DETAILED ACTION
An Office Action was mailed on 08/26/2025. Applicant filed a response, amended claims 1 and 3, and canceled claim 2.
Claims 1 and 3-20 are pending. Claims 1 and 3-11 are rejected. Claims 12-20 are withdrawn from consideration.
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.
Claims 1, 5-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin, CN 111592797A (Lin).
The attached machine translation of Lin is referenced below.
Regarding claim 1, Lin teaches a pearlescent paint (i.e., color fixing combination) comprising a base paint and a pearlescent filler (Lin; page 2, lines 9-11).
The pearlescent filler is composed of several metal oxide thins layers coated with mica, and has a particle size of 10-40µm, i.e., a pearlescent powder as claimed (page 3, lines 10-14).
The base coat comprises 150-250 parts styrene-acrylic emulsion (a resin), 2-5 parts of cellulose ether (a cellulose), 1-5 parts dispersant; 1-5 parts defoamer, 01-15 parts film-forming assistant, 3-8 parts organic solvent, 400-600 parts water, 24-35 parts filler, and 12-16 parts thickener (Lin; page 3, lines 20-23).
In Example 1, Lin discloses a pearlescent paint comprising a base paint and a pearlescent filler (Lin; page 6, lines 55-58).
The base paint includes:
a styrene-acrylic emulsion (a polystyrene/polyacrylate thickener);
a cellulose ether (a hydrophilic polymer comprising a cellulose derivative);
a polycarboxylate sodium salt dispersant;
antifoaming agent (an additional adjuvant);
a film-forming aid which is ester alcohol 12 (an ester solvent);
the organic solvent ethylene glycol (an alcohol solvent);
water (an additional adjuvant);
a mica powder filler;
an acrylic thickener, i.e. a polyacrylic acid (a dispersant comprising polyacids);
preservative (an additional adjuvant); and
pH adjuster (an additional adjuvant) (Lin; page 7, lines 1-15).
Further, although the exemplified composition comprises a polycarboxylate sodium salt dispersant, Lin teaches that the dispersant may alternatively be a polycarboxylate ammonium salt, i.e., a dispersant comprising ammonium salts as claimed. As only two dispersants are disclosed, compositions comprising an ammonium salt dispersant are anticipated by Lin.
A generic disclosure will anticipate a claimed species covered by that disclosure when the species can be “at once envisaged” from the disclosure. See MPEP 2131.02.III. A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
See Examples 2-14 for additional exemplified pearlescent paints (Lin; page 7, line 25-page 9, line 21).
While there is no disclosure that the pearlescent art paint is a color fixing combination for contact lens as presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. a color fixing combination for contact lens, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 5, Lin is relied upon as disclosing the limitations of claim 1 as discussed above. The pearlescent paint (i.e., color fixing combination) of Example 1 includes a base paint (i.e., adjuvants) and a pearlescent filler (i.e., pearlescent powder) used in a weight ratio of 3:1 (Lin; page 6, lines 55-58). This weight ratio converts to 75% by weight base paint based on the total weight of the pearlescent paint (i.e., 3/(3+1) * 100 = 75%), which falls within the claimed adjuvant weight range of 60-95%; and 25% by weight pearlescent powder (i.e., 1/(3+1) * 100 = 25%) based on the total weight of the pearlescent paint, which falls within the claimed pearlescent powder range of 5-40% by weight.
See Examples 2-14 for additional exemplified pearlescent paints (Lin; page 7, line 25-page 9, line 21).
Regarding claim 6, Lin is relied upon as disclosing the limitations of claim 1 as discussed above. The paint of Example 1 comprises the filler mica powder, which is an inorganic color powder as claimed (Lin; page 7, lines 13).
See Examples 2-14 for additional exemplified pearlescent paints comprising the filler mica powder (Lin; page 7, line 25-page 9, line 21).
Regarding claim 8, Lin is relied upon as disclosing the limitations of claim 6 as discussed above. The pearlescent paint (i.e., color fixing combination) of Example 1 includes a base paint (i.e., adjuvants) and a pearlescent filler (i.e., pearlescent powder) used in a weight ratio of 3:1 (Lin; page 6, lines 55-58). This weight ratio converts to 75% by weight of the base paint (as calculated above for claim 5), which falls within the claimed weight range of 40 to 85%; and 25% by weight pearlescent filler (as calculated above for claim 5), which falls within the claimed range of from 15% to less than 40% by weight. The base paint comprises 30 parts mica powder filler (inorganic colorant powder), and a total of 780 parts by weight (i.e., 200 parts styrene-acrylic emulsion + 3 parts cellulose ether + 3 part dispersant + 3 part antifoaming agent + 12 parts film-forming aid + 5 parts organic solvent + 505 parts water + 30 parts mica powder filler + 15 parts thickener + 2 part preservative + 2 part pH regulator = 780 total parts) (Lin; page 7, lines 1-4). Therefore, the base paint comprises 3.85% mica powder filler (30/780 * 100 = 3.85%), which equates to 2.88% mica powder filler in the final pearlescent paint (i.e., 3.85% * 0.75 = 2.88%). 2.88% falls within the claimed range of 1% to 20% by weight of inorganic color powder.
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.
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.
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.
Claims 1, 3, and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ocampo et al, US 2005/0181534A1 (Ocampo) in view of Zhang, US 2020/0376787A1 (Zhang) and Tsuzuki et al, US 6,121,327 (Tsuzuki).
Ocampo was cited in the IDS filed 12/07/2023.
Regarding claims 1 and 3, Ocampo teaches an improved contact lens through selective application of pearlescent colorants to the surface of the lens (Ocampo; [0007]). A preferred method is wherein a contact lens is printed with a pearlescent ink formulation including a polymeric binder, solvent and bonding agent (Ocampo; [0053]). The “binder polymer” in the ink traps or binds colorants onto a medical device, preferably a contact lens (i.e., a color fixing combination for contact lens) (Ocampo; [0054]). The pearlescent “pigments” are powdered substances as claimed (Ocampo; [0024] and [0028]).
Solvents include alcohols, glycols, ketones and esters as claimed (Ocampo; [0095]).
The binder polymer in the ink can be any polymer which is compatible with the lens material. The binder polymer can be prepared by polymerization of monomers containing vinyl alcohol (i.e., the hydrophilic polymer polyvinyl alcohol), acrylic and methacrylic acid (i.e., polyacid dispersants which are polycarboxylic acids), esters of acrylic and methacrylic acid (i.e., thickeners comprising polyacrylate and polymethacrylate), and vinylpyrrolidone (i.e., the hydrophilic polymer polyvinylpyrrolidone), wherein mixtures of these monomers may be used to make various copolymers. Other polymers include various cellulose resins (i.e., a hydrophilic polymer comprising cellulose and its derivatives) (Ocampo; [0059]).
Any known suitable lens can be used, preferably hydrogel lenses or silicone-containing hydrogel lenses (Ocampo; [0086]). The inks are printed such as by pad transfer printing (Ocampo; [0053]).
The ink may contain other additives known in the art, including surfactants and antimicrobial agents (Ocampo; [0093]).
Ocampo teaches using surfactants to improve the separation of pigment particles and prevent settling or clumping of the pigment (Ocampo; [0097]). Ocampo further teaches in the case of pearlescent pigments, it is important during processing to minimize platelet breakage and maintain a sufficient level of dispersion (emphasis added). Pearlescent pigments require gentle handling during mixing and they should not be ground or subjected to prolonged mixing, milling or high shear since such operations can damage the pigments, influence the final appearance, and reduce the pearlescent effects (Ocampo; [0030]).
In Example 1, the ingredients listed in the “Grind Formula” of Table 1 were ball milled, the pearlescent pigments were then added, followed by the activator solution to form a final ink (Ocampo; [0099]). The Printing Ink Colors Blue, Green, ISB Hazel, Hazel, and Amethyst comprise:
pearlescent pigments;
ethyl lactate (an ester solvent);
a binder or thickener formed by polymerizing HEMA (2-hydroxyethyl methacrylate), EOEMA (ethoxyethyl methacrylate), AIBN and cyclopentanone (i.e., a polymethacrylate thickener);
HEMA (2-hydroxyethyl methacrylate), EOEMA (ethoxyethyl methacrylate) and HDI (1,6-hexamethlene diisocyante) (i.e., monomers which form a second polymethacrylate binder or thickener) (Ocampo; [0099], Example 1, Table 1).
See Ocampo, [0100], Example 2, Table II, Printing Ink Colors Blue, Green, ISB Hazel, Hazel, and Amethyst for similar Ink Formulations.
1). Ocampo does not explicitly teach the combined use of a thickener, a hydrophilic polymer, and a polyacid dispersant as presently claimed.
2). Ocampo also does not explicitly teach an ammonium salt as claimed.
With respect to difference 1), Zhang teaches a cast-molding method for producing colored silicone hydrogel contact lenses (Zhang; Abstract). Inks for printing a colored lens are prepared by mixing a solution of a binding polymer and diluents with a paste containing the colorant (Zhang; [0092]). A pad printing method is used to transfer the ink (Zhang; [0093-0095]).
Zhang teaches that pearlescent pigments may be used (Zhang; [0030]-[0032]). In the case of pearlescent pigments, it is important during processing to minimize platelet breakage and maintain a sufficient level of dispersion (emphasis added). Pearlescent pigments require gentle handling during mixing and they should not be ground or subjected to prolonged mixing, milling or high shear since such operations can damage the pigments, influence the final appearance, and reduce the pearlescent effects (Zhang; [0033]).
An adhesion promoter is used to cause chemical bonding between different binder polymers to entrap the pigment particles (i.e., a color fixing combination for contact lens) (Zhang; [0091]).
In a preferred embodiment, the ink further comprises at least one polymeric dispersant, wherein such dispersants include polyacrylic acid and polymethacrylic acid (i.e., a polyacid dispersant of claim 1, wherein the polyacid is a polycarboxylic acid of claim 3), polyvinylpyrrolidone (PVP, a hydrophilic polymer as claimed), and combinations thereof (Zhang; [0088]).
Zhang teaches the use of a polymeric dispersant can improve the print ink life. During pad transfer printing, the cliche/cup block will heat up due to friction. Ink thickening is very rapid, and therefore print intensities change rapidly over the course of a processing cycle. It is believed that a polymeric dispersant reduces metal-on-metal or pigment abrasion-based friction. Rapid ink thickening due to heat and friction is responsible for short ink life because print intensities get too “dark” too soon. The use of a polymeric dispersant will control particle agglomeration and reduce friction at the cup blade-cliche interface, which reduces heat evolved and ink thickening, and creates a more uniform print intensity over time (Zhang; [0088]).
Zhang is analogous art as it teaches a coloring fixing combination for contact lens comprising a pearlescent powder, a polycarboxylic acid dispersant, and a PVP hydrophilic polymer.
In light of the motivation provided by Zhang to add a dispersant to inks comprising pearlescent pigments for the pad printing of hydrogel contact lenses, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a dispersant to the inks Ocampo in order to improve the print life of the inks by controlling particle agglomeration and reducing friction at the cup blade-cliche interface, which reduces heat evolved and ink thickening, and creates a more uniform print intensity over time. Because both Ocampo and Zhang teach the importance of maintaining a sufficient level of dispersion of the pearlescent pigments, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a dispersant to the inks of Ocampo in view of Zhang in order to effectively disperse the pearlescent pigment in the inks, and thereby minimize settling, clumping and mixing operations which may otherwise cause damage due to the fragile nature of the pearlescent pigments.
Given that Zhang discloses dispersants that overlap the presently claimed: 1) dispersants, including the polycarboxylic acid dispersants polyacrylic acid and polymethacrylic acid; 2) hydrophilic polymers including PVP, and 3) mixtures thereof, it therefore would have been obvious to one of ordinary skill in the art to use a polycarboxylic acid and PVP dispersant mixture, which is both disclosed by Zhang and encompassed within the scope of the present claims.
Further, combined with the teachings of Ocampo, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of polymers in the inks of Ocampo in view of Zhang, including thickeners (e.g. polymethacrylates), hydrophilic polymers (e.g., celluloses and/or polyvinylpyrrolidone) and dispersants (polyacrylic and/or polymethacrylic acid and/or PVP) as claimed, in order to obtained the desired level of dispersion in the ink and binding of the ink to the contact lens.
The combination of known substances for the same purpose has been held to have been prima facie obvious. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding difference 2), Tsuzuki teaches a contact lens disinfecting solution which comprises an organic nitrogen disinfectant and at least one polyol in an aqueous medium (Tsuzuki; Abstract). While any known organic nitrogen disinfectants may be used, it is preferable to use at least one compound selected from a group including quaternary ammonium compounds and polymerization products thereof, in order to obtain the intended disinfecting or preservative effect (Tsuzuki; col. 5, lines 16-21 and col. 7, lines 1-10).
If ophthalmically acceptable, the organic nitrogen disinfectant can be a known cationic surfactant (Tsuzuki; col. 6, lines 10-18). Examples of suitable cationic surfactants include, e.g., alkyl ammonium salts, trialkyl benzyl ammonium salts, and tetra alkyl ammonium salts, e.g., the dialkyl dimethyl ammonium salt didecyl dimethyl ammonium chloride (i.e., the ammonium salts of claim 3) (Tsuzuki; col. 6, lines 19-35).
The organic nitrogen disinfectant to be used is not absorbed on the contact lens, has high compatibility with the material of the contact lens, and eliminates the risk of causing various eye troubles such as allergies (Tsuzuki; col. 4, lines 63-67).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an antimicrobial agent to the inks of Ocampo in view of Zhang in order to prevent microbial contamination of the inks prior to or during printing. Further, in light of the motivation provided by Tsuzuki to use an organic nitrogen containing compound as an ophthalmically acceptable disinfectant, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an ammonium salt disinfectant/antimicrobial agent, including alkylammonium salts, trialkylbenzyl ammonium salts, and dialkyl dimethyl ammonium salts as claimed, to the contact lens inks of Ocampo in view of Zhang in order to obtain a disinfecting or preserving effect of the ink while eliminating the risk of causing various eye troubles such as allergies, and thereby arrive at the claimed invention.
A rationale different from applicant’s is permissible. See MPEP 2144.IV. "The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the references." In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Regarding claim 5, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 1 as discussed above. Table 1, Printing Ink Color Blue (i.e., coloring fixing combination) (Ocampo; [0099], Example 1, Table 1) comprises 12.2% by weight Magna Pearl based on the total weight of the ink (i.e., 12.2% by weight pearlescent pigment powder). 12.2% by weight falls within the claimed pearlescent powder range of 5-40% by weight.
Table 1, Printing Ink Color Blue (Ocampo; [0099], Example 1, Table 1) comprises the adjuvants: 13.725% by weight ethyl lactate, 46.358% by weight binder, 20.276% by weight HEMA, 2.269% by weight EOEMA, 0.11% by weight Vazo 64 (additional adjuvant), and 4.148% by weight HDI (additional adjuvant). Therefore, the total weight% of adjuvants equals 86.886% based on the total weight of the Printing Ink Color Blue (i.e., 13.725% + 46.358% + 20.276% + 2.269% + 0.011% + 4.148% = 86.886%). 86.886% by weight falls within the claimed adjuvant range of 60-95% by weight.
See the Ink Formulations of Table 1 and Table 2 for additional exemplified printing inks.
Regarding claims 6-7, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 1 as discussed above. Table 1, Ink Formulations Green, ISB Hazel, Hazel and Amethyst comprise at least one of I.O. Yellow (i.e., iron oxide yellow), titanium dioxide, I.O. Red, and/or I.O. Black, i.e., an inorganic color powder (claim 6) comprising titanium dioxide, iron oxide or a combination thereof (claim 7) (Ocampo; [0099], Example 1, Table 1).
See also Table 2, Ink Formulations Green, ISB Hazel, Hazel and for similar Ink Formulations (Ocampo; [0100], Example 2, Table 2).
Regarding claims 6 and 9, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 1 as discussed above. Table 1, Ink Formulations Blue, Green, ISB Hazel, Hazel, and Amethyst comprise at least one of PNC Blue, PNC Green or Carbazole Violet (i.e., an organic color powder of claim 6), wherein PNC Blue and PNC green are phthalocyanine color powders (claim 9) (Ocampo; [0089-0090], [0099], Example 1, Table 1).
Regarding claim 8, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 6 as discussed above. Ocampo further teaches:
Pearlescent powder: The exemplified inks of Ocampo comprise about 12.2 weight% total of pearlescent pigments (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2). Specifically, Printing Ink Blue comprises 12.2% by weight Magna Pearl; Printing Ink Green comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Green; Printing Ink ISB Hazel comprises 12.197% by weight Hi Lite Gold; Printing Ink Hazel comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Gold; and Printing Ink Amethyst comprises 12.2% by weight Magna Pearl (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2).
Inorganic Color Powder: In Example 1, Table 1:
Printing Ink Green comprises 1.476% by weight the inorganic color powder I.O. Yellow;
Printing Ink IBS Hazel comprises 6.928% by weight inorganic color powder (5.355% I.O. Yellow + 0.445% titanium dioxide + 1.128% by weight I.O. Red = 6.928% by weight);
Printing Ink Hazel comprises 3.660% by weight the inorganic color powder I.O. Yellow; and
Printing Ink Amethyst comprises 5.49% by weight inorganic color powder (4.477% I.O. Yellow + 1.013% by weight I.O. Black = 5.49% by weight) (Ocampo: [0099], Example 1, Table 1).
1.476%, 6.928%, 3.660% and 5.49% by weight all fall within the claimed inorganic color powder weight percent range of 1% to 20%.
Adjuvants: In Example 1, Table 1:
Printing Ink IBS Hazel comprises 80.832% by weight adjuvants (i.e., 14.905% ethyl lactate + 39.129% binder + 20.272% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.147% HDI = 80.832% by weight adjuvants); and,
Printing Ink Amethyst comprises 82.067% by weight adjuvants (i.e., 18.763% ethyl lactate + 36.501% binder + 20.276% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.148% HDI = 82.067% by weight adjuvants) (Ocampo: [0099], Example 1, Table 1).
80.832% and 82.067% by weight fall within the claimed adjuvant range of from 40% to 85% by weight.
Ocampo teaches that for a blue color, the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.0 to about 14, more preferably from about 1.5 to about 4, wherein the blue ink preferably includes the inorganic colorant titanium dioxide (Ocampo; [0089]). For green color the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.5 to about 6, more preferably from about 1.5 to about 3.5, wherein the green ink preferably includes the inorganic colorant Cr2O3 (Ocampo; [0090]). For hazel color the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 0.3 to about 3.5, more preferably from about 0.35 to about 1.0, wherein the hazel ink preferably includes the inorganic colorant iron oxide black, iron oxide brown and titanium dioxide (Ocampo; [0091]).
In a preferred embodiment, a kit comprises a first pearlescent ink for printing a first portion a first shade at or near the inner portion of the iris, and a second pearlescent ink for printing a second portion a second shade surrounding the first portion, wherein a weight ratio of the pearlescent pigment to the conventional pigment is preferably from about 0.25 to 2.0 (Ocampo; [0092]).
The contact lens of Ocampo has an “improved lively appearance” which is a natural appearance with emotional dimension added therein, characterized by the pearlescence, luster and/or semi-opacity of the colored contact lens imparted on a wearer’s eye color and noticeable to an ordinary viewer (Ocampo; [0033] and [0037]).
Ocampo in view of Zhang and Tsuzuki do not explicitly teach a pearlescent powder wt% of from 15% to less than 40%.
While Ocampo in view of Zhang and Tsuzuki do not explicitly disclose pearlescent powder weight percentages as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the weight percent of the pearlescent powder pigments, including over the presently claimed, in order to obtain the desired color, pearlescence, luster and/or semi-opacity of the contact lens, and in order to obtain an improved lively appearance with emotional dimension added therein noticeable to an ordinary viewer.
Regarding claim 10, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 6 as discussed above. Ocampo further teaches:
Pearlescent powder: The exemplified inks of Ocampo comprise about 12.2 weight% total of pearlescent pigments (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2). Specifically, Printing Ink Blue comprises 12.2% by weight Magna Pearl; Printing Ink Green comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Green; Printing Ink ISB Hazel comprises 12.197% by weight Hi Lite Gold; Printing Ink Hazel comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Gold; and Printing Ink Amethyst comprises 12.2% by weight Magna Pearl (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2).
Adjuvants: In Example 1, Table 1:
Printing Ink IBS Hazel comprises 80.832% by weight adjuvants (i.e., 14.905% ethyl lactate + 39.129% binder + 20.272% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.147% HDI = 80.832% by weight adjuvants); and,
Printing Ink Amethyst comprises 82.067% by weight adjuvants (i.e., 18.763% ethyl lactate + 36.501% binder + 20.276% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.148% HDI = 82.067% by weight adjuvants) (Ocampo: [0099], Example 1, Table 1).
80.832% and 82.067% by weight fall within the claimed adjuvant range of from 40% to 85% by weight.
Ocampo teaches for a blue color, the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.0 to about 14, more preferably from about 1.5 to about 4, wherein the blue ink preferably includes the organic colorant copper phthalocyanine blue (Ocampo; [0089]). Example 1, Table 1, and Example 2, Table 2, Printing Inks Color Blue comprise 0.915% by weight PCN Blue (Ocampo; [0099-0100]).
For green color the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.5 to about 6, more preferably from about 1.5 to about 3.5, wherein the green ink preferably includes the organic colorant copper phthalocyanine blue (Ocampo; [0090]).
In a preferred embodiment, a kit comprises a first pearlescent ink for printing a first portion a first shade at or near the inner portion of the iris, and a second pearlescent ink for printing a second portion a second shade surrounding the first portion, wherein a weight ratio of the pearlescent pigment to the conventional pigment is preferably from about 0.25 to 2.0 (Ocampo; [0092]).
The contact lens of Ocampo has an “improved lively appearance” which is a natural appearance with emotional dimension added therein, characterized by the pearlescence, luster and/or semi-opacity of the colored contact lens imparted on a wearer’s eye color and noticeable to an ordinary viewer (Ocampo; [0033] and [0037]).
Ocampo in view of Zhang and Tsuzuki do not explicitly teach wherein the pearlescent powder is present in an amount of 15% to 40% by weight, and an organic color powder is present in an amount of from 1% to 4% as claimed.
While Ocampo in view of Zhang and Tsuzuki do not explicitly disclose pearlescent powder and organic color powder weight percentages as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the weight percent of the pearlescent and conventional organic pigments, including over the presently claimed, in order to obtain the desired color, pearlescence, luster and/or semi-opacity of the contact lens, and in order to obtain an improved lively appearance with emotional dimension added therein noticeable to an ordinary viewer.
Regarding claim 11, Ocampo in view of Zhang and Tsuzuki are relied upon as teaching the limitations of claim 6 as discussed above. Ocampo further teaches:
Pearlescent powder: The exemplified inks of Ocampo comprise about 12.2 weight% total of pearlescent pigments, which falls within the claimed pearlescent powder range of 10 to 30% (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2). Specifically, Printing Ink Blue comprises 12.2% by weight Magna Pearl; Printing Ink Green comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Green; Printing Ink ISB Hazel comprises 12.197% by weight Hi Lite Gold; Printing Ink Hazel comprises 6.1% by weight Magna Pearl + 6.1% by weight Hi Lite Gold; and Printing Ink Amethyst comprises 12.2% by weight Magna Pearl (Ocampo; [0099], Example 1, Table 1; and [0100], Example 2, Table 2).
Inorganic Color Powder: In Example 1, Table 1: Printing Ink Green comprises 1.476% by weight the inorganic color powder I.O. Yellow; Printing Ink IBS Hazel comprises 6.928% by weight inorganic color powder (5.355% I.O. Yellow + 0.445% titanium dioxide + 1.128% by weight I.O. Red = 6.928% by weight); Printing Ink Hazel comprises 3.660% by weight the inorganic color powder I.O. Yellow; and Printing Ink Amethyst comprises 5.49% by weight inorganic color powder (4.477% I.O. Yellow + 1.013% by weight I.O. Black = 5.49% by weight) (Ocampo: [0099], Example 1, Table 1).
1.476%, 6.928%, 3.660% and 5.49% by weight all fall within the claimed inorganic color powder weight percent range of 1% to 30%.
Adjuvants: In Example 1, Table 1, Printing Ink IBS Hazel comprises 80.832% by weight adjuvants (i.e., 14.905% ethyl lactate + 39.129% binder + 20.272% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.147% HDI = 80.832% by weight adjuvants); and Printing Ink Amethyst comprises 82.067% by weight adjuvants (i.e., 18.763% ethyl lactate + 36.501% binder + 20.276% HEMA + 2.269% EOEMA + 0.110% Vazo 64 +4.148% HDI = 82.067% by weight adjuvants) (Ocampo: [0099], Example 1, Table 1).
80.832% and 82.067% by weight fall within the claimed adjuvant range of from 40% to 85% by weight.
Ocampo teaches for a blue color, the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.0 to about 14, more preferably from about 1.5 to about 4, wherein the blue ink preferably includes the organic colorant copper phthalocyanine blue (Ocampo; [0089]). Example 1, Table 1, and Example 2, Table 2, Printing Inks Color Blue comprise 0.915% by weight PCN Blue (Ocampo; [0099-0100]).
For green color the ratio of weight percentages of the pearlescent pigment to the conventional pigment is preferably from about 1.5 to about 6, more preferably from about 1.5 to about 3.5, wherein the green ink preferably includes the organic colorant copper phthalocyanine blue (Ocampo; [0090]).
In a preferred embodiment, a kit comprises a first pearlescent ink for printing a first portion a first shade at or near the inner portion of the iris, and a second pearlescent ink for printing a second portion a second shade surrounding the first portion, wherein a weight ratio of the pearlescent pigment to the conventional pigment is preferably from about 0.25 to 2.0 (Ocampo; [0092]).
The contact lens of Ocampo has an “improved lively appearance” which is a natural appearance with emotional dimension added therein, characterized by the pearlescence, luster and/or semi-opacity of the colored contact lens imparted on a wearer’s eye color and noticeable to an ordinary viewer (Ocampo; [0033] and [0037]).
Ocampo in view of Zhang and Tsuzuki do not explicitly teach an organic color powder weight% of from 1% to 4% as claimed.
While Ocampo in view of Zhang and Tsuzuki do not explicitly disclose organic color powder weight percentages as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the weight percent of the organic pigments, including over the presently claimed, in order to obtain the desired color, pearlescence, luster and/or semi-opacity of the contact lens, and in order to obtain an improved lively appearance with emotional dimension added therein noticeable to an ordinary viewer.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ocampo in view of Zhang and Tsuzuki as applied to claim 1, and further taken in view of evidence by Blackstock, US 2006/0227533 (Blackstock).
Ocampo in view of Zhang and Tsuzuki are relied upon as disclosing the limitations of claim 1 as discussed above. Ocampo teaches that pearlescent pigments which are mica platelets with an oxide coating include those under the “Mearlin Pigment” line, and include “Hi-Lite Interference Colors” and “Magnapearl” (Ocampo; [0028]). Printing Ink Colors Blue, Green, ISB Hazel, Hazel, and Amethyst comprise the pearlescent pigments Magna Pearl, Hi Lite Gold and/or Hi Lite Green (Ocampo; [0099], Table 1 and [0100], Table 2). As is evidenced by Blackstock, Hi Lite Gold manufactured by Mearlin Corporation is titanium oxide coated mica particles, i.e., a mica substrate coated with titanium dioxide as claimed (Blackstock; [0003]).
Response to Arguments
1) Applicant's arguments filed 11/25/2025 regarding the 35 U.S.C. § 102(a)(1) rejection over Lin, CN 111592797A (Lin) have been fully considered, but they are not persuasive. Applicant primarily argues:
“However, Lin fails to teach the at least one claimed feature that ‘dispersant comprising polyacids and ammonium salts.’ Accordingly, current claim 1 is not anticipated by Lin."
(Remarks, page 8).
Examiner respectfully traverses because Lin teaches both ammonium salt dispersants and polycarboxylic additives (Lin; page 4, lines 12-13; and page 5, lines 30-31). See pages 3-4 set forth above.
2) Applicant’s arguments, see Remarks, page 9, filed 11/25/2025, with respect to the rejection of claims 1, 5-7 and 9 under 35 U.S.C. § 102(a)(1) over Ocampo et al., US 2005/0185134A1 (Ocampo), and of claim 4 over Ocampo taken in view of evidence by Blackstock, US 2006/0227533 (Blackstock), have been fully considered and are persuasive. Specifically, Ocampo does not anticipate color fixing compositions comprising dispersants as presently claimed. Therefore, the rejections have been withdrawn.
3) Applicant's arguments, see Remarks, page 9, filed 11/25/2025, with respect to the 35 U.S.C. § 103 rejection over Ocampo have been fully considered and are persuasive. Specifically, Ocampo alone does not teach color fixing compositions comprising an ammonium salt dispersant as presently claimed. Therefore, the rejection over Ocampo has been withdrawn.
However, upon updated searching with respect to the amended claims, a new grounds of rejection is made under 35 U.S.C. § 103 over Ocampo in view of Zhang and Tsuzuki.
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.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732