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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/28/2023, 11/29/2023, 01/29/2024, 02/05/2024, 07/14/2024, 04/25/2025, 10/31/2025 was filed and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 is rejected under 35 U.S.C. 102(a)(1) as being disclosed by Liu (US 2015/0188197, of record).
Regarding claim 1, Liu discloses a contact lens (see Fig 2a), comprising: a lens body including an optical portion and an annular wearing portion that surrounds the optical portion (see Fig 2a; Para [0057]; a lens body 220 has a central optical portion 221 and an annular portion 230), wherein the annular wearing portion has a layout region being C-shaped and a lower eyelid region that is arranged between two ends of the layout region (see Fig 2a; Para [0059]; an annular portion with the antenna loop 270 of the substrate 230 has a C-shape; a lower eyelid portion contains electronics 260), and the lens body includes: a rear surface having a predetermined curvature for being worn on an eye; and a front surface arranged opposite to the rear surface (see Fig 2b; Para [0054]; the polymeric material 220 is shaped as a disk and fit for sitting on an eye of the wearer; a front surface/top surface is opposite the bottom surface which rests on the eye as seen in Fig 2c); an electronic component embedded in the lower eyelid region of the annular wearing portion (see Fig 2a; Para [0059]; a lower eyelid portion contains electronics 260); and a circuit structure embedded in the annular wearing portion and connected to the electronic component to establish an electrical connection therebetween (see Fig 2a; Para [0061]; interconnects 251A and 251B connect controller 250 to electronic components 260); wherein the annular wearing portion has a plurality of positioning slots recessed from at least one of the front surface and the rear surface toward the circuit structure (see Fig 2d; Para [0062-0063]; annular wearing portion has a plurality of channel 272 and 274 recessed from a front surface of the lens as seen in Fig 2d), and a bottom side of each of the positioning slots includes a part of the circuit structure so as to enable the part of the circuit structure to be exposed in an external environment (see Fig 2d; Para [0062-0063]; channels 272 and 274 have a bottom side which connect to electrical components 255 and 260); wherein a sum of areas of openings of the positioning slots is less than or equal to 1% of a sum of areas of the front surface and the rear surface (see Fig 2d; Para [0058]; a sum of opened areas may be around 0.785 mm^2; calculated from using a width of the substrate as a diameter of sum of the open areas; sum of the front and rear surfaces of lens is greater than 200*pi mm^2 calculated from diameter of substrate; 0.785 is less than 1 percent of 200*pi).
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 2-4 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2015/0188197, of record) in view of Wiemer (US 2023/0170586).
Regarding claim 2, Liu discloses the contact lens according to claim 1. Liu does not disclose wherein the positioning slots include a plurality of front positioning slots recessed in the front surface, and each of the front positioning slots has: a first tread surface including the part of the circuit structure exposed in the external environment; a first riser surface connected in-between the front surface and the first tread surface; a second tread surface spaced apart from the front surface by a distance that is greater than a distance between the first tread surface and the front surface; and a second riser surface connected in-between the first tread surface and the second tread surface and arranged at one side of the circuit structure or one side of the electronic component. Liu and Wiemer are related because both disclose electronic contact lenses.
Wiemer discloses an electronic contact lens (see Fig 1) wherein the positioning slots include a plurality of front positioning slots recessed in the front surface (see Fig 1 and 2; Para [0019-0020]; Wiemer discloses features with recess elements as seen in Fig 3A), and each of the front positioning slots has: a first tread surface including the part of the circuit structure exposed in the external environment (see Fig 3A; Para [0019-0020]; the feature 220 includes a top tread that examiner is defining as the horizontal surface of the element at the top of the insulator moat); a first riser surface connected in-between the front surface and the first tread surface (see Fig 3A; Para [0019-0020]; the feature 220 includes a top riser that examiner is defining as the vertical surface extending from a top surface towards the top of the insulator moat 340 of the element); a second tread surface spaced apart from the front surface by a distance that is greater than a distance between the first tread surface and the front surface (see Fig 3A; Para [0019-0020]; the feature 220 includes a bottom tread that examiner is defining as the horizontal surface extending towards the center of the element at the bottom of the insulator moat 340); and a second riser surface connected in-between the first tread surface and the second tread surface and arranged at one side of the circuit structure or one side of the electronic component (see Fig 3A; Para [0019-0020]; a second riser is defined as the vertical tall between the bottom of the insulator moat 340 and the top of the insulator moat 340; it is disposed on a lateral side on electronic component which will resid within the steps)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Liu with wherein the positioning slots include a plurality of front positioning slots recessed in the front surface, and each of the front positioning slots has: a first tread surface including the part of the circuit structure exposed in the external environment; a first riser surface connected in-between the front surface and the first tread surface; a second tread surface spaced apart from the front surface by a distance that is greater than a distance between the first tread surface and the front surface; and a second riser surface connected in-between the first tread surface and the second tread surface and arranged at one side of the circuit structure or one side of the electronic component of Wiemer for the purpose of reducing size for electrical components on the contact lens (Para [0014])
Regarding claim 3, Liu in view of Wiemer discloses the contact lens according to claim 2 (Liu: see Fig 2a). Liu further discloses wherein the circuit structure includes a carrier and a circuit that is formed on the carrier and that is entirely embedded in the lens body (see Figs 3a and 3c; Para [0078]; a structure 304 may be composed on a polymer carrier 306 and a circuit 308 that is formed on the carrier 306 and embedded in the lens body 316).
Regarding claim 4, Liu in view of Wiemer discloses the contact lens according to claim 2. Liu further discloses wherein the first tread surface of one of the front positioning slots located in the lower eyelid region contains a part of the electronic component so as to enable the part of the electronic component to be exposed in the external environment (see Fig 2A; Para [0062-0063]; Liu discloses channels 272 and 274 which expose elements 255 and 260 to external environment; while Wiemer discloses the shape of the slots being in step form).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2015/0188197, of record) in view of Wiemer (US 2023/0170586) as applied to claim 2, and further in view of Linn (US 2022/0066238).
Regarding claim 5, Liu in view of Wiemer discloses the contact lens according to claim 2. Liu in view of Wiemer does not disclose wherein a depth of each of the front positioning slots is within a range from 50 μm to 100 μm. Liu in view of Wiemer and Linn are related because both disclose contact lenses.
Linn discloses a contact lens (see Fig 2) wherein a depth of each of the front positioning slots is within a range from 50 μm to 100 μm (see Fig 3; Para [0047]; the depth of the contact lens recess may be about 60 microns).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Liu in view of Wiemer with wherein a depth of each of the front positioning slots is within a range from 50 μm to 100 μm of Linn for the purpose of improving retention of hydration while the contact lens (Para [0033])
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2015/0188197, of record) in view of Wiemer (US 2023/0170586) as applied to claim 2 and further in view of Iwasaki (US 2020/0257138) .
Regarding claim 15, Liu in view of Wiemer discloses the contact lens according to claim 2. Liu in view of Wiemer does not disclose wherein the positioning slots further includes a plurality of rear positioning slots recessed in the rear surface, and the rear positioning slots and any one of the front positioning slots do not correspond to a same part of the circuit structure. Liu in view of Wiemer and Iwasaki are related because both disclose contact lenses.
Iwasaki discloses a contact lens (see Fig 2) wherein the positioning slots further includes a plurality of rear positioning slots recessed in the rear surface, and the rear positioning slots and any one of the front positioning slots do not correspond to a same part of the circuit structure (see Fig 48; Para [0165-0170]; contact lens may contain a plurality of rear positioning slots surface the one seen in Fig 48; part of channel 81; Liu discloses multiple slots corresponding to different electronic component such as elements 255 and 260)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Liu in view of Wiemer with wherein the positioning slots further includes a plurality of rear positioning slots recessed in the rear surface, and the rear positioning slots and any one of the front positioning slots do not correspond to a same part of the circuit structure of Iwasaki for the purpose of improving patient comfort by improving eye hydration (Para [0166]).
Regarding claim 16, Liu in view of Wiemer and Iwasaki discloses the contact lens according to claim 1 (see Fig 2). Iwasaki further discloses wherein the positioning slots includes a plurality of rear positioning slots recessed in the rear surface, and a depth of each of the rear positioning slots is within a range from 50 μm to 100 μm (see Fig 48; Para [0170]; thickness/depth of recess is of 0.1mm or 100 microns).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Liu in view of Wiemer with wherein the positioning slots includes a plurality of rear positioning slots recessed in the rear surface, and a depth of each of the rear positioning slots is within a range from 50 μm to 100 μm of Iwasaki for the purpose of improving patient comfort by improving eye hydration (Para [0166]).
Regarding claim 17, Liu in view of Wiemer and Iwasaki discloses the contact lens according to claim 16. Liu further discloses wherein, in a top view of the contact lens, at least one of the rear positioning slots extends along a radial direction of the lens body and across the circuit structure (see Fig 2d; Para [0062-0063]; plurality of channel 272 and 274 recessed from a front surface of the lens extend radially across the circuit in 230).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2015/0188197, of record) in view of Seidner (US 5002382).
Regarding claim 18, Liu discloses the contact lens according to claim 1 (see Fig 2a). Liu further discloses wherein the front surface has a viewable surface corresponding in position to the optical portion (see Fig 2a and 2b; Para [0057]; the polymeric material 220 has a front/top surface of which a portion, that in the circular center 221 is defined as the optical portion) and a free curved surface that corresponds in position to the annular wearing portion (see Fig 2a and 2b; Para [0057]; the polymeric material 220 has a front/top surface of which a portion, that in the annular space of element 230 is defined as the annular wearing portion) and a thickness of the annular wearing portion gradually increases in a direction toward the electronic component (see Fig 6; Para [0122-0124]; structure 606 thickness increases from an outer side to an inner side were component may be fixed to as seen in Fig 6).
Liu does not disclose wherein the viewable surface has a first curvature being different from a second curvature of the free curved surface. Liu and Seidner are related because both disclose contact lenses
Seidner discloses a contact lens (see Fig 37) wherein the viewable surface has a first curvature being different from a second curvature of the free curved surface (see Fig 37; Col 12, line 61- Col 13, line 5; a first central portion may have a different curvature/prescription than an annular surface)
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to modify Liu with wherein the viewable surface has a first curvature being different from a second curvature of the free curved surface of Seidner for the purpose of improving vision while retaining structure of lens device (Col 1, lines 35-46)
Regarding claim 19, Liu in view of Seidner discloses the contact lens according to claim 18. Liu further discloses wherein the circuit structure includes: a carrier having a C-shaped segment embedded in the layout region and a connection segment that is embedded in the lower eyelid region (see Fig 2a; Para [0059-0060]; carrier substrate 230 is C shaped and a connection segment is that which includes controller 250 and other elements as seen in Fig 2a), wherein the connection segment is connected in-between two distal ends of the C-shaped segment, and the carrier has a fixed curvature different from the second curvature (see Fig 2a; Para [0059-0060]; connection segment is connected in between ends; carrier has different curvature see Para [0034]); and a circuit formed on the carrier and connected to the electronic component; wherein a largest thickness of the annular wearing portion is located at the lower eyelid region, and a smallest thickness of the annular wearing portion is located at a part of the layout region away from the lower eyelid region (see Fig 2c and 2d; Para [0059-0060]; thickness portion is interpreted as where electronic components are in said region and thinnest is where only antenna is disposed).
Allowable Subject Matter
Claims 6-14, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of the dependent claims in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper.
Regarding dependent claim 6, the prior art fails to teach “wherein the circuit structure has a plurality of thru-holes filled with the lens body, and the positioning slots include a front positioning slot recessed in the front surface, and wherein the front positioning slot is arranged across the thru-holes so as to enable a part of each of the thru-holes to be exposed in the external environment”, along with the structural limitations positively recited in claim 6.
Claims 7-14 are objected to as dependent on allowable claim 6
Regarding dependent claim 20, the prior art fails to teach “wherein the circuit structure in the lower eyelid region is spaced apart from the rear surface by a first distance, and the circuit structure in the layout region is spaced apart from the rear surface by a second distance that is less than the first distance”, along with the structural limitations positively recited in claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Aschwanden (US 2018/0129072) discloses a contact lens with multiple slot that may be disposed around the device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL ANDRES SANZ whose telephone number is (571)272-3844. The examiner can normally be reached Monday-Friday 8:30 am -5:30 pm.
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, Pinping Sun can be reached at (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.A.S./Examiner, Art Unit 2872
/WILLIAM R ALEXANDER/Primary Examiner, Art Unit 2872
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