1.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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blum et al 2004/0084790 in view of Pugh et al 2010/0072643 (see paragraph 0075; see claims 8 and 23 therein).
Blum et al (see Figs. 2B-2D) is applied for reasons of record, the primary reference clearly showing the formation of a recess (205) in a lens blank into which the electronic component (200) is placed and encapsulated. The only aspect missing from Blum et al is that the electronic component is printed. Newly applied Pugh et al clearly teaches printing an electronic component (see claim 23) which would be energized by an energy source in a lens. It would have been obvious to one of ordinary skill in the art to print the electronic component of the primary reference as taught in Pugh et al to facilitate the formation of the component in the desired location. Again, the additional method steps used to make the product do not have to be met in the product itself, as long as the product structure would have been known in the art. It is respectfully submitted that such is the case here.
2.Applicant’s arguments with respect to claim(s) 13 have been considered but are moot in view of the new ground of rejection. In view of the amendment requiring that the component be printed, Pugh et al has been applied to teach this. Applicant suggests that Blum et al fails to teach a cavity into which the electronic component is encapsulated. However, Blum et al clearly teaches such a cavity—see 205 in Figs. 2B and 2C.
3.Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
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