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 .
Response to Amendment
The Amendment filed July 29, 2025 has been entered. Claims 50-61 are pending in the application. Claims 1-49 were canceled. Claims 50, 53, 55 and 59-61 were amended and supported in the original Specification and Claims. Applicant’s amendments to the Claims and Specification have overcome objections and 112 rejections previously set forth in the Non-Final Office Action mailed April 30, 2025.
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.
Claims 50-51, 53-55, and 59-60 are rejected under 35 U.S.C. 103 as being unpatentable over Gu et al., (US 2021/0003754 A1; cited in the IDS submitted on 10/23/2023; hereafter as “Gu ‘754”) in view of Valentine et al., (WO2020/176444A1; cited in the IDS submitted on 10/23/2023; hereafter as “Valentine”).
Regarding Claim 50, Gu ‘754 teaches ophthalmic devices such as contact lenses [Claim 70], corresponding to the claimed contact lens,
Wherein said ophthalmic device is derived from the polymerization of a hydrophilic monomer and a silicone-containing component [Claim 64], corresponding to the claimed one or more silicone-containing components and one or more hydrophilic components;
Wherein said ophthalmic devices have a water content of at least 20 wt. % [Paragraph 0254], corresponding to the claimed contact lens having a water content of at least about 20 weight percent;
Wherein said ophthalmic devices have an oxygen permeability of at least 80 barrers [Paragraph 0258], corresponding to the claimed oxygen permeability of at least about 80 barrers;
Wherein said ophthalmic devices have nanoparticles with plasmonic cores [Claim 1; Paragraph 0276], corresponding to the claimed plurality of nanoparticles;
Wherein said nanoparticles are surrounded with shells [Claim 1], corresponding to the claimed nanoparticle coating material;
Wherein said nanoparticles can be used as light blocking optical filters to absorb wavelengths between 500-700 nm [Paragraphs 0035 and 0083], corresponding to the claimed composition for light filtering, and which overlaps the claimed peak light absorption value in the range of about 650nm to about 800nm;
And wherein said ophthalmic devices may comprise dyes [Paragraph 0229], corresponding to the claimed chemical dye; and
Hydrophilic monomers, including methacryloyl [Paragraph 0124], corresponding to the claimed methacryloyl-derived anchoring mechanism.
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the peak light absorption range (500-700 nm) taught by Gu ‘754 overlaps the instantly claimed range (650-800 nm) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
However, Gu ‘754 is silent to wherein the chemical dye blocking light in the range of about 530nm up to about 560nm and wherein the chemical dye emits light of Claim 50.
Nevertheless, Valentine teaches a silicone hydrogel contact lens with a dye with a polymerizable tether that establishes an inhibition band centered between 510 nm and 610 nm [Claims 5, 16; ¶ 00986, 001027]. Valentine also teaches said dye may include fluorescent dyes [¶ 00760], corresponding to the chemical dye that emits light of Claim 50. Valentine further teaches the use of chromic dyes permits the changing of the visible transmission spectrum of optical devices [¶ 00196].
Gu ‘754 and Valentine are considered to be analogous as the claimed invention as all are in the same field of silicone hydrogen contact lens with dyes and light filtering capabilities.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the dyes of Valentine with the contact lens of Gu ‘754, thereby arriving at the claimed invention.
Though Gu ‘754 is silent to the exact claimed light blocking range, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Valentine for the inhibition band range (510 – 610 nm) overlaps the instantly claimed range (530-560 nm) of Claim 50 and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 51 and 53, Gu ‘754 further teaches:
The nanoparticles can exhibit an absorption spectrum having a full-width at half maximum of 20-75 nm [Claim 50], which overlaps with the claimed absorption spectrum having a full-width at half maximum of about 58-118 nm of Claim 51;
the substrate can exhibit an absorption value of 500-700 nm [Paragraph 0083], which overlaps with the peak light absorption in the range of about 650nm to about 800nm of Claim 53; and
absorption of the core-shell particles can be tuned by varying the size and shape of the plasmonic nanoparticle core [Paragraph 0286], corresponding to wherein a shape of at least a portion of the plurality of nanoparticles is tuned of Claim 53.
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the full-width at half maximum (20-75 nm) and peak light absorption range (500-700 nm) taught by Gu ‘754 overlap the instantly claimed ranges (58-118 nm, and 650-800 nm, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claims 59-60, Gu ‘754 further teaches plasmonic nanoparticle cores comprising a noble metal [Claim 1], corresponding to the plasmonic nanoparticles of Claim 59, and metal nanoparticles of Claim 60.
However, Gu ‘754 is silent to wherein the chemical dye comprises Rhodamine-based dye of Claim 54, and wherein the chemical dye comprises one or more of Rhodamine B, Rhodamine 6G, or TRITC of Claim 55.
Nevertheless, Valentine further teaches said dye [Claim 1] may include colorants such as Rhodamine B [Paragraph 00576], corresponding to the Rhodamine-based dye of Claim 54, and reading on the Rhodamine B of Claim 55. Valentine further teaches such dyes may be incorporated to impart optical, mechanical, chemical and/or safety characteristics to the contact lens [Paragraph 00158].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the dyes of Valentine with the contact lens of Gu ‘754, thereby arriving at the claimed invention.
Claims 52, 58 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Gu ‘754 et al., (US 2021/0003754 A1; cited in the IDS submitted on 10/23/2023; hereafter as “Gu ‘754”) in view of Valentine et al., (WO2020/176444A1; cited in the IDS submitted on 10/23/2023; hereafter as “Valentine”) and in further view of Chen et al., (WO 2014/186901 A1; hereafter as “Chen”).
Gu ‘754 and Valentine teach the contact lens, silicone component, nanoparticles, dye and anchoring mechanism of Claim 50 as set forth above and incorporated herein by reference.
However, Gu ‘754 and Valentine are silent to the nanoparticles having a star shape of Claim 52, wherein a shape of at least a portion of the plurality of nanoparticles is tuned to effect fluorescence quenching of Claim 58, and wherein the nanoparticles comprise gold nanoparticles of Claim 61.
Nevertheless, Chen teaches contact lenses with nanoparticles [Claim 18], wherein said nanoparticles are gold nanostars [Paragraphs 0030 and 0048], corresponding to the star shape of Claim 52, and gold nanoparticles of Claim 61. Chen also teaches the surface plasmon resonance of said nanoparticles can be tuned by varying the size or shape of the nanoparticles, leading to particles with tailored optical properties [Paragraph 0046] and said gold nanostars can change color in the presence of certain microbes [Paragraph 00131], making it useful as a method of detecting pathogens [Abstract].
Gu ‘754, Valentine and Chen are considered to be analogous art as the claimed invention, as all are in the same field of contact lenses embedded with nanoparticles and that have tuned optical properties.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the nanoparticles of Chen with the contact lenses of Gu ‘754 and Valentine, thereby arriving at the claimed invention.
Furthermore, Chen teaches gold nanoparticles which the instant Specification discloses can cause fluorescent quenching [Paragraph 0026]. Since Gu ‘754, Valentine and Chen teach the same contact lens with the same gold nanoparticles as required by the instant claims as set forth in the rejection above, the contact lens and gold nanoparticles of Gu ‘754, Valentine and Chen would be expected to result in the same fluorescence quenching as required by Claim 58. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed nanoparticle with tuned quenching properties, as the reference teaches each of the claimed ingredients (silicone hydrogel, gold nanoparticles, dye and anchoring mechanism) for the same utility (making contact lens) and for the same purpose (to producing a contact lens with tunable optical properties).
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Gu et al., (US 2021/0003754 A1; cited in the IDS submitted on 10/23/2023; hereafter as “Gu ‘754”) in view of Valentine et al., (WO2020/176444A1; cited in the IDS submitted on 10/23/2023; hereafter as “Valentine”) and in further view of Whiteford et al., (US 2008/0020127 A1; hereafter as “Whiteford”).
Gu ‘754 and Valentine teach the contact lens, silicone component, nanoparticles, dye and anchoring mechanism of Claim 50 as set forth above and incorporated herein by reference.
However, Gu ‘754 and Valentine are silent to wherein the anchoring mechanism comprises glycidyl methacrylate of Claim 56.
Nevertheless, Whiteford teaches contact lenses with dyes and gold nanoparticles [Paragraphs 0158, 0325, 0380]. Whiteford further teaches polymerizable compounds, such as glycidyl methacrylate, that are applied to a surface and cured [Paragraphs 0040 and 0075]. Whiteford also teaches said polymerizable coating may impart antimicrobial properties onto the compound [Paragraph 0040].
Gu ‘754, Valentine and Whiteford are considered to be analogous art as the claimed invention, as all are in the same field of contact lenses with dyes and nanoparticles.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the glycidyl methacrylate of Whiteford with the contact lens of Gu ‘754 and Valentine, thereby arriving at the claimed invention.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Gu et al., (US 2021/0003754 A1; cited in the IDS submitted on 10/23/2023; hereafter as “Gu ‘754”) in view of Valentine et al., (WO2020/176444A1; cited in the IDS submitted on 10/23/2023; hereafter as “Valentine”) and in further view of Doshi et al., (US 2018/0338912 A1; hereafter as “Doshi”).
Gu ‘754 and Valentine teach the contact lens, silicone component, nanoparticles, dye and anchoring mechanism of Claim 50 as set forth above and incorporated herein by reference.
However, Gu ‘754 and Valentine are silent to wherein the nanoparticle coating material comprises poly(vinyl alcohol) of Claim 57.
Nevertheless, Doshi teaches contact lens structures embedded with nanoparticles [Claim 1; Abstract], wherein said nanoparticles may be encapsulated with a barrier layer including polyvinyl alcohol (PVA) [Paragraphs 0244 and 0248]. Doshi further teaches said structures may be tuned to various chemical and physical characteristics for purposes such as delivering drugs [Paragraph 0250].
Gu ‘754, Valentine and Doshi are considered to be analogous art as the claimed invention, as all are in the same field of contact lenses with dyes and nanoparticles.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the PVA of Doshi with the contact lens of Gu ‘754 and Valentine, thereby arriving at the claimed invention.
Response to Arguments
Applicant's arguments filed July 29, 2025 have been fully considered but they are not persuasive.
Applicant argues (1) that Gu does not disclose tuning of both the light blocking and color properties of a contact lens by combining nanoparticles and a chemical dye. However, attention is drawn to the disclosure of Gu in view of Valentine, as set forth above, wherein Gu teaches nanoparticles that can be used as light blocking optical filters[¶ 0035, 0083], corresponding to the claimed nanoparticles, and Valentine teaches a dye with a polymerizable tether that establishes the inhibition band [Claims 5, 16; ¶ 00986, 001027] that corresponds to the dye that blocks light of a specific wavelength range that overlaps the claimed range. Thus, applicant’s argument is not persuasive.
Applicant argues (2) the secondary references do not cure the shortcomings of Gu because there is nothing in the secondary references that would lead a person of ordinary skill in the art to modify Gu in a manner to arrive at the claimed invention. However, as set forth above, Gu, Valentine, Chen, Whiteford and Doshi are all in the field of contact lenses with dyes, nanoparticles and/or tuned optical properties. Therefore, it would be obvious to one of ordinary skill to look to the secondary sources to supplement the teachings of Gu, thereby arriving at the claimed invention. The secondary references also further motivate use of their teachings, for example: the contact lens of Chen teaches said lens may be useful as a method of detecting pathogens [Abstract], whereas the contact lens of Whiteford teaches said lens may be used for its antimicrobial properties [¶ 0040], and the contact lens of Doshi may be used for delivering drugs [¶ 0250]. Thus, applicant’s argument is not persuasive.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764