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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
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 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.
Status of the Claims
Claim(s) 5, 7-9, and 21-25 is/are pending. Claim(s) 21-25 is/are withdrawn. Claim(s) 1-4, 6, 10-20 is/are canceled.
Response to Arguments
Applicant's arguments filed 9/3/2025 have been fully considered but they are not persuasive.
Preceding any prior art arguments, Applicant presents multiple citations from the MPEP with no additional comments on pages 2-3 of Applicant's Remarks filed 9/3/2025 (herein the "Response"). Therefore, no Examiner response is made to these comments.
Applicant argues claim 5 is not obvious because Grubbs does not teach all of the claim limitations and that there is additionally no motivation to combine (page 3 of the Response). Examiner's response to particular claim limitations follows with the specific arguments to these statements. Applicant made no additional arguments regarding their argument that there is no motivation to combine.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, see following rationales for every combination made by the Examiner.
Grubbs modified to use the particular claimed wavelength range: since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Grubbs modified by Stoy: in order to cause the change in refractive index needed with specificity (e.g. Stoy, [0023], able to control adjustments by sectors as needed)
Grubbs modified by Risser: in order to allow the index can be designed and controlled based upon exposure time (e.g. Risser, [0117])
Applicant argues Grubbs does not teach all method steps and emphasizes the element of "the light beam having a wavelength of 400 to 450 nm" (page 3 of the Response). Applicant also argues this element is not obvious and notes Grubbs does not include 400-500 nm as a sub-range (page 3 of the Response).
Grubbs provides no reason 400-500 nm is not highlighted as a sub-range within the larger 200-1000 nm range. Therefore, Grubbs only teaches that 200-1000 nm is desirable for their invention (e.g. Grubbs, [0028]) and does not teach 400-500 nm is undesirable.
Applicant argues the claimed range of 400-450 nm is critical and the use of this range without damaging the retina is an unexpected result and points to the instant Application's specification (page 4 of the Response). Applicant asserts "[t]hose of ordinary skill in the art might have expected that different wavelengths would be suitable for cleaving different photocleavable linkages, but not that some wavelengths would give the result of producing desired changes in the intraocular lens while ensuring retina safety, absent the applicant’s own disclosure." (page 4 of the Response).
The Examiner notes Applicant's specification does provide reasoning why Applicant has chosen the 400-450 nm range, but does not indicate why these reasons would be unexpected.
MPEP 2145 states "See Hoeksema, 399 F.2d at 274, 158 USPQ at 601. The Hoeksema court further noted that once a prima facie case of obviousness is made by the USPTO through citation of references, the burden is on the applicant to produce contrary evidence."
Here, Applicant has not provided evidence that the results leading to the 400-450 nm wavelength range claimed is the result of anything unexpected. For example, Applicant hasn't shown what would have been the expected result and that it would be contrary to the result observed and Applicant has not provided the evidence showing either the expected versus unexpected results. Thus, Applicant has failed to show unexpected results necessary for a showing of criticality.
Applicant argues optimizing the prior art to reach the claimed range (page 4 of the Response). As this argument is directed to a rejection not made, it is moot.
Applicant argues Stoy does not teach the claimed wavelength range of 400-450nm (page 5 of the Response) and Risser's wavelength ranges that do overlap do no render the claimed wavelength range obvious (pages 5-6 of the Response). As these arguments are directed to rejections not made, it is moot.
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.
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubbs (US 2015/0258240), alone.
Regarding Claim 5, Grubbs teaches a method of altering a refractive property of an implantable intraocular lens having an optic body including an optical zone and a peripheral zone surrounding the optical zone (e.g. Grubbs, [0003]), comprising:
implanting the intraocular lens in a patient's eye (e.g. Grubbs, [0009]);
generating a light beam using a light source and a light delivery optical system, the light beam having a wavelength of near 400 to 450 nm (e.g. Grubbs, [0028]); and
while the intraocular lens is in the patient's eye, irradiating the optical zone of the intraocular lens with the light beam (e.g. Grubbs, [0010]),
wherein the optical zone comprises a crosslinked acrylic polymer material configured to change its refractive index upon irradiation by the light beam, thereby altering a refractive property of the intraocular lens (e.g. Grubbs, [0025]).
Grubbs discloses ranges that overlaps the claimed range rather than disclosing the claimed range or a range within the claimed range. Grubbs teaches a range of about 300 to about 400 nm (e.g. Grubbs, [0028] and a range of 200 nm to 1000 nm (e.g. Grubbs, [0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Grubbs such that the light beam having a wavelength of 400 to 450 nm since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claim 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubbs (US 2015/0258240) as discussed supra, in view of Stoy et al (Story) (US 2016/0296662).
Regarding claim 7, a first change in the refractive index is negative during a first time period after irradiation and a second change in the refractive index is positive in a second time period after irradiation (e.g. Grubbs [0039]).
Grubbs discloses the invention substantially as claimed but fails to teach:
controlling the refractive index change as claimed.
Story teaches that it was known to control the index change during irradiation over time in order adapt the device to the needs of the patient (e.g. abstract, [0002]).
Stoy and Grubbs are concerned with the same field of endeavor as the claimed invention, namely adjustable IOLs.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Grubbs such that the method includes controlling the refractive index change as taught by Stoy in order to cause the change in refractive index needed with specificity (e.g. Stoy, [0023], able to control adjustments by sectors as needed).
Regarding Claim 9, the light source is a pulsed laser source (e.g. Grubbs, [0057], pulsed lasers in the range up to 500 femtoseconds)
Grubbs discloses the invention substantially as claimed but fails to teach which produces nanosecond laser pulses.
Stoy teaches that pulses shorter (e.g. [0002], i.e., 0.99 nanoseconds).
Stoy and Grubbs are concerned with the same field of endeavor as the claimed invention, namely adjustable IOLs.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Grubbs such that the laser produces nanosecond laser pulses as taught by Stoy in order to view the laser with the naked eye in that it would be in the visible range (e.g. Stoy, [0050]).
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubbs (US 2015/0258240) as discussed supra, in view of Risser (US 2016/0229132).
Regarding Claim 8, Grubbs discloses the invention substantially as claimed but fails to teach the change in refractive index relative to the pre-irradiation refractive index at a location within the crosslinked acrylic polymer is linearly related with a total energy of the irradiation with the light source within a defined total energy range.
Risser teaches that the radiation exposure step results in a near linear relationship for the change in refractive index (e.g. Risser, Figure 12, [0122]).
Risser and Grubbs are concerned with the same field of endeavor as the claimed invention, namely adjustable IOLs.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Grubbs such that the radiation exposure step results in a near linear relationship for the change in refractive index, as claimed, in order to allow the index can be designed and controlled based upon exposure time (e.g. Risser, [0117]).
Conclusion
THIS ACTION IS MADE FINAL. 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 LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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, Jerrah Edwards can be reached on (408) 918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 10/22/2025