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 .
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 and 5-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Crespo Vazquez et al. (U.S. 2015/0277146).
Regarding claim 1, Crespo Vazquez discloses an optical lens structure (Fig. 2; page 4, para [0040]) comprising:
an optical substrate (11, Fig. 2; page 4, para [0040]) having a first surface (upper surface of 11, Fig. 2) and a second surface (bottom surface of 11, Fig. 2), with rays or a beam of light (31, Fig. 1; page 9, para [0080]) capable of penetrating through the first and second surfaces of the optical substrate (upper and bottom surfaces of 11 are transparent, Fig. 2; page 15, para [0129]);
at least one predetermined processing area (processing area of 11 comprising 51, Fig. 2; page 9, para [0080]) provided on the first surface (upper surface of 11, Fig. 2) of the optical substrate (11, Fig. 2);
at least one ink-jetted optical micro thin film (51, Fig. 1; page 9, para [0080]) contactless formed with an ink droplet material (such as a radiation-polymerizable material 21 as broadly interpreted, Fig. 2; page 9, para [0084]; page 17, para [0160]) on the predetermined processing area (processing area of 11 comprising 51, Fig. 2) of the first surface (upper surface of 11, Fig. 2) of the optical substrate (11, Fig. 2); and
at least one predetermined, ink-jetted micro thin film pattern (micro thin film pattern of 51, Fig. 2; page 7, para [0066]) formed from the at least one ink-jetted optical micro thin film (51, Fig. 2) to thereby provide an optical characteristic on the first surface of the optical substrate (upper surface of 11, Fig. 2; page 7, para [0066]; page 18, para [0161]). Crespo Vazquez does not expressly disclose that the micro thin film pattern is an “ink-jetted” optical micro thin film and that the recited ink droplet material is “processed by an ink-jetting nozzle procedure.” However, Examiner notes that the recitation of “ink-jetted” and “processed by an ink-jetting nozzle procedure” is a product-by-process limitation; and therefore, patentable weight is being given to the product itself and not the method of production since the patentability of a product does not depend on its method of production if the product in the product-by-process claim is the same as or obvious from a product of the prior art. In the instant case, the forming of the optical micro thin film with an ink droplet material is the same as or obvious from the product of the prior art of Crespo Vazquez whether or not the optical micro thin film is “ink-jetted” and "processed by an ink-jetting nozzle procedure.” Thus, the limitation “ink-jetted” and “processed by an ink-jetting nozzle procedure” is not being given patentable weight since the limitation describes the process of forming the optical micro thin film and not the product of the optical micro thin film itself.
Regarding claim 2, Crespo Vazquez discloses an optical lens with all the limitations above and further discloses wherein the optical substrate (11, Fig. 2) has a first refractive index (page 4, para [0043]) and the ink-jetted optical micro thin film (51, Fig. 2) as a second refractive index (page 3, para [0025]) relatively different from the first refractive index of the optical substrate (11, Fig. 2; the optical micro thin film 51 has a higher refractive index than the optical substrate 11, Fig. 2; page 7, para [0063]).
Regarding claim 3, Crespo Vazquez discloses an optical lens with all the limitations above and further discloses wherein the first surface (upper surface of 11, Fig. 2) or the second surface (bottom surface of 11, Fig. 2) of the optical substrate (11, Fig. 2) is selected from a curved surface (curved surface of 11, Fig. 2).
Regarding claim 5, Crespo Vazquez discloses an optical lens with all the limitations above and further discloses wherein the ink-jetted optical micro thin film (51, Fig. 2) comprises a plurality of ink-jetted micro thin films which are combined to form a composite ink-jetted micro thin film (added coatings/treatments; page 5, para [0051]; page 16, para [0139]).
Regarding claim 6, Crespo Vazquez discloses an optical lens structure (Fig. 2; page 4, para [0040]) comprising:
an optical substrate (11, Fig. 2; page 4, para [0040]) having a first surface (upper surface of 11, Fig. 2) and a second surface (bottom surface of 11, Fig. 2), with rays or a beam of light (31, Fig. 1; page 9, para [0080]) capable of penetrating through the first and second surfaces of the optical substrate (upper and bottom surfaces of 11 are transparent, Fig. 2; page 15, para [0129]);
at least one predetermined processing area (processing area of 11 comprising 51, Fig. 2; page 9, para [0080]) provided on the first surface (upper surface of 11, Fig. 2) or the second surface (bottom surface of 11, Fig. 2) of the optical substrate (11, Fig. 2);
at least one ink-jetted optical micro thin film (51, Fig. 2; page 9, para [0080]) contactless formed with an ink droplet material (such as a radiation-polymerizable material 21 as broadly interpreted, Fig. 2; page 9, para [0084]; page 17, para [0160]) on the predetermined processing area (processing area of 11 comprising 51, Fig. 2) of the first surface (upper surface of 11, Fig. 2) of the optical substrate (11, Fig. 2); and
at least one predetermined, ink-jetted color change distribution mark (color change distribution mark pattern of 51, Fig. 2; page 7, para [0066]; page 16, para [0139]) formed from the at least one ink-jetted optical micro thin film (51, Fig. 2) to thereby provide an optical characteristic on the first surface of the optical substrate (upper surface of 11, Fig. 2; page 7, para [0066]; page 18, para [0161]). Crespo Vazquez does not expressly disclose that the optical micro thin film is an “ink-jetted” optical micro thin film, an “ink-jetted” color change distribution mark formed from the at least one “ink-jetted” optical micro thin film, and that the recited ink droplet material is “processed by an ink-jetting nozzle procedure.” However, Examiner notes that the recitation of “ink-jetted” and “processed by an ink-jetting nozzle procedure” is a product-by-process limitation; and therefore, patentable weight is being given to the product itself and not the method of production since the patentability of a product does not depend on its method of production if the product in the product-by-process claim is the same as or obvious from a product of the prior art. In the instant case, the forming of the color change distribution mark from the optical micro thin film with an ink droplet material is the same as or obvious from the product of the prior art of Crespo Vazquez whether or not it is “ink-jetted” and "processed by an ink-jetting nozzle procedure.” Thus, the limitation “ink-jetted” and “processed by an ink-jetting nozzle procedure” is not being given patentable weight since the limitation describes the process of forming the optical micro thin film and not the product of the optical micro thin film itself.
Regarding claim 7, Crespo Vazquez disclose an optical lens structure with all the limitations above and further discloses wherein the ink droplet material (radiation-polymerizable material 21, Fig. 2) includes a plurality of dye materials (page 7, para [0065]) which are continuously distributed to form the predetermined, ink-jetted color change distribution mark (page 16, para [0139]).
Regarding claim 8, Crespo Vazquez disclose an optical lens structure with all the limitations above and further discloses wherein the ink droplet material (radiation-polymerizable material 21, Fig. 2) is processed to have various concentrations (page 7, para [0065]) which are continuously distributed to form the predetermined, ink-jetted color change distribution mark (page 16, para [0139]).
Regarding claim 9, Crespo Vazquez disclose an optical lens structure with all the limitations above and further discloses wherein the predetermined, ink-jetted color change distribution mark (page 7, para [0066]; page 16, para [0139]) is selected from a predetermined pattern (page 7, para [0066]; page 16, para [0139]).
Regarding claim 10, Crespo Vazquez disclose an optical lens structure with all the limitations above and further discloses wherein the predetermined, ink-jetted color change distribution mark (page 16, para [0139]) is continuously formed with various thicknesses (based on the design of the pattern; page 7, para [0066]; page 15, para [0134]; page 16, para [0139]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Crespo Vazquez et al. (U.S. 2015/0277146).
Regarding claim 4, Crespo Vazquez discloses an optical lens with all the limitations above but does not expressly disclose wherein the ink-jetted optical micro thin film (51, Fig. 2) has a predetermined thickness ranging between 0.5 um and 3.0 um. However, Crespo Vazquez discloses wherein the ink-jetted optical micro thin film (51, Fig. 2) can be formed to have a thickness of a few micrometers (page 15, para [0134]). Furthermore, the official notice taken in the previous office action that it is well known to one of ordinary skill in the art before the time of the effective filing of the claimed invention that a micro thin film for a contact lens can be formed to be in a range of 0.5 um to 3.0 um in thickness is now being considered as admitted prior art. Additionally, Examiner notes that one of ordinary skill in the art before the time of the effective filing of the claimed invention would have been led to have the thickness of the ink-jetted optical micro thin film (51, Fig. 2) satisfy the following range between 0.5 um and 3.0 um through routine experimentation and optimization. Applicant has not disclosed that the range between 0.5 um and 3.0 um of the thickness of the ink-jetted optical micro thin film (51, Fig. 2) is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the time of the effective filing of the claimed invention to configure the ink-jetted optical micro thin film (51, Fig. 2) to have a predetermined thickness ranging between 0.5 um and 3.0 um in order to optimize the formation of the optical thin film by minimizing the cost as evidenced by Crespo Vazquez (page 15, para [0134]).
Claim(s) 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Crespo Vazquez et al. (U.S. 2015/0277146) in view of Matsushita et al. (JP 2011-106064).
Regarding claim 11, Crespo Vazquez discloses a manufacturing method for an optical lens structure (Fig. 2; page 4, para [0040]) comprising:
providing a predetermined processing area (processing area of 11 comprising 51, Fig. 2; page 9, para [0080]) on a first surface or a second surface of the optical substrate (upper and bottom surfaces of 11, Fig. 2; page 15, para [0129]);
contactless forming at least one optical micro thin film (51, Fig. 2; page 9, para [0080]) on the predetermined processing area (processing area of 11 comprising 51, Fig. 2) of the first surface (upper surface of 11, Fig. 2) of the optical substrate (11, Fig. 2); and
automatically forming at least one predetermined micro thin film pattern (micro thin film pattern of 51, Fig. 2; page 7, para [0066]) formed from the optical micro thin film (51, Fig. 2) to thereby provide an optical characteristic on the first surface of the optical substrate (upper surface of 11, Fig. 2; page 18, para [0161]).
Crespo Vazquez does not expressly disclose that the contactless forming of the at least one optical micro thin film (51, Fig. 2; page 9, para [0080]) is with jetting an ink droplet material in a non-contact precision process. However, Matsushita discloses a manufacturing method for an optical lens structure (page 2, para [0004]) comprising using an inkjet coater jetting an ink droplet material in a non-contact precision process in order to improve the quality of printing (page 2, para [0004]).
Therefore, before the time of the effective filing of the claimed invention, it would have been obvious to one of ordinary skill in the art to configure the manufacturing method for the optical lens structure (Crespo Vazquez: Fig. 2) of Crespo Vazquez with an inkjet coater (Matsushita: page 2, para [0004]) of Matsushita that jets an ink droplet material in a non-contact precision process in order to improve the quality of printing as taught by Matsushita (page 2, para [0004]).
Regarding claim 12, Crespo Vazquez as modified by Matsushita discloses a manufacturing method for an optical lens with all the limitations of claim 11 above and further discloses wherein the predetermined micro thin film pattern (Crespo Vazquez: 51, Fig. 2) is formed with arranging a series of micro ink spots one after another (Crespo Vazquez: page 10, para [0086]).
Regarding claim 13, Crespo Vazquez as modified by Matsushita discloses a manufacturing method for an optical lens with all the limitations of claim 11 above and further discloses wherein a series of first micro ink droplets and a series of second micro ink droplets can be controlled to provide a continuous change of thickness of the predetermined micro thin film pattern (Crespo Vazquez: alignment marking pattern of dots of 51, Fig. 2; page 10, para [0086]).
Regarding claim 14, Crespo Vazquez as modified by Matsushita discloses a manufacturing method for an optical lens with all the limitations of claim 11 above and further discloses wherein a series of first micro ink droplets is processed to arrange on the first surface or the second surface of the optical substrate (Crespo Vazquez: such as the upper first surface of 11, Fig. 2) and a series of second micro ink droplets is processed to arrange on the first surface of the optical substrate (Crespo Vazquez: upper surface of 11, Fig. 2) adjacent to the series of the first micro ink droplets (Crespo Vazquez: based on alignment marking pattern of dots; page 10, para [0086]).
Regarding claim 15, Crespo Vazquez as modified by Matsushita discloses a manufacturing method for an optical lens with all the limitations of claim 11 above and further discloses wherein the predetermined processing area (Crespo Vazquez: processing area of 11 comprising 51, Fig. 2) of the optical substrate (Crespo Vazquez: 11, Fig. 2) is selected form a curved surface (Crespo Vazquez: curved surface of 11, Fig. 2) along which to precisely form a uniform thickness of optical micro thin film (Crespo Vazquez: optical micro thin film of 51, Fig. 2; page 7, para [0068]) by various ink-jetting speeds (Crespo Vazquez: page 8, para [0073]).
Allowable Subject Matter
Claims 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose the optical lens structure of claim 16 (having all the combination of features including wherein the at least one predetermined, ink-jetted micro thin film pattern is combined with another predetermined, ink-jetted color change distribution mark of ink-jetted optical micro thin film to be performed as a composite ink-jetted micro thin film) and does not disclose the optical lens structure of claim 19 (having all the combination of features including wherein the at least one predetermined, ink-jetted color change distribution mark is combined with another predetermined, ink-jetted micro thin film pattern of ink-jetted optical micro thin film to be performed as a composite ink-jetted micro thin film). Claims 17-18 are objected to as being dependent on claim 16. Claim 20 is objected to as being dependent on claim 19.
Response to Arguments
Applicant's arguments filed 7/28/2025 have been fully considered but they are not persuasive.
Regarding claims 1-20, Applicant argues that the newly added limitations of “predetermined, ink-jetted micro thin film pattern” and “predetermined, ink-jetted color change distribution mark” are given patentable weight since the limitation defines the product of the micro thin film itself. However, Examiner disagrees with Applicant’s arguments and notes that the recited limitations of “predetermined, ink-jetted micro thin film pattern” and “predetermined, ink-jetted color change distribution mark” does not structurally define how the “predetermined, ink-jetted micro thin film pattern” and the “predetermined, ink-jetted color change distribution mark” are distinct from a micro thin film pattern and a color change distribution mark that is formed by another process. The recited limitations of the “predetermined, ink-jetted micro thin film pattern” and “predetermined, ink-jetted color change distribution mark” remain as product-by-process limitations and are not being given patentable weight since the patentability of a product does not depend on its method of production if the product in the product-by-process claim is the same as or obvious from a product of the prior art. Examiner notes that the that the newly added limitations of “predetermined, ink-jetted micro thin film pattern” and “predetermined, ink-jetted color change distribution mark” do not structurally distinguish how the product of the micro thin film pattern and the color change distribution mark that is formed by a “predetermined, ink-jetted” process is patentably different from the product of the prior art as noted. Furthermore, regarding Applicant’s arguments that the cited prior art reference of Crespo Vazquez et al. “only teaches dipping method for contacting the lens substrate 11 with the flowable material 21 that obviously cannot form a predetermined, ink-jetted micro thin film pattern or a predetermined, ink-jetted color change distribution mark for ink-jetting pattern design,” Examiner notes that Applicant’s recited limitations of “predetermined, ink-jetted micro thin film pattern” and “predetermined, ink-jetted color change distribution mark” are product-by-process limitations as noted above. Additionally, Examiner notes that Crespo Vazquez discloses the “micro thin film pattern” and “color change distribution mark” that is the same as or obvious from the claimed invention whether or not they are “ink-jetted” and "processed by an ink-jetting nozzle procedure.” Applicant has not recited and defined in the product claims how the “predetermined, ink-jetted” micro thin film pattern and the “predetermined, ink-jetted color change distribution mark” for ink-jetting pattern design are patentably distinct structurally from the micro thin film pattern and the color change distribution mark of Crespo Vazquez. Thus, the limitation “ink-jetted” and “processed by an ink-jetting nozzle procedure” is not being given patentable weight since the limitations describe the process of forming the optical micro thin film and color change distribution mark and not the product of the optical micro thin film pattern and the color change distribution mark themselves. Therefore, the rejection is maintained.
Regarding claims 11-15, Applicant argues that one of ordinary skill in the art could not possibly, in the absence of hindsight, have conceived of simply combining the combination of dipping method for contacting the lens substrate 11 with the flowable material 21 of Crespo Vazquez or a dye composition for ophthalmic lenses with an inkjet type applicator of Matsushita et al. with other known art to achieve such the manufacturing method for an optical lens structure of claims 11-15. However, Examiner disagrees with Applicant’s arguments and notes that the cited prior art reference of Matsushita et al. clearly discloses a manufacturing method for an optical lens structure (page 2, para [0004]) comprising using an inkjet coater jetting an ink droplet material in a non-contact precision process in order to improve the quality of printing (page 2, para [0004]). Since Crespo Vazquez and Matsushita are in the same field of endeavor, namely, manufacturing method for an optical lens structure, Examiner notes that it would have been obvious to one of ordinary skill art before the time of the effective filing of the claimed invention to apply the teaching of the manufacturing method for an optical lens structure (Matsushita: page 2, para [0004]) comprising using an inkjet coater jetting an ink droplet material in a non-contact precision process of Matsushita in the manufacturing method of Crespo Vazquez in order to improve the quality of printing as taught by Matsushita (page 2, para [0004]). Therefore, the rejection is maintained.
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 PAUL CHANG LEE whose telephone number is (571)270-7923. The examiner can normally be reached M-F 10am-6pm.
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/PAUL C LEE/Primary Examiner, Art Unit 2871