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 .
Claim Objections
Claim(s) 1, 12 is/are objected to because of the following informalities:
Claim 1 is missing an article in “rim, flange comprising” which should be “rim, the flange comprising”
Claim 12 is missing a word in line 2, where “set tabs” should be “set of tabs.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-15 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.
Claim 1 recites “micro-structuring,” however what type of structure is or is not encompassed by this limitation is unclear. Is there a size at which a structure is no longer a micro structure? If so, what is that size?
Claim 6 recites “suction recesses.” This functional limitation renders the claim unclear because it is unclear what types of recesses qualify as suction recesses. Must they produce suction? On what kind of surface?
Claim 8 recites “tabs with various sizes.” It is unclear what is meant by the limitation “various.” For the purposes of examination, it is interpreted as requiring at least two of the tabs to have different sizes.
Claim 13 recites “the third set of tabs.” There is insufficient antecedent basis for this limitation in the claim. Was this intended to depend on claim 12?
Claim 14 recites “approximately opposite.” The metes and bounds of this claim are unclear because the degree of proximity to “opposite” is not clear.
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) 1-3,6,8-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abt [US 2012/0099077 A1].
Re. claim 1, as best understood, Abt discloses a contact lens holder [Figs. 1-2], comprising:
a rim forming a lens receptacle for receiving a lens [110, Figs. 1-2]; and
a flange [140 and 150, Figs. 1-2] integrally formed with and extending from the rim [Par. 0050], the flange comprising at least one tab [150, Fig. 1].
In the embodiment of Figs. 1-2, Abt fails to disclose the micro-structuring. However, in a different embodiment (Fig. 9d), Abt teaches at least one of a posterior surface of the flange and a posterior surface of the at least one tab comprises micro-structuring [620, Fig. 9d. Note that these structures, being small compared to the lens, are reasonably considered micro-structures. See 112(b) above]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the two embodiments by adding the micro-structures 620 to the posterior surface of the tabs 150 of Fig. 1, because this improves the ability of the lens holder to secure to an eye [Abt, Par. 0080].
Re. claim 2, in the above modification, Abt discloses the micro-structuring comprises a plurality of ridges separated by a plurality of recesses [Fig. 9d].
Re. claim 3, in the above modification, Abt discloses the plurality of the ridges and the plurality of recesses have half-circles or half-round shapes [Fig. 9d].
Re. claim 6, in the above modification, Abt discloses the micro-structuring on the at least one tab comprises one or more suction recesses [see Par. 0080. The recesses of Fig. 9d, because they improve gripping, are reasonably considered suction recesses].
Re. claim 8, in Fig. 1 Abt discloses a plurality of tabs but is silent regarding the tabs having different sizes. However, in Figs 5 and 6, Abt discloses wherein the at least one tab comprises a plurality of tabs with various sizes [see embodiment in Fig. 5 or fig. 6]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Abt by configuring the tabs to have different sizes, in the specific pattern of either Fig. 5 or Fig. 6, in order to increase surface contact area between the lens and an eye [Abt, Par. 0073]
Re. claim 9, in the above modification [embodiment of Fig. 6], Abt discloses the plurality of tabs comprise a first set of tabs including two major tabs in a superior quadrant of the flange and a second set of tabs including another two major tabs in an inferior quadrant of the flange [see Annotated Fig. 6 below].
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Re. claim 10, in the above modification [embodiment of Fig. 6], Abt discloses the first set of tabs and the second set of tabs are of a same size [see annotated Fig. 6 above].
Re. claim 11, in the above modification [embodiment of Fig. 6], Abt discloses there is a relief space between each of the two tabs in the first set of tabs and each of the other two tabs in the second set of tabs [Fig. 6].
Re. claim 12, in the above modification [embodiment of Fig. 6], Abt discloses the plurality of tabs comprise a third set tabs including two minor tabs, wherein each of the minor tabs is situation between a major tab from the first set of tabs and a major tab from the second set of tabs [Annotated Fig. 6 below].
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Re. claim 13, in the above modification [embodiment of Fig. 6], Abt discloses the third set of tabs are smaller in size than the first and the second sets of tabs [Annotated Fig. 6 with respect to claim 12. But see 112(b) above].
Re. claim 14, as best understood, Abt discloses the contact lens holder of claim 8, and in the embodiment cited above [Fig. 5] as modified above further discloses wherein the plurality of tabs comprise three tabs, including a major tab [410] and two minor tabs [420], wherein the major tab extends peripherally along an entire quadrant of the flange [Fig. 5], and wherein the two minor tabs include a first minor tab extending peripherally at a first location approximately opposite a first end of the major tab and a second minor tab extends peripherally at a second location approximately opposite a second end of the major tab [see 112(b) above. The degree of closeness is not clear, but the minor tabs may be considered to be “approximately” opposite the respective ends.].
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Re. claim 15, in the embodiment of Fig. 9d, Abt teaches at least one of a posterior surface of the flange and a posterior surface of the at least one tab comprises viscoelastic material [Par. 0080, last line]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the invention of the modified Abt to include a viscoelastic material on the posterior surface of the tab in order to better secure the lens to the eye [Abt, Par. 0080].
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abt in view of Patel et al. [US 9220507 B1, hereinafter “Patel”].
Re. claims 4 and 5, the modified Abt teaches the lens holder as set forth above, with ridges and recesses, but fails to teach the micro-structuring comprising triangular ridges separated by flat recesses. However, Patel teaches, In a medical device for gripping a patient’s anatomy, the gripping surface have micro-structuring comprising triangular ridges [traingles in the vicinity of vertex 225, Fig. 3] separated by flat recesses [portion of flat steps between above-defined triangles], wherein the triangular ridges comprises rows and columns of ridges [Annotated Fig. 3], wherein neighboring columns of ridges are separated by a gap [Annotated Fig. 3]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Abt by configuring the taps to have rows and columns of triangular ridges separated by flat recesses as taught by Patel in order to further “enhance frictional gripping force,” Patel Col 7 lines 40-44.
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Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abt in view of Volk [US 5963301 A].
Re. claim 7, the modified Abt teaches the lens holder as set forth above, , but fails to teach the micro-structuring comprising a through-channel. However, Volk teaches, in a contact lens holder, a micro-structuring on at least one tab [Fig. 7] comprises one or more channels [52] that extend from the posterior surface of the at least one tab to an anterior surface of the at least one tab [Col. 4 lines 42-57]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Abt by adding channels extending from the posterior surface to the anterior surface of one or more tabs as taught by Volk “to further enhance the stable positioning of a slidably received direct ophthalmoscopy contact lens element 43' through vacuum suction to the sclera of a patient's eye” [Volk Col. 4 lines 42-48].
Conclusion
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/ERIN MCGRATH/Primary Examiner, Art Unit 3771