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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/23/2026 has been entered.
Response to Arguments
3. Applicant’s arguments (see Remarks dated 04/23/2026) have been considered, but are moot because of the new ground(s) of rejection.
Claim Objections
4. Claims 1 and 16 are objected to because of the following informalities:
In claim 1, line 4, “each distant point object” should read “a distant point object,” “at least one distant point object,” or some variation thereof, in order to establish proper antecedent basis
In clam 16, lines 2-3, “the first lens has a treatment portion” should read “the treatment portion of the first lens is” to establish proper antecedent basis
Appropriate correction is required.
Claim Rejections - 35 USC § 102
5. The following is a quotation of the appropriate paragraphs of 35 USC 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
6. Claims 1, 3-5, 9-13, and 15- 20 are rejected under 35 USC 102(a)(2) as being anticipated by Bakaraju et al. (US 20230102797 A1).
Regarding claim 1, Bakaraju discloses a method of reducing progression of myopia (Abstract, “configured…to reduce myopia progression”), comprising:
providing at least one contact lens (Fig. 2A, 200a) having an optic zone (Fig. 2A, 202a) and a peripheral zone surrounding the optic zone (Fig. 2A, 2041-2048 surround 202a), the optic zone comprising a central region (Fig. 2A, 202a comprises 201a) and an annular region (Fig. 2A, 202a-203a taken together) that surrounds the central region (Fig. 2A, 202a-203a surround 201a), wherein the central region focuses light from each distant point object to a focal point at a distal focal surface (Fig. 6B, to 604b), the annular region includes a treatment portion (Fig. 2A, 202a-203a includes 205a) defining an annular surface (Fig. 2A, 205a is annular) that spans a sector of the annular region (Fig. 2A, 205a spans a sector of 202a-203a) and is not rotationally symmetric about an optical axis of the lens (Fig. 2A, 205a is not rotationally symmetric about the axis of 200a), and wherein the treatment portion has a centre of curvature that is a constant first distance from the optical axis (Fig. 2A, 205a has centre 206a) and the treatment portion focuses light from each distant point object to form a focused arc at a proximal focal surface (Fig. 6B, arc 612a is formed at 607b) that is closer to a posterior surface of the lens than the distal focal surface is to the posterior surface of the lens (Fig. 6B, 612a is closer than 604b, to a posterior surface of 200a), the arc being outside of and surrounding a blur circle formed by light focused by the central region (Fig. 6B, 612a is outside of and surrounding a blur circle, which is to the left of 612a); and
rotating about the optical axis (claim 1, “to facilitate on eye rotation of the contact lens”), over time (claim 1, all physical motion inherently takes place “over time”), the treatment portion of the at least one contact lens on the eye (Fig. 2A & Abstract), wherein the rotation reduces adaptation to a treatment stimulus by the person over time (claim 1 & Abstract, rotation of the lens inherently reduces an eye’s adaptation to a shape of the lens, as opposed to a case where the lens is not rotated).
Regarding claims 3-5, Bakaraju discloses wherein rotating the treatment portion over time comprises rotating the treatment portion in discrete rotation steps of 10° or 90° about the optical axis of the lens and relative to the lens wearer's retina ([0248]).
Regarding claim 9, Bakaraju discloses providing a contact lens that that is configured to rotate in response to a force when worn by a wearer, and wherein the step of rotating comprises subjecting the lens to a force imparted by the lens wearer, wherein the force results in rotation of the treatment portion (claim 1).
Regarding claim 10, Bakaraju discloses wherein the step of rotating comprises a lens wearer blinking, thereby imparting a force on the lens ([0145]).
Regarding claim 11, Bakaraju discloses wherein the peripheral zone of each of the at least one lenses comprises a variation in thickness configured to promote rotation of the lens ([0128]).
Regarding claim 12, Bakaraju discloses wherein the thickness profile of the peripheral zone of each of the at least one lenses has no axis of mirror symmetry or is rotationally asymmetric ([0128]).
Regarding claim 13, Bakaraju discloses wherein the thickness of the peripheral zone varies periodically around the lens ([0128]).
Regarding claim 15, Bakaraju discloses providing at least two lenses ([0002]), wherein a first lens provides a treatment portion that is configured to span a first region of the lens wearer's eye ([0225]), and wherein at least one additional lens provides a treatment portion that is configured to span a different region of the lens wearer's eye ([0225]), and wherein the step of rotating comprises a wearer wearing the first lens and then each of the at least one additional lenses in succession ([0248]).
Regarding claim 16, Bakaraju discloses wherein the peripheral zone of each lens has a varying thickness profile that is configured to control rotation of the lens ([0128]), and wherein the first lens has a treatment portion rotationally positioned relative to the peripheral zone thickness profile (Fig. 2A, 205a), at a first angle (Fig. 2A), and the each of the at least one additional lenses has a treatment portion that is rotationally positioned (claim 1 & [0167]), relative to the peripheral zone thickness profile at a different angle (Fig. 2A as it applies to a second lens).
Regarding claim 17, Bakaraju discloses wherein rotating the treatment portion comprises a lens wearer removing and replacing the first lens with one of the additional lenses after a day ([0248]).
Regarding claim 18, Bakaraju discloses wherein rotating the treatment portion comprises a lens wearer alternating between wearing a first lens and each one of the additional lenses ([0248]).
Regarding claim 19, Bakaraju discloses providing a lens wearer with a prescription schedule indicating the order in which the first lens and each of the at least one additional lenses should be worn and/or how long each lens should be worn for ([0254]-[0255]).
Regarding claim 20, Bakaraju discloses providing a lens wearer with a set of 7 lenses for wearing on each day of the week, wherein the step of rotating the treatment zone comprises wearing each of the lenses on successive days ([0248] and [0254]).
Claim Rejections - 35 USC § 103
7. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
8. Claims 2 and 14 are rejected under 35 USC 103 as being unpatentable over Bakaraju.
Regarding claim 2, Bakaraju fails to explicitly disclose wherein the treatment portion of each of the at least one lenses spans less than 50% of the annular region.
However, due to the nature of optics/optical engineering, the process of lens design includes manipulation of variables such as index of refraction, lens surface radii, lens thickness, lens distances, and other shape concerns, in order to allow a lens system to meet its particular utility (usually based on focal length, but also on aberration elimination). This manipulation would normally be considered routine experimentation since the results are governed by known optics/physics equations and are known to be result-effective (unless the particular range of values meets secondary considerations).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to adjust Bakaraju’s device such that the treatment portion of the lenses was to span <50% of the annular region, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). In this case, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to change the proportions of the areas such that the expression was satisfied, motivated by improving image aberration correction.
Regarding claim 14, Bakaraju fails to explicitly disclose wherein the periodic variation is a sinusoid, triangular or sawtooth waveform.
However, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to adjust Bakaraju such that the periodic variation was a sinusoid/triangular/sawtooth waveform, since it has been held that a mere change in shape of an element is general recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). One would have been motivated to select a sinusoid, triangular, or sawtooth waveform, for the purpose of improving image aberration correction
9. Claim 5 is rejected under 35 USC 103 as being unpatentable over Bakaraju in view of Dalal ("Soft Toric Contact Lens." SlideShare, 16 Jun 2017, https://www.slideshare.net/slideshow/soft-toric-contact-lens-77017455/77017455#2, of record).
Regarding claim 5, Bakaraju fails to explicitly disclose wherein each rotation step is a rotation by 10° about the optical axis of the lens and relative to the lens wearer’s retina.
However, Dalal teaches rotatable lenses (slide 21), and discloses wherein each rotation step is a rotation by 10° about the optical axis of the lens and relative to the lens wearer’s retina (slide 21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Bakaraju and Dalal such that each rotation step was a rotation by 10° about the optical axis, motivated by allowing for more precise accommodation of a wearer.
10. Claim 8 is rejected under 35 USC 103 as being unpatentable over Bakaraju in view of Brennan et al (US 10901237 B2, of record).
Regarding claim 8, Bakaraju fails to explicitly disclose wherein the treatment portion of each of the at least one lenses has a characteristic that reduces the contrast of an image that is formed by light passing through the central region and the treatment portion, compared to an image of an object that would be formed by light passing through only the central region.
However, Brennan teaches lenses for addressing myopia (Abstract), and discloses wherein a treatment portion of a lens has a characteristic that reduces the contrast of an image that is formed by light passing through a central region and the treatment portion, compared to an image of an object that would be formed by light passing through only the central region (column 10 lines 64-65).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Bakaraju and Brennan such that contrast was adjusted, motivated by addressing sensitive vision of a wearer.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Jeffery Jordan whose telephone number is 571-270-7641. The examiner can normally be reached 9:30a-6:00p.
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/D. J. J./Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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