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 .
Response to Arguments
In response to the amendments filed 3/4/2026, the previous rejections under 112(b) are withdrawn.
Applicant's arguments filed 3/4/2026 have been fully considered but they are not persuasive.
Applicant argues that Beuchon makes a single reference to a strip of paper that is glued to two parts but does not describe the steps prior to attaching the strip of paper in sufficient detail to meet the limitations of claim 1. Examiner disagrees. Examiner notes the office action uses the translation of Beuchon previously provided with the restriction requirement on 11/14/2025. In this translation on page 3 lines 12-13, Beuchon describes the molds are glued along their generatrices and mounted in the position shown in Figure 2 using a strip of paper. It is clear from this portion of Beuchon that the mold halves are moved to face one another, glued, and then wrapped with the paper. Examiner notes the claim does not specify when the gluing step occurs other than being “before the step of positioning,” wherein the “step of positioning” is referring to “positioning said closing member.” Applicant’s suggestion that Beuchon’s result can be obtained by depositing glue on the paper itself is not supported by the description in Beuchon, “the two pieces of the mold are mounted…by joining two parts of the mold with a strip of paper…glued along their generatrices.” In this instance, “their” is plural and referring to the two mold halves as there is only one strip of paper.
With respect to Iwanami, Applicant argues that placing tape having an adhesive on it onto the molds is placing the adhesive or glue onto the molds at the same time as the tape and does not meet claim 1 where it is specified that the glue is placed before the closing member. Applicant argues that the assertion in the office action that the order of performing the methods steps as prima facie obviousness is oversimplified. Applicant argues that a person of skill in the art would not be motivated to modify the tape in Iwanami such that the glue is applied prior to the tape because it is less convenient. This is not found to be persuasive. As per MPEP §2144.04(IV)(C), “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” Applicant has not alleged any unexpected results from the change in order of the glue/tape application. Applicant also alleges that the references teaches away from the two -step solution but does not explain how or cite where the reference teaches away from applying glue before the tape. Applicant also argues that arriving at the claimed invention using this modification involves a “conceptual leap” in going from a one-step to two step process and requires more than just a simple re-ordering. It is also not explained what the additional modification is or why a simple reordering cannot be performed.
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.
(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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beuchon (FR973216, see English translation previously provided on 11/14/2026.)
Regarding claim 1, A process for making a mold assembly suitable for molding an ophthalmic lens, comprising the steps of: providing two molding shells each having a main face to be placed in front of the main face of the other molding shell and a peripheral edge surrounding said main face; (Beuchon page 3 lines 8-10 and Figure 2 show two mold halves each having a main face facing the other and a peripheral edge around them) providing a closing member in the form of a band; (Beuchon page 3 line 11 describes a strip of paper) and positioning said closing member around at least a major part of the peripheral edges of the two molding shells, (Beuchon page 3 lines 11-12 describe joining the molds with the strip of paper, see Figure 2 showing the peripheral edge wrapped in the paper) wherein, before said step of positioning: at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Beuchon page 3 lines 12-13 describe gluing the molds along their generatrices, i.e., the peripheral edge.)
Claim Rejections - 35 USC § 103
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 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.
Claims 1-5, 7-8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanami (2004299289, see English translation provided) modified by Beuchon (FR973216, see English translation previously provided on 11/14/2026.)
Regarding claim 1, Iwanami meets the claimed, A process for making a mold assembly suitable for molding an ophthalmic lens, (Iwanami describes a process of assembling a mold for lenses beginning at [0038]) comprising the steps of: providing two molding shells each having a main face and placing the main face of each molding shell (Iwanami [0038] describe two molds 1,2 which are arranged to face each other, see Figure 1 showing the molds arranged such that the faces of the molds form a cavity 4) and a peripheral edge surrounding said main face; (Iwanami Figure 1 shows peripheral surfaces 11, 21) providing a closing member in the form of a band; and positioning said closing member around at least a major part of the peripheral edges of the two molding shells, (Iwanami [0038] describe winding adhesive tape 3 around the peripheral surfaces 11, 21.)
Iwanami does not describe placing a strip of glue around the peripheral surfaces prior to positioning, and does not explicitly meet the claimed, wherein, before said step of positioning: at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell, however, Iwanami [0038] describes the tape 3 is adhesive tape and the glue/adhesive thereon is placed on the peripheral surfaces 11, 21 at the same time as the step of positioning the closing member. As per MPEP §2144.04(IV)(C), the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. It would have been obvious to a person of ordinary skill in the art before the filing date to put the adhesive down on the mold first then wrap the tape around because the order would not matter so long as the adhesive is under the tape.
Alternatively or additionally, Beuchon also meets the claimed, wherein, before said step of positioning: at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Beuchon page 3 lines 11-13 describe putting paper on glued mold parts, necessitating that the glue is applied prior to the paper strip.)
It would have been obvious to a person of ordinary skill in the art before the filing date to modify the order of the adhesive application as described in Iwanami with the placement of the glue prior to the paper strip as described in Beuchon so that the paper has something to stick to, see Beuchon page 3 lines 10-13.
Regarding claim 2, Iwanami meets the claimed, The process of claim 1, wherein each strip of glue extends continuously on each peripheral edge of each molding shell (Iwanami [0038] describes the adhesive tape is wound around the mold, the winding action produces a continuous strip of the adhesive.)
Regarding claim 3, Iwanami meets the claimed, The process of claim 1, wherein each strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Iwanami [0038] describes the tape is wound around the mold more than one turn.)
Regarding claim 4, Iwanami meets the claimed, The process of claim 3, wherein each strip of glue extends on an angular sector around each peripheral edge of at least 270° (Iwanami [0038] describes the tape is wound around the mold more than one turn meaning 360°.)
Regarding claim 5, Iwanami meets the claimed, The process of claim 3, wherein only one strip of glue is placed on each peripheral edge of each molding shell (Iwanami [0038] describes one continuous winding, i.e., one continuous strip of glue.)
Regarding claim 7, Iwanami meets the claimed, The process of claim 1, wherein, at least one cord of glue is deposited on the closing member, along at least a first free extremity of this closing member (Iwatani [0038] describes adhesive tape having an adhesive or glue layer on it including at the extremities.)
Iwatani describes the adhesive or glue is already on the tape so Iwatani does not explicitly meet the claimed, depositing one cord of glue after the step of positioning the closing member, however as per MPEP §2144.04(IV)(C), the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. It would have been obvious to a person of ordinary skill in the art before the filing date to put adhesive down on the tape edge after positioning the tape as long as the glue was able to be stuck.
Regarding claim 8, Iwatani meets the claimed, The process of claim 7, wherein: the closing member has a length longer than the circumference of the peripheral edge of each molding shell; (Iwatani [0038] describes wrapping the tape around the mold, therefore the length of the tape must be longer than the circumference of the mold edges) during the step of positioning, only a part of the closing member is glued around the peripheral edges of the two molding shells, so as to leave open an aperture for filling of the mold assembly; (Iwatani [0040] describe a portion of the tape is removed and not glued on so as to leave a gap for injection) and the remainder of the closing member is glued against the peripheral edges of the two molding shells after complete filling of the mold assembly, (Iwatani [0040] describes releasing the gap after injection) said remainder having a second free extremity coming into contact with said cord of glue (Iwatani [0038] and [0040] describe the tape is overlapped thereby contacting one free extremity to the adhesive.)
Regarding claim 14, Iwanami meets the claimed, The process of claim 4, wherein each strip of glue extends on an angular sector around each peripheral edge equal to 360° (Iwanami [0038] describes the tape is wound around the mold more than one turn meaning 360°.)
Conclusion
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.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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