1.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.
Claim(s) 1-4 and 10-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neefe 4,472,327 in view of Neefe 4,738,520 and further in view of Liang 2008/0033546 (see the Abstract).
Neefe -327 and Neefe -520 are applied for reasons of record, the references disclosing the basic claimed contact lens making method lacking essentially the aspect of the second, inhomogeneous, optically -scattering region having an inner diameter smaller than the diameter of a human pupil. Liang discloses exactly such a contact lens and method of making same, wherein the central clear portion has a diameter less than that of the human pupil, meaning that the annular portion with a reduced light transmission that surrounds the central clear portion must have an inner diameter smaller than the pupil diameter. It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the method of Neefe -327 by forming the light scattering portion so that it has an inner diameter smaller than the diameter of the human pupil to provide the wearer with a contact lens that improves night vision contrast as taught in the Abstract of Liang. The exact diameter values as recited in instant claims 10-15 and 24 are submitted to have been well within the skill level of the art based on known lens and pupil diameters. While it is noted that Liang uses the pupil diameter at night instead of during the day—ie, normal lighting conditions-- as set forth in instant claim 13, it is submitted that such would have been an obvious distinction dependent on the corrective duty expected from the lens. It is submitted that the shaping by grinding of the blank as recited in instant claims 16, 18, 19 and 20 would have been obvious over the cutting/grinding depicted in Figs. 4 and 5 of Neefe -520. It is conventional in the art to employ concave and convex shaping tools to form convex and concave lens surfaces, respectively. It is submitted that the combination as applied would function to reduce a contrast of an image in the peripheral field of vision—see the last two sentences of the Abstract in Liang –ie, “improve night vision contrast”. Neefe -327 discloses light reflecting particles 10 dispersed in a matrix material 11 and it is submitted that the refractive index of the particles is different than the refractive index of the matrix as recited in instant claim 21. It is further submitted that the exact difference in refractive index (instant claim 22) and dimensions of the optically scattering features (instant claim 23) would have been well within the skill level of the art in Neefe -327 dependent on exact optical effect desired for the presence of the light scattering particles in the lens.
2.Applicant’s arguments with respect to claim(s) 1-4 and 10-24 have been considered but are moot in view of the new ground of rejection. In view of the amendment, new art to Liang has been found which fairly teaches the aspect noted as lacking in Neefe -327 and -520. It is submitted that one of ordinary skill in this art would have been able to modify the method of Neefe -327 so that the light scattering region has a smaller inner diameter than—ie, overlaps—the human pupil so that the peripheral vision of the wearer can be enhanced. This is fairly well known in the art by employing a “pinhole” central clear portion over the pupil as is done in Liang. It is submitted that the additional aspects recited in newly added claims 10-24 are also known in the art and would have been obvious aspects in the method of the applied art as generally set forth in paragraph 1, supra.
3.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.
4.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
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