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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/18/2023 and 10/31/2025 have been considered by the Examiner and made of record in the application file.
Election/Restrictions
Applicant’s election without traverse of claims 1-2, 6-11, and 16-19 in the reply filed on 12/19/2025 is acknowledged. The examiner thanks the applicant for indicating claims 1, 2, and 5-20 read on Species A1, claims 1-4 and 6-20 read on Species B2, and claims 1-19 read on Species D1. Claims 12, 13, and 15 are directed to non-elected Species C1, C2, and C4, and are therefore withdrawn. Regarding the election of Species D1, Upon further consideration, examiner withdraws the restriction between Species D1 and D2, and therefore claim 20 is rejoined and will be examined. Therefore, the claims that are being examined are claims 1-2, 6-11, and 16-20.
Claims 3-5, 12-13, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/29/2025.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the transmission only of wavelengths between 520 nm and 590 nm must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities:
In claim 1, examiner suggests “wherein said first support layer has a thickness of between 0.5 mm and 2 mm and/or wherein said second polarizing layer has a thickness of between 0.1 mm and 0.6 mm”.
In claim 2, examiner suggests "said first support layer comprises from 2% to 15% of said pigment".
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 1-2, 6-11, and 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a long pass filter which attenuates shorter wavelengths and transmits longer wavelengths, does not reasonably provide enablement for a filter which only transmits wavelengths between 520 nm and 590 nm. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding claim 1, there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the scope of enablement requirement and whether any necessary experimentation is “undue”. These factors include, but are not limited to: (A) The breadth of the claims; (B) The Nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure (see In re Wands, 858 F.2d 7331, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
In the instant case, the claim states “said optical filter being configured in such a way as to allow a transmission of only electromagnetic waves which have a wavelength comprised between 520 nm and 590 nm. However, the specification points to Fig. 11 as “a graph showing the course of spectral transmittance of the preferred embodiment of glasses according to the present invention,” and Fig. 11 shows that wavelengths of approximately 400 nm to 800 nm are transmitted. Further, claim 16 states the first support layer allows transmission of wavelengths between 455 nm and 480 nm, which directly contradicts the limitation of claim 1, implying that the optical filter does not only transmit wavelengths between 520 nm and 590 nm.
Thus, the breadth of the limitations (Wands factor A) does not match the nature of the invention (Wands factor B) in light of prior art (Wands factor C) beyond what one skilled in the art (Wands factor D) could predictably arrive at (Wands factor E). There is no disclosure, teaching, or suggestion in the specification to support this limitation (Wands factor F & G). Therefore, one of ordinary skill in the art would be unable to arrive at the claimed invention without undue experimentation (Wands factor H) using the instant application disclosure, see MPEP 2164.01(a).
For the purposes of examination, examiner will use “said optical filter being configured in such a way as to allow a transmission
Claims 2, 6-11, and 16-20 are dependent on claim 1 and therefore inherit the same issues.
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 1-2, 6-11, and 16-20 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.
Regarding claim 1, the limitation “wherein said first support layer has a thickness of between 0.5 and 2 mm and/or wherein said second polarizing layer has a thickness of between 0.1 and 0.6 mm and wherein said first support layer comprises polyallyldiglycol-carbonate (PADC)” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether the limitation wherein said first support layer comprises PADC is part of the and/or statement, indicating that that either the thickness of the first support layer is required or that both the second polarizing layer thickness and the first support layer comprising PADC are required, or if the PADC is required independently of the and/or statement wherein either the thickness of the first support layer or the thickness of the second polarizing layer are required.
For the purposes of examination, examiner assumes “wherein said first support layer comprises polyallyldiglycol-carbonate (PADC); and wherein said first support layer has a thickness of between 0.5 and 2 mm and/or wherein said second polarizing layer has a thickness of between 0.1 and 0.6 mm.”
Claims 2, 6-11, and 16-20 are dependent on claim 1 and therefore inherit the same issues.
Regarding claim 2, the limitation “so as to modulate 95% of wavelengths comprised between 420 nm and 560nm” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear what the word “modulate” means. It is unclear if modulating the wavelengths means it is filtering out the wavelengths, changing the average intensity transmission of the wavelengths, or imparting some other affect to the wavelengths. Further, it is unclear what constitutes a “wavelength” – whether a wavelength is a nanometer, an angstrom, the entire spectrum, etc. Even further, it is unclear whether modulating 95% of the wavelengths means that a subset comprising 95% of the wavelengths in the given range are being affected, or whether all of the wavelengths in the given range are being modulated by 95%.
For the purposes of examination, examiner will interpret this limitation as inherent.
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation "the first support layer is made of polymeric material" does not further limit from claim 1 because claim 1 requires the first support layer to comprise PADC, which is a polymeric material. Therefore the limitation of claim 11 broadens the claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1, 7, 9-11, 16, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vetro (US 20180321510 A1).
Regarding independent claim 1, Vetro discloses an optical filter for the selective transmission of electromagnetic waves which make up a light radiation, comprising:
- a first transparent support layer (¶0021, ¶0032), comprising a pigment (dye A and dye B; ¶0018-¶0021) derived from lutein (¶0102); and
- a second polarizing layer (¶0174),
said optical filter being configured in such a way as to allow a transmission only of electromagnetic waves which have a wavelength comprised between 520 nm and 590 nm (Figs. 4-5); wherein said first support layer comprises polyallyldiglycol-carbonate (PADC) (implicit from ¶0037); and wherein said first support layer has a thickness of between 0.5 and 2 mm (¶0098) and/or wherein said second polarizing layer has a thickness of between 0.1 and 0.6 mm.
Regarding claim 7, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said first support layer has a thickness comprised between 0.5 mm and 2 mm (¶0098).
Regarding claim 9, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said second polarizing layer is applied on, or is incorporated within, said first support layer (¶0174).
Regarding claim 10, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said second polarizing layer is configured to implement a circular or linear polarization (implicit that a polarizing layer for use in an ophthalmic lens, see ¶0001, would impart a linear polarization; ¶0174).
Regarding claim 11, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said first support layer is made of polymeric material (¶0037).
Regarding claim 16, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said first support layer is configured to allow the transmission of electromagnetic waves which have a wavelength comprised between 455 nm and 480 nm (Figs. 4-5).
Regarding claim 18, Vetro discloses an ophthalmic lens (¶0001, ¶0032-¶0033) comprising an optical filter according to claim 1.
Regarding claim 19, Vetro discloses glasses (¶0032-¶0033) comprising an ophthalmic lens (¶0032-¶0033) according to claim 18.
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.
Claim(s) 2, 6, 8, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vetro (US 20180321510 A1).
Regarding claim 2, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said first support layer modulates 95% of wavelengths comprised between 420 nm and 560nm (inherent insofar as it is understood, see 112(b) rejection above). Vetro does not explicitly disclose said first support layer comprises from 2 to 15% of said pigment.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case, Vetro discloses all of the claimed elements of an optical filter, fulfilling the general conditions of the claim. One would be motivated to have the first support layer comprise 2% to 15% of the pigment (dye A and dye B) for the purpose of light be attenuated by a desired amount and to be able to attenuate the light while still keeping the optical filter transparent.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the first support layer to comprise 2% to 15% of the pigment for the purpose of light be attenuated by a desired amount and to be able to attenuate the light while still keeping the optical filter transparent.
Regarding claim 6, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro further discloses said pigment (dye A and dye B) has a vegetable composition (implicit from ¶0102 because lutein is generally found in vegetables) and an acrylic composition (¶0041, ¶0044-¶0046, ¶0062-¶0072). Vetro does not explicitly disclose said pigment has 0.1%-10% vegetable composition and 99.9%-90% acrylic composition.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Vetro discloses all the claimed elements of an optical filter, fulfilling the general conditions of the claim. One would be motivated to use a pigment with a 0.1%-10% vegetable composition and 99.9%-90% acrylic composition for the purpose of efficiently binding the vegetable composition using the acrylic composition.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for said pigment to have 0.1%-10% vegetable composition and 99.9%-90% acrylic composition for the purpose of efficiently binding the vegetable composition using the acrylic composition.
Regarding claim 8, Vetro discloses the optical filter according to claim 1, as set forth above. Vetro is silent on the thickness of the second polarizing layer. Specifically, Vetro does not disclose said second polarizing layer has a thickness comprised between 0.1 mm and 0.6 mm.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Vetro discloses all the claimed elements of an optical filter, fulfilling the general conditions of the claim. One would be motivated to have the thickness of the second polarizing be between 0.1 mm and 0.6 mm for the purpose of not making the ophthalmic lens too thick while maintaining structural integrity.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the thickness of the second polarizing to be between 0.1 mm and 0.6 mm for the purpose of not making the ophthalmic lens too thick while maintaining structural integrity.
Regarding claim 17, Vetro discloses the optical filter according to claim 16, as set forth above. Vetro does not disclose said first support layer is configured to allow a transmittance in blue equal to a maximum of 2%.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Vetra discloses all the claimed elements of an optical filter, fulfilling the general conditions of the claim. One would be motivated to configure the first support layer to allow a transmittance in blue equal to a maximum of 2% for the purpose of reducing the exposure to blue light, and therefore reduce harmful effects to the eye, brain, and circadian rhythm.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the first support layer to allow a transmittance in blue equal to a maximum of 2% for the purpose of reducing the exposure to blue light, and therefore reduce harmful effects to the eye, brain, and circadian rhythm.
Regarding claim 20, Vetro discloses the optical filter according to claim 16, as set forth above. Vetro does not disclose said first support layer is configured to allow a transmittance in blue equal to a maximum of between 1% and 1.9%.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955), see MPEP 2144.05. In this case Vetra discloses all the claimed elements of an optical filter, fulfilling the general conditions of the claim. One would be motivated to configure the first support layer to allow a transmittance in blue equal to a maximum of between 1% and 1.9% for the purpose of reducing the exposure to blue light, and therefore reduce harmful effects to the eye, brain, and circadian rhythm.
Therefore, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention for the first support layer to allow a transmittance in blue equal to a maximum of between 1% and 1.9% for the purpose of reducing the exposure to blue light, and therefore reduce harmful effects to the eye, brain, and circadian rhythm.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Saylor et al. (US 20150131047 A1) and McCabe et al. (US 20130141693 A1) disclose similar optical filters comprising polarizing layers of a similar thickness.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 January 20th, 2026
/RICKY L MACK/Supervisory Patent Examiner, Art Unit 2872