DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 1 and 8, as well as claims 2, 5-7, 9, 11-12, and 14-20 due to their dependencies on the previous claims, 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.
4. Claim 1 recites the limitation "wherein the luminance times duration of light scattered by the scattering layer" in the second to last line of the claim. There is insufficient antecedent basis for this limitation in the claim. Previous to this recitation, the term “luminance times duration of light scattered” is not introduced, rendering the claim indefinite. Proper correction is required.
5. Claim 8 recites the limitation “the electric current” in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 8 depends from Claim 1, and Claim 1 fails to recite any “electric current”. Therefore, Claim 8 is rendered indefinite. Proper correction is required.
Allowable Subject Matter
6. Claims 1, 2, 5-9, 11-12 and 14-20 have allowable subject matter. The following is a statement of reasons for the indication of allowable subject matter: a light source-integrated contact lens for electroretinography comprising a light source, a corneal contact portion and a corneal contact electrode is well known in the art. This is supported by at least the references cited during the prosecution of this case, as well as other references in the general area that could be located with minimal effort. For example, Tai U.S. 2019/0232078 teaches a contact lens comprising a light source and an electrode (Fig. 8, ref num 850, 880). However, after reviewing the applicant’s remarks in regards to the combination of the most currently cited prior art, as well as extensive search in the area and examining the newest amendments to the claims, the examiner agrees that the prior art of record fails to specifically teach a light source-integrated contact lens for electroretinography that comprises a scattering layer that is the corneal contact portion itself, or disposed on an outer surface of the corneal contact surface, the light source disposed at the scattering layer, wherein the corneal contact electrode is for measuring a change in electroretinogram due to stimulation from the light source, and that the contact lens comprises a cable that connects the light source to an external power source, such that scattering layer comprises scattering particles in an amount specified in the claim language, the light source having a wavelength distribution as specified in the claim language, and the luminance time duration of the light scattered by the scattering layer is as specified in the claim language. The prior art also fails to provide sufficient motivation to make such specific modifications and would require improper use of hindsight to arrive at the claimed invention when considered along or in any proper combination.
7. Claims 1-2, 5-9, 11-12, and 14-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to correct any outstanding issues or objections.
Conclusion
8. THIS ACTION IS MADE FINAL. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNIE L SHOULDERS whose telephone number is (571)272-3846. The examiner can normally be reached Monday-Friday (alternate Fridays) 8AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNIE L SHOULDERS/Examiner, Art Unit 3794
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