DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group/Invention II (claims 24-26, drawn to a method of designing an intraocular lens) in the reply filed on 17 September 2025 is acknowledged.
3. Applicant’s election without traverse of LENS PROFILE – Species A (embodied in Figure 5) in the reply filed on 17 September 2025 is acknowledged.
4. Claim 25 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species/embodiment (i.e., Figure 6 is the only profile wherein “the third set having a profile in r-squared space that is substantially identical to the profile of the first set”), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 September 2025.
Priority
5. Figure 6 of the instant application was introduced during the filing of parent case 16/015,119, filed 21 June 2018. Therefore, the effective filing date for the subject matter of Figure 6 is 21 June 2018.
Drawings
6. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
a. Therefore, the “the first set being repeated in series at least once on the central zone” (lines 5-6 of claim 24) 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 § 101
7. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
8. Claims 24 and 26 are rejected under 35 USC 101 as being directed to non-statutory subject matter because these are method or process claims that do not transform a particular article to a different state or thing, nor are they tied to a particular machine. See In re Bilski (Fed Cir, 2007-1130, 10/30/2008) where the Fed. Cir. held that method claims must pass the "machine-or-transformation test" in order to be eligible for patent protection under 35 USC 101. The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies §101 either by showing that his/her claim is tied to a particular machine, or by showing that his/her claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590. (See In re Bilski, 88 USPQ2d at 1396.)".
Independent claim 24 only recites the steps of “defining” and “generating”. However, independent claim 24 does not require the method as implemented by a particular machine, AND the method does not particularly transform a particular article. Claim 26 depends from claim 24.
Claim Rejections - 35 USC § 112
9. 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.
10. Claims 24 and 26 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.
a. Regarding independent claim 24, the recitation “the first set being repeated in series at least once on the central zone” (lines 5-6) is vague and not entirely clear, in view of the filed drawings. This renders claim 24 indefinite as to the scope of the invention. Claim 26 depends from claim 24.
Looking at Figure 5 (the elected embodiment/species) the slope AND width of echelette 520a (from first set 508) is clearly shown as different from the slope and width of echelette 520b. Echelette 520b is part of the repeated set 530. In other words, if the first set is recited to be “repeated in series at least once on the central zone”, then the repeated set (i.e., 520b + 522b) should have the exact same shape and structure as first set 508 (i.e., 520a + 522a).
For purpose of examination, the phase “repeated in series at least once” will be broadly interpreted to include, e.g., at least one instance of repeat of the height, at least one instance of repeat of the width, at least one instance of repeat of the echelette slope, and/or at least one instance of repeat of intended focus (near, intermediate, or far).
Claim Rejections - 35 USC § 102
11. 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.
12. Claims 24 and 26 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Zhao (US PG Pub No. 2013/0278891 A1).
Zhao ‘891 discloses a method of designing an intraocular lens (Figures 2A and 2B, and paragraph [0046]), the method comprising:
defining a diffractive profile including:
a central zone and a peripheral zone (Figures 2A and 2B),
the central zone includes a first set of two echelettes (Figure 4F – echelettes 23b, 23a) arranged around an optical axis (24), the first set having a profile in r-squared space (Figure 4F), the first set being repeated in series at least once on the central zone, and
the peripheral zone includes a second set of two echelettes (Figure 4F – echelettes 23c, 23ba) arranged around the optical axis, the second set having a profile in r-squared space that is different than the profile of the first set (clearly shown in Figure 4F), the second set being repeated in series at least once on the peripheral zone; and
generating a diffractive lens surface based on the diffractive profile.
See below for annotated Figure 4F of Zhao ‘891.
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Regarding claim 26, Zhao ‘891 discloses wherein each of the two echelettes of the first set have a different profile than each other in r-squared space, and each of the two echelettes of the second set have a different profile than each other in r-squared space (clearly shown in Figure 4F).
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Figures 10 and 12 of Cohen (US PG Pub No. 2012/0224138 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Javier G. Blanco whose telephone number is (571)272-4747. The examiner can normally be reached on M- F (10am-7:30pm).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE Jerrah C. Edwards, at (408) 918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAVIER G BLANCO/ Primary Examiner, Art Unit 3774