Prosecution Insights
Last updated: April 19, 2026
Application No. 18/678,872

METHOD FOR MAKING EMBEDDED HYDROGEL CONTACT LENSES

Non-Final OA §103§112
Filed
May 30, 2024
Examiner
GROSSO, GREGORY CHAD
Art Unit
1748
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Alcon Inc.
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
89%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
149 granted / 210 resolved
+6.0% vs TC avg
Strong +18% interview lift
Without
With
+18.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
28 currently pending
Career history
238
Total Applications
across all art units

Statute-Specific Performance

§101
7.4%
-32.6% vs TC avg
§103
53.2%
+13.2% vs TC avg
§102
14.8%
-25.2% vs TC avg
§112
18.4%
-21.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 210 resolved cases

Office Action

§103 §112
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 Applicant’s election without traverse of group I, claims 1-16, in the reply filed on 3/10/2026 is acknowledged. Claims 17-23, drawn to the non-elected invention, have been cancelled. Therefore, the restriction requirement filed on 2/26/2026 is withdrawn. Claim Objections Claims 1-4, 6-7, 9-12 & 14-15 are objected to because of the following informalities: Claim 1, L3-4: has a first molding surface defining [[the]] an anterior surface Claim 1, L4-5: second molding surface defining [[the]] a back surface Claim 1, L6: defining [[the]] a posterior surface of the contact lens Claim 1, L7-8: a third molding surface defining [[the]] a posterior surface of the contact lens Claim 1, L33: substep “(a)” should be removed for being unnecessary; there is no substep (b). Alternatively, line 37 could be amended to “and (b) allowing” to match the language of claim 9(8). Claim 1, L38: compound to undergo a coupling reaction Claim 1, L49-50: wherein the precursor comprises a bulk hydrogel material Claim 1, L57: precursor is in contact with Claim 2, L1: wherein the first male mold half comprises an overflow Claim 2, L5: during the step of separating Claim 3, L1-2: is carried out by using [[a]] the vacuum UV Claim 4, L2: carried out by using [[a]] the corona plasma Claim 6, L2: treating the back surface or a Claim 6, L3: carried out by using [[a]] the corona plasma Claim 7, L2: treating the back surface or a Claim 7, L3: is carried out by using [[a]] the vacuum UV Claim 9, L3: has a first molding surface defining [[the]] a back surface Claim 9, L5: defining [[the]] a posterior surface of a contact lens Claim 9, L7: defining [[the]] an anterior surface of the contact lens Claim 9, L29-30: treating a Claim 9, L38: compound to undergo a coupling reaction Claim 9, L49-50: wherein the precursor comprises a bulk hydrogel material Claim 9, L57: precursor is in contact with Claim 10, L1: the first female mold half comprises Claim 10, L5: during the step of separating Claim 11, L2: is carried out by using [[a]] the vacuum UV Claim 12, L2: is carried out by using [[a]] the corona plasma Claim 14, L3: is carried out by using [[a]] the corona plasma Claim 15, L3: is carried out by using [[a]] the vacuum UV 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 1-16 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. Claims 1 & 9, lines 56-58, recite the limitation "removing the embedded hydrogel contact lens precursor from the lens-adhered mold half (preferably before the embedded hydrogel contact lens precursor is in contact with water or any liquid)". The term ‘preferably’ makes the claims indefinite because it is unclear whether the precursor must be removed from the mold half before contact with any liquid, or if the precursor may be removed from the mold half at any time before or after contact with any liquid. The term ‘preferably’ should be removed if it is intended to make “before the embedded hydrogel contact lens precursor is contact with water or any liquid” a positively recited element. If not, the entire ‘preferably’ phrase in parentheses should be removed. Claims 2-8 and 10-16 are rejected as they are dependent to claims 1 & 9. For the sake of compact prosecution, the phrases “(preferably before the embedded hydrogel contact lens precursor is contact with water or any liquid)” will be removed during examination in claims 1 & 9, as the term preferably makes the element optional and not positively-recited. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements. 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 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. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or non-obviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1, 3-7, 9 & 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bassampour (US20230004023), in view of Suzuki (US20250205983) and Zhang (CN105524226B). Regarding claim 1, Bassampour discloses a method for producing an embedded hydrogel contact lenses, comprising the steps of: (1) obtaining a female mold half, a first male half and a second male mold half, wherein the female mold half has a first molding surface defining the anterior surface of a contact lens to be molded, wherein the first male mold half has a second molding surface defining the back surface of an insert to be molded, wherein the second male mold half has a third molding surface defining the posterior surface of the contact lens to be molded, wherein the first male mold half and the female mold half are configured to receive each other such that an insert- molding cavity is formed between the second molding surface and a central portion of the first molding surface when the female mold half is closed with the first male mold half, wherein the second male mold half and the female mold half are configured to receive each other such that a lens-molding cavity is formed between the first and third molding surfaces when the female mold half is closed with the second male mold half [0172]. While Bassampour does not explicitly teach step (2), a step of treating a central circular area of the first molding surfaces is carried out by using a vacuum UV or a corona plasma, wherein the central circular area has a diameter that is about 90% or smaller of the diameter of the insert to be molded, it would have been obvious to one of ordinary skill in the art prior at the time of filing to do so, given that: a) the prior art of Suzuki, which is within the contact lens manufacturing art, teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]; b) a person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range of 90% or smaller); c) the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05(II)). Bassampour teaches: (3) dispensing an amount of an insert-forming composition on the central portion of the first molding surface of the female mold half obtained in step 2 [0172]; (4) placing the first male mold half on top of the insert-forming composition in the female mold half and closing the first male mold half and the female mold half to form a first molding assembly comprising the insert-forming composition within the insert-molding cavity [0172]; (5) curing the insert-forming composition in the insert-molding cavity of the first molding assembly to form a molded insert made of a crosslinked polymeric material formed from the insert-forming composition [0172]; (6) separating the first molding assembly obtained in step (5) into the first male mold half and the female mold half with the molded insert that is adhered onto the central portion of the first molding surface [0172]. Regarding (7), Bassampour teaches the crosslinked polymeric material optionally may contain, or may be free of hydroxyl groups [0213, 0232]. If the polymeric material were free of hydroxyl groups, it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to improve adhesion of the material surface by treating the back surface of the molded insert adhered on the female mold half with a corona plasma or a vacuum UV, by method as set forth by Suzuki in the rejection of claim 1(2), known to generate hydroxyl groups on the back surface of the molded insert. Regarding (8), Bassampour teaches a crosslinking solution forming a polysiloxane coating that can be used to convalently link to the surface of the molded insert [0145-0146] adhered by (a) dosing a silane solution onto the surface of the molded insert, wherein the silane solution comprises at least one polymerizable silane coupling agent, comprising: a carbodiimide, a diisocyanate, or a di-epoxy [0147]. Bassampour, in view of Suzuki, is silent on the silane solution comprising at least one polymerizable silane coupling agent having an ethylenically unsaturated group and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and (b) allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating that is covalently attached onto the front surface of the molded insert and comprises ethylenically unsaturated groups. However, in the same field of art, the prior art of Zhang teaches the silane solution comprising the polymerizable silane coupling agent of γ-methyl propylene acyloxy propyl trimethoxy silane [Claim 2], having an ethylenically unsaturated group [0043] and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and (b) allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating comprising ethylenically unsaturated groups. It would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to substitute the coupling agent taught by Bassampour with the γ-methyl propylene acyloxy propyl trimethoxy silane coupling agent taught by zhang, which comprises an ethylenically unsaturated group and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and predictably would result in allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating that is covalently attached onto the front surface of the molded insert and comprises ethylenically unsaturated groups in the modified method of Bassampour. (9) dispensing a lens-forming composition in the female mold half with the molded insert adhered thereon in an amount sufficient for filling the lens-molding cavity of the female mold half [0172] obtained in step 8. (10) placing the second male mold half on top of the lens-forming composition in the female mold half and closing the second male mold half and the female mold half to form a second molding assembly comprising the lens-forming composition and the molded insert immersed therein in the lens-molding cavity [0172]; (11) curing the lens-forming composition in the lens-molding cavity of the second molding assembly to form an embedded hydrogel contact lens precursor that comprise a bulk hydrogel material formed from the lens-forming composition and the insert embedded in the bulk material [0172]; (12) separating the second molding assembly obtained in step (11) into the second male mold half and the female mold half, with the embedded hydrogel contact lens precursor adhered on a lens-adhered mold half which is one of the female and second male mold halves [0172]; (13) removing the embedded silicone hydrogel contact lens precursor from the lens-adhered mold half [0172]; and (14) subjecting the embedded hydrogel contact lens precursor to post-molding processes including one or more processes selected from the group consisting of extraction, hydration, surface treatment, packaging, sterilization, and combinations thereof [0174-0179]. Regarding claim 3, Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge”, in which the conditions for UV irradiation would be known to one of ordinary skill in the art, for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. A person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range of 90% or smaller); and the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05(II)). Regarding claim 4, modified Bassampour teaches all limitations of claim 3 as set forth above. Additionally, Suzuki teaches that the central circular area of the first molding surface is carried out by using a corona plasma [0216]. Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. A person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range of 90% or smaller); and the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Regarding claim 5, as set forth in the rejection of claim 1(7), modified Bassampour teaches the crosslinked polymeric material can comprise hydroxyl groups [0213, 0232]. Regarding claim 6, as set forth in the rejection of claim 1(7), modified Bassampour teaches the crosslinked polymeric material can be free of hydroxyl groups [0213, 0232], wherein step (7), taught by Suzuki, of treating the back or front surface of the molded insert can be carried out by using a vacuum UV, by UV irradiation [0216] means known to a person of ordinary skill in the art, to generate hydroxyl groups on the back or front surface of the molded insert. Regarding claim 7, from the modified method as set forth in the rejection of claim 1(7), modified Bassampour teaches the crosslinked polymeric material can be free of hydroxyl group [0213, 0232], wherein step (7), taught by Suzuki, of treating the back or front surface of the molded insert can be carried out by using a vacuum UV, by UV irradiation [0216] means known to a person of ordinary skill in the art, to generate hydroxyl groups on the back or front surface of the molded insert. Regarding claim 9, Bassampour discloses a method for producing an embedded hydrogel contact lenses, comprising the steps of: (1) obtaining a first female mold half, a male half and a second female mold half, wherein the first female mold half has a first molding surface defining the back surface of an insert to be molded, wherein the male mold half has a second molding surface defining the posterior surface of a contact lens to be molded and also the back surface of the insert to be molded, wherein the second female mold half has a third molding surface defining the anterior surface of the contact lens to be molded, wherein the first female mold half and the male mold half are configured to receive each other such that an insert-molding cavity is formed between the first molding surface and a central portion of the second molding surface when the male mold half is closed with the first female mold half, wherein the second female mold half and the male mold half are configured to receive each other such that a lens-molding cavity is formed between the second and third molding surfaces when the male mold half is closed with the second female mold half [0173]; While Bassampour does not explicitly teach step (2), a step of treating a central circular area of the second molding surfaces is carried out by using a vacuum UV or a corona plasma, wherein the central circular area has a diameter equal to or smaller than the diameter of the insert to be molded, it would have been obvious to one of ordinary skill in the art prior at the time of filing to do so, given that: a) the prior art of Suzuki, which is within the contact lens manufacturing art, teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]; b) a person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range); c) the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Bassampour teaches: (3) dispensing an amount of an insert-forming composition in the first female mold half [0173]; (4) placing the male mold half obtained in step (2) on top of the insert-forming composition in the first female mold half and closing the male mold half and the first female mold half to form a first molding assembly comprising the insert-forming composition within the insert-molding cavity [0173]; (5) curing the insert-forming composition in the insert-molding cavity of the first molding assembly to form a molded insert made of a crosslinked polymeric material formed from the insert-forming composition [0173]; (6) separating the first molding assembly obtained in step (5) into the first female mold half and the male mold half with the molded insert that is adhered onto the central portion of the second molding surface [0173]. Regarding (7), Bassampour teaches the crosslinked polymeric material optionally may contain, or may be free of hydroxyl groups [0213, 0232]. If the polymeric material were free of hydroxyl groups, it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to improve adhesion of the material surface by treating the back surface of the molded insert adhered on the female mold half with a corona plasma or a vacuum UV, by method as set forth by Suzuki in the rejection of claim 9(2), known to generate hydroxyl groups on the back surface of the molded insert. Regarding (8), Bassampour teaches a crosslinking solution forming a polysiloxane coating that can be used to convalently link to the surface of the molded insert [0145-0146] adhered by (a) dosing a silane solution onto the surface of the molded insert, wherein the silane solution comprises at least one polymerizable silane coupling agent, comprising: a carbodiimide, a diisocyanate, or a di-epoxy [0147]. Bassampour, in view of Suzuki, is silent on the silane solution comprising at least one polymerizable silane coupling agent having an ethylenically unsaturated group and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and (b) allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating that is covalently attached onto the front surface of the molded insert and comprises ethylenically unsaturated groups. However, in the same field of art, the prior art of Zhang teaches the silane solution comprising the polymerizable silane coupling agent of γ-methyl propylene acyloxy propyl trimethoxy silane [Claim 2], having an ethylenically unsaturated group [0043] and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and (b) allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating comprising ethylenically unsaturated groups. It would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to substitute the coupling agent taught by Bassampour with the γ-methyl propylene acyloxy propyl trimethoxy silane coupling agent taught by zhang, which comprises an ethylenically unsaturated group and a group of -Si-(-RS1, -RS2, -RS3) in which Rs1 and Rs2 independently of each another are CH3O or Cl and Rs3 is CH3O, Cl, or a C1-C6 alkyl, and predictably would result in allowing said silane-containing compound to undergo a coupling reaction to form the polysiloxane coating that is covalently attached onto the front surface of the molded insert and comprises ethylenically unsaturated groups in the modified method of Bassampour. (9) dispensing a lens-forming composition in the second female mold half in an amount sufficient for filling the lens-molding cavity [0173]. (10) placing the male mold half with the molded insert that is adhered onto the central portion of the second molding surface on top of the lens-forming composition in the second female mold half and closing the male mold half and the second female mold half to form a second molding assembly comprising the lens-forming composition and the molded insert immersed therein in the lens-molding cavity [0173]. (11) curing the lens-forming composition in the lens-molding cavity of the second molding assembly to form an embedded hydrogel contact lens precursor that comprises a bulk hydrogel material formed from the lens-forming composition and the insert embedded in the bulk hydrogel material [0173]; (12) separating the second molding assembly obtained in step (11) into the second female mold half and the male mold half, with the embedded hydrogel contact lens precursor adhered on a lens-adhered mold half which is one of the male and second female mold halves [0173]; (13) removing the embedded silicone hydrogel contact lens precursor from the lens- adhered mold half [0173]; and (14) subjecting the embedded hydrogel contact lens precursor to post-molding processes including one or more processes selected from the group consisting of extraction, hydration, surface treatment, packaging, sterilization, and combinations thereof [0174-0179]. Regarding claim 11, Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge”, in which the conditions for UV irradiation would be known to one of ordinary skill in the art, for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. A person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range of 90% or smaller); and the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05(II)). Regarding claim 12, modified Bassampour teaches all limitations of claim 10 as set forth above. Additionally, Suzuki teaches that the central circular area of the first molding surface is carried out by using a corona plasma [0216]. Suzuki teaches that during contact lens manufacturing, the circular surfaces of the mold halves can be modified with “surface property adjustment treatments such as plasma treatment, UV irradiation, corona discharge [and] laser discharge” for the result effective means of modifying the degree of adhesion between the molding materials and the mold halves [0216]. A person of ordinary skill in the art would readily understand that changes in adhesion between the molding material (including that of the insert) and the mold half would only be relevant to such parts of the mold half that come into contact with the molding material, such parts representing an area of 100% or smaller of the diameter of the insert to be molded (which overlaps with the claimed range of 90% or smaller); and the amount of area of the mold half receiving a surface treatment represents a result-effective variable for modifying the degree of adhesion between the mold half and the insert, and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Regarding claim 13, as set forth in the rejection of claim 10, and from 9(7), modified Bassampour teaches the crosslinked polymeric material can comprise hydroxyl groups [0213, 0232]. Regarding claim 14, as set forth in the rejection of claim 10, and from 9(7), modified Bassampour teaches the crosslinked polymeric material can be free of hydroxyl groups [0213, 0232], wherein step (7), taught by Suzuki, of treating the back or front surface of the molded insert can be carried out by using a vacuum UV, by UV irradiation [0216] means known to a person of ordinary skill in the art, to generate hydroxyl groups on the back or front surface of the molded insert. Regarding claim 15, from the modified method as set forth in the rejection of claim 9(7), modified Bassampour teaches the crosslinked polymeric material can be free of hydroxyl group [0213, 0232], wherein step (7), taught by Suzuki, of treating the back or front surface of the molded insert can be carried out by using a vacuum UV, by UV irradiation [0216] means known to a person of ordinary skill in the art, to generate hydroxyl groups on the back or front surface of the molded insert. Claims 2 & 10 are rejected under 35 U.S.C. 103 as being unpatentable over Bassampour (US20230004023), in view of Suzuki (US20250205983) and Chang (US20120029111A1), as set forth in the claim 1 & 9 rejections above, and further in view of Matsuzawa (US20080073804). Regarding claim 2, modified Bassampour, in view of Suzuki and Chang, teaches all limitations of claim 1 as set forth above. While Bassampour, in view of Suzuki and Chang, does not explicitly teach that the first male mold half comprises an overflow groove which surrounds the second molding surface and into which any excess insert-forming material is pressed when the first molding assembly is closed securely, wherein any flushes formed from the excess insert-forming material during step (5) can be stuck on the first male mold half during step of separating the first molding assembly, thereby removing the flushes, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, a) given that the prior art of Matsuzawa, which is within the contact lens molding art, teaches that it is conventional for mold halves to have means for allowing overflow of insert-forming materials ([0003]), b) Matsuzawa teaches the use of such an overflow groove with a female mold half (“overflow” (11), [0044]); and c) Matsuzawa teaches that the overflow groove can alternatively be located on a male mold half ([0079]). Regarding claim 10, modified Bassampour, in view of Suzuki and Chang, teaches all limitations of claim 9 as set forth above. While Bassampour, in view of Suzuki and Chang, does not explicitly teach that the first female mold half comprises an overflow groove which surrounds the first molding surface and into which any excess insert-forming material is pressed when the first molding assembly is closed securely, wherein any flushes formed from excess insert-forming material during step (5) can be stuck on the first female mold half during step of separating the first molding assembly, thereby removing the flushes, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so, a) given that Matsuzawa, which is within the molding art, teaches that it is conventional for mold halves to have means for allowing overflow of insert-forming materials ([0003]), b) Matsuzawa teaches the use of such an overflow groove with a female mold half(“overflow” (11), [0044]); and c) Matsuzawa teaches that the overflow groove can alternatively be located on a male mold half ([0079]). Allowable Subject Matter Claims 8 & 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, in addition to resolving the 35 U.S.C. 112(b) rejection. Regarding claims 8 & 16, no prior art was found to modify Bassampour, in view of Suzuki and Zhang, to teach at least one polymerizable silane coupling agent comprises 3-(trimethoxysilyl)propyl (meth)acrylate, 3-[dimethoxy- (meth)silyl]propyl (meth)acrylate, (meth)acryloxypropyldimethoxysilane, 2- (trimethoxysilyl)-ethyl (meth)acrylate, 1-methyl-2-(trimethoxysilyl)ethyl (meth)acrylate,alpha-(meth)acryloxypropyl-trimethoxysilane, (trimethoxysilyl)methyl (meth)acrylate,[dimethoxy-(methyl)silyl]methyl (meth)acrylate, [dimethoxysilyl]methyl (meth)acrylate, 4- (trimethoxysilyl)butyl (meth)acrylate, (meth)acryloxy-propyltrimethoxysilane, 3- [dimethoxy-(methoxymethyl)silyl]propyl (meth)acrylate,[dimethoxy(methoxymethyl)silyl]methyl (meth)acrylate, 2-[butyl(dimethoxy)silyl]ethyl (meth)acrylate, 3-(dimethoxy(2-propyl)silyl]-propyl (meth)acrylate, 2- [dimethoxy(propyl)silyl]ethyl (meth)acrylate, 3-(3-trimethoxysilyl-propoxy)propyl(meth)acrylate, 3-(ethyl(dimethoxy)silyl)propyl (meth)acrylate, 3- (meth)acrylamidopropyl(trimethoxy)silane, N-(3-dimethoxysilylbuty)-2- (meth)acrylamide, N-[2-[3-[dimethoxy(methyl)silyl]propylamino]ethyl (meth)acrylamide, N-[2-[2-(3-trimethoxysilylpropylamino)ethylamino]ethyl] (meth)acrylamide, N-(6- trimethoxysilylhexyl) (meth)acrylamide, N-(5-trimethoxysilylpentan-2-yl) (meth)acrylamide, N-(2-methyl-4-trimethoxy-silylbutyl) (meth)acrylamide, N-(4- trimethoxysilylbutyl) (meth)acrylamide, N-[3-[dimethoxy(2-methylpropyl)silyl]propyl] (meth)acrylamide, N-(trimethoxysilylmethyl) (meth)acrylamide, N-[3-(3- trimethoxysilylpropoxy)propyl) (meth)acrylamide, N-(2-trimethoxysilylethyl) (meth)acrylamide, N-[3-[dimethoxy(methyl)silyl]propyl] (meth)acrylamide, 3- [dimethoxy(2-methylprop-2-enoyloxy)-silyl)]propyl (meth)acrylate, [dimethoxy(methacryloxy-methyl)silyl]methyl (meth)acrylate, 2-[dimethoxy(2- (meth)acryloxyethyl)silyl]ethyl (meth)acrylate, 3-(trichlorosilyl)propyl (meth)acrylate, 3- (dichloro(methyl)silyl)propyl (meth)acrylate, (dichloro(propyl)silyl)methyl (meth)acrylate, 2-trichlorosilylethyl (meth)acrylate, 2-(trichlorosilyl)propyl (meth)acrylate, 3-methyl-(4- trichlorosilyl)butyl (meth)acrylate, (dichloro(ethyl)silyl)methyl (meth)acrylate, 4- trichlorosilylbutan-2-yl (meth)acrylate, 3-[dichloro-[3-(2-methylprop-2-enoyloxy)propyl]- silyl]propyl (meth)acrylate, 2-[dichloro-[2-(2-methylprop-2-enoyloxy)ethyl]silyl]ethyl (meth)acrylate, 4-[dichloro(ethyl)silyl]butyl (meth)acrylate, 3-[dichloro(pentyl)silyl]propyl (meth)acrylate, 3-[dichloro(propyl)silyl]propyl (meth)acrylate, 3-[butyl(dichloro)silyl]- propyl (meth)acrylate, 5-trichlorosilylpentyl (meth)acrylate, [dichloro(methoxy)silyl]- methyl (meth)acrylate, 3-(3-trichlorosilylpropoxy)propyl (meth)acrylate, 3- [dichloro(propan-2-yl)silyl]propyl (meth)acrylate, (2-methyl-3- trichlorosilylpropyl) (meth)acrylate, 3-[dichloro(methoxy)silyl]propyl (meth)acrylate, or combinations thereof. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY C GROSSO whose telephone number is (571)270-1363. The examiner can normally be reached on M-F 8AM - 5PM. 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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. GREGORY C. GROSSO Examiner Art Unit 1748 /GREGORY C. GROSSO/Examiner, Art Unit 1748 /Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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Prosecution Timeline

May 30, 2024
Application Filed
Apr 04, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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1-2
Expected OA Rounds
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Grant Probability
89%
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2y 8m
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