DETAILED ACTION
Status of Application
Receipt of the claims filed 2/18/2026 are acknowledged.
Claims 1-3, 5-10, 12-15, 17-22, and 24 are pending.
Claims 4, 11, 16, and 23 are cancelled.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments filed 2/18/2026 regarding the rejection under 112(b) has been considered but is not persuasive for the reasons in the rejection below.
Further, after an updated search, examiner now relies on the teachings of Blum (US20140074230A1).
Because the new ground of rejection is not necessitated by amendment, this action is made NON-FINAL.
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.
Claim 22 is 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 pre-AIA the applicant regards as the invention.
Claim 22 is indefinite for reciting, “myopia and any disease, disorder, condition or symptom associated therewith”, which is unclear because Examiner is unable to determine what defines “associated therewith” regarding the disease, disorder, condition or symptoms that the method of treatment is drawn to.
Appropriate correction is required.
Response to Arguments
On pages 5-6 of the remarks, applicant argues, “the term "myopia" is defined to also include "the condition known as "high myopia" … “the term also includes the condition known as "degenerative myopia" … applicant asserts that claim 22 is distinctly claiming the subject matter clearly defined in the specification, pointing out the invention, particularly with respect to the term "myopia" including the tern "any disease, disorder, condition or symptom associated therewith". However, this argument is not persuasive because applicant has only listed 2 conditions, high myopia, and degenerative myopia, which describes 2 forms of myopia, but does not fully define or encompass “myopia and any disease, disorder, condition or symptom associated therewith”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 5-10, 12-15, 17-22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Blum (US20140074230A1) hereinafter Blum.
Regarding claims 1-3, 5-10, 12-15, 17-22, and 24, Blum is drawn to prosthesis capable of being worn on the eye of a wearer having a convex surface and a concave surface (abstract).
Blum discloses the prosthesis is in the form of a scleral ring, the scleral ring comprises a central open aperture without optical power. The scleral ring can be made of a material found in one of a: hard contact lens, gas perm contact lens, soft contact lens; hybrid contact lens [0157].
Blum discloses Central Open Aperture: Means a hole or opening devoid of material that includes the geometrical center of the prosthesis [0164].
Blum does not explicitly disclose the method as claimed in a single embodiment for an anticipation rejection.
However, 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 teachings of Blum, to arrive at the instant invention.
One of ordinary skill in the art would have been motivated to do so because Blum discloses the prosthesis is in the form of a scleral ring, the scleral ring comprises a central open aperture without optical power. The scleral ring can be made of a material found in one of a: hard contact lens, gas perm contact lens, soft contact lens; hybrid contact lens [0157]. Further, one having ordinary still in the art would reasonably expect success in combining prior art elements according to known methods to yield predictable results, see MPEP 2141.
The Supreme Court has acknowledged:
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation... 103 likely bars its patentability...if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior-art elements according to their established functions......the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 U.S. 2007) (emphasis added).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Pertinent Art Not Relied Upon
Examiner has identified and included the reference:
Cheung et al. (The impact of short-term fenestrated scleral lens wear on intraocular pressure Contact Lens and Anterior Eye, 2020; 43, 585-588) drawn to fenestrated scleral lens (abstract), and discloses:
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as pertinent prior art but has not directly relied upon the teachings from the reference in this action.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANGLONG N TRUONG whose telephone number is (571)270-0719. The examiner can normally be reached on 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A Wax can be reached on 571-272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
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