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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/13/2026 has been entered.
Election/Restrictions
Amended claims are indefinite and do not clearly capture a single apparatus, see 35 U.S.C. 112 rejections below. Were claims to be drawn only to photo-induced electroactive materials including a light source activating scattering patterns for refraction error mitigation these claims would likely be considered independent or distinct from the invention originally claimed. Since applicant has received an action on the merits for the originally presented invention, the invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, such an amended invention would be withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the lens element comprising “at least one activatable optical element … an activate material … structured electrodes … a substrate… at least one holographic mirror disposed on a face of the substrate facing the wearer … at least one activatable light source” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-7,10-11, 13, 15-17 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.
Claim 1 has been amended to currently recite “a lens element intended to be worn in front of an eye of a wearer having a first optical function, and comprising:
at least one activable optical element, wherein in a first state the at least one activable optical element contributes with the rest of the lens to focus an image of an object at distance on a retina of the wearer, and in a second state the at least one activable optical element has a second optical function of scattering light to slow down progression of abnormal refraction of the eye, and wherein the at least one activable optical element further comprises an active material being an electro-active material, and structured electrodes configured to activate the electro- active material in one or more zones away from optical axis of the lens limiting scattering to a periphery of vision field, the scattering is gradually varied between peripheral part and central part, … and wherein the lens element includes: a substrate having a first index of refraction, at least one holographic mirror disposed on a face of the substrate facing the wearer when the lens element is worn by the wearer, and at least one activable light source, wherein in a first state, the light source is off, and in a second state, the at least one activable light source generates light that when reflected on the holographic mirror generates an image of a scattered element that is reflected toward the eye of a user thereby activating the second optical function of the at least one activable optical element”. Applicant has not evidenced possession of the now-claimed invention. While the originally-filed disclosure mentioned “at least one holographic mirror disposed on the face of the substrate facing the wearer when the lens element is worn by the wearer, and an activable light source” and “When the light source is on it generates light that reflected on the holographic mirror generating an image of a scattered element that is reflected toward the eye of the user thereby activating the second optical function of the at least one activable optical element” in [0126]-[0128], there are no further details of these features incorporated into other features within a single or within distinct embodiments. There are multiple contradictory limitations interfering with that which one of ordinary skill in the art could match with the disclosure. For example, in the lenses of Fig. 3-10, incorporating a mirror on a substrate face nearest to a wearer would seemingly inhibit the operation of the lens as a transmissive element capable of aiding in distant object focusing. The disclosure lacks specificity as to the composition of the material and the mode of operation, other than to state that there is reflecting and perhaps scattering from the mirror or through the mirror. Applicant has not evidence possession of the lens incorporating an activatable element with electrodes and a holographic mirror, as claimed.
Claims 15 and 17 contain analogous language and are rejected on substantially the same grounds as identified above.
Claims 2-7, 10-11, 13 and 16 are rejected for failing to remedy the deficiencies of the base claim.
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 1-7,10-11, 13, 15-17 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 1 has been amended to currently recite “a lens element … wherein a pattern of the scattering is designed so that scattering is on a lens periphery at >5% based on D1003, with >30mm diameter area, while being at <0.5% on lens central area, with 20mm diameter area, with optical center being center of the lens central area”. The phrase “>30mm diameter area … with 20mm diameter area” does not clear define the metes and bounds of the claimed invention. It is unclear if the recited >5% scattering occurs in a region with a minimum diameter of >30mm or in a region with a maximum diameter of >30mm. The annotated Fig. 11 below is intended to illuminate the indefiniteness. The radius rC is associated with a central region and is clearly, definitely claimed at 10mm (D = 20mm). The peripheral region would be understood to be more distal from the lens center than the central region, and if concentric to the central region would be definable with inner and outer radii (see below). It is unclear if the >30mm diameter area limits the rp_inner or rp_outer value.
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Additionally, it is unclear if the phrase “>30mm diameter area” merely limits the extent to which an otherwise undefine geometry is positioned from the lens center (see below). In the annotated Fig. 11 below, the geometry of the peripheral region is not concentric but rather centered at a circle with a diameter of 30mm from the lens center.
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Claim 1 has been amended to currently recite “a lens element intended to be worn in front of an eye of a wearer having a first optical function, and comprising:
at least one activable optical element, wherein in a first state the at least one activable optical element contributes with the rest of the lens to focus an image of an object at distance on a retina of the wearer, and in a second state the at least one activable optical element has a second optical function of scattering light to slow down progression of abnormal refraction of the eye, and wherein the at least one activable optical element further comprises an active material being an electro-active material, and structured electrodes configured to activate the electro- active material in one or more zones away from optical axis of the lens limiting scattering to a periphery of vision field, the scattering is gradually varied between peripheral part and central part, … and wherein the lens element includes: a substrate having a first index of refraction, at least one holographic mirror disposed on a face of the substrate facing the wearer when the lens element is worn by the wearer, and at least one activable light source, wherein in a first state, the light source is off, and in a second state, the at least one activable light source generates light that when reflected on the holographic mirror generates an image of a scattered element that is reflected toward the eye of a user thereby activating the second optical function of the at least one activable optical element”. The metes and bounds of the claimed invention cannot be determined in light of the Specifications. In particular, both the physical configuration and the operation of the apparatus is unclear in light of the limitations in the pending claim. Firstly, it is unclear if the claim is limiting a same first state and same second state in Lines 4, 6, 21, and 22. Accordingly it is unclear if the holographic mirror generating “an image of a scattered element that is reflected” is the activatable optical element and the image generation is the same second optical function (L 24) as recited in Line 6.
Further, the combination of the activatable lens slowing down abnormal refraction progression of the eye and the holographic mirror is not defined to have a clear structure in the claim. The disclosure does not describe an integration of the holographic mirror with a substrate and with the remaining elements of the claimed invention (i.e. activatable optical element, electroactive material, electrodes). It is unclear if there is a same electroactive material capable of activation via the claimed electrode and activatable light source, or if the structures are intended to be distinctly provides in overlapping fashion or adjacency. On page 12 of the Remarks, Applicant does not clearly argue the merits of the claimed invention in that it remains unclear if the “completely different technical mechanism for activating the second optical function” is intended to have replaced the “fixed or directly switched bulk scattering in the lens material” – despite the electrical activation remaining pending in the claims.
Claim 1 has been amended to recite “at least one activatable light source generates light that when reflected on the holographic mirror generates an image of a scattered element that is reflected toward the eye … thereby activating the second optical function of the at least one activatable optical element”. The grammatic construction of this phrasing does not clearly define the metes and bounds of the invention. Firstly, the term “image of a scattered element” has no clear meaning in the context of the invention. It may be that an image from a scattering surface is formed by projecting light on the holographic mirror that is itself performing scattering – though this is only a guess as there is no clear description in the claims or Specifications. In the Specifications, it appears that a “holographic switchable material” ([0125]) itself contains activatable material. Further, it appears that this embodiment of the activatable mirror is photo-induced and not electrically-induced though the structure of the materials and the configuration with the light source is unclear. Were a mirror to be positioned between the lens substrate and the wearer, it is unclear what light is scattering for the refractive error mitigation as claimed. It may be that the light from the light source is scattering and reflecting simultaneously from the holographic mirror, though this is unclear from the pending language.
Claims 15 and 17 contain analogous language and are rejected on substantially the same grounds as identified above.
Claims 2-7, 10-11, 13 and 16 are rejected for failing to remedy the deficiencies of the base claim.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER STANFORD/Primary Examiner, Art Unit 2872
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