1.Claims 1-13 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.
Independent claims 1, 12 and 13 each recite “wherein a shape is produced on the optical lens during the edging…to receive or position…one electronic component”—see claim 1, last four lines; claim 12, lines 18-20; and claim 13, last four lines. However, each of these claims also contains a recitation concerning the embedding of the component—see lines 9-17 of claim 1; lines 8-17 of claim 12; and lines 9-18 of claim 13. In these recitations, four (4) alternatives are set forth concerning how the embedding is accomplished, these being (1) printing; (2) embedding; (3) processing; and (4) printing. First of all, it would appear that the (2) embedding in claims 1, 12 and 13 is superfluous since embedding has already been recited. Further, if all the claims are limited to the formation of the shape during edging, it is unclear how the printing of (1) and (4) further limits this. Finally, the (3) processing would appear to encompass the formation of the shape as recited in each independent claim. In essence, it is unclear how the recitations listing the (4) four alternatives in each independent claim either limits or is compatible with the shape production during edging which is recited in each independent claim. Applicant needs to clarify the independent claims as to these matters. In claim 5, it is unclear which printing is being referred to in claim 1—ie, either the (1) printing or the (4) printing—and this should be clarified.
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) 13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Blum et al 2004/0084790 essentially for reasons of record. As noted in the previous rejection, Blum et al embeds an electronic component within a cavity in a lens that is edged and hence meets the structural limitations of the instant product claim. The processing limitations recited in the product-by-process claim are submitted as immaterial to the patentability of the claim since the structural characteristics of the claim are in fact met in Blum et al.
3.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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,897,214. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons set forth in the previous action.
4.Applicant's arguments filed January 8, 2026 have been fully considered but they are not persuasive. Applicant’s comments concerning the method and apparatus claims are noted and are persuasive. However, there are 112 issues with respect to these claims that need to be addressed. Also, the product claim 13 is submitted to be validly rejected while a double patenting rejection remains against the method and apparatus claims 1-12.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742