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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
Applicant argues that Beuchon does not describe a non-adhesive band because Beuchon describes a band of paper that is glued. Applicant argues that the final state of the paper in Beuchon is glued which makes adhesive. Examiner does not agree with Applicant’s interpretation of a paper which is glued onto something else as being an adhesive paper. This is evidenced by the fact the claim also glues the closing member onto the mold yet the closing member is “non-adhesive.” Despite this, the rejection is updated after further search and consideration yielded other applicable references. Additionally, Examiner notes that claim 1 mentions the closing member is non-adhesive and claims 7-8 describes the closing member is glued and then attached to another extremity of the closing member which seems to imply the closing member is adhesive. This is unclear and claims 7-8 are rejected under 112(b).
With respect to Iwanami, Applicant argues that using tape as disclosed in Iwanami would require selection of the tape adhesive for compatibility with the mold whereas the claim process uses glue rather than tape. Applicant argues that a person would not modify Iwanami to use a two step process involving glue instead of the single step process involving the tape because it is counter-intuitive. Examiner disagrees. Using glue and a fastening member is another known alternative to using tape which is evidenced by the references cited below. Applicant also argues that using glue rather than tape yields unexpected results such as independent selection of each glue and non-adhesive closing member component for their individual mechanical properties. This is not found to be persuasive because a material having its own physical properties is not unexpected. Also, Applicant does not claim any particular glue or non-adhesive tape or any particular physical components which would be commensurate in scope with the alleged unexpected effects.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-8 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.
Regarding claims 7-8, claim 7 recites a cord of glue is applied to the closing member and then claim 8 describes the closing member is fastened to itself using the cord of glue. This seems to imply that the closing member is adhesive even though claim 1 specifically notes the closing member is a non-adhesive band. It is not clear if the closing member is still non-adhesive or can be partially adhesive for claims 7-8.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over modified Otsuka (US 2015/0226937.)
Regarding claim 1, Otsuka meets the claimed, A process for making a mold assembly suitable for molding an ophthalmic lens, (Otsuka beginning at [0047] describes an assembly method for molded lenses, being a mold for lenses is the intended use of the apparatus) comprising the steps of: providing two molding shells each having: a main face and placing the main face of each molding shell in front of the main face of the other molding shell; (Otsuka [0051] describes matching a second lens 3 to a first lens 2 such that the lens surfaces 2a and 3a face one another) and a peripheral edge surrounding said main face; (Otsuka Figure 4 shows the peripheral edges of the lenses 2 and 3) providing a closing member in the form of a non-adhesive band; (Otsuka [0049] describes providing a body tube 4, the body tube 4 does not have an adhesive but is shaped as a band, see Figure 4) and positioning said closing member around at least a major part of the peripheral edges of the two molding shells, (Otsuka [0049] and [0051] describe the tube 4 is positioned around each of the lenses 2 and 3.)
Otsuka meets the claimed, at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Otsuka [0050] and [0053] describe placing adhesive agent 14 around the first lens 2 and adhesive agent 15 around second lens 3) but discloses this happens after the tube 4 is placed around the second lens 3 not, before said step of positioning, however, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP §2144.04(IV)(C). Therefore, it would have been obvious to a person of ordinary skill in the art that the adhesive agents 14/15 could be placed before or after the positioning of the tube 4 without any unexpected results.
Claims 1-5, 7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nagayama (US 2014/0247488.)
Regarding claim 1, Nagayama meets the claimed, A process for making a mold assembly suitable for molding an ophthalmic lens, (Nagayama beginning at [0171] describes a lens holding frame for holing lenses 32 and 33, being a mold is the intended use of the apparatus) comprising the steps of: providing two molding shells each having: a main face and placing the main face of each molding shell in front of the main face of the other molding shell; (Nagayama [0174]-[0175] describe placing the first lens 32 and second lens 33 are aligned such that the lens surfaces 3a and 2a are facing one another, see Figure 8) and a peripheral edge surrounding said main face; (Nagayama [0179] describes a lens side surface 32fr and [0192] describes 33fr, see Figure 8) providing a closing member in the form of a non-adhesive band; and positioning said closing member around at least a major part of the peripheral edges of the two molding shells, (Nagayama [0174] describes positioning a lens frame 34 around the lenses.)
Nagayama meets the claimed, wherein,: at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Nagayama [0217] describe coating the side surfaces 32fr and 33fr with bonding portion 36A and 36B) but discloses this happens after positioning the frame 34 around the lenses not before said step of positioning however, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP §2144.04(IV)(C). Therefore, it would have been obvious to a person of ordinary skill in the art that the bonding portions could be placed before or after the positioning of the frame 34 without any unexpected results.
Regarding claim 2, Nagayama meets the claimed, The process of claim 1, wherein each strip of glue extends continuously on each peripheral edge of each molding shell (Nagayama [0217]-[0218] disclose the bonding portion is linear around the edges and is coating and spread over the side surfaces indicating it is a continuous strip of glue around the entire side surfaces.)
Regarding claim 3, Nagayama 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 (Nagayama [0217]-[0218] disclose the bonding portions are both linear around the edges and is coating and spread over the side surfaces.)
Regarding claim 4, Nagayama 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° (Nagayama [0217]-[0218] disclose the bonding portion is linear around the edges and is coating and spread over the side surfaces indicating it is a continuous strip of glue around the entire side surfaces.)
Regarding claim 5, Nagayama meets the claimed, The process of claim 3, wherein only one strip of glue is placed on each peripheral edge of each molding shell (Nagayama [0217]-[0218] describe one bonding portion on each side in a linear manner.)
Regarding claim 7, Nagayama meets the claimed, The process of claim 1, wherein, after the step of positioning the closing member at least one cord of glue is deposited on the closing member, along at least a first free extremity of this closing member (Nagayama Figure 8 shows the bonding portion 36B is at the free extremity of the frame 34.)
Regarding claim 14, Nagayama 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° (Nagayama [0217]-[0218] disclose the bonding portion is linear around the edges and is coating and spread over the side surfaces indicating it is a continuous strip of glue around the entire side surfaces.)
Claims 1 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Iwanami (2004299289, see English translation previously provided 2/11/2026) modified by Otsuka (US 20150226937.)
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, providing a closing member in the form of a non-adhesive band or 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.
Otsuka also describes a method of holding together two optical components via a band or tube and meets the claimed, providing a closing member in the form of a non-adhesive band or wherein, (Otsuka [0049] describes providing a body tube 4, the body tube 4 does not have an adhesive but is shaped as a band, see Figure 4) at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell (Otsuka [0050] and [0053] describe placing adhesive agent 14 around the first lens 2 and adhesive agent 15 around second lens 3.)
The courts have held that substituting one known element for another to yield predictable results would have been obvious to a person of ordinary skill in the art before the filing date, see MPEP §2143. It would have been obvious to a person of ordinary skill in the art before the filing date to substitute the adhesive tape described in Iwatani with the tube and separate adhesive agent described on Otsuka because it allows the body tube to hold the lenses in the proper position, see Otsuka [0050].
Otsuka meets the claimed, at least one strip of glue is placed around at least a major part of the peripheral edge of each molding shell as described above but discloses this step occurs after the tube 4 is placed around the second lens 3 not, before said step of positioning, however, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP §2144.04(IV)(C). Therefore, it would have been obvious to a person of ordinary skill in the art that the adhesive agents 14/15 could be placed before or after the positioning of the tube 4 without any unexpected results.
Regarding claim 7, Iwanami does not describe adding glue to the closing member after positioning the closing member and does not meet the claimed, The process of claim 1, wherein, after the step of positioning the closing member, at least one cord of glue is deposited on the closing member, along at least a first free extremity of this closing member .
Otsuka meets the claimed, The process of claim 1, wherein, after the step of positioning the closing member, at least one cord of glue is deposited on the closing member, along at least a first free extremity of this closing member (Otsuka [0050] and [0053] describe placing adhesive agent 14/15 and Figure 4 shows the adhesive agent is at the top or bottom free edges of the tube 4.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of assembly disclosed in Iwatani with the method of depositing glue on the tube as described in Otsuka such that the body tube can hold the lenses in the proper position, see Otsuka [0050].
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.)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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/V.B./Examiner, Art Unit 1744
/EMMANUEL S LUK/Primary Examiner, Art Unit 1744
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