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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/6/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
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.
Claims 1, 11-13, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5, and 6 of copending Application No. 18709742 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 5, and 6 of application 18709742 read on or make obvious claims 1, 11-13, and 17 of the instant application.
Regarding claim 1, Application 18709742 discloses an ophthalmic element comprising a vision base element and a film structure that is adhered to a curved optical surface of the vision base element, so that the film structure conforms to said optical surface, wherein the film structure comprises at least one auxetic film that has a negative Poisson ratio ν, said Poisson ratio ν being defined as: v=-εtransεaxial wherein ε.sub.trans is a relative transverse strain of the auxetic film, and ε.sub.axial is a relative axial strain of the auxetic film, said relative transverse strain and relative axial strain being positive for increases in transverse dimension and axial dimension, respectively, of the auxetic film, or being negative for decreases in said transverse dimension and axial dimension, respectively, of the auxetic film (see claim 1).
Regarding claims 11-13 and 17, Co-pending application 18709742 discloses the limitations therein (see claims 2, 3, 5, and 6).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Regarding independent claim 1 (and its dependents), the prior art does not disclose the claimed ophthalmic element specifically including as the distinguishing features in combination with the other limitations the claimed “wherein the film structure comprises at least one auxetic film that has a negative Poisson ratio ν, said Poisson ratio ν being defined as: v=-εtransεaxial wherein ε.sub.trans.”
Conclusion
Cedric (7581832) is being cited herein to show a reference that discloses some similar features to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES JONES whose telephone number is (571)270-1278. The examiner can normally be reached 7:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C. JONES/Primary Examiner, Art Unit 2872
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