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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement filed on 5/29/2024 is being considered by the Examiner.
Claim Objections
Claims 1-27 are objected to because of the following informalities:
Regarding claim 1, the preamble of the claim requires some clarifying commas. It is difficult to discern what structure is being formed based on the language of the preamble. For example, the preamble can be understood that “a semi-finished product…is formed”, or “a contoured edge…is formed”. Alternatively, the providing (i) step in body of the claim should be amended to include the features which Applicant wishes to impart.
Regarding dependent claims 2-27, please amend the preambles to recites “The method” instead of “A method”.
Regarding claims 11 and 23, please amend “produces the groove (NU) or…” to read “produces the encircling groove (NU) or…”.
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 1-27 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.
Regarding claim 1, in the recitation of “the blank…can already have the predetermined surface geometry…”, it is unclear if the limitation is positively recited/required or optional due to the recitation of “can”.
Furthermore, claim 1 recites “the blank”, “the workpiece”, and “the semifinished product” throughout the body of the claim. It is unclear how these structures are different from one another, and the claim seemingly uses the terms interchangeably. While Examiner understands that the blank evolves in multiple steps into a semi-finished product (or even a finished product), the terms being used interchangeably renders the claimed invention indefinite. This issue is inherited and exacerbated by dependent claims similarly interchangeably using the terms. Please amend the claim to reflect either one consistent nomenclature of the workpiece, or clearly differentiate what the workpiece comprises at each step, and antecedently refer back to the structure properly. For the purposes of examination, the workpiece being processed is the blank, i.e. the same structure. Please also ensure to amend the dependent claims to be in agreement with the decided terms of claim 1.
Further regarding claim 1, the recitation of “an encircling cut having at least in part a depth equal to the blank thickness” renders the scope of the claimed invention indefinite, as it is unclear what “at least in part” in combination with “equal to” imparts into the claimed invention.
Further regarding claim 1, the recitation of “so that a circumferential surface (UF) defining the contoured edge (RA) of the semi-finished product (HZ) to be formed remains at the workpiece” renders the scope of the claimed invention indefinite because it is unclear what is being imparted. What is the intention of “remains at the workpiece”?
Regarding claim 2, in the recitation of “an edge contour (RK1) is produced at the semi-finished product (HZ) by the first tool (WZ1), that has a slight oversize in relation to an edge contour (RK2) of the workpiece processed to finished state”, it is unclear what is being imparted by reciting “a slight overside in relation to…”. Is the limitation intending to impart that RK1 is larger than RK2?
Regarding claim 3, it is unclear what is being imparted in the recitation of “that already corresponds with an edge contour (RK2) of the workpiece processed to finished state”. Furthermore, the latter limitation also recites “an edge contour (RK2)”, which has been antecedently recited in an earlier limitation.
Regarding claim 4, it is unclear how it is possible that the chamfer is applied to the transition between the edge (RA) and the rear side (RS) in the principal step iii). This issue exacerbated by claim 5 reciting in the principal step iii), the chamfer or chamfers (FA1) is or are applied by the first tool (WZ1) at the same time as the encircling groove (NU) or step (ST) or the encircling cut”. It is unclear how the chamfer would be applied between the edge (RA) and the rear side (RS) at the same time as the encircling groove on the front surface is being formed. Claim 16 is additionally rejected due to the same scope and recitations as claim 4, and the lack of clarity within claim 16 is further exacerbated by claim 17 (claim 17 recites the subject matter of claim 5).
Regarding claims 4 and 16, “the transition” does not have antecedent basis. Furthermore, given the recitation of “a chamfer…and/or…a chamfer”, please add an adjective or term which differentiates the chamfers from one another, e.g. “a first chamfer”, “a second chamfer”, “a front chamfer”, or “a rear chamfer”.
Regarding claims 7 and 19, recitations of “the first tool (WZ1’)” render the claimed invention indefinite, as all previous recitations of “the first tool” recite on (WZ1), not (WZ1’). Thus, it is unclear what differentiation is being made, and what is being imparted.
Regarding claim 11, “the frontal entry point” does not have antecedent basis. The frontal entry point is antecedently established in claim 9, which is not in the scope of dependent claim 11.
Regarding claim 23, “the frontal entry point” does not have antecedent basis. The frontal entry point is antecedently established in claims 9 and 21, which is not in the scope of dependent claim 23.
Any claim listed as rejected above but not specifically addressed above has inherited the rejection of a claim specifically addressed above due to dependency therefrom.
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.
(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) 1-3, 21, 22, 24-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mandler (US 7,413,502).
Regarding claim 1, Mandler discloses a method of machining optical workpieces, in which a semi-finished product (HZ) with predetermined surface geometries at a front side (FS) and a rear side (RS) remote therefrom and with a contoured edge (RA) of predetermined edge thickness (D2) between the front side (FS) and the rear side (RS) is formed starting from a blank (RL) (see at least the Abstract as well as the below citations), comprising the following principal steps executed in the stated sequence:
i) providing the blank (RL), which has a blank thickness (D1) and can already have the predetermined surface geometry at the front side (FS) and which is to be processed at least at the rear side (RS) and the edge (RA) (Col. 9, lines 13-43 disclose that a plastic blank is provided and the rear surface of the blank is processed to produce rear surface geometry; see also Col. 12, lines 13-16; see Figures 6 and 7);
ii) block-free picking up of the blank (RL) at the rear side (RS) for supported holding of the workpiece (Col. 9, lines 44-49 disclose clamping the workpiece; Col. 11, lines 44-45 disclose that no block is required; Col. 12, lines 65-67; Col. 13, lines 49-55; see Col. 21, lines 51-67);
iii) processing of the blank (RL) at the front side (FS) by a first tool (WZ1) for formation of
an encircling groove (NU) or step (ST) with a depth (TI) greater than or equal to the edge thickness (D2) of the semi-finished product (HZ) to be formed and smaller than the blank thickness (D1), or of an encircling cut having at least in part a depth equal to the blank thickness (D1) so that a circumferential surface (UF) defining the contoured edge (RA) of the semi-finished product (HZ) to be formed remains at the workpiece (Col. 9, lines 23-26; Col. 9, line 44-Col. 10, line 13; Col. 11, lines 23-27; Col. 22, lines 5-22 and 36-48 and 60-65; see circular groove 31 representing the transition region between the actual lens 32 and the outer annular region, see also Figures 7, 8B, 10A-C; see also Col. 23, lines 39-63);
iv) picking up the workpiece at the front side (FS) for supported holding of the workpiece; and v) processing the workpiece at the rear side (RS) by at least one second tool (WZ2) for formation of the semi-finished product (HZ) with the predetermined surface geometry at the rear side (RS) (see finishing steps of the lens including finishing the rear surface 27, Col. 25 lines 1-29; Col. 28, line 62-Col. 29, line 14).
Regarding claim 2, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses in the principal step iii), during formation of the encircling groove (NU) or step (ST) or of the encircling cut, an edge contour (RK1) is produced at the semi-finished product (HZ) by the first tool (WZ1), that has a slight oversize in relation to an edge contour (RK2) of the workpiece processed to finished state (see Figure 7, as well as Col. 23, lines 10-29; see Figures 7, 8b) and
wherein the edge contour (RK2) of the workpiece processed to finished state is produced only after the principal step v) for processing the rear side (RS) of the workpiece (Col. 14, lines 9-16; see Col. 25, lines 15-29 disclosing the final step of the operation is separation of the lens 32 from the annular region 30).
Regarding claim 3, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses in the principal step iii), during or after formation of the encircling groove (NU) or step (ST) or of the encircling cut, an edge contour (RK2) is produced at the semi-finished product (HZ) by the first tool (WZ1) or a further tool, that already corresponds with an edge contour (RK2) of the workpiece processed to finished state (see Figure 7, as well as Col. 23, lines 10-29; see Figures 7, 8b; see also Col. 14, lines 9-16; Col. 25, lines 15-29).
Regarding claim 21, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein, at the start of the principal step iii), the first tool (WZ1) and/or the workpiece are so moved relative to one another that, for formation of the encircling groove (NU) or step (ST) or the encircling cut, the first tool (WZ1) enters the workpiece at a frontal entry point starting from the front side (FS) of the workpiece (Col. 22, lines 22-65; see also Figure 7 regarding the front face 19).
Regarding claim 22, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein, at the start of the principal step iii), the first tool (WZ1) and/or the workpiece are so moved relative to one another that, for formation of the encircling groove (NU) or step (ST) or the encircling cut, the first tool (WZ1) enters the workpiece at an edge entry point(ES) starting from the edge (RA) of the workpiece (Col. 22, lines 22-65; see also Figure 7 regarding the front face 19).
Regarding claim 24, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein, in the principal step iii), a rotationally driven end mill is used as the first tool (WZ1) for processing the blank (RL) at the front side (FS) (see plain milling cutter 9, Col. 22 lines 22-65).
Regarding claim 25, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein the first tool (WZ1) used in the principal step iii) for processing the blank (RL) at the front side (FS) is different from the at least one second tool (WZ2) used in the principal step v) for processing the workpiece at the rear side (RS) (wherein Col. 29, lines 1-14 disclose that the machining of the rear face 27 takes place using a lathe tool, wherein lathe tool 12 is shown, which is different from the plain milling cutter 9).
Regarding claim 26, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein, in the principal step iv), the workpiece is picked up block-free at the front side (FS) (wherein the method disclosed by Mandler does not employ blocking, i.e. no block is require for manufacture, see Col. 11 lines 44-48; see clamping disclosed in Col. 12, line 65-Col. 13, line 4; Col. 15, lines 10-16; Col. 19, lines 16-29).
Regarding claim 27, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein the workpiece in the principal step iv) is so picked up at the front side (FS) that the workpiece is held at the front side (FS) with support over the whole area (wherein the method disclosed by Mandler does not employ blocking, i.e. no block is require for manufacture, see Col. 11 lines 44-48; see clamping disclosed in Col. 12, line 65-Col. 13, line 4; Col. 15, lines 10-16; Col. 19, lines 16-29; see collet 18 and clamping elements 28; see also Col. 22, lines 57-67).
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.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandler (US 7,413,502).
Regarding claim 23, Mandler discloses the claimed invention as applied above, wherein Mandler further discloses wherein, in the principal step iii) after entry of the first tool (WZ1) into the workpiece,
the first tool (WZ1) and/or the workpiece are so moved relative to one another that the first tool (WZ1) produces the groove (NU) or step (ST) or cut in at least one revolution at the workpiece (see at least the rotation and displacement of the workpiece 16 on workpiece spindle 21; see Col. 10, lines 24-38).
However, Mandler does not explicitly teach both entering the workpiece at an edge and leaving the workpiece at an edge exit point, i.e. wherein the first tool (WZ1) leaves the workpiece at the edge (RA) of the workpiece at an edge exit point (AS) remote from the frontal or edge entry point(ES).
However, Mandler does suggest alternative steps, including ending on the outer edge (Col. 19, lines 45-47), i.e. wherein the first tool (WZ1) leaves the workpiece at the edge (RA) of the workpiece at an edge exit point (AS) remote from the frontal or edge entry point(ES).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the position of exit/ending to reflect an edge exit point as claimed. One would be motivated to do so because Mandler intimates and suggests alternatives, including the location specifically at the edge of the lens. Given the physical disposition of the lens and milling tool, there are a limited amount of places where the tools contacts, enters, and exits. The claimed locations are suggested by Mandler, thus rendering the combination obvious to one having ordinary skill in the art.
Claim(s) 4, 5, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandler (US 7,413,502) in view of Mappes (US 10112280).
Regarding claims 4 and 16, Mandler discloses the claimed invention as applied above. However, Mandler does not explicitly teach in the principal step iii), a chamfer (FA1) is applied to the transition between the edge (RA) and the rear side (RS) of the semi-finished product (HZ) to be formed and/or a chamfer is applied to the transition between the edge (RA) and the front side (FS) of the semi-finished product (HZ) to be formed.
However, from the same or similar field of endeavor, Mappes teaches in the principal step iii), a chamfer (FA1) is applied to the transition between the edge (RA) and the rear side (RS) of the semi-finished product (HZ) to be formed and/or a chamfer is applied to the transition between the edge (RA) and the front side (FS) of the semi-finished product (HZ) to be formed (Col. 4, lines 33-55: the transition region can between the cut and the second surface and be chamfered or radiused by the turning tool in the turning sub-step; Col. 10, lines 29-51).
Both Mandler and Mappes are directed towards lens machining methods, wherein Mandler provides a type of chamfer, but does so in an alternative manner for a different purpose (see Col. 26, lines 44-48; Col. 15, lines 41-50), i.e. Mandler contemplates chamfers in the context of lens production. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the chamfering as taught by Mappes into the invention of Mandler. One would be motivated to do so in order to provide smooth transition surfaces and avoid damaging grinding tools; see Col. 10, lines 29-51 and Col. 4, lines 33-55 of Mappes.
Regarding claims 5 and 17, Mandler in view of Mappes teaches the claimed invention as applied above, wherein modified Mandler further teaches wherein, in the principal step iii), the chamfer or chamfers (FA1) is or are applied by the first tool (WZ1) at the same time as the encircling groove (NU) or step (ST) or the encircling cut (see the combination statement as applied above, as well as Mappes: Col. 4, lines 33-55).
Claim(s) 6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandler (US 7,413,502) in view of Mappes (US 10112280), and in further view of Watanabe (US 8499468).
Regarding claim 6, Mandler in view of Mappes teaches the claimed invention as applied above. However, modified Mandler does not explicitly teach wherein, in the principal step iii), a fastening geometry for the workpiece processed to finished state is produced at the edge (RA) and/or at the front side (FS) of the semi-finished product (HZ) to be formed.
However, from the same or similar field of endeavor, Watanabe teaches of a fastening geometry for the workpiece processed to finished state is produced at the edge (RA) and/or at the front side (FS) of the semi-finished product (HZ) to be formed (see Figures 30A-E regarding holes 109, 110; see also Col. 1, lines 13-40; see also Figures 31A and 31B regarding holes 204, 206, concave 301 and attachment 303; see also Col. 11, lines 35-62; Col. 13, lines 54-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Watanabe into the invention of modified Mandler. Mandler is silent regarding producing a structure which incorporates holes for fastening, wherein Watanabe provides a method of determining and providing holes for fastening to a glasses rim/stem, i.e. taking the process of Mandler to a further degree of finishing, which is a beneficial in the context of lens manufacturing.
Regarding claim 20, Mandler as modified by Mappes and Watanabe teaches the claimed invention as applied above, wherein modified Mandler further teaches wherein the fastening geometry produced in the principal step iii) for the workpiece processed to finished state is a pointed or roof bevel (SF) or an encircling channel or groove at the edge (RA) of the semi-finished product (HZ) to be formed and/or wherein the fastening geometry produced in the principal step iii) for the workpiece processed to finished state comprises one or more bores or notches at the front side (FS) and/or the edge (RA) (see Watanabe: Figures 30A-E regarding holes 109; see also Figures 31A and 31B regarding holes 204, 206, concave 301 and attachment 303; see also Col. 11, lines 35-62; Col. 13, lines 54-67).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mandler (US 7,413,502) in view of Watanabe (US 8499468).
Regarding claim 18, Mandler discloses the claimed invention as applied above. However, Mandler does not explicitly teach wherein, in the principal step iii), a fastening geometry for the workpiece processed to finished state is produced at the edge (RA) and/or at the front side (FS) of the semi-finished product (HZ) to be formed.
However, from the same or similar field of endeavor, Watanabe teaches of a fastening geometry for the workpiece processed to finished state is produced at the edge (RA) and/or at the front side (FS) of the semi-finished product (HZ) to be formed (see Figures 30A-E regarding holes 109, 110; see also Col. 1, lines 13-40; see also Figures 31A and 31B regarding holes 204, 206, concave 301 and attachment 303; see also Col. 11, lines 35-62; Col. 13, lines 54-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Watanabe into the invention of Mandler. Mandler is silent regarding producing a structure which incorporates holes for fastening, wherein Watanabe provides a method of determining and providing holes for fastening to a glasses rim/stem, i.e. taking the process of Mandler to a further degree of finishing, which is a beneficial in the context of lens manufacturing.
Allowable Subject Matter
Claims 7 and 19 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 7 and 19 recite allowable subject matter. The prior art does not anticipate, teach, or suggest producing the fastening geometry at the same time as the encircling groove or step of the encircling cut. Claims 8-15 inherit the allowable subject matter as indicated in claim 7. Examiner notes that all 112(b) issues must be resolved in order to place the application in condition for allowance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Watanabe: [0004] [0124-0126], [0171-0173], [0193-0195]
Anatole (US 20170209977), [0191]-[0195], [0099-0101]
Schneider (US 20160052097), [0065]
Lemaire (US 2009/0068932), see Figure 2.
Lemaire (US 9446491), see Figures 2A-C.
Monnoyeur (US 8961267), see Figures 2, 6, and 7
Miura (US 20110107884), see Figure 6a and 14
Akiyama (US 20080051012), see Figure 18
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/MAKENA S MARKMAN/Primary Examiner, Art Unit 3723
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