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’s amendments, filed 7/2/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to the claims. Claims 1, 3, 5-8, 10-11, 13 and 30-31 and 41 are pending in the instant application.
Response to Arguments
Applicant's arguments filed 7/2/2026 have been fully considered but they are not persuasive as they are directed to newly added claim requirements that are specifically addressed hereinafter.
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 10, 11, 30 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 10 and 30 each require “the handling system”; however such a requirement lacks antecedent basis in the claims as drafted.
Dependent claims do not cure the deficiencies of the claims from which they depend.
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.
Claim(s) 1, 3, 5-7, 8, 10-11, 30, 31 and 41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019048041 A1, hereinafter WO 041
Claim 1: WO 041 discloses a first coating apparatus configured to apply a first coating layer to the spectacle lens while being held by a first coating apparatus holding device configured to directly hold the spectacle lens (0068, 0072 “movable base 36”);
an intermediate storage apparatus configured for the intermediate storage of the spectacle lens after the application of the first coating layer (intermediate storage at “the coating system 10 generally has a housing 20 for supporting various stations that define the coating system 10. The housing 20 may be at least partially enclosed or open”, “movement of the optical substrate 100 between various stations of the coating system 10 may be automated with a robotic placement arm 80.”):
a robotic handling device configured to handle the lens in the intermediate storage apparatus the robotic handling device mounted at the intermediate storage apparatus and including:
at a first end, a first holding device with one or more suction cups or grippers configured to hold and/or handle holders or clamping rings, the holders or clamping rings configured to hold the spectacle lens (see 0054, “ lower and/or side portion of the gripper elements 84”, i.e. reads on “one or more . . . grippers”, 0055, related to handling holders “the robotic placement arm 80 may be configured for engaging and securing a carrier 86 configured for removably securing the optical substrate 100 thereto.”),
and at the first end, a second holding device with one or more suction cups or grippers configured to directly hold the spectacle lens received from the first coating apparatus (see 0054, “upper and/or side portion of the gripper elements 84 of the robotic placement arm 80”, i.e. upper portion reads on “one or more . . . grippers”, 0051, related to holding lends directly “The robotic placement arm 80 is configured to engage the optical substrate 100”, see also 0054);
a second coating apparatus configured to apply a second coating laver to the spectacle lens or to the first coating layer after the intermediate storage of the spectacle lens (0081 related to a plurality of coating devices, specifically “a second coating apparatus 200. . . may be configured for applying a coating material onto a previously coated or uncoated optical substrate”, “the robotic placement arm 80 reengages the optical substrate 100 and moves it to the second coating apparatus 200”)
Please note, the examiner has determined that the installation claims as drafted including various limitations, including those related to the specific coating or storage, that are deemed intended use of the claimed installation and thus the prior art structure is merely required to be capable of being used and absent structural differences, the applicant’s intended use is met by the prior art structure that is the same as that as claimed by the applicant. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 3: WO 041 discloses a robot arm (see 0051).
Claim 5: WO 041 discloses a magazine (e.g. 56) that is configured to hold/store the holder for the spectacle lens (see Figure 3 and 0097, here the term “magazine” provides no differentiated structure). Please note, the examiner has determined that the installation claims as drafted including various limitations, including those related to the configured to hold a undefined carrier, that are deemed intended use of the claimed installation and thus the prior art structure is merely required to be capable of being used and absent structural differences, the applicant’s intended use is met by the prior art structure that is the same as that as claimed by the applicant. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 6: WO 041 discloses what can reasonably be considered a magazine unit that can reasonably be considered “removable” as claimed (see Figure 3 and 0097,)
Claim 7: WO 041 discloses an adhesive tape (i.e. reasonably reads on clamping device) for insertion of lens into the holder (“the carrier 120 may be an adhesive tape that is removably applied to one or more of the top surface 102, the bottom surface 104, and/or the side surface 106 of the optical substrate 100”). Automated is discussed above.
Claim 8: WO 041 discloses a heating device (0095-0100, see “a thermal curing station 50a”, 0097 related to heating device)
Claim 30: WO 041 discloses a first and second coating and intermediate storage as discussed above. WO 041 discloses automated system (0052, “The use of the robotic placement arm 80 allows the coating system 10 to be fully automated “). Please note, the examiner has determined that the installation claims as drafted including various limitations, including those related to the specific coating or storage, that are deemed intended use of the claimed installation and thus the prior art structure is merely required to be capable of being used and absent structural differences, the applicant’s intended use is met by the prior art structure that is the same as that as claimed by the applicant. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 10: WO 041 discloses transfer lenses to an accumulation area (storage area, 0097 “the coated optical substrates 100 are forwarded to the accumulation area 56 designed to accommodate a desired number of optical substrates 100 with no edges touching there-between (such as, but not limited to, up to 30 coated optical substrates 100).” or a heating device (see claim 8 above, see also 0098 “the robotic placement arm 80 is used for egress of at least partially cured coated optical substrates 100 from the IR curing station 50c and/or the UV curing station 50b.“, 0099 ” a coated and cured optical substrate 100 can be returned from the curing station 50 to: (i) the washing and drying station 70; and/or (ii) the coating apparatus 30 for the application thereto of a subsequent coating material”)
Claim 11: WO 041 discloses a coating apparatus with a second coating apparatus configured with a carrier to receive a plurality of lenses held in the holders (0074, “a plurality of substrate holders 32 (not shown) may be provided on a continuously moving movable base 36 such that a plurality of optical substrates 100 may be coated in a continuous process.”)
Claim 31: WO 041 meets this requirement for the reasons set forth above with respect to claim 30. (see e.g. 0081 related to a plurality of coating devices, specifically “a second coating apparatus 200. . . may be configured for applying a coating material onto a previously coated or uncoated optical substrate”, 0052, “The use of the robotic placement arm 80 allows the coating system 10 to be fully automated “). Please note, the examiner has determined that the installation claims as drafted including various limitations, including those related to the specific coating or storage, that are deemed intended use of the claimed installation and thus the prior art structure is merely required to be capable of being used and absent structural differences, the applicant’s intended use is met by the prior art structure that is the same as that as claimed by the applicant. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Claim 41: WO 041 discloses carrier for holding the lens through various stations, including e.g. the coating station or the intermediate storage (0055 “ the robotic placement arm 80 engage and secure the carrier 86 for transporting the carrier 86 between various stations of the coating system 10.”)
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, 3, 5-7, 8, 10-11, 30, 31 and 41 is/are rejected under 35 U.S.C. 103(a) as being obvious over WO 041 taken with JP H06201902 A, hereinafter JP 902.
While the examiner maintains the position as set forth above based on the broadly drafted claim language “at least one . . . grippers” reads on individual gripper elements of WO 041, the examiner cites JP 902, also in the art of automatic coating of lens using a robot for transferring the lens between the process and disclose the robot has a first gripping member 80A and second gripping member 80B arranged on the first end of the robot (see Figure 2 and accompanying text). As such, it would have been obvious to have modified WO 041 to use the robot with a first and second gripping member as suggested by JP 902 as both use a robot to transfer lenses and including a first and second gripping member on the first end of the robot. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d.
Claim(s) 5-6, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 041 alone or with JP 902 as applied above and further with DE 102016125273 A1.
Claim 5-6: WO 041 alone or with JP 902 discloses all that is taught above and discloses applying a coating to a spectacle lens and using a lens carrier, and while the examiner maintains the position as set forth above, the reference cites here DE 273. DE 273, also in the art of coating a lens with a coating installation, discloses including a carrier receiving station that includes carrier in a magazine or dolly or layered to provide a compact design for the system and thus using a magazine as claimed would have been obvious to one of ordinary skill in the art at the time of the invention to provide a compact design for the coating installation.
Claim 10: DE 273 discloses the handling as claimed (see carrier being conveyed from one coating device, transfer chamber to another coating device or line and various transfer chambers, receiving stations and dispensing stations, “The transfer chamber 31 Optionally, in turn, can be used to temporarily store lenses 2 or carriers 10 with lenses 2 before being forwarded to the one or more additional coating devices”) and thus using such handling device would have been obvious to one of ordinary skill in the art to provide the benefits as outlined by DE 273.
Claim(s) 7 is/are rejected under 35 U.S.C. 103(a) as being obvious over WO 041 alone or with JP 902 and further with EP 3689543, hereinafter EP 543.
WO 041 alone or with JP 902 discloses all that is taught above and discloses a coating installation with carriers; and while the examiner maintains the position as set forth above, the reference cites here EP 543. However, EP 543, also in the art of coating installation for lenses and carrier, discloses a clamping device for the automated opening and closing of the holder for the insertion of the lens into the rings (Figure 1B and accompanying text, 0016, 0033). Therefore, taking the references collectively, it would have been obvious to have modified WO 041 alone or with JP 902 to use the clamping device as suggested by EP 543 as such is known to be used for inserting the lens into the carrier.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 041 alone or with JP 902 taken with WO 2018153787, hereinafter WO 787.
WO 041 alone or with JP 902 discloses all that is taught above and discloses a coating installation with carriers; however, fails to disclose the automated return of the carrier; however, WO 787 discloses a coating installation for optical lenses and disclose the carriers are conveyed back after use (abstract, Figure 3) and as such including an automatic return of the carriers would have been obvious as outlined by WO 787 (i.e. to provide an automated and optimized sequence).
Conclusion
Pertinent prior art is cited herein on the PTO 892 as it relates to lenses carriers for coating.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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