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 .
Response to Amendment / Non-compliant Amendment
The amendment to the claims filed on 13 February 2026 does not comply with the requirements of 37 CFR 1.121(c) for the following reasons:
Several of the claim amendments utilize strike-through instead of double brackets for showing deletion of five or fewer consecutive characters. For example, line 5 of Claim 1 recites “rotating a surface,” line 12 of Claim 1 recites “(A03Claim 6 recites “(A01)and (A02),” etc. This is not an exhaustive list. Amendments to the claims filed on or after July 30, 2003 must comply with 37 CFR 1.121(c) which states:
(2) When claim text with markings is required… The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived…
Appropriate correction is required.
Response to Arguments
Applicant's arguments filed 13 February 2026 have been fully considered but they are not persuasive. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Please see response to arguments below in the present Office action.
Applicant’s arguments with respect to claim(s) 1, and 4-6 have been considered but are moot because the new ground of rejection does not rely on the same reference(s) applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to the applicant's argument that " Figs. 13 and 14 have been newly presented to show step flowcharts of the inventions. In view of the foregoing amendments, it is respectfully submitted that these informalities have been addressed. Reconsideration and withdrawal of any objection to the drawings are respectfully requested," the Examiner traverses. See Drawing objections below in the present Office action.
In response to the applicant's argument that "The problems that Tung and the present invention solved are different," the Examiner traverses. Argument is moot, for Claims 1, and 4-6 now rely on Tung in view of Fricker, necessitated by amendment. Examiner reminds the applicant that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See § 103 rejection to Claim 1 below in the present Office action.
In response to the applicant's argument that "The techniques and the calculation methods of Tung and the present invention are also different," the Examiner traverses. Argument is moot, for Claims 1, and 4-6 now rely on Tung in view of Fricker, necessitated by amendment. Examiner reminds the applicant that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See § 103 rejection to Claim 1 below in the present Office action.
In response to the applicant's argument that "Therefore, claim 1 should be patentable over Tung. The dependent claims set forth additional limitations not found in the prior art, and are also allowable based at least on their dependency from allowable independent claim 1. In view of the foregoing amendments and remarks, it is respectfully submitted that the prior art utilized by the Examiner fails to teach or suggest all the features of independent claim 1 and its dependent claims. Reconsideration and withdrawal of the 35 USC 102 rejection are respectfully requested," the Examiner traverses. Argument is moot, for Claims 1, and 4-6 now rely on Tung in view of Fricker, necessitated by amendment. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). See § 103 rejection to Claim 1 below in the present Office action.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which they think the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Election/Restrictions
Applicant’s election of Group I comprising claims 1-6 in the reply filed on 27 October 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election without traverse of Group I comprising claims 1-6 in the reply filed on 27 October 2025 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: B01, B02, B03, and B04.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show "(A03) Based on multiple predetermined thickness values, the thickness is made in the peripheral positioning zone 12 to meet the predetermined thickness values. (A04) In the peripheral positioning zone 12, a surface 14 with at least one or more different thicknesses is formed." (page 7, lines 10-20) as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: B01, B02, B03, and B04.
Claim Objections
Claims 1, and 4-6 are objected to because of the following informalities:
With respect to Claims 1, and 4-6, several claim limitations are grammatically incorrect including but not limited to: “(A02) determining at least one at least one thickness value in said peripheral positioning zone” in Claim 1. This is not an exhaustive list. Proper correction is required to ensure accuracy and consistency in the claims, for the language is so awkward that it renders the claims nearly incomprehensible. The primary purpose of the requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. See MPEP 2173.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, and 4-6 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.
With respect to Claims 1, and 4-6, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005));
In the current instance, such limitations recite both an apparatus and the method steps of using the apparatus: “A method for designing a stable structure of contact lens, the contact lens comprising: a central optical zone, a peripheral positioning zone surrounding…. determining at least one obtaining at least one thickness value in said peripheral positioning zone according to said at least one thickness zone” in Claim 1. These claim limitations are not directed to the system, but rather to actions of whoever or whatever is “determining” values, which creates confusion as to when direct infringement occurs. Thus, it is unclear whether infringement occurs when one creates a system that allows for determining at least one thickness value, or whether infringement occurs when at least one thickness value is actually determined. See Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) & MPEP § 2173(p).
Examiner submits the limitations of claims 1, and 4-6 are directed to method steps of making the product (e.g., computational optical design method comprising free-form optical design, polynomial surface modeling, Zernike polynomial fitting, wavefront design, parametric modeling, and aspheric lens surface generation utilizing Zernike functions), and it could have been made using alternative methods such as direct surface measurement and replication (e.g., corneal topography copy methodology), optimization-based design like finite-element or even ray-trace solving, dual-surface differential-thickness design, hybrid/multi-curve spline blending, mold-thickness calibration, or multi-axis free-form cutting/turning. The method limitations are not germane to patentability pursuant to MPEP §2113, since it has been held that “'Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.' See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)” See MPEP § 2113.
For the prosecution on merits, examiner interprets the claimed subject matter described above as introducing optional elements, optional structural limitations, optional expressions, and optional functionality of a method for designing a stable structure of a contact lens.
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.
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.
Claims 1, and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tung WO 2021252808 A1 (see machine translation; utilizing US 20230229021 A1 for mapped citations of WO 2021252808 A1 herein) in view of Fricker "Zernike polynomials, MATLAB Central File Exchange" (Published 2008, pgs. 1-10).
With respect to Claim 1, Tung discloses method for designing a stable structure of contact lens (design for peripheral portion of the contact lens; [0067]) the contact lens (contact lens 20; [0068]) comprising: a central optical zone (central optical zone 22; [0084]), a peripheral positioning zone (alignment zone 26; [0068]) surrounding (fig. 3) said central optical zone (central optical zone 22; [0084]) and an edge zone (peripheral zone 28; [0068]) surrounding (fig. 3) said peripheral positioning zone (alignment zone 26; [0068]), the method comprising steps (method for making contact lenses; [0067]).
(A01) rotating a surface (contact lens 20 upright to bear on ocular surface of eye 10 rotationally uniformly, rotationally single curve spherical or aspheric base curve 30; [0046] & [0077-78]) of said contact lens (contact lens 20; [0068]) clockwise or counterclockwise (counterclockwise; [0046]) axially outside ([0046] & [0077-78]; fig. 3) said central optical zone (central optical zone 22; [0084]) to define at least one thickness zone sequentially (alignment zone(s) 26 of back surface of contact lens 20 by providing four sets of alignment curves within sub-axes; [0078], easily add desired toric power and/or lens axial thickness on its front surface with fixed orientation for clear vision and stable astigmatism correction; [0009] & [0079]) in said peripheral positioning zone (alignment zone 26; [0068]);
(A02) determining at least one obtaining at least one thickness value (lens axial thickness with plurality of sets of sub-axes at peripheral portion of contact lens; [0102], ocular sagittal heights and elevation data obtained from standard trial set of lenses with known sagittal heights and utilizing obtained data within sub-axes to derive plurality of sets of alignment curves for sub-axes of alignment zone 26; [0092]) in said peripheral positioning zone (alignment zone 26; [0068]) according to said at least one thickness zone ([0042] & [0078-79]);
(A03) forming a surface (surface of quadrants 60 e.g., front surface 25 with respect to sub-axes 51-54 of alignment zone 26; [0071]) with at least one thickness (alignment zone 26, with at least one of sub-axes having different predetermined sagittal height and/or curvature; [0071], uneven lens axial thickness with plurality of sets of sub-axes at peripheral portion, [0102]) in said peripheral positioning zone (alignment zone 26; [0068]) according to the at least one thickness value (lens axial thickness with plurality of sets of sub-axes at peripheral portion of contact lens; [0102], ocular sagittal heights and elevation data obtained from standard trial set of lenses with known sagittal heights and utilizing obtained data within sub-axes to derive plurality of sets of alignment curves for sub-axes of alignment zone 26; [0092]); and
(A04) obtaining a structure (easily add desired toric power and/or lens axial thickness on its front surface with fixed orientation for clear vision and stable astigmatism correction; [0009] & [0079]) of said contact lens (contact lens 20; [0068]) with the surface (surface of quadrants 60 e.g., front surface 25 with respect to sub-axes 51-54 of alignment zone 26; [0071]) with at least one thickness (alignment zone 26, with at least one of sub-axes having different predetermined sagittal height and/or curvature; [0071], uneven lens axial thickness with plurality of sets of sub-axes at peripheral portion, [0102]) in said peripheral positioning zone (alignment zone 26; [0068]);
wherein said central optical zone (central optical zone 22; [0084]) and said edge zone (peripheral zone 28; [0068]) are optical designs of spherical surface, aspheric surface, astigmatism, multifocal astigmatism or free-form surface (central optical zone is freed up and can be predetermined freely in any geometric possible shape; [0067], peripheral zone 28 usually designed slightly elevated from ocular surface for peripheral curve; [0084]), and said central optical zone (central optical zone 22; [0084]) is designed with one or more segments of curvature (central optical zone 22 and its base curves; [0010]); a highest point distance (Sag) of said central optical zone (central optical zone 22; [0084]) is calculated (sagittal height equation; [0063]) by
equation (1): Sag =
R
0
-
R
0
2
-
y
2
p
p
(mm) (S = R/P − SQRT((R/P)2 − (D/2)2/P); [0063]),
where
R
0
is the curvature of the highest point ([0063]) of said central optical zone (central optical zone 22; [0084]),
p
=
1
-
e
2
(derived by P=1−sign(e)*e2; [0063]),
e
is an eccentricity (e-value of surface; [0063]), and
y
is a radius (D is zone diameter of surface, and thus, D ≈ 2
y
; [0063]) of said central optical zone (central optical zone 22; [0084]); a bordering (b) of said central optical zone (central optical zone 22; [0084]) (circumferential edge connected with said peripheral positioning zone (alignment zone 26; [0068])) is back-calculated from a diameter and edge curvature (diameter of optical zone 22 or contact lens 20 and radii of curvature for base curve 30, optical zone 22 has curvature that is defined by base curve 30; [0072-73]) of the contact lens (contact lens 20; [0068]).
wherein in the steps (A01) and (A03), in said peripheral positioning zone (alignment zone 26; [0068]) along the clockwise or the counterclockwise direction ([0046] & [0077-78]; fig. 3), the at least one thickness zone ([0042] & [0078-79]) is sequentially obtained ([0009] & [0078-79]) to form at least one regular or irregular surface with the at least one thickness (uneven lens axial thickness with plurality of sets of sub-axes at peripheral portion, [0102]); designing said peripheral positioning zone (alignment zone 26; [0068]) of said contact lens (contact lens 20; [0068]) is implemented through the following calculation steps (converting measured ocular information for sagittal height calculation; [0097]):
(B01) obtaining a position of an annular thickness curve (lens includes at least an alignment zone 26 with four sets of alignment curves composing annular peripheral portion of back surface of contact lens 20; [0049], back curves within quadrants 60 of alignment zone 26 between adjacent sub-axes are connected for annular alignment curve of back surface of contact lens 20; [0071]) in the range of said peripheral positioning zone (alignment zone 26; [0068]);
(B02) calculating a last point and a starting point of edge design (edge thickness can be calculated; [0038], converting lens sagittal height to the P-Qdrt alignment curve(s); [0103]) of said peripheral positioning zone (alignment zone 26; [0068]);
(B03) designing an optimal curve in different axes (obtain corneal sagittal height for all quadrants with sub-axes; [0093]) through three sets of data: a last point of the range of said peripheral positioning zone (alignment zone 26; [0068]), thickness curve design and starting point of edge design (ocular information needed for designing contact lenses 20 or peripheral zone usually measured corneal information e.g., corneal curvatures (KM), shape factors (e-value, p-value, or q-value), as well as elevation height obtained from elevation map; [0097]); and
PNG
media_image1.png
7
5
media_image1.png
Greyscale
(B04) repeating the step (B03) to gradually complete the different radial thickness changes (corneal sagittal height with sub-axes derived to form lens axial thickness with plurality of sets of sub-axes at peripheral portion of contact lens; [0102-103]; fig. 5-8) within the range of said peripheral positioning zone (alignment zone 26; [0068]) from 0° to 360° (counterclockwise from 0° to 360°; [0046], 0°, 90°, 180°, 270°; [0099]);
for the positions of thickness ([0049] & [0071]) of the annular thickness curve (annular alignment curve; [0049] & [0071]) of the at least one thickness zone ([0042] & [0078-79]) of the surface ([0042] & [0079]) of said peripheral positioning zone (alignment zone 26; [0068]), the method of calculation is a function z =
f
(
x
)
(plurality of curvatures having particular e-value or forming one or more defined curvatures such as an aspheric curve or S curve; [0060] & [0103]) of an angle (orientation angles between 0° and 360°; [0046]) and thickness (axial thickness; [0009] & [0079]) of the at least one thickness zone ([0042] & [0078-79]), that is, any point A (of alignment curves; [0088] & [0103]) in a function
f
(
x
)
conforms to the
equation (2):
lim
x
→
a
+
f
(
x
)
=
f
(
a
)
and
lim
x
→
a
-
f
(
x
)
=
f
(
a
)
(plurality of sets of alignment curves of alignment zone 26 blended into an uneven but rather smooth, continuous annular alignment zone, and thus, continuity of z =
f
(
θ
)
at any point of alignment curves; [0088]),
where the function z can be any function z =
f
(
θ
)
(curves can be 4 sets of aspheric curves, or mixing spherical and aspheric curves; [0103]); the function z ([0060] & [0103]) is used as an aspheric equation function (standard aspheric lens equation derived by sagittal height equation; [0063]) for calculating the at least one thicknesses (axial thickness; [0009] & [0079]) of the at least one thickness zone ([0042] & [0078-79]) of the surface ([0042] & [0079]) of said peripheral positioning zone (alignment zone 26; [0068]):
Z
=
C
X
2
1
+
1
-
(
K
+
1
)
C
2
X
2
+
A
1
X
+
A
2
X
2
+
A
3
X
3
+
…
+
A
n
X
n
(mm) (standard aspheric lens equation derived by sagittal height equation (S): S = R/P − SQRT((R/P)2 − (D/2)2/P), where R is measured central curvature of spherical or aspheric surface; [0063], wherein Ss=Rs/Ps−SQRT((Rs/Ps)2−(D/2)2/Ps) and Sf=Rf/Pf−SQRT((Rf/Pf)2−(D/2)2/Pf); [0097]; p-value (POZ) is required if optical zone 22 is predetermined aspheric, SOZ = BC/POZ − SQRT((BC/POZ)2 − (OZ/2)2/POZ); [0098]; K1, K2, K3, K4 are factors for fine tuning sagittal height; [0099], forming aspheric alignment zone 26 using e-value derived by formula of eaz = SQRT(Rb2 − Ra2)/(Zonea + Zoneb), wherein Ra and Rb are radii of curvature of two alignment zones fused having zone width of Zonea and Zoneb respectively, aspheric alignment zone 26 formed having radii of curvature Ra, zone width (Zonea + Zoneb), and e-value of eaz, four sets of alignment zone AC1, AC2, AC3, AC4 for each sub-axis converted from sagittal height values of Saz1, Saz2, Saz3, and Saz4; [0103]); the aspheric angle
(
θ
)
(orientation angles between 0° and 360° in conjunction with axial thickness, and thus, utilizing thickness as a function of aspheric angle; [0046] & [0079]) of the function z =
f
(
θ
)
(curves can be 4 sets of aspheric curves, or mixing spherical and aspheric curves; [0103]) is calculated by
equation (3):
W
r
,
θ
=
∑
n
,
m
C
n
m
Z
n
m
(
r
,
θ
)
(mm) (be any of conventional contact lens design, aspheric contact lens or incorporating dual geometric or reverse geometric designs; [0107], software comprises database portion and set of logic calculation components; [0120]; fig. 8, measured corneal/ocular surface information including corneal curvatures, e-value, elevation map, corneal size, other data utilized in generating and calculating lens specification, and thus, calculating precisely engineered surface shape and obtaining advanced aberration-correcting design; [0121]),
where
Q
is the coordinate position of any point a (
Q
(
x
,
y
)
, Cartesian coordinates;
Q
(
r
,
θ
)
, polar coordinates) (coordinate system described by the X-axis 41, Y-axis 42, and Z-axis 43 is a Cartesian coordinate system; [0069]) on an aspheric surface (aspheric alignment zone; [0103]) of the surface ([0042] & [0079]) of said peripheral positioning zone (alignment zone 26; [0068]) of the function z ([0060] & [0103]).
Although Tung does not appear to explicitly recite equation (3):
W
r
,
θ
=
∑
n
,
m
C
n
m
Z
n
m
(
r
,
θ
)
(mm), a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:…(C) Show that a characteristic not disclosed in the reference is inherent. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection. See MPEP §§ 2131 & 2112.
Thus, in another field of endeavor, Fricker teaches analyzing LASIK optical data using Zernike functions, wherein any function
f
r
,
θ
defined on a circle can be expressed as a sum of Zernike modes, just as sine and cosine functions are used in familiar 1-D Fourier analysis:
f
r
,
θ
=
∑
n
=
0
∞
∑
m
=
-
n
n
a
n
m
Z
n
m
(
r
,
θ
)
.
By representing data in this way, one can summarize a complicated structural deformation or aberration in terms of a small number of coefficients associated with the dominant Zernike modes. See Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991) (948 F.2d at 1268, 20 USPQ at 1749-50); note that as long as there is evidence of record establishing inherency, failure of those skilled in the art to contemporaneously recognize an inherent property, function or ingredient of a prior art reference does not preclude a finding of anticipation. Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02.
With respect to Claim 4, Tung in view of Fricker discloses the method (method for making contact lenses, design for peripheral portion of the contact lens; [0067]) as claimed in claim 1, wherein said contact lens (contact lens 20; [0068]) is rotated clockwise or counterclockwise (counterclockwise; [0046]) axially along the outside ([0046] & [0077-78]; fig. 3) of said central optical zone (central optical zone 22; [0084]) to obtain ([0009] & [0078-79]) the at least one thickness zone ([0042] & [0078-79]) in said peripheral positioning zone (alignment zone 26; [0068]) between (alignment zone 26 with four sets of alignment curves composing annular peripheral portion of back surface of contact lens 20, extending radially between junction with optical zone 22 and peripheral zone 28; [0049]; as seen in fig. 3) said central optical zone (central optical zone 22; [0084]) and said edge zone (peripheral zone 28; [0068]).
With respect to Claim 5, Tung in view of Fricker discloses the method (method for making contact lenses, design for peripheral portion of the contact lens; [0067]) as claimed in claim 1, wherein said contact lens (contact lens 20; [0068]) is rotated clockwise or counterclockwise (counterclockwise; [0046]) axially along the outside ([0046] & [0077-78]; fig. 3) of said central optical zone (central optical zone 22; [0084]) to obtain ([0009] & [0078-79]) the at least one thickness zone ([0042] & [0078-79]) in said peripheral positioning zone (alignment zone 26; [0068]) between (alignment zone 26 to exert a more effective inward pushing force on a peripheral portion; [0012] & [0046-47], peripheral zone 28 usually designed slightly elevated from ocular surface for peripheral curve to provide fluid exchange; [0084] & [0106]) said edge zone (peripheral zone 28; [0068]) and said central optical zone (central optical zone 22; [0084]).
With respect to Claim 6, Tung in view of Fricker discloses the method (method for making contact lenses, design for peripheral portion of the contact lens; [0067]) as claimed in claim 1, wherein in the steps (A01) and (A02), the at least one thickness zone ([0042] & [0078-79]) is obtained ([0009] & [0078-79]) by rotating clockwise or counterclockwise (counterclockwise; [0046]) axially along the outside ([0046] & [0077-78]; fig. 3) of said central optical zone (central optical zone 22; [0084]) in a sinusoidal, zigzag, trapezoidal or free curve manner (progressive, alignment curvatures can be blended for an uneven but smooth and continuous annular alignment zone 26; [0078] & [0088], optical zone 22 and its base curve(s) designed as not conforming to central cornea shape while still controlling lens orientation with peripheral alignment zone 26; [0010]).
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 K MUHAMMAD whose telephone number is (571)272-4210. The examiner can normally be reached Monday - Thursday 1:00pm - 9:30pm EDT.
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/K MUHAMMAD/Examiner, Art Unit 2872 02 March 2026
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872