1.Claims 1, 4-6, 9-13 and 15 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.
Applicant has amended the independent claims 1 and 15 to recite “in a case in which…” the surface temperature of the lens reaches a certain value—ie, see the last three lines of claim 15 and the corresponding recitation in the fourth paragraph of claim 1. It is not clear as the claims stand whether or not the curable coating is actually being applied with the language “in a case in which”, in that it is not clear if the coating would be applied if the temperature of the lens is not reached. Applicant should clarify that the coating is applied when the surface of the lens reaches the desired temperature within the range.
2.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) 1, 4-6, 9-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over PCT Publication WO 2021/209556 in view of Olund et al 2016/0026006, either alone, or further in view of Japanese Patent 2009-237003 (see the Abstract and pages 16-17 of the translation).
Applicant has amended the independent claims 1 and 15 to recite that the coating is applied when the surface temperature of the lens reaches a temperature between 30 deg F and 300 deg F, which is -1.1 deg C to 149 deg C. Clearly, this temperature range encompasses room temperature, which is conventionally 23-25 deg C, or 73-77 deg F. Given that the primary reference provides no lens temperature for the coating application, it must be assumed that the lens—and the surface thereof—is at room temperature, which would be within the instant range. The resins taught in PCT -556 (see paragraph 038) would be formed at temperatures within the instant range, so it is very likely that the surface of the base lens in the primary reference would have a temperature within the instant range after molding. Certainly, upon any cooling in the mold after formation, the base lens would almost certainly have a temperature below 300 deg F, which is 149 deg C. Hence, it is submitted that the instant temperature range over which the coating is applied to the base lens is obvious over PCT -556. It is also noted that the exact temperature of the lens surface would clearly not affect the patentability of the apparatus claim 15, which would obviously stand rejected with PCT -556 in view of Olund et al. At any rate, JP -003 has been additionally applied to teach that coatings are typically applied to a lens when the surface of the lens is within a certain temperature range. JP -003 discloses such a range to be 30-70 deg C, which lies within the instant range. It would have been obvious to one of ordinary skill in the art to choose a suitable lens surface temperature as taught in JP -003 in the process of the primary reference to ensure that the coating has sufficient adhesion and good appearance—see the Abstract of JP -003. It must be appreciated by applicant that the instant temperature range for the surface of the lens does not constitute a patentable aspect given the size of the range (ie, 30-300 deg F) and the fact that it includes room temperature. After molding the base lens and performing a casting and UV curing in PCT -556, certainly room temperature for the base lens surface constitutes an obvious aspect. Again, such an aspect would not impart patentability to the apparatus claim 15, anyway, nor would it render the method claims allowable for reasons already noted.
3.Applicant's arguments filed May 11, 2026 have been fully considered but they are not persuasive. Applicant submits that PCT -556 and Olund et al do not contain any disclosure of the base lens surface temperature and hence the instant claims would be allowable thereover. However, such is disagreed with. Surely, the base lens of PCT -556 would obviously be at a surface temperature that lies within the instant range, even without a direct disclosure of same. Additionally, JP -003 has been applied to teach the instant surface temperature prior to coating application. It is respectfully submitted that the instant temperature range for the base lens surface would simply not constitute a patentable aspect at this juncture in the prosecution.
4.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.
5.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.
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/MATHIEU D VARGOT/Primary Examiner, Art Unit 1742
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