Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 1-18 and 21 are pending. Claims 19 and 20 have been canceled. Note that, Applicant’s amendment and arguments filed July 16, 2026, have been entered.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 16, 2026, has been entered.
Objections/Rejections Withdrawn
The following objections/rejections as set forth in the Office action mailed 4/28/26 have been withdrawn:
None.
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.
(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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Barniak et al (US 2022/0290072).
With respect to independent, instant claim 1, Barniak et al teach a contact lens treating solution is provided comprising (a) about 0.005 to about 2 wt. %, based on the total weight of the contact lens treating solution, of hyaluronic acid or a salt thereof; (b) about 0.01 to about 1 wt. %, based on the total weight of the contact lens treating solution, of erythritol; (c) one or more nonionic surfactants; (d) one or more of sodium chloride and potassium chloride; and (e) one or more buffers. See para. 3. Suitable nonionic surfactants include a poloxamer block copolymer, etc. See para. 22. The tonicity adjusting components such as sodium chloride and potassium chloride, and mixtures thereof, are present in an amount from about 0.01 to 5% by weight of the composition. See paras. 29-30. Suitable buffers include, for example, boric acid and its salts such as sodium borate or potassium borate. Borate buffers also include buffer compounds such as, for example, potassium tetraborate or potassium metaborate that produce borate acid or its salt in solutions. In an illustrative embodiment, the one or more buffers are present in a contact lens treating solution disclosed herein in an amount ranging from about 0.1 to about 10% (w/w). See paras. 32-34. Note that, the Examiner asserts that Barniak et al would clearly suggest, for example, compositions containing 1% or 2% by weight of a potassium chloride and/or potassium borate and 0.5% of sodium chloride and/or sodium borate which would clearly suggest compositions containing a greater amount of potassium salt than sodium salts and fall within the scope of the instant claims. In illustrative embodiments, the contact lens treating solution disclosed herein contains one or more antimicrobial agents. Suitable biguanide antimicrobial agents for use in the contact lens treating solution disclosed herein include, for example, any biguanide or salt thereof known in the art. In an illustrative embodiment, representative examples of biguanides include non-polymeric biguanides, polymeric biguanides, salts thereof, free bases thereof and the like and mixtures thereof. In an illustrative embodiment, representative examples of non-polymeric biguanides include the bis(biguanides), such as alexidine, chlorhexidine, salts of alexidine, e.g., alexidine HCl, salts of chlorhexidine, alexidine free base, and the like and mixtures thereof. Representative examples of polymeric biguanides include polymeric hexamethylene biguanides (PHMB), etc. See paras. 32-34. A biguanide antimicrobial agent can be present in the contact lens treating solution in an amount of from about 0.5 ppm to about 10 ppm, based on total weight of the contact lens treating solution. See para. 41. In an illustrative embodiment, a quaternary ammonium compound can be present in the contact lens treating solution in an amount of from about 0.5 ppm to about 10 ppm, which include polyquaternium-1, etc. See paras. 43-44.
The contact lens treating solution disclosed herein may further contain one or more comfort or cushioning components. The comfort component can enhance and/or prolong the cleaning and wetting activity of the surfactant component and/or condition the lens surface rendering it more hydrophilic (less lipophilic) and/or to act as a demulcent on the eye. The comfort component is believed to cushion the impact on the eye surface during placement of the lens and serves also to alleviate eye irritation. Suitable comfort components include, for example, water soluble natural gums, cellulose-derived polymers and the like. Useful natural gums include guar gum, gum tragacanth and the like. Useful cellulose-derived comfort components include cellulose-derived polymers, such as hydroxypropyl cellulose, hydroxypropylmethyl cellulose, carboxymethyl cellulose, methyl cellulose, hydroxyethyl cellulose and the like. Some non-cellulose comfort components include propylene glycol or glycerin. The comfort components can be present in the solution in an amount ranging from about 0.01% to about 1% (w/w). See para. 65-66.
Barniak et al do not teach, with sufficient specificity, a composition containing a potassium salt, an antimicrobial agent, a sodium salt, and the other requisite components of the composition in the specific amounts as recited by the instant claims.
Nonetheless it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to formulate a composition containing a potassium salt, an antimicrobial agent, a sodium salt, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims, with a reasonable expectation of success and similar results with respect to other disclosed components, because the broad teachings of Barniak et al suggest a composition containing a potassium salt, an antimicrobial agent, a sodium salt, and the other requisite components of the composition in the specific amounts as recited by independent, instant claim 1 and the respective dependent claims.
Response to Arguments
With respect to the rejection of the instant claims under 35 USC 103 using Barniak et al, Applicant submits that Barniak fails to teach at least the newly-added features of claim 1, which now require specific weight percentages for the sodium and potassium salts. In response, note that, the Examiner asserts that the teachings of a reference are not limited to the preferred embodiments and that the broad teachings of Barniak et al suggest compositions containing the same components in the same amounts as recited by the instant claims. Note that, the fact that a specific embodiment is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of the disclosed alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). "[a] reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment." CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1349 (Fed. Cir. 2017) (quoting In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012)); see also In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (explaining that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions. Additionally, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971); a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); See MPEP 2123(II). The fact that a reference discloses a multitude of effective combinations does not render any particular formulation less obvious. Merck & Co., Inc. v. Biocraft Labs, 874 R.2d 804, 808 (Fed. Cir. 1989). See also, In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of prior art teaching that “hydrated zeolites will work” in detergent formulations even though “the inventors selected the zeolites of the claims from amount thousands of compounds”); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was huge, but it undeniably included at least some of the compounds recited in appellant’s generic claims and was a class of chemicals to be used for the same purpose as appellant’s additives).
For example, Barniak et al clearly teaches the use of tonicity adjusting components such as sodium chloride and potassium chloride, and mixtures thereof, which are present in an amount from about 0.01 to 5% by weight of the composition (See paras. 29-30 of Barniak et al); and the use of buffers, for example, boric acid and its salts such as sodium borate or potassium borate which are present in amounts from 0.1% to 10% by weight of the composition (See paras. 32-34 or Barniak et al). The Examiner asserts that Barniak et al would clearly suggest, for example, compositions containing 0.7%, 1% or 1.5% by weight of a potassium chloride and/or potassium borate and 0.5% of sodium chloride and/or sodium borate which would clearly suggest compositions containing a greater amount of potassium salt than sodium salts and fall within the scope of the instant claims. Thus, the Examiner asserts that the teachings of Barniak et al are sufficient to render the claimed invention obvious under 35 USC 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Remaining references cited but not relied upon are considered to be cumulative to or less pertinent than those relied upon or discussed above.
Applicant is reminded that any evidence to be presented in accordance with 37 CFR 1.131 or 1.132 should be submitted before final rejection in order to be considered timely.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY R DEL COTTO whose telephone number is (571)272-1312. The examiner can normally be reached M-F, 8:30am-6:00pm, EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY R DELCOTTO/Primary Examiner, Art Unit 1761
/G.R.D/August 22, 2026
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