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
Applicant amendment filed 02/20/2026 has been entered and is currently under consideration. Claims 1-2 and 4-14 remain pending in the application.
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.
Claim(s) 1 and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weymouth (US5440798 of record) in view of Newman (US2020/0012123 of record) and Marshall (US2019/03242963 of record) hereinafter Marshall.
Regarding claim 1, Weymouth teaches:
Method for producing a mold (replication 32), wherein the method comprises:
- providing a monolithic optical lens element having at least a finished optical surface (Fig 1, 6: block 20, master 24; col 5 ln 11-16), the monolithic optical lens element being made of an organic material (col 5, ln 17-22);
- coating the finished optical surface with an electrically conductive material (Fig 1, 6: block 26, silver layer 28; col 5, ln 28-33);
- depositing on the coated finished optical surface a layer of metal to produce a metal element having a surface which is a replication of the finished optical surface (Fig 1, 7-8: block 30, silver layer 28; col 5, ln 34-40);
- separating the monolithic optical lens element and the metal element, the metal element forming a mold replicating the finished optical surface of the monolithic optical lens element (col 5, ln 38-57),
wherein the finished optical surface comprises:
- a refraction area having a first curvature (Fig 2-7).
In the alternative, if the current embodiment of Weymouth is not considered to anticipate the monolithic optical lens element being made of an organic material, Weymouth teaches in an alternative embodiment the monolithic optical lens element being made of an organic material (col 5, ln 17-22).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have chosen the epoxy resin as taught by Weymouth as a suitable alternative to nickel as taught by Weymouth since Weymouth teaches both materials as suitable for use in forming a master.
Weymouth does not teach wherein the finished optical surface comprises:
– a plurality of optical elements placed on at least part of the finished optical surface, each optical element having at least a second curvature,
wherein at least part of the plurality of optical elements are arranged to provide a diffractive optical function on the optical lens,
wherein each of the optical elements are placed on a concentric ring, and
wherein a mean sphere of all the optical elements placed on the concentric ring is identical.
In the same field of endeavor regarding lenses, Newman teaches:
a plurality of optical elements placed on at least part of an optical surface, each optical element having at least a second curvature (Fig 28: features 36; [0101]),
wherein at least part of the plurality of optical elements are arranged to provide a diffractive optical function on the optical lens ([0101]),
wherein each of the optical elements are placed on a concentric ring (Fig 28) for the motivation of forming a pseudo vision shell anterior to the retina ([0101]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the finished optical surface as taught by Weymouth to include the optical elements as taught by Newman in order to form a pseudo vision shell anterior to the retina.
Weymouth in view of Newman does not teach wherein a mean sphere of all the optical elements placed on the concentric ring is identical.
In the same field of endeavor regarding lenses, Marshall teaches that optical elements in an array can have the same geometry (Fig 2: microlenses 20; [0044]). Marshall further teaches that the geometry of the optical elements contributes to the power of the optical elements, all other factors being equal ([0046, 0050]).
Newman teaches that the optical elements can all have the same power to form a pseudo vision shell anterior to the retina ([0101]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the optical elements as taught by Weymouth in view of Newman to all have the same geometry as taught by Marshall in order to achieve optical elements having the same power in order to form a pseudo vision shell anterior to the retina.
Regarding claim 7, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth further teaches wherein the electrically conductive material is silver-based material or silver (col 5, ln 28-33).
Regarding claim 8, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth further teaches wherein the electrically conductive material is obtained by using a vapor deposition method or a sputtering method or a spray deposition method or an atomic layer deposition method (col 5, ln 28-33).
Regarding claim 9, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth further teaches wherein the metal element is obtained by using an electrochemical method (col 5, ln34-40).
Regarding claim 10, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth further teaches wherein the metal element is a nickel alloy (col 5, ln 34-40).
Regarding claim 11, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein the metal element has a thickness greater than or equal to 0.1 mm and smaller than or equal to 5 mm.
However, Weymouth teaches a value for the metal thickness that is close to the claimed range (col 5, ln 34-40; 0.200” = 5.08 mm).
It has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05(I).
It would have been obvious to one of ordinary skill in the art to have chosen a metal thickness of 5 mm since it is close to the disclosed thickness as taught by Weymouth.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weymouth in view of Newman and Marshall as applied to claim 1 above, and further in view of Wires (US2003/0214060 of record).
Regarding claim 2, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein the finished optical surface is a progressive optical surface.
In the same field of endeavor regarding mold production, Wires teaches forming molds for progressive lenses for the motivation of reducing costs and preparation time ([0036, 0046]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Weymouth in view of Newman and Marshall to produce molds for progressive lenses as taught by Wires in order to reduce costs and preparation time.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weymouth in view of Newman and Marshall as applied to claim 1 above, and further in view of Genovese (US3526949 of record).
Regarding claim 4, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein the method further comprises after having separated the monolithic optical lens element and the metal element, removing the electrically conductive material coating from the metal element.
In the same field of endeavor regarding mold production, Genovese teaches removing an electrically conductive material coating from a metal element for the motivation of removing residual material to provide a smooth, clean surface (Fig 5-6; col 3, ln 29-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the method as taught by Weymouth in view of Newman and Marshall with the electrically conductive material removal step as taught by Genovese in order to remove residual material to provide a smooth, clean surface.
Regarding claim 6, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein the electrically conductive material is copper.
However, Weymouth teaches wherein the electrically conductive material is silver and is used as a release agent (abstract).
In the same field of endeavor regarding mold production, Genovese teaches using a chrome copper layer as a release agent for producing a mold (col 3, ln 39-54).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have substituted the silver release agent as taught by Weymouth in view of Newman and Marshall with the chrome copper release agent as taught by Genovese and the results would have been predictable since both references teach release agents for producing molds.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weymouth in view of Newman and Marshall as applied to claim 1 above, and further in view of Amemiya (US2020/0346421 of record).
Regarding claim 5, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein the coating of electrically conductive material has a thickness greater than or equal to 1nm and smaller than or equal to 5µm.
In art attempting to solve the same problem of creating metal elements via electroplating, Amemiya teaches providing a coating of electrically conductive material with a thickness that overlaps the claimed range for the motivation of forming a surface having high durability and heat resistance ([0038]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.
Since overlapping ranges are evidence of prima facie obviousness, it would have been obvious to one of ordinary skill prior to the effective filing date of the claimed invention to have chosen the portion of the thickness of the coating of electrically conductive material as taught by Amemiya that overlaps with the claimed range in order to form a surface having high durability and heat resistance.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weymouth Newman and Marshall as applied to claim 1 above, and further in view of Parpara et al. (US2019/0102880 of record) hereinafter Parpara.
Regarding claim 12, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein prior to providing the monolithic optical lens element, the finished optical surface of said monolithic optical lens element is obtained by using a digital surfacing method.
Weymouth teaches that the mold is formed by electroplating (col 5, ln 8-16).
In the same field of endeavor regarding mold production, Parpara teaches using subtractive milling using a digital model to produce molds ([0004, 0107, 0113]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have substituted the electroplating as taught by Weymouth in view of Newman and Marshall with the subtractive milling using a digital model as taught by Parpara and the results would have been predictable since both references teach producing molds.
Regarding claim 13, Weymouth in view of Newman and Marshall teaches the method of claim 1.
Weymouth in view of Newman and Marshall does not teach wherein prior to providing the monolithic optical lens element, the finished optical surface of said monolithic optical lens element is obtained by using a mold injection method or a casting method.
Weymouth teaches that the mold is formed by electroplating (col 5, ln 8-16).
In the same field of endeavor regarding mold production, Parpara teaches using casting to produce molds ([0004, 0107]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have substituted the electroplating as taught by Weymouth in view of Newman and Marshall with the casting as taught by Parpara and the results would have been predictable since both references teach producing molds.
Response to Arguments
Applicant’s arguments filed 02/20/2026 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
For at least the above reasons, the application is not in condition for allowance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALEXANDER A WANG whose telephone number is (571)272-5361. The examiner can normally be reached M-Th 8 am-4 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached on 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER A WANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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