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 .
1.Applicant’s election of Group I, claims 14 and 37-48 in the reply filed on October 13, 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)).
2.Claims 14 and 37-48 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.
In claim 14, line 9, it should be clarified that the lens is rotated while still in the lens holder—if such is what is done—and that the lens is in the lens holder when the lens holder is then immersed into another immersion bath containing the second fluid. As claim 14 is currently drafted, the relationship between the lens and the lens holder in the rotating and immersing steps of the last three lines of the claim is uncertain. It is also not clear exactly what the significance of “rotating the lens” at line 9 of claim 14. Does applicant mean that the lens is rotated during or after the immersion into the second/another immersion bath or does the rotating occur before the immersion? Clarification concerning this is required. For the purposes of examination, it will be assumed that the lens is rotated, inserted back into the holder and the assembly is then immersed into the second bath. Also, in claims 14 and 37-47, the occurrence of “second” concerning the method should be deleted since applicant is in fact claiming a single method. Claim 37, line 2, “the reception unit” lacks antecedent basis. In claims 37 and 45-47, line 2, the “optionally…” clauses constitute preferred limitations that render the metes and bounds of the claim uncertain. Preferred limitations should properly be set forth in separate dependent claims. Claim 45, line 1, which fluid is being referred to—ie, the first or the second or both?
3.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) 14 and 37-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over European Patent Application 013,867 (see pages 1-2; page 7, lines 14-27; page 8, lines 1-17; page 10, last three lines; see 7, 17, 17a in Fig. 2; see Figs. 3 and 6) in view of PCT Publication WO 97/20246 (see page 4, lines 4-11; Example 1).
European -867 (see Figs. 1 and 2) discloses the basic claimed method for tinting a lens including the steps of inserting a lens (7) into a lens holder (17), providing an immersion bath containing a tinting fluid (2, 3), immersing the lens holder into the fluid, rotating the lens holder around a rotation axis to a predetermined maximum angle, wherein the rotation axis is perpendicular to the plane of the lens and finally removing the lens holder from the immersion bath to enable removing the lens therefrom. Essentially, the primary reference fails to teach rotating the lens and immersing the lens holder—presumably with the lens—into another immersion fluid containing a second tinting liquid. PCT -246 (see page 4, lines 4-11) discloses that employing two distinct tinting baths is conventional in the art when tinting lenses to form a desired blue light absorbing lens. It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the method of the primary reference by employing a second tint immersion bath as taught by PCT -246 to facilitate the formation of a tinted lens with the desired color enhancing properties. The rotation of the lens would have been obvious in the combination as applied to apply the second tinting to a desired area of the lens. Certainly, it is well known to perform selective tinting on portions of an eyeglass lens and such would have been well within the skill level of the art. The displacement of the reception unit/lens holder from the rotation axis as set forth in instant claim 37 is taught at pages 1 and 10, last three lines, wherein the holder (along with the basket) is displaced as set forth in instant claim 40. The steps recited in instant claims 38 and 39 are submitted to have been obvious aspects in the operation of EP -867 dependent on the exact tint gradation desired. It is submitted that the lens holder of EP -867 is at least partially immersed into the immersion bath. A comparison of Figure 6 showing the peripheral edge of the lens which is dipped into the bath with Figure 3 which shows the relative relationship between the lens 7, lens holder 17 and the rotational axis of the lens holder shows that the lens holder is in fact immersed in the fluid. Instant claim 42 is submitted to have been an obvious constraint in the method of EP -867 dependent on the exact tint gradation desired. The use of a servo motor as set forth in instant claim 43 would have been an obvious mechanism to move the lens holder and the belt drive of instant claim 43 is surely obvious over the transmission chain 22 taught in the primary reference. EP -867 teaches instant claim 45. The lenses of instant claims 46 and 47 are conventional in the art—Official Notice is hereby taken of this—and such would have been an obvious lens to tint in the method of EP -867 dependent on duty of the lens and its aesthetic design.
4.Claim(s) 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over European Patent Application 013.867 in view of PCT Publication WO 97/20246 and Wertheim et al 2011/0107965 (see paragraphs 0003 and 0014).
EP -867 and PCT -246 disclose the basic claimed method as set forth in paragraph 3, supra, the references failing to disclose a computer control thereover employing a non-transitory computer program with program code. Wertheim et al teaches controlling a tinting operation using such a [program and such would have been an obvious modification to the operation of the primary reference to automate same as is conventionally done.
5.The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14 and 37-48 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 28 of U.S. Patent No. 12,145,337 in view of PCT Publication WO 97/20246. The claims of U.S. Patent -337 recite a similar method and computer control as set forth in the instant claims lacking essentially the aspects of rotating the lens and immersing the lens holder—presumably with the lens—into another immersion bath containing a tinting liquid. As set forth in paragraph 3, supra, PCT -246 discloses two immersion tinting baths and such would have been an obvious modification to the claims of USP -337 to form the desired tint on the lens. Again, the aspect of rotating the lens would have been obvious for essentially the same reason—to apply the second tinting in the area of the lens where it is desired.
6.The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Polster 6,355,104 discloses multiple treatment baths for lenses including tints and coatings.
7.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742