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.Upon updating the search, new art has been uncovered which is applicable against the method claims 7-9 and hence prosecution has been reopened.
2.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.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Korean Patent 10-1280129 (see Figs. 2, 3 and 7; see the translation, pages 2 and 3, the portion explaining Figures 2 and 3; see the translation, page 5, the portion referring to Figures 6 and 7).
KR -129 (see Fig. 3) discloses the instant method of forming a lens comprising disposing a wafer (112) into a mold cavity (ie, between molds 120 in Fig. 3), the wafer having a containment band (110) coupled to and covering the outer periphery of the wafer, injecting a moldable material into the mold cavity (see Fig. 7) and setting the moldable material to form a semi-finished lens comprising the wafer, the containment band and the moldable material. The semi-finished lens is shown in Figure 7, where the supports remain attached to the lens until they are removed during a chamfering process—see the last full paragraph of page 5 of the translation. At least a portion of the containment band is removed from the semi-finished lens to form the finished lens as recited in instant claim 8.
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-1280129 in view of European Patent Application 1,410,889 (see paragraphs 0036-0039).
KR -129 discloses the basic claimed method as set forth in paragraph 2, supra, the applied reference essentially lacking a clear teaching of forming the finished lens wherein the containment band or a portion thereof is part of the finished lens. It is well known in the art to form lenses with portions that are more easily machined so that the lens can be fitted onto a frame without damage to the lens—see paragraphs 0036-0039 of EP -889. In view of this disclosure, it is submitted that one of ordinary skill in the art would have found it obvious to have left a portion of the containment band on the finished lens in that the band portion would constitute a more easily machined portion that would facilitate machining/drilling the lens without damaging the lens.
4.In view of the finding of new art, the allowability of method claims 7-9 has been vacated and a rejection of these claims has been made. The method claims would be allowable upon the inclusion of the subject matter added to instant claim 1 concerning the portion of the containment band that is part of the optical article.
5.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
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