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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 17-20 and 23-29 is/are pending. Claim(s) 1-16 and 21-22 is/are canceled.
Response to Arguments
Applicant’s arguments, filed 7/31/2026, with respect to the claim objection have been fully considered and are persuasive. The objection of claim 23 has/have been withdrawn due to the Applicant’s amendments.
Applicant’s arguments with respect to claims 17-20 and 23-29 have been considered but are moot in view of the new grounds of rejection. The Examiner notes the change in prior art was necessitated by the Applicants amendments.
Applicant’s amendments claim features in combination that were not previously claimed together and thus change the scope of the claims.
Although a different embodiment(s) has been used herein to teach the now claimed combination of features, the subject matter overlaps with the previous prior art rejection. Therefore, the following are in response to Applicant’s arguments that apply to the instant prior art rejection.
Applicant argues the prior art fails to teach a stop in the container of Maroschek-2 (2017). The Examiner notes that the edge of the shape holding the injector distal end creates a physical barrier and thus a stop as broadly claimed, as noted below in the prior art rejection section.
With respect to claim 23 and actuation resulting from fitting the cartridge onto the housing, the Examiner notes putting the components together at least aligns them and allows for proper sliding of the haptic sliders in each of Maroschek-1’s Figures 7 and 8. As the claims are product claims and not method, the function only need to be able to be met. Being slidable axially means the haptic sliders may also be pushed by the housing during the process of docking it with the cartridge rather than by direct manual manipulation.
Applicant argues the blocking mechanism is not taught. This is taught as cited below in the prior art rejection section.
Claim Objections
Claim 28 is objected to because of the following informalities:
Claim 28 recites “the first and second”, which should be “the first and the second”.
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 25-29 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 25, line 16 recites “a component coupled to”. It is unclear if this is the same component as introduced in line 11 or a different component.
Claim(s) 26-29 are rejected as dependent from a rejected claim.
Claim Interpretation - 35 USC § 112, 6th paragraph
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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.
Claim limitation “see Table I below” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “see Table I below” coupled with functional language “see Table I below” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. see Table I below.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) see Table I below has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: see Table I below.
Table I: Language Invoking 112(f)
Claim(s)
Placeholder
Functional Language
Corresponding Structure
25, 27
Member
Folding
[0033] on a flap
[0097] #13 in the Figures, blade-like shape
28
Members
Sliding
[0022] in a plane above or below the IOL; laterally displaceable slides
[0102] #s 31a, 31b in the Figures
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
Functional language and intended use language is presented in italicized font.
Claim(s) 23-29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maroschek-1 (US 2019/0254812 A1).
Regarding Claim 23, Maroschek-1 teaches an injector for an intraocular lens (e.g. Figures 8a-b), comprising:
a housing (e.g. [0055], #10) with a plunger (e.g. [0094], seen in Figure 1) that is slideable inside the housing for applying the intraocular lens (pushes the lens out, and thus it slides within the bounds of the housing);
a cartridge for the intraocular lens (e.g. [0055], #40); and
a haptics slider (e.g. Figure 8a, #s 360) for folding inward haptics of the intraocular lens (e.g. [0088]-[0089], Figure 8b versus Figure 8a), wherein the haptics slider is movable from a non-activated position to an activated position (e.g. [0088]-[0089], Figure 8a (non-activated) versus Figure 8b (activated)),
wherein the cartridge is configured to be slideably fitted onto the housing of the injector (e.g. [0056]), and
wherein slideably fitting the cartridge onto the housing of the injector causes the haptics slider, or a component coupled thereto, to abut the housing of the injector and move the haptics slider from the non-activated position to the activated position, thereby folding inward the haptics of the intraocular lens (e.g. Figures 8a-8b, the slider transitions the haptics as the sliders are moved toward the housing (left in these Figures); see also Figure 1 for relative positioning of the cartridge and housing).
Regarding Claim 24, the haptics slider forms part of the cartridge (e.g. Figures 8a-8b).
Regarding Claim 25, Maroschek-1 teaches an injector for an intraocular lens (e.g. Figures 7a-e), comprising:
a housing (e.g. [0055], #10) with a plunger (e.g. [0094], seen in Figure 1) that is slideable inside the housing for applying the intraocular lens (pushes the lens out, and thus it slides within the bounds of the housing);
a cartridge for the intraocular lens (e.g. [0055], #40), the cartridge being configured to be slideably fitted onto the housing of the injector (e.g. [0056]);
a folding member (e.g. [0057], #50) for folding the intraocular lens (e.g. [0062]); and
a haptics slider (e.g. Figures 7a-7e, #s 260, 260’) for folding inward haptics of the intraocular lens (e.g. [0079], Figure 7c versus Figure 7b), the haptics slider being movable from a non-actuated position to an actuated position (e.g. [0079], Figure 7b (non-actuated) versus Figure 7c (actuated)),
wherein, in the non-actuated position of the haptics slider (e.g. Figure 7b), the haptics slider or a component coupled to the haptics slider blocks the folding member from folding the intraocular lens (e.g. Figure 7b, #s 262, 261 block the hinge and thus block the folding member from folding the IOL),
wherein, in the actuated position of the haptics slider, the folding member is enabled to fold the intraocular lens (e.g. Figure 7c, the hinge is free to allow movement through its complete range of motion and thus free to allow folding of the IOL), and
wherein slideably fitting the cartridge onto the housing of the injector causes the haptics slider or a component coupled to the haptics slider to abut the housing of the injector and thereby move the haptics slider from the non- actuated position to the actuated position, thereby folding inward the haptics of the intraocular lens (e.g. Figures 7b-7c, the slider transitions the haptics as the sliders are moved toward the housing (left in these Figures); see also Figure 1 for relative positioning of the cartridge and housing).
Regarding Claim 26, the haptics slider is rotatable (e.g. Figures 7a-e, the slider is able to rotate at hinges at #s 261) and comprises a turntable (e.g. Figures 7a-e, hinges at #s 261).
Regarding Claim 27, in a folded position of the haptics, the haptics slider provides a passage for the folding member (e.g. Figure 7c, discussed supra for claim 25).
Regarding Claim 28, the haptics slider comprises first and second sliding members (e.g. Figures 7b-7c, each side has an element #s 260, 260’),
wherein the first and second sliding members are configured to move in the same direction while folding inward the haptics, or move towards each other for folding inward the haptics (the members are slidable and thus able to be moved as claimed), and
wherein the first and second sliding members are arranged laterally next to the intraocular lens or distal and proximal of the intraocular lens (e.g. Figure 7b).
Regarding Claim 29, the haptics slider is arranged in a plane above or below a support area for the intraocular lens (e.g. Figures 7a-e).
Claim Rejections - 35 USC § 103
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 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 nonobviousness.
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.
Functional language and intended use language is presented in italicized font.
Claim 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maroschek-1 (US 2019/0254812 A1) in view of Maroschek-2 (US 2017/0042666 A1).
Regarding Claim 17, Maroschek-1 teaches a system (e.g. abstract, 8a-b), comprising:
a container (e.g. [0043]); and
an injector for an intraocular lens (e.g. Figures 8a-b), the injector comprising:
a housing (e.g. [0055], #10); and
a haptics slider (e.g. Figure 8a, #s 360) for folding inward haptics of the intraocular lens (e.g. [0088]-[0089], Figure 8b versus Figure 8a), wherein the haptics slider is movable from a non-activated position to an activated position (e.g. [0088]-[0089], Figure 8a (non-activated) versus Figure 8b (activated)).
Maroschek-1 discloses the invention substantially as claimed but fails to teach wherein the container comprises a stop positioned to engage the haptics slider during insertion of the injector into the container, and wherein engagement of the haptics slider with the stop during insertion of the injector into the container causes the haptics slider to move from the non-activated position to the activated position, thereby folding inward the haptics of the intraocular lens.
Maroschek-2 teaches an IOL injector having a container (e.g. [0006], Figures 4-5, [0056]) having a stop (e.g. Figure 4c, edge of #214 contacting the edge of the housing having the haptic sliders, Figures 5-6) and a heating element (e.g. [0013], [0014]) and the container is liquid filled (e.g. [0022]).
Maroschek-1 and Maroschek-2 are concerned with the same field of endeavor as the claimed invention, namely IOL injector systems.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Maroschek-1 such that the container has is that as taught by Maroschek-2 in order to provide a container having a heating element so that heating of the IOL may take place without use of a water bath (e.g. Maroschek-2, [0013]).
The combination of Maroschek-1 and Maroschek-2 teaches: engagement of the haptics slider with the stop during insertion of the injector into the container causes the haptics slider to move from the non-activated position to the activated position, thereby folding inward the haptics of the intraocular lens (as the injector is pushed into the container, to arrive at e.g. Maroschek-2, Figure 5a, the device of Maroschek-1 is able to be compressed from Figure 8a to Figure 8b).
Regarding Claim 18, the injector comprises a cartridge for the intraocular lens (e.g. Maroschek-1, [0055], #40) that can be slidably fitted onto the injector (e.g. Maroschek-1, [0056]) and the cartridge is insertable into the container (e.g. Maroschek-2, Figures 5, the entire device in Maroschek-1’s Figure 8a is insertable into Maroschek-2’s container, e.g. Maroschek-2, Figures 5) and comprises the haptics slider (e.g. Maroschek-1, Figure 8a).
Regarding Claim 19, the container is a heating container for heating the intraocular lens (discussed supra for claim 17).
Regarding Claim 20, the container is a liquid-filled container for storing and transporting a hydrophilic intraocular lens (e.g. Maroschek-2, [0022]).
Relevant Prior Art
US 2014/0135784 to Maroschek teaches an IOL injector system with an IOL folding mechanism (e.g. Figures 1, 3c-3d).
US 5,304,182 to Rheinish, et al teaches an IOL injector system with an IOL folding mechanism (e.g. Figures 1-3).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JERRAH EDWARDS can be reached at (408)918-7557. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 10/11/2026
