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 .
Amendment Entered
In response to the amendment filed on January 22nd, 2026, amended claims 1-3, 5, and 7-9 are entered. Claim 4 is canceled. Claims 11-17 remain withdrawn from consideration. Claims 1-3 and 5-10 are currently under examination.
Response to Arguments
Applicant's remarks and amendments with respect to the objection of the abstract have been fully considered. The objection is withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the claim objections have been fully considered. The objections are withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 112(b) have been fully considered. The rejections are withdrawn in view of the amendment.
Applicant's remarks and amendments with respect to the rejections under 35 U.S.C. 103 have been fully considered. The rejections are withdrawn in view of the amendment.
Claim Objections
Claim 2 is objected to because of the following informality:
Claim 2 currently recites “(PLGA), or polyvinyl” in line 5, but should read “(PLGA), and polyvinyl”
Appropriate correction is required.
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 1-3 and 5-10 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 “wherein the intraocular pressure sensor includes: a gold hollow nanowire layer formed on a transparent substrate” in lines 7-8. However, the Applicant’s Specification does not disclose wherein “the intraocular pressure sensor includes: a gold hollow nanowire layer formed on a transparent substrate”. Although the Applicant’s Specification recites wherein the intraocular pressure sensor is formed on the transparent substrate (Page 8 of the Applicant’s Specification), there is no recitation that the intraocular pressure sensor includes the transparent substrate itself.
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 1-3 and 5-10 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 “[a] contact lens…the contact lens comprising an intraocular pressure sensor and a drug reservoir…wherein the intraocular pressure sensor includes: a gold hollow nanowire layer formed on a transparent substrate” in lines 1-8. Although “contact lens” has been recited in the preamble, the only elements recited after “comprising” are an “intraocular pressure sensor” and a “drug reservoir”. Therefore, it is unclear as to whether these two elements, alone, can constitute a “contact lens”, or if there is something missing in the claims. As best understood by the Examiner, it seems as though the “transparent substrate” is intended to be the body of the “contact lens”, given the limitations of dependent claim 3. However, since there does not appear to be any structure that fits the common definition of a contact lens recited in independent claim 1, it is unclear as to what exactly the “contact lens” entails.
Claim 2 recites “wherein the contact lens comprises one or more selected from a group consisting of an elastomer such as a silicone elastomer, silicone hydrogel, and polymer hydrogel such as poly(2-hydroxyethyl methacrylate) (PHEMA), polyvinylpyrrolidone (PVP), poly(lactic acid-glycolic acid) (PLGA), or polyvinyl alcohol (PVA)” in lines 1-5. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention or not. See MPEP § 2173.05(d). In this case, it is unclear as to whether the group may consist of any type of elastomer, or if the group may only consist of the specified elements recited after “such as”, to qualify as an elastomer. Similarly, it is unclear as to whether the group may consist of any type of polymer hydrogel, or if the group may only consist of the specified elements recited after “such as”, to qualify as a polymer hydrogel. Thus, the combination of the term “such as” and the Markush grouping language renders the claim indefinite because it is unclear as to exactly what materials are required; thus, the scope of the claim cannot be ascertained. Furthermore, it is unclear as to whether all of the elements of “silicone elastomer, silicone hydrogel, and polymer hydrogel” are considered a type of “elastomer”, or if the elements were meant to be categorized separately. Similarly, it is unclear as to whether all of the elements of “poly(2-hydroxyethyl methacrylate) (PHEMA), polyvinylpyrrolidone (PVP), poly(lactic acid-glycolic acid) (PLGA), or polyvinyl alcohol (PVA)” are considered a type of “polymer hydrogel”, or if the elements were meant to be categorized separately.
Claim 3 recites “wherein the intraocular pressure sensor and the drug reservoir are formed on the transparent substrate” in lines 1-2. Claim 1 had previously recited wherein “the intraocular pressure sensor includes: a gold hollow nanowire layer formed on a transparent substrate”. Therefore, it is unclear as to how the “transparent substrate” can be both included within the intraocular pressure sensor and have the intraocular pressure sensor formed upon it.
Claim 7 recites “wherein the drug reservoir includes: an electrode pattern containing gold formed on a portion of a surface of the transparent substrate…wherein holes are formed in the transparent substrate” in lines 1-7. Claim 1 had previously recited wherein “the intraocular pressure sensor includes: a gold hollow nanowire layer formed on a transparent substrate”. Therefore, it is unclear as to whether the drug reservoir is further included within the intraocular pressure sensor, or if it is a separate element, since Claim 1 had also previously recited the intraocular pressure sensor and the drug reservoir as two different components of the contact lens.
Claim 9 recites “to or from outside” in lines 2-3. It is unclear as to what “outside” means in the context of the current claim limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANEL J YOON whose telephone number is (571). The examiner can normally be reached on Monday-FridayPM.
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/CHANEL J YOON/Examiner, Art Unit 3791
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