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 .
1.Claims 1-14 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 1, directly after the first paragraph—ie, after line 5-- a separate paragraph adding a recitation to actually molding the base lens with the microstructures on the surface thereof should be added to clarify the formation of the lens. As it stands, the claim is incomplete in calling for an applying step at line 8 while there is no actual formation of the base lens. Also, in the last two lines of claim 1, “curable layer” should be –cured layer—since the curable coating has been cured. Ie, as it stands, the last two lines of claim 1 call for “curing the curable coating into a curable layer” and this would appear to be inaccurate.
2.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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by PCT Publication WO 2021/209556 (see Fig. 3e).
The applied reference discloses the instant optical or ophthalmic lens with a curable coating 920) encapsulating microstructures (30) on the lens. While the method of making the lens may differ slightly from that set forth in instant claim 1, the structure as taught in PCT -556 is the same as the instant and hence claim 14 is anticipated. The patentability of product-by-process claims is dependent on structure, not the process by which the product is made.
3.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) 1-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over PCT Publication WO 2021/209556 (see paragraphs 0124-0138 and Figs. 3a-3e) in view of Olund et al 2016/0026006 (see paragraphs 0033-0036).
PCT -556 (see Figs. 3a-3e) discloses a method and mold to make an optical lens wherein a base lens (10) with microstructures (30) is molded in a primary mold (80) composed of mold portions (81, 82), the lens is placed in a second mold (90), a curable coating material (M in Fig. 3c) is applied to the surface of the lens and is pressed thereagainst with a second mold portion (92) and the coating is cured to encapsulate the microstructures in cured coating layer (20). Essentially, the primary reference fails to teach a step of replacing a first mold insert with a second mold insert in forming the cured coating as set forth in instant claim 1 and the aspect of a first mold insert being replaceable with a third mold insert as set forth in instant claim 15. While it is noted that PCT -556 employs molds, or mold portions, it is also noted that the use of mold inserts in lieu of molds is nothing but conventional in the art and that employing either molds or mold inserts would have been considered to be equivalent in the molding art. The aspect of forming a composite lens by forming a first portion in a first mold, removing the first portion from the first mold and then placing that first portion in a second mold to form the composite lens is taught at paragraphs 0033 and 0034 of Olund et al. These paragraphs disclose essentially the process depicted in Figs. 3a-3e of PCT -556 in forming a composite lens. However, paragraphs 0035 and 0036 of Olund et al disclose an alternative process by forming a first portion of the composite lens in a first mold, replacing one of the mold portions with another mold portion while keeping the first portion of the lens in the first mold and then molding the final portion of the finished lens against the first portion using the mold portion that was substituted for the replaced portion. In essence, this alternative process is that which is set forth in the instant claims and which is obviously intended to be the equivalent to the process taught at paragraphs 0033 and 0034 of Olund et al and the process taught in PCT -556. It would have been obvious to one of ordinary skill in the art at the time of filing to have modified the method and device of PCT -556 by using a replaceable mold (insert) as taught in Olund et al to facilitate the formation of the lens by streamlining the process. Clearly, either method is considered to be equivalent by Olund et al. Further, as can be seen in Figs. 3a and 3b of PCT -556, the first primary mold portion 81 is essentially the same as the first mold 91 of the second mold 90 since they have the same base curvatures. It clearly would have been obvious to have left the molded lens in the mold portion 81 and simply replace mold portion 82 with mold 92 when molding the curable coating in PCT -556 as essentially taught in paragraphs 0035 and 0036 of Olund et al. PCT -556 discloses instant claim2 and instant claim 3 is taught in the combination as applied. PCT -556 teaches instant claim 4 at paragraph 038 and injection molding of the base lens at paragraph 0126. The exact temperature of the melt as recited in instant claim 5 would have been an obvious feature in PCT -556 to facilitate resin flow into the mold as is well known in the art. It is well known to heat lens molds prior to injection as set forth in claim 6 and the exact temperature to which the heating is conducted would have been within the skill level of the art to assist in mold filling—ie, to prevent resin freezing in the mold. Instant claims 7 and 8 are submitted to have also been obvious in the process of the primary reference to facilitate resin flow as desired. Paragraph 0123 of PCT -556 discloses that the curable coating is itself covered by an additional photochromic or anti-UV or anti-blue light coating. It certainly would have been obvious to have incorporated the materials providing these functionalities directly in the curable coating as set forth in instant claim 9 if so desired. Instant claim 10 is taught in the primary reference since the PGPub taught at paragraph 095 discloses acrylate based abrasion resistant coatings. PCT -556 shows that the second mold used to mold the curable coating has a smooth contacting surface—see 92 and 92’ in Figs. 3b-3d. It would have been obvious to have employed a mold insert as set forth in instant claim 12 dependent on the exact optical patterning desired for the final lens. Instant claim 13 is submitted to be obvious for essentially the same reason. Certainly it would have been obvious to form additional microlens layers on either side of the lens dependent on the exact duty desired for the final lens. The device of instant claim 15 is obvious in the combination as applied.
4.The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. .Keller et al (col. 7, line 66 to col. 8, line 6) discloses replaceable mold inserts to manufacture microstructured lenses. Saito et al (col. 7, lines 32-35) teaches replaceable mold inserts. Clerc et al (see 34 and 36 in Figs. 3 and 4) shows employing different convex molds to form different layers of a composite lens.
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