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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/12/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/12/2026 have been fully considered. Arguments regarding the rejection of claims 9-14, and 19 under 35 U.S.C. 101 are persuasive in light of the amendments, and the rejection is withdrawn.
Arguments regarding the rejection of claims 1-3, 5-7 and 22-25 under 35 U.S.C. 102(a)(1) as being anticipated by Grant US 6,811,258 are not persuasive. Applicant argues the office does not identify how Grant discloses “wherein the first lens has a second optical characteristic that reduces a misperception of distance of a moving object caused by the first optical characteristic”. Applicant states that although Grant discloses lenses that may include refractive power and tinting, there is no disclosure in Grant that mentions the tint as reducing a misperception of a distance of a moving object caused by the refractive power of the lens. This is not persuasive because the claims are directed to a device and not a method of using the device, and the limitation “that reduces a misperception of a distance of a moving object caused by the first optical characteristic” is a functional limitation, wherein the lenses of Grant are capable of performing the function. As such, the argument that Grant fails to disclose the function is not persuasive because the structure of the device of Grant comprises the claimed first characteristic, i.e., refractive power, and the claimed second characteristic, i.e., tinting. According to MPEP 2114, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Since Grant discloses all the structural limitations as claimed, it would follow that it would be capable of performing the recited functions. Furthermore, one of ordinary skill in the art could have used the structure of Grant in order to achieve the claimed functions should they have desired. Finally, the rejection explains how the first and second characteristics of the lenses of Grant can function as claimed.
Claim Objections
Claim 9 is objected to because of the following informalities:
In claim 9, line 3, “the first representation” should recite --the first visual representation--.
In claim 9, lines 10-11, “the first representation or the second representation” should recite --the first visual representation or the second visual representation--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: In claim 1, “a first optical characteristic that modifies a distance of a focal point of a first eye” and “a second optical characteristic that reduces a misperception of a distance of a moving object”, wherein the generic placeholders are considered “a first optical characteristic” and “a second optical characteristic”, respectively, and the function is “that modifies a distance of a focal point of a first eye” and “reduces a misperception of a distance of a moving object”, respectively; In claim 22, “a first optical characteristic that modifies a distance of a focal point of a first eye”, “a second optical characteristic that modifies a distance of a focal point of a second eye”, and “a third optical characteristic that reduces a misperception of a distance of a moving object”, wherein the generic placeholders are considered “a first optical characteristic”, “a second optical characteristic”, and “a third optical characteristic”, respectively, and the function is “that modifies a distance of a focal point of a first eye”, “that modifies a distance of a focal point of a second eye” and “reduces a misperception of a distance of a moving object”, respectively; and in claim 9, “a lens characteristic associated with reducing a misperception of distance of the moving object”, wherein the generic placeholder is “a lens characteristic” and the function is “reducing a misperception of distance of the moving object”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification describes the optical characteristic that modifies the distance of a focal point of an eye is an optical power that corrects the refractive errors of that eye, and describes the optical characteristic that reduces a misperception of a distance of a moving object is one or more of an optical density, a tinting, a filter, a density filter, a neutral density filter, a virtual filter, or a virtual density filter. Note that claims 7, 8, and 11 are not interpreted under 112(f) since they recite sufficient structure for the optical/lens characteristic.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-14 and 19 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.
Claim 9 recites the limitation "the distance of the focal point" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the second eye" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the lens" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 9, line 8 recites “a lens” and “a second eye of the user”. It is unclear if this is the same lens and second eye recited in line 6.
Claim 9, line 8 recites “the lens” in line 8 but it is unclear if this refers to the lens of line 6 or the lens of line 8.
Claim 9, line 9 recites “a focal point of the first eye” but this is unclear because line 4 already recites “a focal point of the first eye”. Are the focal points of the first eye in lines 4 and 9 the same?
In claim 9, line 2, “causing output of a first visual representation of a moving object to a first eye of a user” is unclear. What does “causing output…to a first eye of a user” mean? Output from where? As best understood the limitation appears to be requiring a step of displaying a first visual representation of a moving object to a first eye of a user.
In claim 9, lines 7-8, the phrase “causing output of a second visual representation of the moving object, through a lens, and to a second eye of the user” is unclear. What does “causing output…through a lens…to a second eye of the user” mean? Does the lens display the output of a second visual representation? Or is the second visual representation viewed by the second eye via a lens (line 3 of the claim uses this phrase as it applies to the first visual representation and the first eye). What causes the output? As best understood, the limitation appears to be requiring a step of displaying a second visual representation of the moving object to a second eye of the user, wherein the second visual representation is viewed by the second eye via a lens.
Claim 19, line 3 recites “an additional lens for the first eye”. It is unclear if this is in addition to or the same as the “additional lens” of claim 9, line 3.
Claim Rejections - 35 USC § 102
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 1-3, 5-7 and 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grant US 6,811,258 (hereafter referred to as Grant).
Regarding claim 1, Grant discloses an ophthalmic device comprised of monovision contact lenses in which a dye is incorporated into each lens to create a pale green filter over one lens and a dark yellow filter over the other lens (Grant col 3 line 38 – col 4 line 12 and col 2 line 66 – col 3 line 10). Therefore, because Grant discloses the lenses are monovision lenses, it is inherent that the first lens will have a first optical characteristic (i.e., refractive power) that modifies the focal point of the first eye to provide near distance and the second lens will modify the focal point of the second eye to provide far distance, as is well known in the art and explained in specification par. 47 of the instant application. Thus, the focal point of the first and second eyes are different from one another. Further, Grant discloses that either lens is tinted darker than the other lens (col 2 line 66 – col 3 line 10), therefore disclosing that the first lens can have a second optical characteristic (i.e., dark tint) that improves distance vision of the patient (col 3 lines 11-21). Although Grant doesn’t explicitly state that the dark tint of the first lens is to reduce a misperception of a distance of a moving object caused by the first optical characteristic of the first lens, specification par. 139 of the instant application explains that tinting of one lens in a set of monovision contact lenses will produce a classic Pulfrich effect that compensates for the reverse Pulfrich effect and reduces a misperception of a distance of a moving object produced by the difference in retinal blur between eyes (which is caused by at least the first optical characteristic of the first lens). Therefore, because the ophthalmic device of Grant comprises a set of monovision contact lenses in which one lens is tinted dark, it too will reduce a misperception of a distance of a moving object. It is further noted that much of claim 1 is directed to an intended use of the ophthalmic device. The claim actually only requires a lens having two characteristics, wherein the characteristics make the lens capable of modifying a distance of a focal point and reducing a misperception of a distance of a moving object. The structure of the device of Grant comprises the claimed first characteristic, i.e., refractive power, and the claimed second characteristic, i.e., tinting. According to MPEP 2114, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Since Grant discloses all the structural limitations as claimed it would follow that it would be capable of performing the recited functions. Furthermore, one of ordinary skill in the art could have used the structure of Grant in order to achieve the claimed functions should they have desired.
Regarding claim 2, the ophthalmic device of Grant comprises a second lens that modifies the focal point of the second eye to provide far distance as explained above in regards to claim 1. Further, Grant discloses that one lens will have a dark yellow tint and the other lens will have a pale green tint (col 2 line 66 – col 3 line 10). Therefore, because the first lens has the dark tint, as explained above in regards to claim 1, the second lens will have the pale tint. Thus, the second lens will have less of the second optical characteristic (i.e., tint) than that of the first lens.
Regarding claim 3, Grant discloses that the ophthalmic device can comprise contact lenses (col 4 lines 3-12).
Regarding claims 5 and 6, Grant discloses that the first lens can have a presbyopic add-in excess of 1 diopter (col 3 lines 47-62). Therefore, because the first lens of Grant provides an excess of 1 diopter refractive power to the first eye, it inherently corrects refractive errors of the first eye and has an additional refractive power of 1 diopter, which is within each of the claimed ranges. This is commonly known in the field of endeavor, as the first lens in a set of monovision contact lenses is configured to provide near vision and therefore will need to have additional refractive power beyond what is needed to correct refractive errors of the first eye.
Regarding claim 7, as explained above in regards to claim 1, the second optical characteristic comprises tinting.
Regarding claim 22, Grant discloses an ophthalmic device comprised of monovision contact lenses in which a dye is incorporated into each lens to create a pale green filter over one lens and a dark yellow filter over the other lens (Grant col 3 line 38 – col 4 line 12 and col 2 line 66 – col 3 line 10). Therefore, because Grant discloses the lenses are monovision lenses, it is inherent that the first lens will have a first optical characteristic (i.e., refractive power) that modifies the focal point of the first eye to provide near distance and the second lens will has a second optical characteristic (i.e., refractive power) that modifies the focal point of the second eye to provide far distance, as is well known in the art and explained in specification par. 47 of the instant application. Thus, the focal point of the first and second eyes are different from one another. Further, Grant discloses that either lens is tinted darker than the other lens (col 2 line 66 – col 3 line 10), therefore disclosing that the first lens can have a third optical characteristic (i.e., dark tint) that improves distance vision of the patient (col 3 lines 11-21). Although Grant doesn’t explicitly state that the dark tint of the first lens is to reduce a misperception of a distance of a moving object caused by the first optical characteristic of the first lens, specification par. 139 of the instant application explains that tinting of one lens in a set of monovision contact lenses will produce a classic Pulfrich effect that compensates for the reverse Pulfrich effect and reduces a misperception of a distance of a moving object produced by the difference in retinal blur between eyes (which is caused by at least the first optical characteristic of the first lens). Therefore, because the ophthalmic device of Grant comprises a set of monovision contact lenses in which one lens is tinted dark, it too is capable of reducing a misperception of a distance of a moving object caused by the first optical characteristic of the first lens. Also, as discussed above with respect to claim 1, since Grant discloses all the structural limitations as claimed it would follow that the tinted monovision lenses of Grant would be capable of performing the recited function of reducing a misperception of a distance of a moving object caused by the first optical characteristic.
Regarding claim 23, Grant discloses that one lens will have a dark yellow tint and the other lens will have a pale green tint (col 2 line 66 – col 3 line 10). Therefore, because the first lens has the dark tint, as explained above in regards to claims 1 and 22, the second lens will have the pale tint. Thus, the second lens will have less of the third optical characteristic (i.e., tint) than that of the first lens. Note that Grant discloses either lens can have the darker or paler tint (col.3, lines 5-10).
Regarding claim 24, Grant discloses that the ophthalmic device can comprise contact lenses (col 4 lines 3-12).
Regarding claim 25, Grant discloses that the first lens can have a presbyopic add-in excess of 1 diopter (col 3 lines 47-62). Therefore, because the first lens of Grant provides an excess of 1 diopter refractive power to the first eye, it inherently corrects refractive errors of the first eye and has an additional refractive power of 1 diopter, which is within each of the claimed ranges. This is commonly known in the field of endeavor, as the first lens in a set of monovision contact lenses is configured to provide near vision and therefore will need to have additional refractive power beyond what is needed to correct refractive errors of the first eye. Further, Grant discloses that the pale green tinted lens (i.e., the second lens) corrects the refractive errors of the second eye to approximately 20/20 vision (col 3 lines 11-21).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Grant as applied to claim 1 above, and further in view of Weeber et al. US 2014/0324166 (hereafter referred to as Weeber). Grant discloses the ophthalmic device of claim 1 as discussed above, however, Grant does not specifically disclose that an optical density of the second optical characteristic of the first lens is between about 0.05 and about 0.3.
Weeber teaches an ophthalmic device, in the same field of endeavor, wherein an optical density of a lens may be 0.1 or 0.3 (par.37) for the purpose of reducing brightness of light experienced by the patient (par.26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lens of Grant, if necessary, such that the lens has an optical density of 0.1 or 0.3 as taught by Weeber in order to reduce brightness and therefore improve the use of the lens by the patient.
Allowable Subject Matter
Claims 9-14 and 19 would appear to be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEGAN Y WOLF whose telephone number is (571)270-3071. The examiner can normally be reached Mon-Fri 8am-2pm.
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/MEGAN Y WOLF/Primary Examiner, Art Unit 3774
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