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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/21/25 has been entered.
Response to Arguments
Applicant's arguments filed 10/21/25 have been fully considered but they are not persuasive.
On pages 6-8 regarding prior art rejections Applicant argues amendments overcome the rejection.
The Examiner respectfully refers to the rejection below regarding amended claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “length-changing apparatus” and “second length-changing apparatus” in claims 1 and 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. In this case, the length-changing apparatus is understood to be “at least one telescopic connection” ([0014]) or “at least one accordion-like folding part” ([0016]).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 is objected to for having improper antecedent basis for “the radially outer edge”.
Appropriate correction is required.
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.
Claims 1-11 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 pre-AIA the applicant regards as the invention.
Claim 1 is indefinite for claiming the first haptic part is configured as a “strand-like clip” when it is unclear what it means to be “strand-like”. Notably, strands come in many shapes, sizes, configurations, colors, materials, strengths, etc., and so the Examiner is unclear what features the first haptic part needs to have in order to be considered strand-like.
Further, the claim is indefinite for claiming the length-changing apparatus “at least partially forms a straight line in a circumferential direction”. First, it is unclear what has the circumferential direction (i.e. the intraocular lens, the optical part, the haptic, the clip, the length-changing apparatus, something else…), since all these elements potentially have circumferential directions. Additionally, this is unclear since something “at least partially forming a straight line in a circumferential direction” does not make sense, since a circumferential direction is understood to indicate a circumference (i.e. the perimeter of a circle”) and the defining characteristic of a circle and its perimeter/circumference, is that there are no straight lines.
Claim 4 is indefinite for the similar reasons as claim 1, namely it is unclear what features must be present in order to be considered “accordion-like”. Please see the rejection to claim 1 above regarding the rejection of the term “strand-like” for more clarification.
Remaining claims are rejected for depending on an indefinite claim.
Claim Rejections – 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feaster (US 4842600 A) in view of Brady et al. (US 20070100444 A1) hereinafter known as Brady.
Regarding claims 1-2 Feaster discloses an intraocular lens (Figures 5 and 10) comprising:
an optical part (21) having a front side and a back side with a main optical axis intersecting the front and back side of the optical part (25),
wherein the lens further comprises a haptic coupled to the optical part (53) with at least one first haptic part configured as a strand-like clip (the Examiner understands the haptic parts 53 to be strand-like clips since they can clip within the eye and have a shape somewhat similar to a strand) which defines a longitudinal axis curved around the optical part (see Figures 5 and 10: the curved longitudinal axis is understood to extend through the haptics 53 around the optical part 25 forming a ring),
wherein the clip has at least one length-changing apparatus (“at least one telescopic connection” or “at least one accordion-like folding part” – see the Claim Interpretation section above) (Figure 5 items 67a and 41 together along with Column 6 lines 38-48 which describe a “telescopic connection”; alternatively see Figure 10 items 67a and 141, along with Column 7 line 64 to Column 8 line 5, which describe a “accordion-like folding part”) with which the clip is variable in terms of its length in a defined manner in a direction of the longitudinal axis (Column 6 lines 38-48; Column 7 line 64 to Column 8 line 5),
and wherein the clip engages the optical part so the optical part is held together with the first haptic part (Figure 5 and 10; Column 6 lines 24-26), and
wherein the length-changing apparatus partially forms a straight line in a circumferential direction (see for example Figure 8 which shows how, when the lens telescopes to a compressed configuration, the device will deform from a more perfect circle (e.g. Figures 5, 7) to one where there is a straight line in the circumferential direction on part of the length-changing apparatus where it slides. See also annotated figure 8 below where the brief straightened locations are evident relative to the drawn-in perfect circle. Alternatively, see also Figure 2 which shows how the length-changing apparatus forms a straight line in the circumferential direction when viewed from the side.),
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but is silent with regards to the connection between the clip and optical part being done by an opening slot (clm 2).
However, regarding claim 1 Brady teaches an intraocular lens the connection between a haptic clip and optical part is done where a haptic clip includes an opening (slot- clm 2) on the side facing the optical part into which a radially outer edge of the optical part engages (Figures 1-2; [0042]). Feaster and Brady are involved in the same field of endeavor, namely intraocular lenses. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the lens of Feaster by connecting the haptic clip and optical part via any mechanism known in the art, including with an opening slot as is taught by Brady since the courts have held that the simple substitution of one known element for another to obtain predictable results in a prima facie case of obviousness. See MPEP 2143 (I)(B). In this case, the use of any connection mode is obvious to substitute for the connection method of Feaster.
Regarding claim 3 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the length-changing apparatus has a telescoping connection which changes elastically in length in the direction of the longitudinal axis (Figure 5 item 67a, 41 compared to Figures 3 and 8. See also Column 6 lines 24-26).
Regarding claim 4 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the length-changing apparatus has an accordion-like folding part which changes elastically in length in the direction of the longitudinal axis (Figure 10 items 67a and 141, along with Column 7 line 64 to Column 8 line 5).
Regarding claim 5 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the clip is at least partially formed as a tube (Figure 5 shows how the clip partially forms a tube at element 41).
Regarding claim 6 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses a haptic with a second haptic part can have a second length-changing apparatus functionally corresponding to the first haptic part (Figures 5 and 10 show two length-changing apparatuses on two haptic parts).
Regarding claim 7 the Feaster Brady Combination teaches the lens of claim 6 substantially as is claimed,
wherein Feaster further discloses the first and second haptic parts are connected to one another and form a circumferential haptic ring (Figures 5, 10).
Regarding claim 8 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the length-changing apparatus is variable in length in discrete steps (the movement of the length-changing apparatus is dependent wholly on the force or person providing the force. If that force is given in a discrete manner the length is understood to be able to change in discrete steps as is claimed.).
Regarding claim 9 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the length-changing apparatus is integrated into the haptic [clip] (Figures 5 and 10).
Regarding claim 10 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the lens is a posterior chamber lens for implantation into a capsular bag of an eye (Column 1 lines 12-18, Column 4 lines 5-12).
Regarding claim 11 the Feaster Brady Combination teaches the lens of claim 1 substantially as is claimed,
wherein Feaster further discloses the first haptic part has a U-shaped curved partial region with a maximum arc width (see the haptics’ width 53 extending around the optical part),
and wherein the optical part has a diameter (see the optical part’ width 21 which is located inside the haptics 53), with the maximum arc width of the partial region being larger than the diameter of the optical part (Figures 5, 10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jacqueline Woznicki whose telephone number is (571)270-5603. The examiner can normally be reached M-Th 10am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerrah Edwards can be reached on 408-918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jacqueline Woznicki/Primary Examiner, Art Unit 3774
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