DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/27/2026 has been entered.
3. Claims 1, 4-6 are pending. Claims 1, 4-6 are under examination on the merits. Claim 1 is amended. Claims 2-3, 7-24 are previously cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive, thus claims 1, 4-6 stand rejected as set forth in Office action dated 01/28/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1, 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Blair et al. (US Pub. No. 2015/0138661 A1, hereinafter “’661”) in view of Lai et al. (US Pub. No. 2014/0155 15 A1, hereinafter “’515”), and Bian et al. (CN 1419151 A, machine translation, hereinafter “’151”).
Regarding claim 1: ‘661 teaches a contact lens (Page 2, [0036]) comprising a contact lens body (Page 5, [0054], Fig. 7), and a blue blocking material covering the contact lens body (Page 5, [0054], Fig. 7; Page 3, [0045], Fig. 4A), the blue light blocking material comprising a plurality of metal particles dispersed on the contact lens body (Page 5, [0054], Fig. 7-720; Page 5, [0060], Fig. 8), the plurality of metal particles consists of silver, gold, cobalt, manganese, nickel, copper, zinc, platinum, palladium, cadmium, indium, potassium, calcium, iron, or combinations there (Page 5, [0060]). Further, ‘661 teaches the blue light blocking material about 1 wt% to about 20 wt% (Page 6, [0065]). ‘661 does not expressly teach the contact lens body comprises a pyrrolidone group and a carboxyl group, and the content of the blue light blocking material is based on the total weight of the contact lens.
However, ‘515 teaches a silicone hydrogel composition comprises at least one silicone macromer, a hydroxy-functionalized silicone-containing monomer, a first hydrophilic monomer and at least one crosslinker, in which the first hydrophilic monomer is N-vinyl pyrrolidone. The silicone macromer, the hydroxy-functionalized silicone-containing monomer or a combination thereof is mutually soluble with N-vinylpyrrolidone (Page 1, [0009]).The crosslinker is selected from the group comprising ethylene glycol di(meth)acrylate, triethylene glycol di(meth)acrylate, tetramethylene glycol di(meth)acrylate (Page 2, [0018]). ‘515 teaches the silicone hydrogel composition further comprising at least one second hydrophilic monomer, and the amount of the second hydrophilic monomer is less than 20 wt % based on the total weight of the composition, wherein the second hydrophilic monomer is selected from the group consisting of acrylic acid, methacrylic acid (i.e., read on carboxyl group) (Page 2, [0019]) with benefit of providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability (Page 1, [0009]).
Alternatively, ‘151 teaches ophthalmic lenses having blue light blocking material covering the lens comprising metal particles (Page 2/6 [0002]; Page 3/6, [0011]), having a content about 1 wt% to about 20 wt% of the lens (Page 3/6, [0011], Page 6/6, [0024]), wherein the contact lens body comprises diethylene glycol bisallyl carbonate (Page 3/6, [0011]) with benefit of providing to make optical lenses with many properties such as light weight, not easy to break, multiple colors, good light transmittance, strong protection ability, etc.(Page 3/6, [0009]; Page 5/6, [0018]).
In an analogous art of the contact lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the contact lens body comprises ethylene glycol group by ‘661, so as to include the contact lens body comprises a pyrrolidone group and a carboxyl group as taught by ‘515 and would have been motivated to do so with reasonable expectation that this would result in providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability as suggested by ‘515 (Page 1, [0009]).
In an analogous art of the contact lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of blue light blocking material based by ‘661, so as to include the contact lens comprises about 1 wt% to about 20 wt% of blue light blocking material based on a total weight of the contact lens as taught by ‘151 and would have been motivated to do so with reasonable expectation that this would result in providing to make optical lenses with many properties such as light weight, not easy to break, multiple colors, good light transmittance, strong protection ability, etc. as suggested by ‘151 (Page 3/6, [0009]; Page 5/6, [0018]).
Regarding claim 4: ‘661 teaches the contact lens (Page 2, [0036]), wherein the metal particles have a diameter of about 1-10,000 nm (Page 4, [0049]-[0050]).
Regarding claim 5: ‘661 teaches the contact lens (Page 2, [0036]), wherein the contact lens exhibits tunable plasmonic resonances at visible light ranged from 380-800 nm (Page, [00 46], Figs. 5A-C).
Regarding claim 6: ‘661 teaches the contact lens (Page 2, [0036]), wherein the contact lens inhibits about 5% to about 99% of blue light at wavelength range within 380nm to about 480nm (Page 3, [0045], Fig. 4A; Page 5, [0054], Fig. 7- 740; Fig. 7A).
8. Claims 1, 4, 6 are rejected under 35 U.S.C. 103 as being unpatentable over Judy C. Richter (US Pat. No. 4,669,834 A1; hereinafter “’834”) in view of Lai et al. (US Pub. No. 2014/0155 15 A1, hereinafter “’515”) and Bian et al. (CN 1419151 A, machine translation, hereinafter “’151”).
Regarding claim 1: ‘834 teaches a contact lens (Col. 1, lines 5-8), comprising: a contact lens body (Col. 1, lines 5-15, Figs. 6- 7) including a hydrogel contact lens or a silicone hydrogel contact lens (Col.3, lines 3-14), and a blue light blocking material covering the contact lens body (Figs. 6- 7; Col. 2, lines 55-66; Col. 4, lines 20-30), wherein the blue light blocking material comprises a plurality of metal particles dispersed on the contact lens body (Col. 2, lines 55-66) and the plurality of metal particles consists of silver, gold, cobalt, manganese, nickel, copper, zinc, platinum, palladium, cadmium, indium, potassium, calcium, iron, or combinations thereof (Figs. 6-7; Col. 2, lines 55-66). ‘834 does not expressly teach the contact lens body comprises a pyrrolidone group and a carboxyl group, and the contact lens comprises about 1 wt% to about 20 wt% of blue light blocking material based on a total weight of the contact lens.
However, ‘515 teaches a silicone hydrogel composition comprises at least one silicone macromer, a hydroxy-functionalized silicone-containing monomer, a first hydrophilic monomer and at least one crosslinker, in which the first hydrophilic monomer is N-vinyl pyrrolidone. The silicone macromer, the hydroxy-functionalized silicone-containing monomer or a combination thereof is mutually soluble with N-vinylpyrrolidone (Page 1, [0009]). The crosslinker is selected from the group comprising ethylene glycol di(meth)acrylate, triethylene glycol di(meth)acrylate, tetramethylene glycol di(meth)acrylate (Page 2, [0018]). ‘515 teaches the silicone hydrogel composition further comprising at least one second hydrophilic monomer, and the amount of the second hydrophilic monomer is less than 20 wt % based on the total weight of the composition, wherein the second hydrophilic monomer is selected from the group consisting of acrylic acid, methacrylic acid (i.e., read on carboxyl group)(Page 2, [0019]) with benefit of providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability (Page 1, [0009]).
Alternatively, ‘151 teaches (ophthalmic lenses) having blue light blocking material covering the lens comprising metal particles (Page 2/6 [0002]; Page 3/6, [0011]), having a content about 1 wt% to about 20 wt% of the lens (Page 3/6, [0011], Page 6/6, [0024]), wherein the contact lens body comprises diethylene glycol bisallyl carbonate (Page 3/6, [0011]) with benefit of providing to make optical lenses with many properties such as light weight, not easy to break, multiple colors, good light transmittance, strong protection ability, etc.(Page 3/6, [0009]; Page 5/6, [0018]).
In an analogous art of the contact lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the contact lens body comprises ethylene glycol group by ‘834, so as to include the contact lens body comprises a pyrrolidone group and a carboxyl group as taught by ‘515 and would have been motivated to do so with reasonable expectation that this would result in providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability as suggested by ‘515 (Page 1, [0009]).
In an analogous art of the contact lens, and in the light of such benefit before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to modify the amount of blue light blocking material based by ‘834, so as to include the contact lens comprises about 1 wt% to about 20 wt% of blue light blocking material based on a total weight of the contact lens as taught by ‘151 and would have been motivated to do so with reasonable expectation that this would result in providing to make optical lenses with many properties such as light weight, not easy to break, multiple colors, good light transmittance, strong protection ability, etc. as suggested by ‘151 (Page 3/6, [0009]; Page 5/6, [0018]).
Regarding claim 4: The disclosure of ‘834 in view of ‘151 and ‘787 is adequately set forth in paragraph above and is incorporated herein by reference. ‘151 further teaches the plurality of metal particles have a diameter of about 1-10000 nm (Page 4/6, [0012]).
Regarding claim 6: The disclosure of ‘834 in view of ‘151 and ‘787 is adequately set forth in paragraph above and is incorporated herein by reference. ‘151 further teaches the lens inhibits blue light within 380nm to about 480nm (Page 5/6, [0019]), but doesn’t specify the particular percentage. Thus, it would have been obvious to one of ordinary skill in the art to inhibit about 5-99% of blue light since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235. As detailed by ‘151, the metal particles are provided to shield/block UV, blue, and visible light (Page 5/6, [0019]).
Response to Arguments9.
9. Applicant's arguments filed 04/27/2026 have been fully considered but they are not persuasive,
In response to Applicant’s argument that Blair ‘661or Richter ’834 in view of Bian ’151 does not teach the contact body comprises a pyrrolidone group and a carboxyl group.
The examiner respectfully disagrees. ‘515 teaches a silicone hydrogel composition comprises at least one silicone macromer, a hydroxy-functionalized silicone-containing monomer, a first hydrophilic monomer and at least one crosslinker, in which the first hydrophilic monomer is N-vinyl pyrrolidone. The silicone macromer, the hydroxy-functionalized silicone-containing monomer or a combination thereof is mutually soluble with N-vinylpyrrolidone (Page 1, [0009]).
The crosslinker is selected from the group comprising ethylene glycol di(meth)acrylate, triethylene glycol di(meth)acrylate, tetramethylene glycol di(meth)acrylate (Page 2, [0018]). ‘515 teaches the silicone hydrogel composition further comprising at least one second hydrophilic monomer, and the amount of the second hydrophilic monomer is less than 20 wt % based on the total weight of the composition, wherein the second hydrophilic monomer is selected from the group consisting of acrylic acid, methacrylic acid (i.e., read on carboxyl group) (Page 2, [0019]) with benefit of providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability (Page 1, [0009]).
In response to Applicant’s argument that there is no teaching in Lai to specifically introduce a carboxyl group into that formulation to serve as a reactive site for metal immobilization.
The examiner respectfully disagrees. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). It is submitted that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant, In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 91 9 F.2d 688,16 USPQ2d 1897 (Fed. Cir. 1990) cert. denied, 500 U.S. 904 (1991). Also, while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention, Ex parte Levengood, 28 USPQ2d 1300,1302 (Bd. Pat. App. & Inter. 1993). In this case, nevertheless, the combination of ‘661 or ‘834 in view of ‘515 is deemed to teach the contact lens as the recited claimed. ‘515 teaches a silicone hydrogel composition comprises at least one silicone macromer, a hydroxy-functionalized silicone-containing monomer, a first hydrophilic monomer and at least one crosslinker, in which the first hydrophilic monomer is N-vinyl pyrrolidone. The silicone macromer, the hydroxy-functionalized silicone-containing monomer or a combination thereof is mutually soluble with N-vinylpyrrolidone (Page 1, [0009]).The crosslinker is selected from the group comprising ethylene glycol di(meth)acrylate, triethylene glycol di(meth)acrylate, tetramethylene glycol di(meth)acrylate (Page 2, [0018]). ‘515 teaches the silicone hydrogel composition further comprising at least one second hydrophilic monomer, and the amount of the second hydrophilic monomer is less than 20 wt % based on the total weight of the composition, wherein the second hydrophilic monomer is selected from the group consisting of acrylic acid, methacrylic acid (i.e., read on carboxyl group) (Page 2, [0019]) with benefit of providing to polymerize a lens forming composition containing a hydrophilic monomer and a silicone monomer, macromer or prepolymer to obtain a contact lens with high transparency, high oxygen permeability and high moisturizing capability (Page 1, [0009]).
In response to Applicant’s argument that the combination of a carboxyl group and a pyrrolidone group produces a synergistic effect on metal reduction that is not achieved by either group alone.
Turning to Applicant’s last argument regarding unexpected results, Examiner agrees that Applicant’s proffered evidence of Example 4 & Figs 6A-6C of the Specification, is insufficient to establish unexpected results for claim 1. Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no hard and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness." Kao Corp. v. 7 Appeal 2017-004282 Application 13/877,156 Unilever US., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir.1990) ("[e]ach situation must be considered on its own facts."). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Applicant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by claim, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The extent of the showing relied upon by Applicant also must reasonably support the entire scope of the claims at issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
The applicant is invited to submit any declaration under 37 CFR 1.132 to overcome the rejection based upon reference applied under 35 U.S.C. 103 (a) as set forth in this Office action to compare their invention product (i.e., a contact lens) and show the product is actually different from and unexpectedly better than the teachings of the references. It is noted that the burden is on the applicant to establish that the results are in fact unexpected, unobvious, and of statistical and practical significance. See MPEP 716.02(b). See also Ex parte Gelles, 22 USPQ2d 1318 (Bd. Pat. App. & Inter. 1992), and such a showing also must be commensurate with the scope of the claimed invention, i.e., must bear a reasonable correlation to the scope of the claimed invention.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/06/2026
bijan.ahvazi@uspto.gov
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