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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/16/2026 has been entered.
Response to Amendment
This office action is in response to the communication filed 3/16/2026.
Amendments to claim 1, filed 3/16/2026, are acknowledged and accepted.
Cancellation of claim 6, filed 1/22/2025, remains in effect.
Response to Arguments
Applicant's arguments filed 3/16/2026 with respect to claim 1 have been fully considered but they are not persuasive for reasons given as follows.
On pg. 4 of the Remarks, Applicant discusses amendments to claim 1 where the power differences are more clearly defined and taken with respect to the nearsightedness correcting power. However, such amendment fails to overcome the prior art of record.
Note that Tse applied in the rejection already had all correcting zones of equal power, so it makes no difference if the power difference is taken by subtracting powers of adjacent zones or by subtracting from the centralmost nearsightedness correcting power. Note also that Examiner had already taken care to calculate power differences using Saw’s centralmost nearsightedness correcting power (previously “base power”) as a common baseline. These values were already tabulated in Saw’s annotated Table 1. Applicant’s amendment is thus entirely inconsequential for the rejection of record.
On pgs. 5-7 of the Remarks, Applicant makes some vague allegations regarding hindsight reconstruction. However, Applicant has failed to even specify what particular pieces of evidence were used in the rejection that would not have been available to a practitioner at the time of filing. Instead of making any proper argument, Applicant simply speculates that
If a person having ordinary skill in the art were to modify Tse' s lens according to Saw's teachings, they would apply Saw's principle of a constant +2.5D defocus add to Tse' s constant base correcting power.
in order to manufacture some support for their argument that it would have somehow been beyond the skill of a practitioner to combine Tse and Saw in a manner that could have satisfied the claim.
Such arguments are wholly unconvincing and generally improper, however, as it essentially rests on Applicant making a unilateral decision that a practitioner can only perform some contrivedly rigid combination of the prior art according to whatever Applicant permits. This serves absolutely no purpose other than argumentative convenience, however.
Moreover, Applicant is plainly neglecting to consider the knowledge and creativity available to those of ordinary skill in the art and their ability to adapt and make routine design adjustments as appropriate. Applicant is thus reminded that persons of ordinary skill are neither required to implement every single feature disclosed in the prior art, nor are they limited thereto, nor does Applicant have any authority to enforce such requirements based on mere speculation.
Applicant is also reminded that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
And, given Applicant’s failure to produce a proper hindsight argument, Applicant is again reminded that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Lastly, on pgs. 7-9 of the Remarks, Applicant makes several arguments which are frankly irrelevant for reasons given as follows:
First, Applicant argues that “Hovinga Does Not Calculate Power Differences Based on The Nearsightedness Correcting Power” – despite the fact that Examiner did not even rely on Hovinga for the stated feature.
Next, Applicant argues that “Hovinga Explicitly Teaches a Discontinuous Step from the Central Zone” in an apparent attempt to argue that the “power of the second area” is not “distributed with a gradual and continuous change” as claimed. However, Applicant again fails to consider that no practitioner is required to incorporate every single feature of a given reference– nor does Applicant have any authority to require them to.
Applicant also completely overlooks the fact that the step occurs at the boundary of the first/second area as labeled in the annotated FIG. 2A, which can be understood to be set apart from the claimed “power of [i.e. inside] the second area”. Even Applicant themselves refer to it as “a step in power at the edge of the central zone” without making any case as to why a practitioner must tie this jump at the edge of the “second area” to the powers “of” or in it. It’s a simple matter of perspective/interpretation, and one would certainly be within their rights not to consider such edge features as part “of” the second area – despite Applicant’s attempts to require others to adopt such an unjustifiably narrow perspective.
Applicant lastly make a short argument that “Hovinga Teaches Away from Continuity”, but simply cites Hovinga as stating "a discontinuity in the power profile is typically present at the edge of the central zone"
It would thus appear Applicant is apparently under the mistaken impression that this teaches away from “continuous change” – as Applicant plainly ignores the fact that Hovinga is clearly describing this feature as entirely typical/optional.
Applicant also appears to misunderstand what qualifies as teaching away. Applicant is thus reminded that in order to teach away from a combination the prior art must “criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP §2141.02(VI).
Hovinga clearly does none of the above in the quoted excerpt. Applicant’s arguments are thus found to be entirely unpersuasive
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-5 and 7-8 are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over Tse et al (WO2012034265A1, hereinafter “Tse”) in view of Saw et al (WO2013015743A1, hereinafter “Saw”) and Hovinga et al (US 20220137432 A1, hereinafter “Hovinga”).
Regarding claim 1, Tse discloses (see FIG. 1(A,C) and pg. 8, line 26 through pg. 9, line 3) a contact lens (9), comprising:
an optical region (optical zone) including a first area, a second area and a third area, concentrically arranged in such order from a lens center (see annotated FIG. 1(A,C) below);
wherein the first area includes a correction zone having a nearsightedness correcting power (= -3D, for example; see pg. 9 lines 2-3);
wherein the second and third areas each include at least two defocusing zones and at least one correction zone, and the at least two defocusing zones and the at least one correction zone are alternatively arranged (see annotated FIG. 1(A,C) below); and
wherein a power of the defocusing zones of the second area subtracted from the nearsightedness correcting power is a first power difference of -2.00 to -5.00 D, a power of the defocusing zones of the third area subtracted from the nearsightedness correcting power is a second power difference of -3.00 to -10.00 D (see annotated FIG. 1(A,C) below, where all power differences are equal to -3D, lying in both of the claimed ranges).
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[AltContent: textbox (FIGs. 1A and 1C of Tse are annotated to highlight the first, second, and third areas and their corresponding radial distances L1, L2, and L3. Defocusing zones are shaded while correcting zones are unshaded in FIG. 1A.)]
Tse does not disclose:
the second power difference is more negative than the first power difference,
the power of the second area and the third area are distributed with a gradual and continuous change in degree from the first area.
Tse and Saw commonly relate to multizone contact lenses to combat the progression of myopia.
Saw discloses a contact lens (300) the second power difference is more negative than the first power difference. (See annotated FIG. 3 and Table 1 below, showing a second area containing a first power difference of -3.0D and a third area containing a second power difference of -4.0D, which is more negative than the first power difference.)
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[AltContent: textbox (FIG. 3 and Table 1 of Saw are annotated to highlight a second area and third area of their contact lens 300, as well as the power differences between the near-sightedness correcting power and each area’s correcting/defocusing zones (CZ1,2,…/ DZ1,2,…) .)]
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Tse and Hovinga commonly relate to multizone contact lenses to combat the progression of myopia.
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[AltContent: textbox (FIG. 2A of Hovinga is annotated to highlight the gradual/continuous change in power)]Hovinga discloses the power of the second area and the third area are distributed with a gradual and continuous change in degree from the first area. (See annotated FIG. 1A below)
It would have therefore been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tse’s contact lens by imposing a power profile which progresses towards the periphery according to Saw’s teachings (including having a second power difference more negative than a first power difference), in order to compensate for any hyperopic defocus (see pg. 4 lines 11-18 of Saw).
It would have also been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tse with Hovinga’s smoothly varying power profile, in order to reduce optical artifacts (e.g. ghosting) associated with more abrupt transitions or otherwise improve and provide a more comfortable/continuous visual experience for a user.
Regarding claim 2, modified Tse discloses the contact lens according to claim 1.
Tse further discloses (see annotated FIG. 1(A,C) above) wherein the first area extends outwardly from the lens center to an outer periphery of the first area, the outer periphery of the first area having a radial distance to the lens center of
L1 = 1.4mm
(see also pg. 8, lines 32-33; Tse’s central correcting zone 12, corresponding to the “first area”, has a diameter of 2.8mm – i.e. a radius of 1.4mm),
the second area extends outwardly from the outer periphery of the first area to an outer periphery of the second area, the outer periphery of the second area having a radial distance to the lens center of
L2= 1.4mm + (5*0.3mm) = 2.9mm
(see also pg. 8 lines 36-37; the widths of each annular correcting/defocusing zone is equal to 0.3mm),
and the third area extends outwardly from the outer periphery of the second area to an outer periphery of the third area, the outer periphery of the third area having a radial distance to the lens center of
L3= 2.9mm + (7*0.3mm) = 5mm
(see also pg. 8 lines 36-37; the widths of each annular correcting/defocusing zone is equal to 0.3mm);
and wherein L2 is 3±0.5 mm, and L3 is 4.5±0.5 mm (as evident from our calculations shown).
Modified Tse thus discloses an L1 value that is close to, but does not explicitly overlap with, the claimed range where L1 is 2±0.5 mm (L1 = 1.4mm as shown above). Examiner finds, however, that no criticality has been established for the lower end (L1 = 1.5mm) of this range.
It would have therefore been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to increase the size of Tse’s central correcting zone so that L1 falls within the claimed range, in order to accommodate lens wearers having pupil sizes which are slightly larger than that of typical children (see pg. 8, lines 32-37 of Tse) – since it has been held that, absent any showing of unexpected results or criticality, a prima facie case of obviousness exists where claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Regarding claim 3, modified Tse discloses the contact lens according to claim 1.
Tse further discloses (see annotated FIG. 1(A,C) above) wherein the first area extends outwardly from the lens center to an outer periphery of the first area, the outer periphery of the first area having a radial distance to the lens center of
L1 = a*L3,
the second area extends outwardly from the outer periphery of the first area to an outer periphery of the second area, the outer periphery of the second area having a radial distance to the lens center of
L2 = b*L3,
and the third area extends outwardly from the outer periphery of the second area to an outer periphery of the third area, the outer periphery of the third area having a radial distance to the lens center of
L3 = 5mm;
and wherein L3 is a radius length of the optical region,
a = L1/L3 = 1.4mm/5mm = 0.28,
b = L2/L3 = 2.9mm/5mm = 0.58 is 0.5 to 0.78,
and a < b.
(Note: all above values for L1, L2, and L3 follow directly from the prior mathematical analysis and citations made in regards to claim 2 above.)
Modified Tse thus discloses a value that is close to, but does not explicitly overlap with, the claimed range where a is 0.3 to 0.56 (a = 0.28 as shown above). Examiner finds, however, that no criticality has been established for the lower end (a = 0.3) of this range.
It would have therefore been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to increase the size of Tse’s central correcting zone (or equivalently, L1 and a values) so that a falls within the desired range, in order to accommodate lens wearers having pupil sizes which are slightly larger than that of typical children (see pg. 8, lines 32-37 of Tse) – since it has been held that, absent any showing of unexpected results or criticality, a prima facie case of obviousness exists where claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Regarding claim 4, modified Tse discloses the contact lens according to claim 1.
Tse further discloses wherein a spacing between the at least two defocusing zones and the at least one correction zone is greater than or equal to 0.2 mm. (See pg. 8, lines 36-37; Tse specifies that the width of each annular correcting/defocusing zone is equal to 0.3mm. And because zones of congruent widths will also have widths equals to the spacing between adjacent zones, it follows that Tse’s lens has a spacing between the at least two defocusing zones and the at least one correction zone that is equal to 0.3mm. This is greater than or equal to 0.2mm.)
Regarding claim 5, modified Tse discloses the contact lens according to claim 1.
Tse further discloses wherein a spacing between the at least two defocusing zones and the at least one correction zone is equal to 0.3mm, which only differs by a small amount from the claimed values where the spacing is preferably 0.2 mm or 0.25 mm. (See pg. 8, lines 36-37; Tse specifies that the width of each annular correcting/defocusing zone is equal to 0.3mm. And because zones of congruent widths will also have widths equals to the spacing between adjacent zones, it follows that Tse’s lens has a spacing between the at least two defocusing zones and the at least one correction zone that is equal to 0.3mm.)
It would have therefore been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to reduce the spacing between Tse’s defocusing and correction zones to the desired values, in order to increase the number of defocusing/correction zones that fit on the contact lens (Tse discloses as many as 40 zones; see pg. 3 lines 10-11) – since it has been held that, absent any showing of unexpected results or criticality, a prima facie case of obviousness exists where claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
Regarding claim 7, modified Tse discloses the contact lens according to claim 1.
Saw further discloses wherein the first area includes a plurality of correction zones. (Saw’s contact lens has an overall diameter of 13.5mm and is spanned entirely by ten optic zones of equidistant width. See pg. 3, lines 14-15 and 32-34; pg. 7, lines 16-21. Thus, each correction zone CZ1,2… and defocusing zone DZ1,2… has a width of
Δ = 13.5mm/(10*2) = 0.675mm
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[AltContent: textbox (FIG. 3 of Saw is annotated to highlight a first area having a plurality of corrections zones with adjustment correcting powers equal to 2D and 2.5D)]Now, since Tse discloses – on pg. 14, lines 19-20 – that their central zone, corresponding to the first area, has a radius ranging from about 1mm to 2.25mm, it follows that the three centralmost zones of Saw’s lens (CZ1, DZ1, CZ2) may fit into Tse’s central zone. Tse in view of Saw therefore provides a structure which corresponds to a trizonal first area including a plurality of correction zones. See annotated FIG. 3 below.)
Regarding claim 8, modified Tse discloses the contact lens according to claim 7.
Saw further discloses wherein the plurality of correction zones have an adjustment correcting power ranging from -2.5 to 2.5 D (see annotated FIG. 3 above, where adjustment correcting powers of 2D and 2.5D are shown for the first area, both values falling within the desired range).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAI-GA D. HO whose telephone number is (571)270-1624. The examiner can normally be reached Monday through Friday, 10AM - 6PM E.T..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.D.H./Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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