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 .
Response to Amendment
Receipt is acknowledged of the amendment filed 12/12/2025. Claims 1, 15, and 17 are amended and claims 1-7, 10-11, 13, 15-17 are currently pending.
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 activable optical element… 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 progressively varied between peripheral part and central part” 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, and 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 recites “lens element … comprising: at least one activable optical element… 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 progressively varied between peripheral part and central part”. While Applicant originally-discloses structure electrodes controlling an electro-active activatable element ([0014]-[0036],[0090], original Claims 1, 5, 6), there is no evidence that Applicant possessed a structured electrode and electro-active optical element capable of performing the function of “limiting scattering to a periphery of vision field, the scattering is progressively varied between peripheral part and central part”. The disclosure of scattering that is “progressively varied” correlates to a photo-active material, such as azobenzenes, activated by a structured light source ([0114]-[0121]). As noted in the 35 U.S.C. 112(b) rejection below, there are mutually exclusive interpretations of “progressively varied” including one in which a variation is continuous and another in which a variation is step-wise or discontinuous. There is no evidence of possession of a lens structure under the former interpretation, in which scattering varies continuously between central and peripheral part of the lens element. There is evidence of possession of a lens structure under the latter interpretation, in which scattering various discontinuously or in a step-wise manner between a central and peripheral part of the lens element.
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, and 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 recites “lens element … comprising: at least one activable optical element… 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 progressively varied between peripheral part and central part”. There are mutually exclusive interpretations of “progressively varied” that do not clearly define the metes and bounds of the claimed invention. The plain meaning of “progressive” includes “of or relating to forward movement in space”, “characterized by continuous progress or advancement”, and “proceeding by steps or stages” (Oxford English Dictionary). In the 12/12/2025 Remarks, Applicant argues about the scope of the claim “Hones ‘904 does not disclose a progressive variation of scattering between the periphery and the central area. Instead, Hones ‘904 toggles regions sharply between scattering and clear states depending on gaze axis. Hones ‘904 focuses on maintaining a clear aperture aligned with gaze rather than establishing a controlled, gradually varying haze distribution to treat myopia”. From the Remarks, it is clear that Applicant does not believe the metes and bounds of the claim extends to discontinuous variations but requires gradual variations. Particular embodiments within the metes and bounds of the claimed invention under the broadest reasonable interpretation of the claims (i.e. plain meaning definitions provided above) are not disclaimed. The claim is indefinite for not clearly limiting the function of the lens element as either continuously/gradually varying scattering or varying scattering in a step-wise manner. For the purposes of examination, the claimed invention will be interpreted as including the broadest reasonable interpretation of the claims in light of the Specifications and thus will include continuous and discontinuous variations in scattering.
Dependent claims 2-7 , 10-11, 13 fail to remedy the deficiency of the base claim.
Claims 15 and 17 recite substantially similar language as presented in Claim 1 and is indefinite on analogous grounds. Dependent claim 15 does not remedy the deficiency of the base claim.
Claims 5 and 11 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.
By dependence on Claims 1 and 5, Claim 11 recites “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 so as to slow down the progression of the abnormal refraction of the eye”, “at least a first state and a second state, and wherein the first state corresponds to a deactivated light scattering function and the second state corresponds to an active light scattering function”, and “a light scattering structure providing the second optical function, … in a second state, the index of refraction of the active material is modified, thereby activating the second optical function”. Antecedent basis for “the second optical function” cannot be determined as the claim simultaneously requires the activatable optical element as having the second optical function, an active material being in an active light scattering function, and the first substrate as providing the second optical function. Applicant traverses the previously presented indefiniteness argument on the grounds that the second optical function recited in Claim 11 is consistently used in the claims as Claim 5 “merely providing detail regarding how the invention works”. Examiner respectfully disagrees as Claim 5 explicitly states that the state of active material corresponds to an active light scattering function. For the claim to merely provide detail on how the invention works as Applicant argues, the stated function would need to be divorced from the structure recited proximally - namely the active material. The language does not clearly establish the structure that would infringe on the claimed invention as it cannot be determined if (1) the active material performs scattering absent further structure, (2) the substrate material performs scattering absent further structure, or (3) a combination of structures perform scatting exclusively. These mutually exclusive options describing correspondence between scattering and structure muddle antecedence in Claim 11 of “the second optical function” as it is unclear if “the first substrate has … a light scattering structure providing the second optical function” further limits the invention such that only the substrate performs scattering, or the substrate “has” an active material by proximity that performs scattering alone, or the combination of the active material and substrate perform scattering only in combination. The claims do not clearly delineate the metes and bounds of the structure by way of these functional limitations.
Claim Rejections - 35 USC § 102/103
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claims 1-7, 10, 13, 15-17 are rejected under 35 U.S.C. 102(a)(2) as anticipated by US PG Pub. 2022/0252904 to Hones et al. (hereinafter Hones ‘904) or, in the alternative, under 35 U.S.C. 103 as obvious over Hones ‘904 in view of US Pat. No. 12,416,818 to Hones, et al. (hereinafter Hones ‘818).
Regarding claims 1 and 17, Hones ‘904 discloses a lens (Figs. 1-2) element intended to be worn in front of an eye of a wearer (Figs. 1-2) having a first optical function (“lens 100 includes an on-axis region 102 (i.e., the optical axis of lens 100 intersects region 102)” and “a peripheral region 104 surrounding on-axis region 102 that can each be switched between a state in which the region partially scatters incident light and another state in which the region is transparent”, Figs. 1-2; [0055]), and comprising: at least one activable optical element (“a peripheral region 104 surrounding on-axis region 102 that can each be switched between a state in which the region partially scatters incident light and another state in which the region is transparent”, Figs. 1-2; [0055]), 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 (Figs. 1-2’ [0055]), and in a second state the at least one activable optical element has a second optical function of scattering light (Figs. 1-2; [0055]) to slow down the progression of the abnormal refraction of the eye, and wherein the at least one activable optical element further comprises an active material (“a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b”; [0055]) being an electro-active material (“a peripheral region 104 surrounding on-axis region 102 that can each be switched between a state in which the region partially scatters incident light and another state in which the region is transparent”, Figs. 1-2; [0055]), and structured electrodes (“a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b”) 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 (Figs. 1-2), the scattering is progressively varied between peripheral part and central part (Figs.1-2; [0055]-[0083]).
Hones ‘904 discloses pixelated electrodes controlling PDLC material ([0020]), interdigitated electrodes ([0062]), and segmented electrodes that correspond to two different regions 102 and 104 of the lens ([0083]). Hones ‘904 discloses an electro-optic material layer 124 as a single layer embodied as a particle suspension (e.g. PDLCs) and a composite layer of varied compositions ([0066]). Aside from the electro-optical material layer and electrodes themselves, there is no additional structure disclosed in Hones [904 for shaping the electric fields within the electro-optic material layer. Hones ‘904 depicts regions of scattering 102 and 104 as abruptly delineated regions (e.g. Fig. 1-2), though a person having ordinary skill in the art would understand the materials and layer geometry (i.e. electro-optic material and electrodes) to be critical in defining the induced electrical fields within the electro-optical material layer 124 and thus the degree to which scattering varies over space. Further, Hones ‘904 explicitly discloses a three-state scattering system having on, off, and intermediate levels of scattering ([0069]). Regardless of the degree of abruptness or smoothness in transitioning between low and high scattering, a person having ordinary skill in the art would understand Hones ‘904 to disclose a structure anticipating the claimed “scattering is progressively varies between peripheral part and central part”.
As noted in the 35 U.S.C. 112 rejections above, it is understood that there is a disagreement as to the metes and bounds of the claim and embodiments that would infringe on the claim language. In the 12/12/2025 Remarks, Applicant argues that “scattering is progressively varied” requires scattering to be “gradually varied” and Hones ‘904 does not necessarily teach a gradual variation in scattering.
Hones ‘818 teaches scattering is progressively varied between peripheral part and central part, in which the progressively variation is gradual (Figs. 12A-12B; col. 21, ll. 30-67).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide gradual variations in scattering as taught by Hones ‘818 with the system as disclosed by Hones ‘904. The motivation would have been to reduce conspicuousness of the pattern (col. 21, ll. 30-67).
Regarding claim 2, Hones ‘904 discloses a refraction area (central region 102 with “two layers 110a and 110b with optical power”, Figs. 1-2; [0055]) formed as the area other than areas comprising the at least one activable optical element and having a refractive power based on a prescription for said eye of the wearer (“lens 100 can have a positive spherical optical power or a negative spherical optical power. Corrections for astigmatism and/or multifocal (e.g., progressive) lenses are also possible”; [0056]).
Regarding claim 3, Hones ‘904 discloses the refraction area comprises a fitting cross of the lens element (on-axis region 102 centrally positioned in front of eye pupil, Figs. 2).
Regarding claim 4, Hones ‘904 discloses the at least one activable optical element is located on a front surface, a back surface, or between the front and the back surfaces of the lens element (“electro-optic cell is composed of a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b. Transparent electrode layers 106a and 106b are provided on facing surfaces of substrates 108a and 108b, respectively, adjacent to the electro-optic material”; [0055]).
Regarding claim 5, Hones ‘904 discloses the at least one activable optical element further comprises: a first substrate and a second substrate being arranged to face the first substrate and form a cavity between said first and second substrates (“electro-optic cell is composed of a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b. Transparent electrode layers 106a and 106b are provided on facing surfaces of substrates 108a and 108b, respectively, adjacent to the electro-optic material”, Figs. 1-2; [0055]), and an active material disposed between the first and second substrates, the active material being activable between at least a first state and a second state, and wherein the first state corresponds to a deactivated light scattering function and the second state corresponds to an active light scattering function (“electro-optic cell is composed of a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b. Transparent electrode layers 106a and 106b are provided on facing surfaces of substrates 108a and 108b, respectively, adjacent to the electro-optic material”, Figs. 1-2; [0055]).
Regarding claim 6, Hones ‘904 discloses the active material is an electro-active material and wherein the at least one activable optical element further comprises: a first conductive layer disposed on a surface of the first substrate facing the electro-active material, and a second conductive layer disposed on a surface of the second substrate facing the electro-active material (“electro-optic cell is composed of a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b. Transparent electrode layers 106a and 106b are provided on facing surfaces of substrates 108a and 108b, respectively, adjacent to the electro-optic material”, Figs. 1-2; [0055]).
Regarding claim 7, Hones ‘904 discloses wherein the first and second conductive layer are structured electrodes allowing to activation of the electro-active material in specific areas of the lens element (Fig. 3; [0089]). The analogous structures corresponding to the disclosed embodiment of Fig. 3A-3B further anticipate Claims 1, 5, 6.
Regarding claim 10, Hones ‘904 discloses the active material is activable between at least a transparent state and a scattering induced state (Figs. 1-2; [0055]).
Regarding claim 13, Hones ‘904 discloses receiving means configured to receive data, and wherein the transitions between the first and second states of the optical elements are driven in real-time based on the received data ([0026]).
Regarding claim 15, Hones ‘904 discloses an optical device adapted to be positioned on a lens element (lenses 110a, 110b, Figs. 1-2) having a first optical function ([0055]), the optical device comprising: at least one activable optical element (“electro-optic cell is composed of a layer 124 of an electro-optic material sandwiched between two opposing transparent substrates 108a and 108b.”; [0055]) configured so that in a first state the at least one activable optical element contributes with the lens element to focus an image of an object at distance on a retina of a wearer (Figs. 1-2; [0055]-[0073]), and in a second state the at least one activable optical element has a second optical function of scattering light so as to slow down the progression of the abnormal refraction of the an eye (Figs. 1-2; [0055]-[0073]).
Regarding claim 16, Hones ‘904 discloses the at least one active optical element comprises a microstructure or at least one micro-lens (micro-aperture of on-axis region 102 in [0071] and “Electrode layers 106a and 106b are … carbon nanotubes, graphene, nanowire meshes”; [0057]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hones ‘904, or in the alternative Hones ’904 in view of Hones ‘818, as applied to Claim 5, further in view of KR 20190126743 to Lee (hereinafter Lee).
Hones ‘904 discloses first and second substrates composed of “any suitable lens material” ([0061])
Hones ‘904 discloses the claimed invention as cited above though does not explicitly disclose the first substrate has a first index of refraction and a light scattering structure providing the second optical function, and the second substrate has said first index of refraction, and wherein in a first state, the first and second substrates and the active material have the same index of refraction and participate to the first optical function, and in a second state, the index of refraction of the active material is modified, thereby activating the second optical function.
Lee discloses the first substrate has a first index of refraction and a light scattering structure (Fresnel lens) providing the second optical function, and the second substrate has said first index of refraction, and wherein in a first state, the substrate and the active material have the same index of refraction (“the liquid crystal molecules are rubbed to be arranged in the thickness direction of the electroactive liquid crystal 1400 such that the refractive index of the electroactive liquid crystal 1400 may match the refractive index of the Fresnel lens composed of the nanostructure 1210”) and participate to the first optical function (“the light may go straight since there is no difference between the refractive index of the liquid crystal layer and the refractive index value of the Fresnel lens”), and in a second state, the index of refraction of the active material is modified, thereby activating the second optical function (“when a voltage is applied to the electroactive liquid crystal 1400 through the electrode 1500, the liquid crystal molecules are rotated and arranged perpendicular to the electric field direction, so that the refractive index value of the electroactive liquid crystal 1400 and the refractive index value of the Fresnel lens”).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide matching indexes as taught by Lee with the system as disclosed by Hones ‘904. The motivation would have been to deactivate an optical effect in a reversible manner.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
On page 6 of the Remarks, Applicant traverses the 35 U.S.C. 112 rejection against Claim 11. In light of the arguments, the rejection is repeated and further addresses language in Claim 5 related to Applicant’s argument that Claim 5 “is merely providing detail regarding how the invention works in that example”. Claim 5 provides for a first and second state of the active material, not of the invention or super-structure more broadly. Further, the claim requires the first and second state to correspond to a scattering function or the absence thereof. The further limitation of the lens element in Claim 11 that the first substrate “has … a light scattering structure providing the second optical function” muddles the structural requirements of the first substrate, the active material, and the activatable optical element as a whole. From the Specifications, there is no embodiment in which a first and second substrate have a same index of refraction and activation of the active material causes light scattering provided by the first substrate. In describing Figs. 9-10, in which a substrate contributes to scattering, Applicant only describes scattering provided by both the first substrate and the active material in combination. It cannot be said that the disclosed scattering effect is provided by the first substrate alone and the claim language does not clearly capture this structure/embodiment.
On pages 7-8 of the Remarks, Applicant argues that the amended claim language differentiates over Hones ‘904 as Hones ‘904 “toggles regions sharply between scattering and clear states depending on gaze axis” and does not establish “a controlled, gradually varying haze distribution”. Examiner respectfully disagrees. While Hones ‘904 depicts regions with a circular boundary, a person having ordinary skill in the art would understand this to be merely illustrative of the concept of an optical “region” as described by Hones ‘904. An artisan would not understand there to be an underlying disclosure or structure that would necessarily provide a sharp discontinuity in scattering function across the optical area of the Hones ‘904 lens. As detailed in the rejections above, Hones ‘904 provides for segmented and addressable pixelated electrodes and both continuous and segmented electro-optical material layer(s). These disclosed structures would not necessarily be capable of providing sharply discontinuous electric fields nor sharply discontinuous scattering functions within the electro-optical material. Hones ‘904 does not disclose the abruptness of the boundary between the on-axis and off-axis regions providing varied scattering functionality. Regardless, as noted above, the claim is not limited to a gradual transition between regions having differing scattering function and Hones ‘904 anticipates a progressive, step-wise variation.
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 CHRISTOPHER J STANFORD whose telephone number is (571)270-3337. The examiner can normally be reached 8AM-4PM PST M-F.
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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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