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 .
Claim Rejections - 35 USC § 101
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.
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is directed to “a program,” which is not a processes, machine, manufacture or composition of matter. “Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations” are not considered to be directed to any of the statutory categories (see MPEP 2106.03). Similarly, “a product claim to a software program that does not also contain at least one structural limitation (such as a "means plus function" limitation) has no physical or tangible form, and thus does not fall within any statutory category” (MPEP 2106.03). As claim 4 is directed solely to a program, it does not fall under any of the statutory categories and is therefore not patent eligible.
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) 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obayashi (US 2009/0142993).
Regarding claim 4, Obayashi teaches program (see 101 rejection above; this claim should recite particular structure for storing a program which executes a method) for processing a spectacle lens (as described in [0045] Obayashi discloses a controller with memory for carrying out the processing steps) a spectacle lens that has an electronic element overlapping an optical element (LE) and supplies electric energy to the electronic element through a terminal portion located on a surface on one side in a front-back direction to produce a dimming effect (note that the structure of the desired workpiece does not change the steps carried out by a program, as the carried out steps can be performed on a lens with or without the described electronic elements), the program causing a control unit (50) for controlling processing of the spectacle lens ([0045]) to acquire inner dimension information (fig 7; [0051]; measuring ΔFx and ΔFy) of a retaining portion of a frame (at inner portion depicted in fig 7), the retaining portion sandwiching and retaining a periphery of the spectacle lens between a front and a rear (between Fa and Fb); acquire thickness information of the periphery of the spectacle lens processed into an external shape corresponding to the frame (measuring ΔX; [0051]); determine an interference area (611) of the periphery of the spectacle lens that does not fit into the retaining portion on the basis of the inner dimension information of the retaining portion and the thickness information of the periphery of the spectacle lens ([0051]); and performing thickness adjustment processing for removing the interference area ([0052-0053]), on the other side (concave side) of the spectacle lens opposite to the surface (convex surface) on the one side of the spectacle lens (as shown in fig 7).
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.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obayashi (US 2009/0142993) in view of Oshima (US 2020/0052254, cited by applicant).
Regarding claim 1, Obayashi teaches a method of processing a spectacle lens that has an optical element (LE) and a surface on one side in a front-back direction (convex surface on front of lens), the method comprising acquiring inner dimension information (fig 7; [0051]; measuring ΔFx and ΔFy) of a retaining portion of a frame (at inner portion depicted in fig 7), the retaining portion sandwiching and retaining a periphery of the spectacle lens between a front and a rear (between Fa and Fb); acquiring thickness information of the periphery of the spectacle lens processed into an external shape corresponding to the frame (measuring ΔX; [0051]); determining an interference area (611) of the periphery of the spectacle lens that does not fit into the retaining portion on the basis of the inner dimension information of the retaining portion and the thickness information of the periphery of the spectacle lens ([0051]); and performing thickness adjustment processing for removing the interference area ([0052-0053]), on the other side (concave side) of the spectacle lens opposite to the surface on the one side of the spectacle lens (as shown in fig 7).
Obayashi does not teach the spectacle lens having an electronic element overlapping the optical element, and supplying electric energy to the electronic element through a terminal portion located on the surface to produce a dimming effect. Oshima teaches a method of processing a spectacle lens, wherein the lens includes an electronic element (143) overlapping an optical element (141) and supplies electric energy to the electronic element through a terminal portion (142a) located on a surface on one side in a front-back direction to produce a dimming effect ([0146]). It is obvious to apply a known technique to a known device to yield predictable results (MPEP 2143 I. D). Therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Obayashi to a lens with an electrical dimming element, including an electronic element overlapping the optical element of Obayashi, wherein electric energy can be supplied through a terminal portion on the side thereof, as this allows a user to selectively change the transmittance of the lens, allowing them to be used as sunglasses as taught by Oshima ([0066], [0071]).
Regarding claims 2-3 and 5, Obayashi, as modified, teaches all the limitations of claim 1 as described above. Obayashi further teaches the surface on the one side of the spectacle lens is a convex surface (front, left surface as viewed in fig 7 of Obayashi) and the surface on the other side is a concave surface (as shown in fig 7); the thickness adjustment processing removes only a part of the spectacle lens in a radial direction that overlaps the retaining portion (as shown in fig 7, the removed part 611 is only a part of the lens which overlaps the retaining portion in a radial direction); and wherein the thickness adjustment processing removes only a part of the spectacle lens in the radial direction that overlaps the retaining portion (as shown in fig 7, the removed part 611 is only a part of the lens which overlaps the retaining portion in a radial direction).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Other similar lens processing methods are cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCEL T DION whose telephone number is (571)272-9091. The examiner can normally be reached M-Th 9-5, F 9-3.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCEL T DION/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723