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 .
DETAILED ACTION
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.
Claim 32 is 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.
Applicant states that new claim 32 is support by para. [0035] of the specification, but, the para. [0035] is directed to new claim 33. Applicant failed point out the support for claim 33. Thu, the new claim 33 would be new matter. Negative limitation must have an exclusive support in the originally filed specification, see Ex parte Grasselli, 713 F.2d 731, 218 USPQ 769 (Fed. Cir. 1983). MPEP 2173.05(i) and MPEP 2143.03.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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.
Claims 1, 4, 11 and 12 are rejected under 35 U.S.C.102(a)(1) as being anticipated by EP 1582910 B1 (April 27, 2011).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
Applicant asserts that EP teaches a soft ocular contact lens obtained by immersing the substrate in an aqueous solution of monomers as opposed to the instant aqueous solution of a hydrophilic polymer. The aqueous solution of monomers would form a single hydrophilic polymer coating on the soft ocular contact lens inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of EP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Thus, the argument based on a method would have little probative value.
An invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Note that the rejection of method claims 15, 16, 18, 25, 26 and 28 are withdrawn.
Claims 1, 4, 11, 12 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1582910 B1 (April 27, 2011).
Regarding claim 33, EP teaches a lens substrate obtained from comonomers such as alkyl(meth)acrylate and a fluorine-containing alkyl (met)acrylate and a mixture of 2 or m0e in [0063-0069] which would make the claim 33 obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1582910
B1 (April 27, 2011) as applied to claims 1, 4, 11, 12 and 33 above, and further in view of Machine translated JP H11172149 A (June 29, 1999) or Gorne et al. (US 9,173,974).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here) and the response above.
Claims 14 is rejected under 35 U.S.C. 103 as being unpatentable over EP
1582910 B1 (April 27, 2011) as applied to claims 1, 4, 11, 12 and 33 above, and further in view of Havenstrite et al. (US 2017/0160432 A1).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here) and the response above.
CLAIM ALLOWANCE
Method claims 15, 16, 18, 20, 22, 24-26 and 28-30 are allowed since applicant’s argument as to instantly recited step of immersing the substrate in an aqueous solution of a hydrophilic polymer is found persuasive.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Machine translated DE 69636460 T2 (March 29, 2007) teaches a polymeric coating obtained by after-glow plasma-induced polymerization of a monomer in abstract and examples.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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