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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/03/2025 and 02/03/2026 was filed and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/08/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 16 and 34 have been considered but are moot because the new ground of rejection does not rely on any interpretation applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim 34 is rejected under 35 U.S.C. 102(a)(2) as being disclosed by Qi (US 2022/0244567).
Regarding claim 34, Qi discloses a method of forming an optical article (see Fig 4), the method comprising: providing a base lens substrate having opposite first and second optical surfaces (see Fig 4; Para [0170-0175]; a base lens 2 has a first/bottom and a second/top surface), and at least one microlens protruding from the second optical surface (see Fig 4; Para [0170-0175]; a base lens 2 has at least one microlenses protruding from a second surface as seen in Fig 4), wherein each microlens has a contour shape inscribable in a circle having a diameter greater than or equal to 0.8 mm and smaller than or equal to 3.0 mm (see Fig 4; Para [0128]; microlenses may have diameters of 0.8 to 2.0 mm); placing the base lens substrate in a mold comprising first and second mold portions such that the first optical surface is disposed on a molding surface of the first mold portion, and that a volume is defined between a molding surface of the second mold portion and the second optical surface (see Fig 4; Para [0170-0175]; lens 2 placed in a mold 9 comprising a first mold surface 12 and a second mold surface 11; a volume is defined between element 11 and substrate 2 surface); filling the volume with a moldable material suitable for forming an abrasion-resistant coating (see Fig 4; Para [0170-0175]; lens substrate is injected into the mold and filled); and setting the moldable material to form the abrasion-resistant coating over the base lens substrate, wherein the abrasion resistant coating encapsulates each microlens and the abrasion resistant coating has a varying thickness (see Fig 2; Para [0170-0175]; covering member 3 acts as abrasion resistant hard coating which covers lens substrate 2 and encapsulates microlenses; covering member 3 has a varying thickness which is minimal at the top of the microlens structure as seen in Fig 2).
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 16, 18-25, 27, and 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Qi (US 2022/0244567) in view of Chakmakjian (US 2019/0187341).
Regarding claim 16, Qi discloses a method of forming an optical article (see Fig 4), the method comprising: providing a base lens substrate having opposite first and second optical surfaces (see Fig 4; Para [0170-0175]; a base lens 2 has a first/bottom and a second/top surface), and at least one microlens protruding from the second optical surface (see Fig 4; Para [0170-0175]; a base lens 2 has at least one microlenses protruding from a second surface as seen in Fig 4); placing the base lens substrate in a mold comprising first and second mold portions such that the first optical surface is disposed on a molding surface of the first mold portion, and that a volume is defined between a molding surface of the second mold portion and the second optical surface (see Fig 4; Para [0170-0175]; lens 2 placed in a mold 9 comprising a first mold surface 12 and a second mold surface 11; a volume is defined between element 11 and substrate 2 surface); filling the volume with a moldable material suitable for forming an abrasion resistant coating; and setting the moldable material to form the abrasion-resistant coating over the base lens substrate, wherein the abrasion resistant coating encapsulates each microlens (see Fig 4; Para [0170-0175]; lens substrate is injected into the mold and filled; a hard coating is then formed over base lens 2 encapsulating each microlens), the abrasion resistant coating has a varying thickness, the thickness of the abrasion resistant coating is minimal at the protruding microlens (see Fig 2; Para [0170-0175]; covering member 3 acts as abrasion resistant hard coating and has a varying thickness which is minimal at the top of the microlens structure).
Qi does not disclose wherein the minimal thickness of the abrasion resistant coating at the protruding microlens is inferior to or equal to 2µm. Qi and Chakmakjian
are related because both disclose optical systems.
Chakmakjian discloses a method of forming an optical article (see Fig 4A) wherein the minimal thickness of the abrasion resistant coating at the protruding microlens is inferior to or equal to 2µm (see Fig 4A; Para [0044]; embedding layer 4 which acts as abrasion coating may have a thickness of from 1 to about 100microns; examiner interprets a coating of 1 micron to have a minimal thickness of less than 2 micron)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi with wherein the minimal thickness of the abrasion resistant coating at the protruding microlens is inferior to or equal to 2µm of Chakmakjian for the purpose of preventing material from distorting proper operation of the optical system (see Para [0045])
As Chakmakjian’s thickness overlaps the claimed range (i.e., inferior to or equal to 2µm to the 1 to about 100 microns of the prior art), a prima facia case of obviousness exists (see MPEP 2144.05. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein the step of setting the material suitable for forming abrasion-resistant coating is performed by UV or thermal curing, or combination of both (Qi; see Fig 4; Para [0147]; the raw material of the hard coating layer may be an ultraviolet curable resin).
Regarding claim 19, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein filling the volume with a moldable material comprises injecting the moldable material to fill the volume, or inserting in the volume the moldable material in a malleable state, and closing the mold to exert a pressure on the moldable material in order that it spreads over the base lens substrate (Qi: see Fig 4; Para [0170-0175]; raw material composition fills the mold and fills gaps over base lens).
Regarding claim 20, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein the moldable material has an index of refraction nc lower than the index of refraction nm of the material forming the microlens (Qi: see Fig 4; Para [0025]; in a fifth aspect a refractive index of the defocus substrate with microlens is greater than that of the hard coating thus hard coating index is less than microlens material index).
Regarding claim 21, Qi in view of Chakmakjian discloses the method according to claim 20 (see Fig 4). Qi further discloses wherein the difference between the index of refraction nm of the moldable material and the index of refraction nc of the material forming the microlens is greater or equal to 0.1 (see Fig 4; Para [0057]; difference between refractive indices is 0.1).
Regarding claim 22, Qi in view of Chakmakjian discloses the method according to claim 16 (see Fig 4). Qi further discloses wherein the moldable material has an optical index nc greater than the optical index nm of the material forming the microlens (see Fig 4; Para [0026]; a refractive index of the defocus substrate with microlenses may be less than that of the hard coating layer).
Regarding claim 23, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses further comprising depositing at least one additional coating on the abrasion-resistant coating, said additional coating comprising a polyurethane coating, an antireflective coating, a photochromic coating, an anti-smudge coating, an anti-fog coating, a tintable coating, a self-healing coating, an anti-rain coating, an anti-static coating, an anti-UV coating, or an anti-blue light coating (see Fig 4; Para [0133]; an antireflection layer may be provided on the hard coating).
Regarding claim 24, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein the base-lens substrate is a semi- finished lens, and the method further comprises surfacing and/or trimming the obtained coated lens (see Fig 4; Para [0041]; surface smoothing of the outermost surface may be done).
Regarding claim 25, Qi in view of Chakmakjian discloses the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein the abrasion resistant coating has a first surface in contact with the base lens substrate and a second surface opposite the first, wherein each microlens of the base lens substrate is convex, the first surface of the abrasion resistant coating is concave, and the second surface of the abrasion resistant coating is convex (see Fig 2; Para [0127-0128]; a covering member/abrasion resistant coating has a concave surface and a convex surface which are opposite; the concave surface is in contact with flat base lens section and the convex surface is in contact with the microlenses).
Regarding claim 27, Qi in view of Chakmakjian discloses the optical article obtained by implementing the method according to claim 16 (Qi: see Fig 4). Qi further discloses wherein the optical article comprises: the base lens substrate, having the opposite main surfaces, wherein the base lens substrate further comprises the at least one microlens protruding from one of the main surfaces; and the abrasion-resistant coating, covering at least the main surface from which the microlens protrudes, such that the abrasion-resistant coating encapsulates each microlens (Qi: see Fig 4; Para [0127-0128]; lens substrate 2 has a top and bottom main surfaces; substrate has multiple microlenses protruding from the flat substrate surface; the coving member 3 covers the main surface and encapsulates each microlens)
Regarding claim 30, Qi in view of Chakmakjian discloses the optical article according to claim 27 (Qi: see Fig 4). Qi does not disclose wherein the minimal thickness of the abrasion resistant coating, at the protruding microlens, is comprised between 1 and 2 µm. Chakmakjian further discloses wherein the minimal thickness of the abrasion resistant coating, at the protruding microlens, is comprised between 1 and 2 µm (see Fig 4A; Para [0040 and 0044]; a minimal thickness of the abrasion resistant coating may be between 1 and 2 microns as the microstructure surface may be 0.5-120microns thick and the embedding layer 4 which examiner is taking as the abrasion resistance coating may be between 1 and 100 microns thick).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi with wherein the minimal thickness of the abrasion resistant coating, at the protruding microlens, is comprised between 1 and 2 µm of Chakmakjian for the purpose of preventing material from distorting proper operation of the optical system (see Para [0045])
As Chakmakjian’s thickness overlaps the claimed range (i.e., between 1 and 2 microns to the 1-100 microns of the prior art), a prima facia case of obviousness exists (see MPEP 2144.05. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 31, Qi in view of Chakmakjian discloses the optical article according to claim 27 (Qi: see Fig 4). Qi does not disclose wherein each protruding microlens has a dimension, measured in a direction perpendicular to the surface carrying it, less than 0.1 mm.
Chakmakjian further discloses wherein each protruding microlens has a dimension, measured in a direction perpendicular to the surface carrying it, less than 0.1 mm (see Fig 4A; Para [0043]; microstructures can have a diameter of 0.5-120 microns which is less than the 0.1mm).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi with wherein each protruding microlens has a dimension, measured in a direction perpendicular to the surface carrying it, less than 0.1 mm of Chakmakjian for the purpose of preventing material from distorting proper operation of the optical system (see Para [0045])
As Chakmakjian’s thickness overlaps the claimed range (i.e., less than 0.1 mm to the .5-120 microns of the prior art), a prima facia case of obviousness exists (see MPEP 2144.05. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 32, Qi in view of Chakmakjian discloses the optical article according to claim 31. Chakmakjian further discloses wherein each protruding microlens has a dimension, measured in a direction perpendicular to the surface carrying it, comprised between 10 and 20 µm (see Fig 4A; Para [0043]; microstructures can have a diameter of 0.5-120 microns).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi with wherein each protruding microlens has a dimension, measured in a direction perpendicular to the surface carrying it, comprised between 10 and 20 µm of Chakmakjian for the purpose of preventing material from distorting proper operation of the optical system (see Para [0045])
As Chakmakjian’s thickness overlaps the claimed range (i.e., between 10 and 20 µm to the .5-120 microns of the prior art), a prima facia case of obviousness exists (see MPEP 2144.05. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 33, Qi in view of Chakmakjian discloses the method according to claim 27. Qi further discloses wherein said at least one microlens is configured for preventing progress of myopia or hyperopia (Qi: see Fig 4; Para [0086]; lens is configured to suppress the progression of myopia).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Qi (US 2022/0244567) in view of Chakmakjian (US 2019/0187341) as applied to claim 16 above, and further in view of Jiang (US 2008/0006368, of record).
Regarding claim 17, Qi in view of Chakmakjian discloses the method according to claim 16. Qi in view of Chakmakjian does not disclose wherein the molding surface of the second mold portion has the same base curve of the second optical surface of the base lens substrate.
Jiang further discloses wherein the molding surface of the second mold portion has the same base curve of the second optical surface of the base lens substrate (see Fig 3B; Para [0178]; holder 8 which examiner interprets as the second mold portion holds lens 2 and has same base curve as seen in Fig 3B)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi in view of Chakmakjian with wherein the molding surface of the second mold portion has the same base curve of the second optical surface of the base lens substrate of Jiang for the purpose of properly holding a lens in order to layer a coating (see Para [0176-0179])
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Qi (US 2022/0244567) in view of Chakmakjian (US 2019/0187341) as applied to claim 16 above, and further in view of Iwata (US 2018/0239069).
Regarding claim 26, Qi in view of Chakmakjian discloses the method according to claim 16 (see Fig 4). Qi in view of Chakmakjian does not disclose wherein providing the base lens substrate comprises: moving first and second primary mold portions of a primary mold from an open position to a closed position in which the primary mold portions cooperate to define a first mold cavity, each of the primary mold portions defining a molding surface; introducing a first moldable material into the first mold cavity; and setting the first moldable material to form the base lens substrate having the opposite first and second optical surfaces, wherein the molding surface of the second primary mold portion defines at least one recess suitable for forming the at least one microlens protruding from its second optical surface. wherein each microlens of the base lens substrate is convex. Qi in view of Chakmakjian and Iwata are related because both disclose methods of manufacturing lenses.
Iwata discloses a method of manufacturing a lens (see Figs 3A-5B) wherein providing the base lens substrate comprises: moving first and second primary mold portions of a primary mold from an open position to a closed position in which the primary mold portions cooperate to define a first mold cavity, each of the primary mold portions defining a molding surface (see Figs 3A-4A; Para [0039]; a base material 1 and a mold 12 act as first and second primary mold portions having an open/released state and closed/fixed state (see Fig 3C); a cavity is formed from the surfaces of the base material 1 and the mold 12); introducing a first moldable material into the first mold cavity; and setting the first moldable material to form the base lens substrate having the opposite first and second optical surfaces (see Fig 3B; Para [0039]; a first resin material is introduced into the cavity and set to form a lens substrate having opposing surface to the mold 12), wherein the molding surface of the second primary mold portion defines at least one recess suitable for forming the at least one microlens protruding from its second optical surface (see Fig 3C; Para [0039]; the mold 12 forms a surface defining recesses of microlenses on a bottom surface of the lens 11).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Qi in view of Chakmakjian with wherein providing the base lens substrate comprises: moving first and second primary mold portions of a primary mold from an open position to a closed position in which the primary mold portions cooperate to define a first mold cavity, each of the primary mold portions defining a molding surface; introducing a first moldable material into the first mold cavity; and setting the first moldable material to form the base lens substrate having the opposite first and second optical surfaces, wherein the molding surface of the second primary mold portion defines at least one recess suitable for forming the at least one microlens protruding from its second optical surface of Iwata for the purpose of improving the capabilities of a lens so as to improve a patient’s vision (Para [0007-0008])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL ANDRES SANZ whose telephone number is (571)272-3844. The examiner can normally be reached Monday-Friday 8:30 am -5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached on (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.A.S./Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872