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 .
Election/Restrictions
Claims 3-4, 6, 8-12, and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 5, 2026.
In the restriction requirement mailed March 5, 2026, claim 13 was placed in Group I, which the Applicant has elected. However, claim 13 depends from claim 12 which is in unelected Group III. Thus claim 13 is being moved to Group III and withdrawn from consideration based on the previous restriction requirement. A phone call was placed with Attorney Andrew Patch on June 10, 2026 and a follow-up on June 12, 2026 to notify Applicant about the change. No response was received.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements filed December 5, 2023 and April 17, 2026 have been considered.
Specification
The disclosure is objected to because of the following informalities:
[0032] “0,1 μm” should read “0.1 μm”
[0062] “figures 2a, 2c and 2e” should read “Figures 3a, 3c, and 3e”
[0063] “figure 2b” should read “Figure 2b”
[00147] “figures 8a…” should read “Figures 8…” since there is no Figure 8a
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 5, 7, and 15-16 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.
Claim 1 recites the limitation "…changing at least one parameter of the coating deposition according to the considered area" in last line of the claim. It is unclear if “the considered area” is referring to one of the at least two areas or if the limitation as a whole is referring to a parameter that is changed between the at least two areas. Thus the claim 1 is rendered indefinite. For the purposes of compact prosecution, Examiner will interpret “…changing at least one parameter of the coating deposition according to the considered area" as a parameter of the coating is different between the at least two areas.
Claims 2, 5, 7, and 15-16 inherit indefiniteness from claim 1.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-2, 5, 7, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kosanic et al. (U.S. Patent Application Publication No. 2015/0198793 – hereinafter referred to as “Kosanic”).
Regarding claim 1, Kosanic teaches a method for manufacturing an optical article (Figure 3), comprising: providing a base-lens substrate (Figure 3 substrate 17, [0126]) having opposite first and second lens surfaces (Figure 3 substrate 17 has opposite first (bottom side) and second (top side) surfaces), and at least one optical element (Figures 1 and 3 optical objective 1, [0126]) disposed on the second lens surface (Figure 3 optical objective 1 is disposed on the second lens surface (top side of substrate 17)) or embedded within the base-lens substrate, each optical element having a maximum height that is less than or equal to 0.5 mm (Figure 1 thickness T, [0090] 10 μm ≤ T ≤ 0.5mm), and a maximum width that is less than or equal to 2.0 mm ([0090] width (W) is 50 μm ≤ W ≤ 1 mm); and
performing a differentiate coating deposition on the second lens surface ([0114] depositing reflecting element 5);
wherein the second lens surface comprises at least two areas defined according to their relative position with respect to at least one optical element (Figure 3 areas are optical objective 1 and area of substrate 17 without optical objective 1), and the differentiate coating deposition comprises changing at least one parameter of the coating deposition according to the considered area (Figure 3 reflecting element 5 is deposited on optical objective 1 and not on substrate 17).
Regarding claim 2, Kosanic teaches all the limitations of the claimed invention with respect to claim 1. Kosanic further teaches the parameter of the coating deposition changing according to the area includes at least one of the group consisting of:
Presence or absence of coating (Figure 3 reflecting element 5 is deposited on optical objective 1 and not on substrate 17);
Composition of coating material;
Refractive index of coating material;
Viscosity of the coating material;
Optical properties of the coating material, including transmissivity of the coating material in at least one determined range of wavelengths, or scattering properties of the coating material;
Mechanical properties of the coating material; Hardness of the coating;
Thickness of the coating;
Volume and/or shape of droplets of coating deposited by inkjet;
Preliminary surface treatment performed on the considered area.
Regarding claim 5, Kosanic teaches all the limitations of the claimed invention with respect to claim 1. Kosanic further teaches the differentiate coating deposition is configured to change at least one optical property of at least one optical element among optical power, asphericity, colour, and transmissivity ([0074] reflecting element 5 changes the transmissivity of optical objective 1).
Regarding claim 7, Kosanic teaches all the limitations of the claimed invention with respect to claim 1. Kosanic further teaches the differentiate coating deposition is configured to change at least one optical or mechanical property of at least one area of the base-lens substrate devoid of any optical element ([0127] substrate/wafer 17 can be coated with additional functional layers which would change an optical or mechanical (pre-structuring and depositing other microstructures) property of area of substrate/wafer 17 devoid of optical objective 1).
Regarding claim 16, Kosanic teaches an optical article (Figure 3), comprising:
a base-lens substrate (Figure 3 substrate 17, [0126]) having opposite first and second lens surfaces (Figure 3 substrate 17 has opposite first (bottom side) and second (top side) surfaces), and at least one optical element (Figures 1 and 3 optical objective 1, [0126]) disposed on the second lens surface (Figure 3 optical objective 1 is disposed on the second lens surface (top side of substrate 17)) or embedded within the base-lens substrate, each optical element having a maximum height that is less than or equal to 0.5 mm (Figure 1 thickness T, [0090] 10 μm ≤ T ≤ 0.5mm), and a maximum width that is less than or equal to 2.0 mm ([0090] width (W) is 50 μm ≤ W ≤ 1 mm);
a coating extending (Figure 3 reflecting element 5, [0114]) over at least part of the second lens surface (Figure 3 reflecting element 5 extends over optical objective 5 on top side of substrate 17);
wherein the optical article is obtained by implementing the method according to claim 1 (See rejection of claim 1 above).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kosanic (U.S. Patent Application Publication No. 2015/0198793).
Regarding claim 15, Kosanic teaches all the limitations of the claimed invention with respect to claim 1. Kosanic further teaches each optical element has a maximum width comprised between 0.5 μm and 1.5 mm ([0090] width (W) is 50 μm ≤ W ≤ 1 mm) and a maximum height comprised between 10 μm and 0.5 mm ([0089] 10 μm ≤ T ≤ 0.5 mm). It is a well-established proposition 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the height of the optical object taught by Kosanic such that the height is between 10 μm and 50 μm, which overlaps the disclosed range of 0.1 μm to 50 μm, 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mappes et al. (U.S. Patent Application Publication No. 2019/0146242) discloses a lens containing multiple optical elements and coating to modify the properties of the optical elements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX PARK RICKEL whose telephone number is (703)756-4561. The examiner can normally be reached Monday-Friday 8:30 a.m. - 6 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bumsuk Won can be reached at (571)272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Alex Rickel
Examiner
Art Unit 2872
/A.P.R./Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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