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.Claims 48-56 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The claims would be allowable since the prior art does not disclose, teach or suggest the overall aspects of making an ocular lens that has a feature configured to direct peripheral light into an eye away from the central region of the retina when worn on the eye wherein the feature is formed by spin casting the lens material on a mold which contains at least one recess.
2.Claims 48-56 and 65-69 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 48, lines 5-7 recite that the feature “causes the peripheral light… to have a focal point not off of the retina”. However, claims 53 and 54 appear to contradict this, since these claims call for the focus is either in front or behind a peripheral region of the retina. Clarification is required as to the meaning of “not off of the retina” at lines 6 and 7 of claim 48. Also, claim 48, lines 4-5, “the central region of the retina” lacks antecedent basis. In the last two lines of claim 48, it is not clear that a “partial curing” of the lens material would actually form the lens unless such curing would lead to a self- supporting preform that would later be fully cured. Clarification is required as to this issue. Claim 65 is indefinite in calling for the internal surface to be “on the anterior layer” and clarification is required for this. In claims 66-69, line 1, “the optical material” lacks antecedent basis from claim 57—ie, the dependency of these claims should be changed to claim 58.
3.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) 57 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Holden et al 2013/0010255 (see Figs. 1A, 1B and 5).
Holden et al (see Figs. 1A, 1B and 5) discloses the formation of an ocular lens (10) having an optical feature (24) on a surface of the lens which directs peripheral light (58) into the eye away from the central region (32) of the retina (34) and an optic zone (20) shaped to direct central light (50, 54) towards a central focal point of the central region (32) of the retina (34) when the lens is worn on the eye (14) of the user. See also paragraph 0038 disclosing the operation of the lens
4.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) 66-69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holden et al 2013/0010255.
Holden et al discloses the basic claimed method of making an ocular lens as set forth in paragraph 3, supra, the applied reference essentially failing to teach that the refractive index of the optical material making up the feature and the exact material used to make the feature. Holden et al (see paragraph 0038) teaches that the peripheral zone 24 making up the optical feature has a greater refractive power, and it must be assumed that the refractive power that it is greater than is that of the central optic zone 20. One way to make the refractive power greater would be to use a material of a different refractive index for the peripheral zone as set forth in instant claim 66 and hence such would have been obvious. The refractive power would also depend on the curvature, and hence instant claim 67 is submitted to also have been obvious over Holden et al. Ie, one of ordinary skill in this art would have been able to impart the desired refractive power for the feature constituting the peripheral zone 24 in Holden et al by varying either the refractive index—if the materials are different—or the curvature—if the materials are the same. The materials of instant claims 68 and 69 are conventional in the art—Official Notice is hereby taken of this—and such would have been obvious material selections to make the peripheral zone of holden et al dependent on the physical properties desired for the lens.
5.Claim(s) 58-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holden et al 2013/0010255 in view of either of Chapoy 2017/0212277 or Iuliano 2008/0231801.
Holden et al discloses the basic claimed method of making an ocular lens as set forth in paragraph 3, supra, the primary reference essentially lacking the aspect of printing an optical material onto a surface of the lens to form the feature and selectively depositing such a material onto the anterior surface of the lens. Either of Chapoy or Iuliano discloses three-dimensional printing to form a contact lens with such printing building up the lens layer-by-layer. It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the method of making the lens of Holden et al by printing as taught by either of Chapoy or Iuliano to facilitate the formation of the lens in layers as is generally known in the art. Chapoy (see paragraph 0009) teaches ink jet printing as does Iuliano (see paragraph 0059) as set forth in instant claim 59. Since the lenses would be built in a layer-by-layer operation, the deposition of material on an internal surface or intermediate layer as recited in instant claims 61 and 62 would have been encompassed in the combination of art as applied. The aspects of instant claims 63 and 64 are submitted to have been within the skill level of the art of the combination as applied. Clearly, the layered printing of either secondary reference would be inclusive of forming posterior, intermediate and anterior layers and these would obviously be crosslinked or bonded together during the printing operation to form the final lens as recited in instant claims 63 and 64. Given the construction of the lens in Holden et al, it is submitted that instant claim 65 is met in the combination as applied since the formation of the lens using a printing operation would form the feature internally—as it is built up—until the final layer is formed on the anterior surface of the lens.
6.The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Legerton et al discloses contact lenses to treat myopia.
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