or work in conjunction with a spectacle lens blank. The micro lenslet arrays, ROE arrays or DOE arrays, or sheets containing the micro lenslet arrays, ROE arrays or DOE arrays, may be located on the anterior surface of the spectacle lens, the posterior surface of the spectacle lens” If the micro lenslet array is a sheet made up of 1 layer, then the optical elements are of the same material as the coating).”
Given that the combination of references introduced for claim 12 already modified the coating of Bakaraju to be an abrasion resistant coating as taught by Blum, the combination of references teaches “wherein the abrasion resistant coating is formed of the same material as the material from which the optical elements are formed”.
Regarding claim 4, the Bakaraju - Blum – Ichikawa combination teaches “The method according to claim 12, wherein the optical elements protrude from the second surface of the abrasion resistant coating (Bakaraju Fig. 3D, the microlenslets protrude from the anterior surface, which is the second surface of the abrasion resistant coating in the Bakaraju-Blum combination for claim 1 above).”
Regarding claim 5, the Bakaraju – Blum - Ichikawa combination teaches “the method according to claim 12” and Bakaraju further teaches “wherein the optical elements protrude from the first surface of the abrasion resistant coating towards the base lens substrate (see Fig. 3H and description thereof), and the base lens substrate comprises at least one recess in the surface at the interface with the abrasion resistant coating (see Fig. 3H, the lens substrate has recesses into which the refractive optical elements are embedded), said recess having a shape complementary to the shape of the optical elements so that each optical element is received in a respective recess (see Fig. 3H).”
Note that this meets option (b) above of claims 12 and 5 including both options for the positions of the optical elements on the surfaces of the coating.
Regarding claim 6, the Bakaraju – Blum - Ichikawa combination teaches “the method according to claim 5” and Bakaraju further teaches “wherein the optical elements define a local change of optical power of the optical device (page 40 lines 9-16: “In certain embodiments, the Focal Length of one or more of the micro lenslets may be less than 50, 100, 200, 300, 400, 500, 600, 700, 800, 900, 1000, 2000 mm or combinations thereof. In certain embodiments, the Focal Length of one or more of the micro lenslets may between 300 to 500 mm, 200 to 600 mm, 100 to 2000 mm, 250 to 600 mm, 200 to 1000 mm or combinations thereof. In certain embodiments, the Focal Length of one or more of the micro lenslets may between 300 to 500 mm.”), the material forming the optical elements has an optical index nM (page 41 lines 4-11: “the refractive index of the one or more of the micro lenslets or ROEs”), and the base lens substrate has a layer in which each recess is formed (the recesses are formed in the base substrate of 1), said layer being made in a material having an optical index nS (page 41 lines 4-11: “the refractive index of the material substantially surrounding (or surrounding) the micro lenslet or ROE”) such that the optical index nM is different from the optical index nS (page 41 lines 4-11: “the refractive index of the one or more of the micro lenslets or ROEs may be higher than the refractive index of the material substantially surrounding (or surrounding) the micro lenslet or ROE. … where a negative power is preferred, which may be achieved by selecting a refractive index of the micro lenslet or ROE that is lower than the refractive index of the material substantially surrounding (or surrounding) the micro lenslet or ROE”).”
Regarding claim 11, the Bakaraju - Blum – Ichikawa combination teaches “The method according claim 12,” and Bakaraju further teaches “wherein the base lens substrate comprises at least a plano wafer or a base lens having optical power (see Table 2 page 52 which discloses the anterior and posterior radii, the central thickness and the refractive index of the spectacle lens blank, which thus has optical power defined by these lens characteristics.).”
Regarding claim 15, the Bakaraju – Blum – Ichikawa combination teaches “the method of claim 6,” and Bakaraju further teaches “An optical article (page 16 lines 11-12: "FIGURE 3 J is a schematic cross sectional view of a spectacle lens surface coated with a thin film designed with ROEs and DOEs according to certain embodiments.") manufactured by the method of claim 6 (see claim 6 above), wherein the optical index ns of the layer of the base lens substrate is such that nS – nM < T, where T is a given threshold equal to 0.1 (page 41 lines 4-11: “the refractive index of the one or more of the micro lenslets or ROEs may be higher than the refractive index of the material substantially surrounding (or surrounding) the micro lenslet or ROE.” thus nS – nM is negative and thus less than 0.1).”
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bakaraju et al. WO 2018/076057 A1 (hereafter Bakaraju) in view of Blum et al. WO 1991/008104 (cited in an IDS, also denoted as WO 9108104, hereafter Blum) and Ichikawa et al. US 5,581,410 (hereafter Ichikawa) as applied to claim 6 and further in view of Dillon USPGPub 2013/0271840 (hereafter Dillon).
Regarding claim 7, the Bakaraju – Blum - Ichikawa combination teaches “the method of claim 6” and Bakaraju further teaches “wherein the optical index nS is such that nS < nM (page 41 lines 4-11: “the refractive index of the one or more of the micro lenslets or ROEs may be higher than the refractive index of the material substantially surrounding (or surrounding) the micro lenslet or ROE.” thus nS < nM).”
However, Bakaraju fails to teach “the base lens substrate further comprises a second layer assembled to the first layer on a surface opposite the surface on which is formed each recess, the second layer having a refraction index nHI greater than the refraction index ns.”
Dillon teaches an abrasion resistant coating (scratch resistant coating 6) covering at least one of said front surface and said back surface (6 covers 7), the abrasion resistant coating having a first surface at the interface with the base lens substrate (surface of 6 that is at adhesion promoting coating 4 and reflective medium 3) and a second surface opposite the first (outer surface 12); and a plurality of optical elements (textured surface) protruding from one of the first and second surfaces of said abrasion resistant coating (the texture in 6 protrudes from the first surface of 6), said optical elements being composed of a material adapted to form an abrasion resistant coating (the textured aspect of 6 is composed of the material of 6 which is a scratch resistant coating).
Dillon further teaches “the base lens substrate further comprises a second layer (scratch resistant hard coating 26) assembled to the first layer on a surface opposite the surface on which is formed each recess (26 is on surface 8, opposite to the surface on which is formed the recesses/texture), the second layer having a refraction index nHI (the refractive index of the hard coating) greater than the refraction index nS (paragraph [0037]: “if base lens element 2 is made of polycarbonate, the refractive index of the base substrate will be approximately 1.58. Therefore, the objective is to use a scratch resistant hard coating that has a refractive index that is equal to or near 1.58.” Thus Dillon teaches that nHI is different than nS. This is a genus with only 2 species, nS < nHI or nHI < nS. Thus an ordinary skilled artisan would at once envisage both of these species, and therefore Dillon anticipates nS < nHI. See MPEP §2131.02(III).).”
Dillon further teaches (paragraph [0037]):“Base lens element 2 and scratch resistant hard coating 6 both have unique refractive indices; the more closely matched the two refractive indices are, the less light will be distorted when traveling between the two elements.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a scratch resistant hard coating to the back surface of the lens blank as taught by Dillon in order to have both outer surfaces of the optical article be protected against scratches.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the refractive index of the two hard coat layers to be slightly larger than the refractive index of the base lens as taught by Dillon because Dillon teaches that “the more closely matched the two refractive indices are, the less light will be distorted when traveling between the two elements” (paragraph [0037]) where an ordinary skilled artisan would know that amongst the effects mitigated by small differences in refractive indices would be unwanted reflections).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bakaraju et al. WO 2018/076057 A1 (hereafter Bakaraju) in view of Blum et al. WO 1991/008104 (cited in an IDS, also denoted as WO 9108104, hereafter Blum) and Ichikawa et al. US 5,581,410 (hereafter Ichikawa) as applied to claim 12 above, and further in view of Jiang et al. USPGPub 2013/0278892 (hereafter Jiang).
Regarding claim 10, the Bakaraju – Blum – Ichikawa combination teaches “The optical article according to claim 1,” however, Bakaraju, Blum and Ichikawa fail to teach “further comprising an anti-reflection coating over said second surface of the abrasion-resistant coating.”
Jiang teaches “further comprising an anti-reflection coating over said second surface of the abrasion-resistant coating (paragraph [0043]: “The other or outer surface of this film or film stack may receive any coating or coatings (including conventional coatings) suitable for ophthalmic lenses such as for example anti-abrasion, anti-reflection, anti-soiling, anti-static, and/or anti-fogging coatings.” Thus Jiang teaches an anti-reflection coating over the outer surface of 17).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an anti-reflection coating to the outer surface of the optical article of the Bakaraju – Blum - Ichikawa combination as taught by Jiang because Jiang teaches that anti-reflection coatings are amongst the coating conventionally applied to ophthalmic lenses (paragraph [0043]).
Claims 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bakaraju et al. WO 2018/076057 A1 (hereafter Bakaraju) in view of Blum et al. WO 1991/008104 (cited in an IDS, also denoted as WO 9108104, hereafter Blum) and Ichikawa et al. US 5,581,410 (hereafter Ichikawa) as applied to claim 12 above, and further in view of Vaneeckhoutte et al. US 2003/0165698 A1 (hereafter Vaneeckhoutte).
Regarding claims 18, 19, 20 and 21, the Bakaraju – Blum – Ichikawa combination teaches “The method of claim 1,” and Bakaraju teaches “an optical article (page 16 lines 11-12: "FIGURE 3J is a schematic cross sectional view of a spectacle lens surface coated with a thin film designed with ROEs and DOEs according to certain embodiments.").” However, Bakaraju, Blum and Ichikawa fail to teach:
(claim 18) “wherein said material adapted to form an abrasion resistant coating composing the optical element, is based on composition comprising at least one alkoxysilane and/or one hydrolyzate of the latter.”
(claim 19) “wherein said material adapted to form an abrasion resistant coating composing the optical element, is based on epoxysilane hydrolyzates.”
(claim 20) “wherein said composition comprises an epoxytrialkoxysilane and dialkyldialkoxysilane hydrolyzate, colloidal silica and a catalytic amount of aluminum-based curing catalyst, such as aluminum acetylacetonate, the remainder being essentially composed of solvents conventionally used for the formulation of such compositions.”
(claim 21) “wherein said epoxytrialkoxysilane and dialkyldialkoxysilane hydrolyzate is a ɣ -glycidoxypropyltrimethoxysilane (GLYMO) and dimethyldiethoxysilane (DMDES) hydrolyzate, or else a ɣ -glycidoxypropyltrimethoxysilane (GLYMO) and triethyl orthosilicate (TEOS) hydrolysate.”
Vaneeckhoutte teaches an optical article (paragraph [0001] “ophthalmic lenses”), comprising:
a base lens substrate (paragraph [0001]: “ophthalmic lenses”), having a front surface and a back surface (the front and back surfaces of the lens);
an abrasion resistant coating (paragraph [0001]: “thermosetting polysiloxane compositions, … which are suitable for use in coating articles of organic material, in particular ophthalmic lenses, to protect them against abrasion.”) covering at least one of said front surface and said back surface (paragraph [0001]: “coating articles” thus at least one surface of the lens is coated), the abrasion resistant coating having a first surface at the interface with the base lens substrate (the interface between the coating and the lens) and a second surface opposite the first (the exterior surface of the coating).
(claim 18) “wherein said material adapted to form an abrasion resistant coating composing the optical element, is based on composition comprising at least one alkoxysilane and/or one hydrolyzate of the latter (paragraph [0016]: “a silane hydrolysate containing an epoxy group and three alkoxy groups”).”
(claim 19) “wherein said material adapted to form an abrasion resistant coating composing the optical element, is based on epoxysilane hydrolyzates (paragraph [0016]: “a silane hydrolysate containing an epoxy group and three alkoxy groups”).”
(claim 20) “wherein said composition comprises an epoxytrialkoxysilane (paragraph [0016]: “a silane hydrolysate containing an epoxy group and three alkoxy groups”) and dialkyldialkoxysilane hydrolysate (paragraph [0044]: “dimethyldiethoxysilane”), colloidal silica (paragraph [0020]: “colloidal silica”) and a catalytic amount of aluminum-based curing catalyst (paragraphs [0021]-[0022]: “an aluminium compound selected from: aluminium chelates”), such as aluminum acetylacetonate (paragraph [0057]: “aluminium acetylacetonate”), the remainder being essentially composed of solvents conventionally used for the formulation of such compositions (paragraph [0030] “E--an organic solvent”).”
(claim 21) “wherein said epoxytrialkoxysilane and dialkyldialkoxysilane hydrolyzate is a ɣ-glycidoxypropyltrimethoxysilane (GLYMO) (paragraph [0038]: “ɣ - glycidoxypropyltrimethoxysilane”) and dimethyldiethoxysilane (DMDES) hydrolysate (paragraph [0044]: “dimethyldiethoxysilane”), or else a ɣ -glycidoxypropyltrimethoxysilane (GLYMO) and triethyl orthosilicate (TEOS) hydrolysate (this pair is optional).”
Vaneeckhoutte further teaches (paragraphs [0013]-[0014]): “One object of the present invention is to provide a thermosetting polysiloxane composition containing aluminium compounds which will produce abrasion resistant coatings even when associated with a nonreflective layer and which does not render fragile the substrate to which it is applied or renders it considerably less fragile than prior art coatings.
Another object of the present invention is to provide a durable composition which produces a coating on hardening which, in addition to the above properties, has the required transparency for optical applications and good adhesion to the organic material substrate, does not crack and is preferably easily dyed.”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 the composition of Vaneeckhoutte as the material for the abrasion resistant coating of the Bakaraju – Blum – Ichikawa combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Note that the modification to choose a particular composition for the material for the abrasion resistant coating does not negate the choice to use such a resin in a malleable state for the molding process. Whether or not the composition of Vaneeckhoutte is malleable depends at least on the details of the composition and the temperature at which the molding process is performed. Thus there is no reason why the limitation “depositing material … in a malleable state” in view of Ichikawa would need to be changed when choosing amongst the compositions of Vaneeckhoutte.
Response to Arguments
Applicant's arguments filed February 18, 2026 have been fully considered but they are not persuasive.
In section A on page 5 of 11 of the applicant’s remarks the applicant notes where support can be found for the amended and new claims. The examiner agrees, the current claims are supported by the application as filed, however, the support for amended claim 12 is based off of Fig. 7 paragraphs [0152]-[0158] not Fig. 8 paragraphs [0162]-[0164] as cited by applicant.
In the first two paragraphs of section B on page 5 of 11 of the applicant’s remarks the applicant summarizes the 103 rejection of claims 1 and 12 over the combination of Bakaraju and Blum and notes that claim 1 has been cancelled. No specific argument is made in this opening section, rather the detailed arguments underlying the conclusion that Bakaraju and Blum fail to establish a prima facie case of obviousness are in the pages that follow.
In the paragraph spanning pages 5 and 6 of 11 of the applicant’s remarks the applicant summarizes the some of the relevant teachings of Bakaraju with regard to microlenslets that can be molded directly onto a spectacle lens and notes that Bakaraju fails to teach “simultaneous molding of an abrasion resistant coating and a plurality of optical elements on a lens substrate.” This summary is an accurate reflection of the teachings of Bakaraju. However, it is important to note that Bakaraju does teach “simultaneous molding of a coating and a plurality of optical elements on a lens substrate,” just not that the coating is made of a material suitable for forming an abrasion resistant coating.
In the first full paragraph of page 6 of 11 of the applicant’s remarks the applicant notes that Bakaraju teaches that the coating forming the microlenses should be of a different material from the material of the spectacle lens from which they protrude. This is a true statement, but not a difference from the instant application, see for example claims 6 and 15 and paragraphs [0133]-[0137] which explain that the material of the optical elements is different from the lens substrate in that the refractive index nM is different from the refractive index nS.
In the last full sentence of page 6 of 11 of the applicant’s remarks the applicant argues that one of ordinary skill in the art would be motivated to mold a plurality of optical elements using a material that is different from the surface on which the optical elements are deposited. This argument is not persuasive for at least the following reasons. The modification of Bakaraju in view of Blum served to change the material used to mold the plurality of optical elements to one which is suitable for forming an abrasion resistant coating. Such a material would necessarily be different from the lens substrate upon which it is deposited because it is harder than the substrate when cured. Thus there is nothing about the modification proposed that conflicts with the teachings of Bakaraju noted by the applicant.
In the sentence spanning pages 6 and 7 of the applicant’s remarks the applicant argues that “The person of skill in the art would also form optical elements in a plurality of dips formed on the surface of the lens, and not recesses in a mold.” This argument is not persuasive because, the portion of Bakaraju reproduced by the applicant is not the only embodiment of Bakaraju. Directly prior to the portion cited by the applicant Bakaraju teaches (page 45 lines 23 to 28): “Figure 3 A illustrates a spectacle lens system wherein the convex shaped micro lenslets are molded directly into the spectacle lens, either on the anterior or posterior surface. Figure 3 A illustrates micro lenslets 26 that are mold on the anterior portion of the spectacle lens 25. The area closer to the eye is 27 and the area exterior to the spectacle lens is 28. Micro lenslets mold on the posterior surface of the spectacle lens are not shown in Figure 3A, however, such a design is contemplated in the present disclosure.” Thus, an ordinary skilled artisan would know that the description on page 46 of the substrate being machined or molded to have concave dips which are filled by the micro lenslet material, is in contrast to the previously presented embodiments where the micro lenslets are molded onto the surface of the spectacle lens that has not been modified to have dips. This is in keeping with the rest of the disclosure of Bakaraju that repeatedly teaches the two embodiments of (a) micro lenslets that convexly protrude from the surface and (b) microlenslets that are embedded in the surface. To put it another way, if the only molding contemplated by Bakaraju were that of Fig. 3C, Figs. 3A and 3B would not need to be presented and discussed as alternatives therefrom.
In the first and second full paragraphs of page 7 of 11 of the applicant’s remarks the applicant points out some of the differences between Blum and the method of claim 12. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In particular, since Bakaraju already teaches a plurality of optical elements protruding convexly from the lens substrate with the claimed height and local curvature variations providing a difference in diopter, there is no need for Blum to duplicatively teach these features, when Blum is primarily relied upon for the choice of material, and only secondarily relied upon for the steps in the molding process. It is worth emphasizing that molding was already taught in Bakaraju. That Bakaraju failed to bother to discuss the details of the molding process is significant evidence that the molding process can be any of the molding processes common in the field.
In the paragraph spanning pages 7 and 8 of 11 of the applicant’s remarks the applicant first argues that “In view of the distinctions between the cited references, the combined teachings of Bakaraju and Blum do not lead a person of skill in the art to simultaneously mold an abrasion resistant coating and optical elements over a lens substrate.” In response to applicant's argument that Blum is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Blum is in the same field of endeavor, namely of molding optical elements onto a base lens substrate. Further it is worth noting that Blum specifically teaches (page 13 lines 18-22): “The methods of the present invention can be used to form lenses of almost any multifocal or progressive optical configuration including without limitation bifocals, trifocals and progressive lenses.”
Secondly in the paragraph spanning pages 7 and 8 of 11 of the applicant’s remarks the applicant argues that “in order to arrive at the presently claimed method, the person of skill in the art would have to transform Blum's single macroscopic cavity casting into a micro-patterned mold surface with a plurality of micrometric recesses”. Given that Bakaraju already teaches molding convex micro lenslets onto the surface of a lens substrate, it is unclear in what way this is an argument against the rejection.
Thirdly in the paragraph spanning pages 7 and 8 of 11 of the applicant’s remarks the applicant argues that the proposed modification would “simultaneously depart from Bakaraju's teaching of filling lens-matrix dips with a different-index material.” As explained above, the portion of Bakaraju that described filling dips in the substrate with the micro lenslet material is presented in contrast to the molding method of micro lenslets on the surface of the substrate as shown in Fig. 3A. Thus there is no departure from the teaching of Bakaraju here.
Fourthly in the paragraph spanning pages 7 and 8 of 11 of the applicant’s remarks the applicant agrues that a modification of Bakaraju is needed “to instead form, in one molding operation and from the same abrasion-resistant material, both a coating and protruding optical elements having a maximum height ≤ 0.1 mm.” This argument is not persuasive for at least the following reasons. A single molding operation that forms both the coating and the protruding optical elements having a maximum height ≤ 0.1 mm was already taught in Bakaraju, without any need for a modification. The only argued limitation that needs input from Blum is the choice of a material suitable for forming an abrasion resistant coating. This choice of material was duly motivated in order to provide a durable surface to the finished lens as taught by Blum page 21 lines 19-25.
To put it another way, the details of the molding process involving a mold having a shape commensurate with the desired profile, a resin deposited onto the mold, a lens substrate applied over the deposited material such that the material spreads to fill in the molded shape, followed by curing are so well understood that Bakaraju is under no obligation to explain them. The references that explain the details of a molding process of a resin layer on a lens substrate are from 1991 and 1996. Further, both Blum and Ichikawa explain that their molding processes are appropriate for achieving any desired shape (Blum (page 13 lines 18-22): “The methods of the present invention can be used to form lenses of almost any multifocal or progressive optical configuration including without limitation bifocals, trifocals and progressive lenses.” and Ichikawa (col. 1 lines 26-31): “it is easy to obtain an aspherical lens having an optical surface of a desired shape.” That the applicant believes that this is no longer true when applied to the micro lenslet shapes of Bakaraju is not persuasive.
In lines 2-4 of page 8 of 11 of the applicant’s remarks the applicant concludes that the present claims are not obvious over the teachings of Bakaraju and Blum. The arguments underlying this conclusion have been addressed above.
In lines 5-18 of page 8 of 11 of the applicant’s remarks the applicant argues that the additionally cited references, Dillon and Jiang, fail to make up for the alleged deficiencies of Bakaraju and Blum. This argument is moot since the additional references are not relied upon for any of the argued limitations.
From the second to last paragraph of page 8 of 11 which continues onto page 9 of 11 of the applicant’s remarks the applicant argues that the Bakaraju – Meschenmoser combination fails to teach amended claim 12. This argument is moot, because the Bakaraju – Meschenmoser rejection of claim 12 has been withdrawn in light of the amendments to claim 12 and the cancellation of claim 13.
In the paragraph spanning pages 9 and 10 of 11 of the applicant’s remarks the applicant argues that the additionally cited reference, Vaneeckhoutte fails to make up for the alleged deficiencies of Bakaraju and Blum. This argument is moot since Vaneeckhoutte is not relied upon for any of the argued limitations.
In the first full paragraph of page 10 of 11 of the applicant’s remarks the applicant argues that the rejection of claims 18-21 over Bakaraju in view of Dillon and Vaneeckhoutte fails to render claims 12 and 18-21 obvious. This argument is moot, because claim 12 was never rejected under Bakaraju in view of Dillon.
In the last two lines of page 10 of 11 of the applicant’s remarks the applicant notes that the rejection of claim 22 is moot because claim 22 is cancelled.
No further arguments for patentability are made on page 11 of 11 of the applicant’s remarks.
The request for an interview with the examiner in the second paragraph of page 11 of 11 of the applicant’s remarks is denied. The nature and number of the outstanding issues of patentability are such that it does not appear that an interview would result in expediting allowance of the application at this time. See MPEP §713.01 (IV) “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application. … Where a complete reply to a first action includes a request for an interview, the examiner, after consideration of the reply, should grant such an interview request if it appears that the interview would result in expediting the allowance of the application.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872