1.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) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over PCT Publication WO 2021/153632 as taught ion the English language equivalent Suesugi et al 2022/0041789 (see paragraphs 0017, 0020 and 0052) in view of Japanese Patent 2008-119830 for reasons of record as set forth in paragraph 3 of the previous office action.
While applicant has amended claim 13 to recite that the lens is made by the method of claim 1, such a recitation is immaterial to the product as long as the structural characteristics being claimed are met. While applicant suggests that JP -830 does not teach the instant protruding portion intersecting with an outer circumferential face, such is respectfully disagreed with. It is submitted that JP -830 does indeed teach a lens with a protruding portion which intersects the outer circumferential face. Again, see lens 100 in Fig. 3 and lens 300 in Figs. 5a and 5b, which clearly have such a feature.
2.The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3.Claims 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims9 and 17 of U.S. Patent No. 11,542,357 in view of Japanese Patent 2008-119830 for reasons of record as set forth in paragraph 5 of the last office action.
4.Claims 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 12 and 20 of copending Application No. 17/431,250 in view of Japanese Patent 2008-119830 for reasons of record as set forth in paragraph 6 of the last office action.
This is a provisional nonstatutory double patenting rejection.
5.Applicant's arguments filed March 27, 2026 have been fully considered and are persuasive with respect to the method claims. However they are not persuasive with respect to the product claims 13-15 and the art rejection and double patenting rejection of these claims is maintained. Again, a product does not “know” how it is being made and the instant protruding portion intersecting with the outer circumference of the lens is submitted to be taught in JP -830.
6.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.
7.Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATHIEU D VARGOT whose telephone number is (571)272-1211. The examiner can normally be reached on Mon-Fri from 9 to 6.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A Johnson, can be reached at telephone number 571 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
Prosecution Insights