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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/17/2026 has been entered.
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:
“moving, while maintaining an amount of, the lacrimal protein in the lens cleaning tank towards and gathering the lacrimal protein at one of the anode and the cathode having an opposite electrical property thereby allowing an oxidation reaction for the hypochlorite with the lacrimal proteins in the lens cleaning tank to degrade the lacrimal proteins, wherein the reacting of the hypochlorite with the lacrimal proteins is performed on stubborn deposited proteins on the hard corneal contact lens having a long service cycle, to decompose the stubborn deposited proteins into small molecular proteins that are dissolvable in water”.
The applicants that paragraphs [0009] and [0069] of the US 2023/0314845 support the newly introduced limitations.
This is not persuasive.
The referenced paragraphs merely state:
[0009] In a further embodiment, the hypochlorite reacting with the lacrimal proteins in an oxidation reaction in the lens cleaning tank to degrade the lacrimal proteins specifically comprises: the hypochlorite reacts with a peptide chain forming a lacrimal protein framework to generate chloral formamide; a peptide chain formed by chloral formamide is hydrolyzed in the solution; and peptide bonds in the peptide chain are broken and decomposed into small molecular protein and amino acid, and thus the lacrimal proteins are degraded; and/or the hypochlorite reacts with a side chain of the peptide chain forming the lacrimal protein framework; the side chain comprises a lysine side chain which reacts with the hypochlorite, and chloramine is formed on the lysine side chain of the lacrimal proteins and amino of the lacrimal proteins; the chloramine is decomposed to form organic molecular fragments [1, 2] in a carbonyl form; and the peptide bonds on the lysine side chain are broken and decomposed into small molecular protein and amino acid, and thus the lacrimal proteins are degraded.
[0069] The lacrimal proteins are charged in the electrolyte solution. The charged lacrimal proteins move to the electrode opposite to the electrical property thereof in the cleaning tank. In the moving process, the lacrimal proteins fall off from the surface of the lens to be cleaned and gather at the electrode opposite to the electrical property thereof in the lens cleaning tank 10, so that the electrophoresis phenomenon is realized.
Neither, the referenced paragraphs, nor any other part of the original disclosure supports the newly introduced limitation.
The applicants further amended claim 2 to recite:
“wherein moving, while maintaining an amount of, the lacrimal protein in the lens cleaning tank is free from physically removing the lacrimal protein from the lens cleaning tank”.
The applicants have not indicated which part of the original disclosure supports the newly introduced limitations.
The Examiner was not able to find the support for the referenced limitation in the original disclosure.
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 1-5 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.
The applicants amended claim 1 to recite:
“moving, while maintaining an amount of, the lacrimal protein in the lens cleaning tank towards and gathering the lacrimal protein at one of the anode and the cathode having an opposite electrical property thereby allowing an oxidation reaction for the hypochlorite with the lacrimal proteins in the lens cleaning tank to degrade the lacrimal proteins, wherein the reacting of the hypochlorite with the lacrimal proteins is performed on stubborn deposited proteins on the hard corneal contact lens having a long service cycle, to decompose the stubborn deposited proteins into small molecular proteins that are dissolvable in water”.
The amended claims could not be properly understood because they recite contradictive requirements.
On one hand, the claims require “moving, while maintaining an amount of, the lacrimal protein in the lens cleaning tank towards and gathering the lacrimal protein at one of the anode and the cathode having an opposite electrical property thereby allowing an oxidation reaction for the hypochlorite with the lacrimal proteins in the lens cleaning tank to degrade the lacrimal proteins”.
The referenced limitation requires the lacrimal proteins to be moved while maintaining their amount and gathering the referenced lacrimal proteins at one of the anode and the cathode wherein the referenced proteins are reacted with hypochlorite.
On the other hand, the claims require “the reacting of the hypochlorite with the lacrimal proteins is performed on stubborn deposited proteins on the hard corneal contact lens”.
In contrast to the other limitation, this limitation requires reacting of the referenced proteins with hypochlorite on the contact lens.
Thus, the two referenced limitations contradict to each other.
AS the result the claims could not be properly understood.
The claims are further indefinite because the term “the lacrimal protein” in claim 1 lacks proper antecedent basis.
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 03/17/2026 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 teachings of Tucker and Holland et al have been applied to address the amended claims
Conclusion
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.
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/ALEXANDER MARKOFF/Primary Examiner, Art Unit 1711