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 .
Notice of Reply
This communication is responsive to the amendment(s) and/or argument(s) filed 7/16/26. The previous ground(s) of objection and/or rejection is/are withdrawn. The following new and/or reiterated ground(s) of rejection is/are set forth hereinbelow.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a control unit” in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yao et al. (3/18/25 IDS Foreign Patent Doc cite No 1, CN 113867006 A, hereinafter Yao).
For claim 1, Yao discloses a contact lens (Figs 1,2,7) (Pgs 15-19), comprising inter alia:
a polymer matrix (polymer elements 1-3 and 1-8) (Figs 1,2) (Pgs 15-19); and
a nanowire mesh network (nano sheet sensor layer element 1-5 is shown in Fig 2 as spiral formed and may be fairly and reasonably considered at least a mesh network, as seen in the weblike pattern/construction of interconnected peaks and valleys in Fig 4 ) embedded in the polymer matrix (Figs 1,2) (Pgs 15-19).
For claim 2, Yao discloses an apparatus for measuring intraocular pressure (IOP) (Figs 1,2,7) (Pgs 15-19), comprising inter alia:
the contact lens of claim 1; and
an electrically conductive coil (coil element 1-9) (Figs 1,2,7) (Pgs 15-19) adapted to share radiofrequency (RF) energy with the nanowire network of the contact lens (Figs 1,2,7, especially Fig 7) (Pgs 15-19, especially Pg 17-18).
For claim 3, Yao discloses the apparatus of claim 2, wherein the electrically conductive coil has a selected resonant frequency (Fig 7) (Pg 19).
For claim 4, Yao discloses the apparatus of claim 3, wherein the resonant frequency changes in response to a change in configuration of the nanowire network (Fig 7) (Pg 19).
For claim 5, Yao discloses the apparatus of claim 4, wherein the change in resonant frequency is correlated with a change in IOP (Fig 7) (Pg 19).
For claim 6, Yao discloses the apparatus of claim 2, further comprising a device (tesla meter elements 1-10) (Figs 1,7) (Pgs 15-17) connected to the electrically conductive coil that produces and measures the frequency of the RF energy (Figs 1,7) (Pgs 15-17).
For claim 7, Yao discloses the apparatus of claim 2, wherein the electrically conductive coil is connected to a control unit (tesla meter elements 1-10) (Figs 1,7) (Pgs 15-17); wherein the control unit comprises one or more of signal generator, oscillator, amplifier, analogue to digital converter (ADC), logic circuitry, processor, memory device, wireless communications device, power supply, and actuator (Figs 1,7) (Pgs 15-17, especially wireless communications).
For claim 8, Yao discloses the apparatus of claim 7, wherein the control unit provides one or more of data acquisition, processing, identification of resonant frequency, and wireless data communications to a connected device (Figs 1,7) (Pgs 15-17, especially wireless communications).
For claim 9, Yao discloses the apparatus of claim 7, wherein the electrically conductive coil and the control unit are adapted to be worn by a user (on eyeglasses in Fig 1).
For claim 10, Yao discloses the apparatus of claim 7, wherein the electrically conductive coil and the control unit are adapted to be mounted on a pair of glasses (on eyeglasses in Fig 1).
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(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yao in view of Abbasi et al. (US 2018/0267331 A1, hereinafter Abbasi).
For claims 11 and 12, Yao discloses the claimed invention as set forth hereinabove, including the use of a polymeric contact lens material with a sensing nanowire mesh network but appears silent with respect to the polymers used therein. Yao discloses the claimed invention, except for explicitly disclosing, wherein the polymer matrix comprises at least one of a hydrogel and polydimethylsiloxane and/or the polymer matrix comprises a hydrogel comprising poly (2-hydroxyethyl methacrylate) (pHEMA). However, Abaasi in the same field of endeavor, teaches a pHEMA hydrogel polymer matrix ([0114-0120]) used for a contact lens and includes a nanowire mesh sensing matrix that further is operably communicated for data transfer (Figs 1D, 10, 12). Yao and Abbasi are both considered to be analogous to the claimed invention because they are in the same field of intraocular sensing contact lens with data communications. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the contact lens of Yao to incorporate the specific hydrogel material teachings of Abbasi to provide a known polymer for a contact lens because doing so would aid in providing a known material for a sensing contact lens that responds ocular parameters and provides data indicative thereof.
Response to Arguments
Applicant's arguments filed 7/16/26 have been fully considered but they are not persuasive. Applicant argues the anticipatory rejection of the newly amended claim, specifically arguing Yao does not disclose a nanowire mesh network because:
As known in the art, nanowires are individual fibres or rods that are highly elongated to the extent that they effectively exhibit a one-dimensional surface area.
However, Yao does not teach or suggest a nanowire mesh network. Instead, Yao describes a γ-Fe₂O₃@NiO magnetic oxide nanosheet. As known in the art, a nanosheet has a two-dimensional sheet structure that maximizes planar surface area. A nanosheet is therefore morphologically distinct from nanowires, and the morphological differences result in different physical, magnetic, and electrochemical properties of the two. Indeed, the photomicrograph of Fig. 4 of Yao clearly shows a uniform crystalline structure devoid of nanowires.
In the invention a nanowire solution (e.g., individual nanowires suspended in alcohol) was used to obtain the nanowires that were dispersed in a polymer which was then
cured, resulting in the nanowire mesh network.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “individual fibres or rods that are highly elongated to the extent that they effectively exhibit a one-dimensional surface area”, “nanosheet is therefore morphologically distinct from nanowires”, and/or “a nanowire solution (e.g., individual nanowires suspended in alcohol) was used to obtain the nanowires that were dispersed in a polymer which was then cured, resulting in the nanowire mesh network”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conversely, the Examiner respectfully notes that the positive recitation of (i) the nanowire mesh network including individual fibers or rods embedded in the polymer matrix, (ii) a nanowire mesh network not comprising a nanosheet, and/or (iii) the nanowire mesh network resulting from a nanowire solution used to obtain nanowires that were disposed in a polymer which was cured would appear to overcome the anticipatory rejection as set forth hereinabove under Yao.
Further, the Examiner respectfully notes that absent any special definition in the instant Specification upon which Applicant does not appear to rely, the claims have been treated on the merits in light of the instant Specification consistent with the plain meaning of the terms therein. As such it is more than fair and reasonable consider Yao’s spiral formed nano sheet sensor layer element 1-5 to be a “wire” (a thin flexible metallic thread/rod shaped conductor as seen in spiral of Fig 2) within nanometer proportion(s) that includes a “mesh network” (the weblike patter/construction of interconnected peaks and/or valleys of the sheet as seen in Fig 4). The mere fact that Yao’s nano sensor is a nano sheet does not preclude it from fairly and reasonably being considered nanowire mesh network, particularly absent and structural requirements to the contrary and/or as broadly as structurally claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey G. Hoekstra whose telephone number is (571)272-7232. The examiner can normally be reached Monday through Thursday from 5am-3pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A. Marmor II can be reached at (571)272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jeffrey G. Hoekstra
Primary Examiner
Art Unit 3791
/JEFFREY G. HOEKSTRA/ Primary Examiner, Art Unit 3791
