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 .
Examiner’s Comments
In view of the amendments, the 35 U.S.C. § 112 rejection of claims 20-38 and the objection of claim 37 are withdrawn.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20-23, 25-27 and 29-38 are rejected under 35 U.S.C. 103 as being obvious over Li et al. (“Bulk Synthesis of Transparent and Homogeneous Polymeric Hybrid Materials with ZnO Quantum Dots and PMMA” 2007), hereinafter “Li”, in view of Dubertret et al. (WO 2021/165496 A1).
The applied reference has a common assignee and some common inventors with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 20, Li discloses a contact lens (Pg. 4349, Col. 2, Paragraph 2), comprising: (a) at least one polymeric matrix (Pg. 4349, Col. 1, Paragraph 3 – “PMMA matrix”); and (b) absorbing semi-conductive nanoparticles which are dispersed in said polymeric matrix (Pg. 4349, Col. 1, Paragraph 3 – “ZnO QDs”); wherein the absorbance through a layer comprising said semi-conductive nanoparticles of said contact lens is higher than 0.5 for each light wavelength ranging from 350 nm to λcut, λcut being in the visible range (see Fig. 2). Li discloses the claimed invention, but does not specify preferably in the range from 400 nm to 480 nm, said layer having a thickness ranging from 50 μm to 250 μm. In the same field of endeavor, Dubertret discloses preferably in the range from 400 nm to 480 nm (PG. 31, Lines 23-27), said layer having a thickness ranging from 50 μm to 250 μm (Pg. 9, Line 22, Pg. 10, Lines 13-22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the contact lens of Li with preferably in the range from 400 nm to 480 nm, said layer having a thickness ranging from 50 μm to 250 μm of Dubertret for the purpose of providing protection to the human eye from undesirable light by incorporating light absorbing elements in ophthalmic lenses (Pg. 1, Lines 12-14, 24-26). Furthermore, 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 (CCPA 1955). Such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 21, Li discloses wherein the absorbance through a layer comprising said semi-conductive nanoparticles of said contact lens is higher than 0.5 for each light wavelength ranging from 350 nm to λcut, λcut being in the visible range (see Fig. 2). Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses preferably in the range from 400 nm to 480 nm (Pg. 31, Lines 23-27). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20. Li and Dubertret disclose the claimed invention, but do not specify said layer having a thickness of 150 μm. 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 (CCPA 1955). Such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the contact lens of Li and Dubertret with said layer having a thickness of 150 μm for the purpose of providing light filtering for the desired application (Pg. 1, Lines 5-9 of Dubertret).
Regarding claim 22, Li further discloses wherein the polymeric matrix is obtained by polymerization of at least one monomer in presence of at least one catalyst for initiating the polymerization of said monomer (Pg. 4350, Col. 2, Paragraph 2).
Regarding claim 23, Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses wherein the polymeric matrix is a molded polymer (Pg. 22, Lines 18-21). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20.
Regarding claim 25, Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses wherein said contact lens has at least one of the following features: an O2 permeability ranging from 20 x 10-11 to 150 x 10-11 (cm2/s) (ml O2/ml x mmHg); an average center thickness ranging from 20 μm to 500 μm (Pg. 10, Lines 20-22); a diameter ranging from 5 mm to 20 mm; and/or a base curve ranging from 5 mm to 15 mm. It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20. Furthermore, 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 (CCPA 1955). Such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 26, Li further discloses wherein the polymeric matrix comprises an acrylate polymer, a vinylic polymer, a polyoxyethylene polyol, a polyvinyl carbonate, a polyvinyl carbamate, or a polyoxazolone (Pg. 4347, Col. 2, Line 1 – “PMMA”).
Regarding claim 27, Li further discloses wherein the acrylate polymer is selected among polyhydroxyethylmethacrylate, polymethylmethacrylate, poly(ethylene glycol) methacrylate, poly N-dimethyl acrylamide, poly(glycerol methacrylate), polyethyleneglycol dimethacrylate, polytetraethyleneglycol dimethacrylate, poly (2-hydroxyethyl methacrylamide), poly (acrylic acid), poly (methacrylic acid), poly (meth) acrylamide, or poly (acrylamide), poly(ethylene glycol) acrylate, poly di(ethylene glycol) ethyl ether acrylate, neopentyl glycol propoxylate diacrylate, poly(ethylene glycol) diacrylate, poly (pentaerythritol tetraacrylate), or mixture thereof (Pg. 4347, Col. 2, Line 1 – “PMMA”).
Regarding claim 29, Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses wherein the semi-conductive nanoparticles comprise a material of formula MxQyEzAw(I), wherein: M is selected from the group consisting of Zn, Cd, Hg, Cu, Ag, Au, Ni, Pd, Pt, Co, Fe, Ru, Os, Mn, Tc, Re, Cr, Mo, W, V, Nd, Ta, Ti, Zr, Hf, Be, Mg, Ca, Sr, Ba, Al, Ga, In, Tl, Si, Ge, Sn, Pb, As, Sb, Bi, Sc, Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Cs or a mixture thereof; Q is selected from the group consisting of Zn, Cd, Hg, Cu, Ag, Au, Ni, Pd, Pt, Co, Fe, Ru, Os, Mn, Tc, Re, Cr, Mo, W, V, Nd, Ta, Ti, Zr, Hf, Be, Mg, Ca, Sr, Ba, Al, Ga, In, Tl, Si, Ge, Sn, Pb, As, Sb, Bi, Sc, Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Cs or a mixture thereof; E is selected from the group consisting of O,S, Se, Te, C, N, P, As, Sb, F, Cl, Br, I, or a mixture thereof; A is selected from the group consisting of O,S, Se, Te, C, N, P, As, Sb, F, Cl, Br, I, or a mixture thereof; and x, y, z and w are independently a decimal number from 0 to 5; x, y, z and w are not simultaneously equal to 0; x and y are not simultaneously equal to 0; z and w may not be simultaneously equal to 0 (Pg. 17, Lines 3-20). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20.
Regarding claim 30, Li and Dubertret teach the contact lens set forth above for claim 29, Dubertret further discloses wherein the semi-conductive nanoparticles comprise a material of formula MxQyEzAw(I), wherein: M is selected from the group consisting of Zn, Cd, Hg, Cu, Ag, Au, Ni, Pd, Pt, Co, Fe, Ru, Os, Mn, Tc, Re, Cr, Mo, W, V, Nd, Ta, Ti, Zr, Hf, Be, Mg, Ca, Sr, Ba, Al, Ga, In, Tl, Si, Ge, Sn, Pb, As, Sb, Bi, Sc, Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Cs or a mixture thereof; Q is selected from the group consisting of Zn, Cd, Hg, Cu, Ag, Au, Ni, Pd, Pt, Co, Fe, Ru, Os, Mn, Tc, Re, Cr, Mo, W, V, Nd, Ta, Ti, Zr, Hf, Be, Mg, Ca, Sr, Ba, Al, Ga, In, Tl, Si, Ge, Sn, Pb, As, Sb, Bi, Sc, Y, La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Cs or a mixture thereof; E is selected from the group consisting of S, Se, Te, C, N, P, As, Sb, F, Cl, Br, I, or a mixture thereof; A is selected from the group consisting of S, Se, Te, C, N, P, As, Sb, F, Cl, Br, I, or a mixture thereof; and x, y, z and w are independently a decimal number from 0 to 5; x, y, z and w are not simultaneously equal to 0; x and y are not simultaneously equal to 0; z and w may not be simultaneously equal to 0 (Pg. 17, Lines 3-20).
Regarding claim 31, Li and Dubertret teach the contact lens set forth above for claim 30, Dubertret further discloses wherein the semi-conductive nanoparticles are selected among CdS, ZnSe, CdSe/CdS, CdSeS/CdS, or CdSeS/CdZnS nanoparticles (Pg. 17, Line 25 – Pg. 18, Line 3). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20.
Regarding claim 32, Li further discloses wherein the semi-conductive nanoparticles are nanospheres, nanoplates or nanorods (Pg. 4347, Col. 2 – “nanofiber”; Pg. 4350, Col. 1 – “spherical shapes”).
Regarding claim 33, Li further discloses wherein the semi-conductive nanoparticles are core/shell particles or core/crown particles, the core being a different material from the shell or crown (Pg. 4347, Col. 2 – “core/shell structures”).
Regarding claim 34, Li discloses contact lens (Pg. 4349, Col. 2, Paragraph 2). Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses wherein the amount of semi- conductive nanoparticles in the lens is from 10 ppm to 10 wt%, based on the weight of the lens (Pg. 10, Lines 23-24). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20.
Regarding claim 35, Li and Dubertret teach the contact lens set forth above for claim 20, Dubertret further discloses wherein the semi-conductive nanoparticles are capped with an organic layer or encapsulated in an inorganic matrix (Pg. 25, Lines 4-5). It would have been obvious to one of ordinary skill to provide the contact lens of Li with the teachings of Dubertret for at least the same reasons as those set forth above with respect to claim 20.
Regarding claim 36, Li discloses contact lens (Pg. 4349, Col. 2, Paragraph 2). Li and Dubertret teach the lens set forth above for claim 20, Dubertret further discloses wherein the absorbance of the lens has: a local maximum absorbance of highest wavelength in the range from 350 nm to 500 nm, said local maximum having an absorbance value Amax for a wavelength λmax, a value of 0.9Amax for a wavelength λ0.9, λ0.9 being greater than λmax; a value of 0.5Amax for a wavelength λ0.5, λ0.5 being greater than λ0.9; and wherein lλ0.5 – λ0.9| is less than 15 nm (Pg. 8, Lines 20-27).
Regarding claim 37, Li discloses a polymerizable composition for the manufacture of a contact lens (Pg. 4349, Col. 2, Paragraph 2), comprising: (a) at least one monomer (Pg. 4351, Col. 1, Experimental); (b) at least one catalyst for initiating the polymerization of said monomer (Pg. 4351, Col. 1, Experimental); and (c) absorbing semi-conductive nanoparticles which are dispersed in said monomer (Pg. 4349, Col. 1, Paragraph 3 – “ZnO QDs”), wherein the absorbance through a layer comprising said semi-conductive nanoparticles of said contact lens is higher than 0.5 for each light wavelength ranging from 350 nm to λcut, λcut being in the visible range (see Fig. 2). Li discloses the claimed invention, but does not specify preferably in the range from 400 nm to 480 nm, said layer having a thickness ranging from 50 μm to 250 μm. In the same field of endeavor, Dubertret discloses preferably in the range from 400 nm to 480 nm (PG. 31, Lines 23-27), said layer having a thickness ranging from 50 μm to 250 μm (Pg. 9, Line 22, Pg. 10, Lines 13-22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the polymerizable composition of Li with preferably in the range from 400 nm to 480 nm, said layer having a thickness ranging from 50 μm to 250 μm of Dubertret for the purpose of providing protection to the human eye from undesirable light by incorporating light absorbing elements in ophthalmic lenses (Pg. 1, Lines 12-14, 24-26). Furthermore, 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 (CCPA 1955). Such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 38, Li discloses a process for the manufacturing of the contact lens according to claim 20 (Pg. 4349, Col. 2, Paragraph 2), comprising the steps of: (a) providing a monomer (Pg. 4351, Col. 1, Experimental); (b) providing absorbing semi-conductive nanoparticles in the form of a powder dispersible within said monomer or in the form of a dispersion of said absorbing semi-conductive nanoparticles in a liquid dispersible within said monomer (Pg. 4351, Col. 1, Experimental); (c) providing a catalyst for initiating the polymerization of said monomer (Pg. 4351, Col. 1, Experimental); and (d) mixing said monomer, said absorbing semi-conductive nanoparticles and said catalyst so as to obtain a polymerizable composition (Pg. 4351, Col. 1, Experimental); (e) curing said polymerization composition (Pg. 4351, Col. 1, Experimental).
Claims 24 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Li (“Bulk Synthesis of Transparent and Homogeneous Polymeric Hybrid Materials with ZnO Quantum Dots and PMMA” 2007) in view of Dubertret (WO 2021/165496 A1) as applied to claim 20 above, and further in view of Gu et al. (USPG Pub No. 2021/0389731), hereinafter “Gu”.
Regarding claim 24, Li and Dubertret disclose the claimed invention except for the polymeric matrix is a flexible material such that said contact lens is a soft contact lens. In the same field of endeavor, Gu discloses the polymeric matrix is a flexible material such that said contact lens is a soft contact lens (Paragraphs 31, 32, 150). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the contact lens of Li and Dubertret with the polymeric matrix is a flexible material such that said contact lens is a soft contact lens of Gu for the purpose of providing comfortable and cost effective contact lenses (Paragraph 1).
Regarding claim 28, Li and Dubertret disclose the claimed invention except for wherein the polymeric matrix comprises a silicone hydrogel. In the same field of endeavor, Gu discloses wherein the polymeric matrix comprises a silicone hydrogel (Paragraphs 51, 150). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the contact lens of Li and Dubertret with wherein the polymeric matrix comprises a silicone hydrogel of Gu for the purpose of providing comfortable and cost effective contact lenses (Paragraph 1).
Response to Arguments
Applicant's arguments filed 05/05/2026 have been fully considered but they are not persuasive. Applicant argued that Li and Dubertret do not disclose or teach the claims as presented.
Li teaches a contact lens comprising at least one polymeric matrix and absorbing semi-conductive nanoparticles dispersed within in said polymeric matrix (Pg. 4349, Col. 1, Paragraph 3). Applicant argued that Fig. 2 of Li illustrates a λcut that is at most 380 nm without disclosing the recited range. Since the claim recites a wavelength ranging from 350nm to λcut, wherein λcut is in the visible range, then Fig. 2 meets the requirements considering the wavelength falls within the range or overlaps. Additionally, Dubertret teaches the recited ranges of the claim (see Pg. 10, Lines 11-12 and Pg. 30, Lines 20-27). Lastly, the thickness ranging from 50 to 250 μm is presented in Dubertret on Pg. 10, Lines 20-22 in an overlapping manner. According to In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), when the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. The configuration of the claimed contact lens is capable of being realized by one of ordinary skill in the art based on the teachings presented in Li in view of Dubertret in order to provide protection to the human eye from undesirable light (see Dubertret Pg. 1, Lines 12-14, 24-26). It is found that the invention, as claimed, does not produce a new and unexpected result. For these reasons the claims remain rejected.
Conclusion
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 MAHIDERE S SAHLE whose telephone number is (571)270-3329. The examiner can normally be reached Monday-Thursday 8:00 AM to 5:00 PM.
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/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 7/15/2026
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