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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/7/2025 has been entered.
Response to Amendment
Applicant’s amendments, filed 11/7/2025, 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 30-35 are pending in the instant application.
In view of the amendment to the claims, the examiner has withdrawn the 35 USC 112(a) and 35 USC 112(b) rejections.
Response to Arguments
Applicant's arguments filed 11/7/2025 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 § 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 is/are rejected under 35 U.S.C. 103(a) as being obvious over EP 3689543, hereinafter EP 543 alone or taken with JP 3244192, hereinafter JP 192.
EP 543 discloses a coating installation comprising: a handling system configured for the automated handling of holders or clamping and configured for temporarily holding the spectacle lens during the application of the coating (0056 related to vacuum coating installation, 0066 related to carrier), the handling system further comprising a handling device with one or more suction cups or grippers configured for holding and/or handling a holder or clamping ring for holding the spectacle lens at the edge (see 0066 related to robot for the automatic handling device), and wherein the handling device is configured to handle the spectacle lenses in addition to the handling of the holders or the clamping rings (here the handling device is taught as a robot and disclosing using the handling device at 0037). The claim requirement of using a first holding device and second holding device is noted; however, the presence of multiple automatic robots would be mere duplication of parts of the system and It would have been an obvious matter of design choice to provide multiple robots, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. See also, handling device disclosure related to “handling the spectacle lens 152” and “The carrier body 134 can also have an outer side 140 which can be accessed by a handling element and can thus handle the device 110.” And thus the carrier and the lens are each handled by a handling device (i.e. robot) and thus it would have been obvious to have provide handling devices dedicated to handle each of the lens and support as the prior art explicitly discloses that each are handled by the handling device and thus providing two robot handling devices to achieve the dedicated handling would have been obvious as predictable.
Alternatively, the examiner cites here JP 192, which discloses a coating of a lens and discloses including a first and second robot in the process (See Figure 22 and accompanying text) and therefore using multiple robots would have been obvious to one of ordinary skill in the art as both EP 543 and JP 192 discloses optical lense processing and JP 192 discloses using multiple robots in optical lens processing is known and suitable in the art to achieve the desired and optimal handing of the lens for processing.
The use of the handling device as claimed (i.e. “configured to automatically transfer spectacle lenses and to automatically handle holders”, “configured for holding or handling a holder or clamping ring” and “configured to handle the spectacle lens”) is intended use of the claimed structure, i.e. robot, and the prior art automatic handling device is capable of functioning in the claimed manner and thus metes the structure of the instant claims. See also 0017 related to carrier having a handling element to carry out handling.
Please note, the examiner has determined that the installation claims as drafted including various limitations, including those that follow the “configured to” language, 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: EP 543 discloses a robot (see 0037).
Claim 5: EP 543 discloses a magazine (e.g. 140) that is configured to hold/store the holder for the spectacle lens (see Figure 1 and accompanying text, here the term “magazine” provides no differentiated structure).
Claim 6: EP 543 discloses what can reasonably be considered a magazine unit that can reasonably be considered “removable” as claimed (see Figure 1, e.g. 136, 0017 related to carrier body, carrier element)
Claim 7: EP 543 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).
Claim(s) 5-6, 10-11 and 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 543 alone or with JP 192 as applied above and further with DE 102016125273 A1.
Claim 30 and 31: EP 543 alone or with JP 192 discloses all that is taught above and discloses applying a coating to a spectacle lens; however, fails to disclose a second coating. However, DE 273 discloses a method for forming coating a spectacle lens discloses using a carrier and conveying the through a plurality of chambers, including a first and second layer as claimed (see entire reference, abstract) and therefore taking the references collectively it would have been obvious to have modified EP 543 to include the claimed first and second coating apparatus to reap the benefits of applying multiple coatings of a single lens.
DE 273 discloses the handling system will automatically transfer the lens on the carrier through a series of chambers that can reasonably be considered an intermediate storage apparatus, a first coating and second coating apparatus as claimed (see e.g. abstract, 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”).
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 5-6: DE 273 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”).
Claim 11: EP 543 discloses the PVD dome for receiving multiple lens held in the rings (0056 related to plurality of clamping rings located on the dome of the coating apparatus).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 543 alone or with JP 192 each further with DE 273 as applied above and further with JP 20030032253, hereinafter JP 253.
EP 543 alone or with JP 192 each further with DE 273 discloses all that is discloses above and disclose coating lenses; however, fails to explicitly disclose the claimed heating device. However, JP 253, also in the art of vapor deposition onto lenses being carried by carrier and using a handling device (Figure 1) and discloses including heating device in the automated coating lines to provide uniform heating of the substrate to minimize any differences in the substrate temperature and gradual cooling and thus including a heating device as claimed would have been obvious to reap the benefits as outlined by JP 253. The use of the heating device and how the device is configured to dry or cure is deemed to be mere intended use not limiting the claims as drafted. 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(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 543 alone or with JP 192 each further with DE 273 taken with WO 2018153787, hereinafter WO 787.
EP 543 alone or with JP 192 each further with DE 273 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).
Claim(s) 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 543 as applied above with DE 102016125273 and JP 2002524237 A, hereinafter JP 237.
Claim 32: EP 543 discloses a coating installation with at least one coating apparatus comprising: a handling system (see e.g. 0037 related to robot, 0017 related to handing), and a clamping device configured for the automated opening and/or closing of a holder or clamping ring (Figure 1b and accompanying text, 0033).
The examiner notes “configured to apply a permanent coating to a spectacle lens” and
“configured to automatically handle holders or clamping rings for temporarily holding the spectacle lens during the application of the coating” and “configured to automatically open or close the holders” and “configured to store the holders or clamping rings” is intended use and the prior art discloses a robot handling system and coating system that meets the structure as claimed and thus is capable of functioning as claimed. 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).
The requirement that the handling system “configured” to remove the holders or clamping rings from the magazine and insert them into the clamping device, such is met by the disclosure of EP 543 see e.g. 0037 related to robot, 0017 related to handing, where the configured to language is intended use of the robot/handling device and thus the robot/handling device is capable of being configured as claimed.
At the very least, It would have been obvious to a person having ordinary skill in the art at the time the invention was made to perform the function with automatic methods, since it has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art. In re Venner, 120 USPQ 192.
EP 543 discloses a magazine (e.g. 140) that is configured to hold/store the holder for the spectacle lens (see Figure 1 and accompanying text, here the term “magazine” provides no differentiated structure) and DE 273 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. DE 273 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 and magazine unit 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. See DE 273 stating “For this purpose, in particular the transfer chamber 27 or their sponsors 29 be formed accordingly, for example, for receiving a plurality of lenses 2 or carriers 10 , by providing additional conveyor members and / or by providing storage areas, storage areas and / or magazines, which are then preferably also integrated into the vacuum system.” Therefore, taking the references collectively using a magazine (storage area) and magazine unit (magazines) that are removable would have been obvious as predictable as such is taught by DE 273 to be integrated into a vacuum system between coatings to be configured to receive a plurality of lenses or carriers to the process.
As for the requirement of the magazine comprising an orientation projection corresponding to recess in the holder so that the holders are only stored in the magazine in a predetermined orientation, the examiner cites here JP 237, which discloses a holder for lens (see Figures, title) and discloses a rack with regular spaced grooves into which the support can be inserted so that the plurality of lenses can be arranged in a predetermined orientation (see “Finally, the relatively low thickness of the base of the optical lens support of the present invention also allows the support to be placed in a storage rack having regularly spaced grooves into which the support can be inserted.”). JP 237 disclose the wafer holder includes recess to facilitate the orientation (see lip formed at Figure 10, which is considered the claimed generic recess). As such, taking the level of one of ordinary skill in the art, it would have been obvious to have modified EP 543 with DE 273 to include a magazine with equally spaced grooves into which the support and a recess so that the plurality of lenses can placed to orient and store the lenses for processing.
Claim 33: EP 543 discloses the clamping device is configured to automatically insert of a spectacle lens into a holder or clamping ring (Figure 1b, 0033, 0037).
Claim 34: EP 543 discloses the clamping comprises one or more fixing components configured to fix a clamping ring in the clamping device (Figure 1A, 0033).
Claim 35: EP 543 discloses the clamping device comprises an opening device configured to open the clamping ring, wherein the opening device is rotatable about an axis of rotation and comprises a plurality of pins, the pins each being configured to move one of the arms of the clamping ring, so as to open the clamping ring (0033 related to the carrier body that includes pins and rotating the tension ring to spread the tension springs to allow for insertion of the lens).
Conclusion
Pertinent prior art is cited herein on the PTO 892 as it relates to lenses carriers for coating.
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.
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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