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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 18-30 is/are pending. Claim(s) 1-17 is/are canceled.
Claim Warnings
Applicant is advised that should claim 19 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 20 be found allowable, claim 24 (which depends from claim 23 and thus includes all limitations of claim 23) will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 27 be found allowable, claim 28 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In summary, the following are pairs of duplicate claims: (1) claims 19 and 22, (2) claims 20 and 24, and (3) claims 27 and 28.
Election/Restrictions
Applicant’s election without traverse of Species 1-3 in the reply filed on 3/12/2026 is acknowledged.
No claims stand as non-elected due to Applicant’s cancelation of all non-elected claims in the reply filed on 3/12/2026.
Information Disclosure Statement
The information disclosure statement filed 2/16/2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because FOR citation # 18 was not provided. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
All non-lined through citations were considered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application will determine what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 18-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-4 and 10 of U.S. Patent No. 11,622,850 B2 in view of Stevens (US 2013/0331937 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the following prior claims contain the limitations claimed by the current Application as indicated in the following table.
Current Application
Prior Patent ‘850
18-24
1
25
2
26
3
27-28
4
29
10
The ‘850 patent claims the invention substantially as claimed but fails to claim the depression is not symmetrical about an axis orthogonal to an optical axis of the optic portion.
Stevens teaches an IOL having optic and peripheral portions where there is a depression in the optic portion such that the depression is not symmetrical about an axis orthogonal to an optical axis of the optic portion (e.g. Figure 33).
Stevens and the ‘850 patent’s claims are concerned with the same field of endeavor as the claimed invention, namely IOLs having optic and peripheral portions and including a depression.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ‘850 patent’s claims such that the IOL has the non-symmetrical feature as claimed as it is a simple substitution of one known element for another to obtain predictable results (MPEP 2143(I)) of an IOL with optic and peripheral portions that mate together.
Claim Rejections - 35 USC § 102
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.
Claim(s) 18-19, 21-22, and 25-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stevens (US 2013/0331937 A1).
Regarding Claim 18, Stevens teaches an intraocular lens (e.g. abstract), comprising:
an optic portion (e.g. Figure 33, #70; top element in Figure 35); and
a peripheral portion (e.g. Figure 33, #72; bottom element in Figure 35),
wherein an outer periphery of the optic portion has a peripheral surface (e.g. Figure 33), wherein the peripheral surface has a depression (e.g. annotated Figure 35(1) below), that is not symmetrical about an axis orthogonal to an optical axis of the optic portion (e.g. annotated Figure 35(1) below, about axis that is the dotted line shown), and wherein a radially inner portion of the peripheral portion of the intraocular lens has an inner surface (e.g. Figures 33, 35),
wherein the peripheral surface is directly adjacent to the inner surface and does not directly extend from the inner surface (e.g. Figure 33), and
wherein at least a portion of the inner surface is disposed in the depression (e.g. Figure 33).
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530
863
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Annotated Figure 35(1), Stevens
Regarding Claims 19 and 22, the depression is defined such that a portion of the peripheral surface is set radially inward relative to another portion of the peripheral surface along an anterior-to-posterior direction (e.g. Figure 33).
Regarding Claim 21, the portion of the inner surface is disposed in the depression when the intraocular lens is in an at-rest configuration (e.g. Figure 33).
Regarding Claim 25, the inner surface that is disposed in the depression is disposed axially between an anterior-most location of the optic portion and a posterior-most location of the optic portion (e.g. Figure 33).
Regarding Claim 26, the inner surface is spaced away from and around the outer periphery of the optic portion from a location where the peripheral portion extends from the optic portion (e.g. Figure 33).
Regarding Claims 27-28, the inner surface (e.g. annotated Figure 35(2) below, label #2) is disposed between a location where the peripheral portion extends from the optic portion (e.g. annotated Figure 35(2) below, label #1) and a free and closed distal end of the peripheral portion (e.g. annotated Figure 35(2) below, label #3).
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542
919
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Annotated Figure 35(2), Stevens
Regarding Claim 29, the inner surface that is disposed in the depression has a height in an anterior-to-posterior direction that is less than a greatest height dimension of the peripheral portion (e.g. Figure 33; the inner surface height is less that the total height (greatest height) of the peripheral portion).
Regarding Claim 30, the peripheral surface comprises a plurality of depressions spaced apart around the outer periphery of the optic portion (e.g. Figure 33, # 862 in #76s; Figure 12A shows that #s 76 are spaced apart lugs).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 20 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stevens (US 2013/0331937 A1) as discussed supra and further in view of Smiley, et al (Smiley) (US 2013/0131794 A1).
Regarding Claim 20 and 23-24, Stevens discloses the invention substantially as claimed but fails to teach the intraocular lens is a fluid- filled intraocular lens, wherein the optic portion comprises an optic fluid chamber, and wherein the peripheral portion comprises at least one peripheral fluid chamber in fluid communication with the optic fluid chamber.
Smiley teaches an IOL having optic (e.g. Figure 1C, #12) and peripheral portions (e.g. Figure 1C, #s 14) and the intraocular lens is a fluid-filled intraocular lens (e.g. Figures 1A-H, [0049]), wherein the optic portion comprises an optic fluid chamber (e.g. Figure 1C, #12), and wherein the peripheral portion comprises at least one peripheral fluid chamber in fluid communication with the optic fluid chamber (e.g. Figure 1C, [0049]).
Smiley and Stevens are concerned with the same field of endeavor as the claimed invention, namely IOLs having optic and peripheral components.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Stevens such that the optic and haptic portions are fluid elements that communicate with one another as taught by Smiley in as it is combining prior art elements according to known methods to yield predictable results (MPEP 2143(I)). Here, the results are predictable because each claimed element performs in the same manner in the combination as it does separately. Specifically, the fluid provides a means of transferring the forces of the eye muscles to the optic portion, which results in the needed accommodation.
Relevant Prior Art
WO 2015/148673 A1 to de Juan, et al (provided in parent Application 16/758,341 on 9/14/2021) teaches an AIOL having optic and peripheral portions, where the optic has a depression into which the peripheral portion is placed (e.g. Figures 15-16, 25A-G).
US 4,617,023 to Peyman teaches an IOL having optic and peripheral portions, where the optic has a depression into which the peripheral portion is placed (e.g. Figures 1-2).
US 4,781,718 to Lindstrom teaches an IOL having optic and peripheral portions, where the optic has a depression into which the peripheral portion is placed (e.g. Figure 1).
US 2002/0143395 A1 to Skotton teaches an IOL having optic and peripheral portions, where the optic has a depression into which the peripheral portion is placed (e.g. Figures 8A-B).
US 2002/0128710 A1 to Eggleston teaches an IOL having optic and peripheral portions, where the optic has depressions into which the peripheral portion is placed (e.g. Figures 1-3).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS BARRETT can be reached at (571)272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 4/14/2026
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