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 .
Claim 16 is 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.
The phrase “wherein the functional wafer material….wherein the wafer and lens are made of the same material” (cl 16: 7-11) lacks support in the instant disclosure. The only mention in the instant specification of the wafer and the lens being from the same material relates to conventional injection over-molding processes, wherein the Tg, wafer and Tg, lens are the same, i.e. Tg, wafer.= Tg, lens . See paras. 0035-0036 of the instant specification. It should be noted that paragraph 0037 recites that Tg, wafer must be below Tg, lens.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Just like independent claim 1, claim 14 recites the wafer material being polymethylmethacrylate.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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(s) 1-6,8-9 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al (USPN 6220703) in view of EP357044.
Regarding claim 1, Evans et al teach:
A method for producing an optical article, the method comprising over- molding functional wafer onto a convex surface of a base lens to produce an ophthalmic lens, wherein the over-molding comprises:
affixing the functional wafer to the concave surface of a mold cavity of a molding apparatus (Evans et al: col 7:12-37; fig 1; functional wafer 102 is placed within an injection mold and then overmolded to form a lens) ; and
filling the mold cavity with molten base lens material (Evans et al: col 7:12-37; fig 1; functional wafer 102 is placed within an injection mold and then overmolded to form a lens);
wherein the functional wafer material has a glass transition temperature at or between at least 100 0C below the glass transition temperature of the base lens material to at or about 15 0C below the glass transition temperature of the base lens material (Evans et al: col 7:12-37; fig 1; functional wafer 102 is formed from PET, which has a common value Tg of 80C and is a polyester alloy; base lens is formed from polycarbonate (col 4:13-38; Tg 147C, which calculates to a difference within the claimed range);
wherein the material of the lens is polycarbonate, and he material of the wafer includes polymethylmethacrylate, copolyester, polyester alloy, and ali-cyclic polycarbonate (Evans et al: col 7:12-37; fig 1; functional wafer 102 is formed from PET, which is a polyester alloy; base lens is formed from polycarbonate (col 4:13-38;Tg 147C)).
However, Evans et al do not teach an additive manufactured wafer. EP357044 teaches form a lens having an additive manufactured wafer/filter that is integrated with a base lens material, wherein the additive manufacturing of the wafer/filter allows for individual customization (paras. 0059,0063,0064, and 0070; figs 1-3. Since Evans et al and EP357044 are analogous with respect to lenses having a wafer/filter therein, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to additive manufacture the wafer/filter of Evans et al as taught by EP357044 in order to allows the production of customized lenses.
Regarding claim 2, the use of specific preform in a molding process is a mere obvious matter of choice dependent on the desired final product. Since wafers/filters having the claimed surface roughness are well-known in the lens art, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to design the wafer/filter of Evans et al (modified) to have the claimed roughness in order to enhance bonding with the base lens material.
Regarding claim 3, such is taught by Evans et al since the wafer is back injection molded, i.e. the pressure of the injected material presses against the wafer to force and deform it against the mold surface.
Regarding claim 4, such is taught by Evans et al since the wafer is back injection molded, i.e. the pressure of the injected material presses against the wafer to force and deform it against the mold surface.
Regarding claim 5, the production of a product having a specific roughness is a mere obvious matter of choice dependent on the desired final product. Since lenses having the claimed surface roughness are well-known in the lens art, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to design the mold of Evans et al to impart the claimed roughness onto the molded lens of Evans et al in order to produce a high-quality product.
Regarding claim 6, such is taught by the above combination of Evans et al and EP357044 since EP357044 teaches a filter (paras. 0006-0013).
Regarding claim 8, Evans et al do not teach heating the molding cavity to a constant temperature prior to providing the mold with the molten base lens material. Since the step of pre-heating a mold is well-known in the molding art to prevent the formation of a skin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to preheat the mold of Evans et al before the step of injecting in order to produce a lens without an unwanted skin layer.
Regarding claim 9, Evans et al do not teach the claimed mold materials. Since molds of the claimed materials are well-known in the lens art for its durability and smoothness, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to design the molds of Evans et al from the claimed materials in order to produce smooth high-quality lenses.
Regarding claim 14, Evans et al do not teach the claimed material for the functional wafer. Since wafers of the claimed materials are well-known in the lens art for its durability and clarity, and the claimed materials are art-recognized substitutes for PET, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to design the wafer of Evans et al from one of the claimed materials since they are art-recognized substitutes that achieve the same purpose and allow for the production of diverse lenses.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al (USPN 6220703) in view of EP357044.
Regarding claim 15, Evans et al teach:
A method for producing an optical article, the method comprising over- molding functional wafer onto a convex surface of a base lens to produce an ophthalmic lens, wherein the over-molding comprises:
affixing the functional wafer to the concave surface of a mold cavity of a molding apparatus (Evans et al: col 7:12-37; fig 1; functional wafer 102 is placed within an injection mold and then overmolded to form a lens) ; and
filling the mold cavity with molten base lens material (Evans et al: col 7:12-37; fig 1; functional wafer 102 is placed within an injection mold and then overmolded to form a lens);
wherein the functional wafer material has a glass transition temperature at or between at least 20 0C below the glass transition temperature of the base lens material to at or about 15 0C below the glass transition temperature of the base lens material (Evans et al: col 7:12-37; fig 1; functional wafer 102 is formed from PET, which has a Tg of 69C; base lens is formed from polyamide (col 4:35-39;Tg 40C to 90C, which calculates to a difference within the claimed range).
However, Evans et al do not teach an additive manufactured wafer. EP357044 teaches form a lens having an additive manufactured wafer/filter that is integrated with a base lens material, wherein the additive manufacturing of the wafer/filter allows for individual customization (paras. 0059,0063,0064, and 0070; figs 1-3. Since Evans et al and EP357044 are analogous with respect to lenses having a wafer/filter therein, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to additive manufacture the wafer/filter of Evans et al as taught by EP357044 in order to allows the production of customized lenses.
Applicant’s arguments with respect to claim(s) 1-6,8-9, and 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Both USP20130329184 and EP4347845 teach lenses having a wafer/filter therein. KR20070093405 and USP20080095997 teach PMMA and PET are substitutable alternatives for optical lenses.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMUND H LEE whose telephone number is (571)272-1204. The examiner can normally be reached M-Th 9AM-4PM.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744
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