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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicants amended claim 1 to recite:
“without otherwise removing from the solution”.
The applicants that paragraphs [0006], [0009-11], [0018], [0023] and [0027] of the specification support the newly introduced limitations.
This is not persuasive.
None of the cited paragraphs support the negative limitation now recited by the claims.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tucker (WO 2015/153,161, US 2017/0173206, citations by the US document) in view of Holland et al (US 5,129,999).
Tucker teaches a method.
The method comprises providing a lens cleaner (10) comprising a lens cleaning tank (20), and two probes/electrodes (Cd, Ad) arranged opposite to each other; adding a lens to be cleaned in the lens holder (90) and an electrolyte solution (S) in the tank and forming an anode and a cathode by application of electric power to the electrodes by an electric circuit (at least [0042], [0048]).
The method also comprises switching on a circuit to form a conductive loop and generating a current (at least [0040-48]).
Tucker teaches the use of solutions and exemplifies the use of solutions of NaCl.
Rehmeyer et al exemplifies the use of the saline solution (solution of NaCl) with the preferred concentration of 0.7-1.0%.
See at least Figures 2A-2C, and the related description and the description at Summary of the Invention, Detailed Description of Embodiments of the Invention.
Tucker teaches application of the method to the lenses as claimed (at least [0033]).
Thus, Tucker teaches a method as claimed except for the specific recitation of the concentration of NaCl of 0.9.
However, since Tucker teaches the use of the solution of NaCl of 0.7-1.0%, it would have been obvious to an ordinary artisan at the time the invention was filed to find an optimum concentration of NaCl by routine experimentation.
It has been held that differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The applicants have not demonstrated any unexpected results achieved by the use of the claimed concentration of NaCl.
Moreover, the NaCl solution with concentration 0.9% (saline solution) was known to be used in the art for disinfecting contact lenses, as evidenced by Holland et al (at least column 1, line 66 – column 2, line 8, column 2, lines 51-60, column 9, lines 53 – 57).
It would have been obvious to an ordinary artisan at the time the invention was filed to use a known saline solution (0.9% NaCl) in the method of Tucker in order to use a known product for its known purpose.
As to the actions of the ions, formed compounds and contaminants recited by the claims:
Such is inherent in the method of Tucker.
Since modified Tucker teaches the use of a cleaner as claimed to clean the lenses as claimed, teaches the use of the solutions as claimed and teaches application of electric power as claimed, the results of the methods such as actions of ions, formed compounds and contaminants recited by the claims will be the same as claimed or the invention is not disclosed/claimed in the correspondence with the requirements of 35 USC 112.
Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive.
The applicants amended the claims and allege that the claims are allowable.
This is not persuasive for the reasons presented above.
The amended claims have been examined.
The claims are not supported by the original disclosure.
With respect to the art rejection the applicants argue that Tucker does not disclose cleaning tank having only two electrodes.
This is not persuasive at least because the claims are written using an open language comprising and thus are not limited to exclude providing any additional electrodes in the tank.
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 MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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, Michael Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711
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