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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/20/2024, 03/04/2025 and 11/05/2025 have been 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 36-55 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,226,497. Although the claims at issue are not identical, they are not patentably distinct from each other because the rewording of the limitations “base lens” and “at least one micro lenslet array” to “spectacle lens” and “a plurality of micro lenslets” as claimed in the instant application from renders claims 36-55 as obvious variants of claims 1-22 of U.S. Patent No. 11,226,497.
Claims 36-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,061,383. Although the claims at issue are not identical, they are not patentably distinct from each other because the rewording of the limitations “a base lens” and “at least one micro lenslet array” to “spectacle lens” and “a plurality of micro lenslets”, and the removal of the limitations “the ophthalmic lens is configured to modify incoming light, when used on a myopic model eye having a retinal plane and correctable by the focal power of the base lens at a monochromatic wavelength, by introducing conflicting chromatic cues” renders claims 36-55 as obvious variants of claims 1-20 of U.S. Patent No. 12,061,383.
Claims 36-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,386,203. Although the claims at issue are not identical, they are not patentably distinct from each other because the rewording of the limitations “a base lens” and “at least one micro lenslet array” to “spectacle lens” and “a plurality of micro lenslets”, and the removal of the limitations “ the at least one micro lenslet array introduces to neighboring regions of the retina of the eye a conflicting optical signal at a wavelength between 510 nm and 610 nm” renders claims 36-55 as obvious variants of claims 1-20 of U.S. Patent No. 12,386,203.
Claims 36-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,874,532. Although the claims at issue are not identical, they are not patentably distinct from each other because the rewording of the limitations “a base lens” and “at least one micro lenslet array” to “spectacle lens” and “a plurality of micro lenslets”, and the removal of the limitations “ the at least one micro lenslet array introduces to neighboring regions of the retina of the eye a conflicting optical signal at a wavelength between 510 nm and 610 nm” renders claims 36-55 as obvious variants of claims 1-20 of U.S. Patent No. 11,874,532.
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.
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.
Claims 36-42, 44-50 and 53-54 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Newman (WO 2015/147758; already of record).
Regarding claim 36, Newman discloses, a spectacle lens system for reducing myopia progression in a person (Figs. 12-31) comprising:
a spectacle lens (116, 120) for correcting refractive error of an eye at least for light of a first wavelength (Para. 0052-0053 and see 14, 16, 18, 26, 28, 30 of Figs. 1-3); and
a plurality of micro lenslets (36, 100, 102, 104, 106, 108, 110) integral with the spectacle lens, wherein the plurality of lenslets comprise a first lenslet with a first focal length (see the lenslet labeled “1” of Figs. 24-26) and a second lenslet with a second focal length (see the lenslet labeled “2” of Figs. 24-26, different to the first focal length, and wherein at least the first lenslet and the second lenslet provide an out of focus signal at the first wavelength (Para. 0085-0086);
wherein the plurality of micro lenslets form at least one micro lenslet array and within a said micro lenslet array a border-to-border spacing between two or more micro lenslets is between 0 and 0.5 mm (see 36 of Fig. 28; note, the Examiner interprets the microlenslets (36) are abutting or in very close proximity with each other. Therefore, Newman discloses the border-to-border spacing between two or more micro lenslets is between 0 and 0.5 mm).
Regarding claim 37, Newman discloses, a shape of each of the first and second lenslets is an asphere (see 36, 100, 102 of Figs. 12-17, 21, 24 and 26).
Regarding claim 38, Newman discloses, at least the first and second lenslets each comprise a toric surface (Para. 0011).
Regarding claim 39, Newman discloses, the border-to-border spacing is between 0 and 0.05 mm (see 36 of Fig. 28; note, the Examiner interprets the microlenslets (36) are abutting or in very close proximity with each other. Therefore, Newman discloses the border-to-border spacing between two or more micro lenslets is between 0 and 0.05 mm).
Regarding claim 40, Newman discloses, the border-to-border spacing is about 0 mm (see 36 of Fig. 28; note, the Examiner interprets the microlenslets (36) are abutting or in very close proximity with each other. Therefore, Newman discloses the border-to-border spacing between two or more micro lenslets is about 0 mm).
Regarding claim 41, Newman discloses, a shape of at least the first and second lenslets is an asphere (see 36, 100, 102 of Figs. 12-17, 21, 24 and 26).
Regarding claim 42, Newman discloses, at least the first and second lenslets each comprise a toric surface (Para. 0011).
Regarding claim 44, Newman discloses, the plurality of micro lenslets are refractive optical elements (Para. 0010).
Regarding claim 45, Newman discloses, the plurality of micro lenslets are molded directly into the spectacle lens on the anterior surface (see 36, 100, 102).
Regarding claim 46, Newman discloses, a central portion of the spectacle lens is devoid of micro lenslets (see 20).
Regarding claim 47, Newman discloses, the central portion of the spectacle lens devoid of micro lenslets is circular with a diameter between 3 to 10 mm (see 20).
Regarding claim 48, Newman discloses, at least the first lenslet and the second lenslet each have a focal length of shorter than 1000 mm (Para. 0062 and see “1”, “2”, “3”, “4”, “5” of Figs. 24-26).
Regarding claim 49, Newman discloses, the plurality of lenslets comprise lenslets of at least 3 different focal lengths between 500 mm and 2000 mm (Para. 0062 and see “1”, “2”, “3”, “4”, “5” of Figs. 24-26).
Regarding claim 50, Newman discloses, at least one said microlenslet array has a focal length for focusing light onto a retina of the eye at a second wavelength, different to the first wavelength and includes at least one of the first lenslet and the second lenslet (Para. 0063).
Regarding claim 53, Newman discloses, a spectacle lens (Figs. 12-31) comprising:
a base lens (116, 120) for correcting refractive error of an eye at least for light of a first wavelength (Para. 0052-0053 and see 14, 16, 18, 26, 28, 30 of Figs. 1-3); and
a plurality of refractive optical elements (see 36, 100, 102, 104, 106, 108, 110), wherein the plurality of lenslets comprise a first refractive optical element with a first focal length (see the lenslet labeled “1” of Figs. 24-26) and a second lenslet with a second focal length (see the lenslet labeled “2” of Figs. 24-26, different to the first focal length, and wherein at least the first lenslet and the second lenslet provide an out of focus signal at the first wavelength (Para. 0085-0086);
wherein the plurality of refractive optical element form at least one refractive optical element array and within a said refractive optical element array a border-to-border spacing between two or more micro lenslets is between 0 and 0.5 mm (see 36 of Fig. 28; note, the Examiner interprets the microlenslets (36) are abutting or in very close proximity with each other. Therefore, Newman discloses the border-to-border spacing between two or more micro lenslets is between 0 and 0.5 mm).
Regarding claim 54, Newman discloses, the border-to-border spacing between two or more microlenslets is about 0 mm (see 36 of Fig. 28; note, the Examiner interprets the microlenslets (36) are abutting or in very close proximity with each other. Therefore, Newman discloses the border-to-border spacing between two or more micro lenslets is about 0 mm), the plurality of lenslets comprise lenslets of at least 3 different focal lengths (Para. 0062 and see “1”, “2”, “3”, “4”, “5” of Figs. 24-26).
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 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 43 is rejected under 35 U.S.C. 103 as being unpatentable over Newman (WO 2015/147758; already of record) as applied to claim 41 above, in view of Roffman et al. (US 6,364,482).
Newman remains as applied to claim 41 above.
Newman does not disclose a radius of curvature of at least the first and second lenslets is less than or equal to 160 mm
Roffman teaches, from the same field of endeavor that in a spectacle lens system that it would have been desirable to make a radius of curvature of at least the first and second lenslets is less than or equal to 160 mm (Col. 1, lines 63-67 and Coll. 2, lines 1-13).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a radius of curvature of at least the first and second lenslets is less than or equal to 160 mm as taught by the spectacle lens of Roffman in the spectacle lens of Newman since Roffman teaches it is known to include this feature in a spectacle lens for the purpose of providing a spectacle lens that effectively improves a user’s vision.
Claims 51-52 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Newman (WO 2015/147758; already of record) as applied to claims 36, 50 and 54 above, in view of Hyde et al. (US 2016/0113815; already of record).
Newman remains as applied to claims 36, 50 and 54 above.
Newman does not disclose the first wavelength is 590 nm and the second wavelength is 510 nm.
Hyde teaches, from the same field of endeavor that in a spectacle lens that it would have been desirable to make the first wavelength is 590 nm and the second wavelength is 510 nm (Para. 0022 and 0025).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first wavelength is 590 nm and the second wavelength is 510 nm as taught by the spectacle lens of Hyde in the spectacle lens of Newman since Hyde teaches it is known to include this feature in a spectacle lens for the purpose of providing a spectacle lens that effectively improves user’s acuity.
Regarding claim 52, Newman in view of Hyde discloses and teaches as set forth above, and Hyde further teaches, from the same field of endeavor that in a spectacle lens that it would have been desirable to make the at least one micro lenslet array introduces a conflicting optical signal at a wavelength between 510 nm and 610 nm (Para. 0022 and 0025).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first wavelength is 590 nm and the second wavelength is 510 nm as taught by the spectacle lens of Hyde in the spectacle lens of Newman since Hyde teaches it is known to include this feature in a spectacle lens for the purpose of providing a spectacle lens that effectively improves user’s acuity.
Regarding claim 55, Newman in view of Hyde discloses and teaches as set forth above, and Hyde further teaches, from the same field of endeavor that in a spectacle lens that it would have been desirable to make the at least one micro lenslet array introduces a conflicting optical signal for the eye at a wavelength between 510 nm and 610 nm (Para. 0022 and 0025).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the first wavelength is 590 nm and the second wavelength is 510 nm as taught by the spectacle lens of Hyde in the spectacle lens of Newman since Hyde teaches it is known to include this feature in a spectacle lens for the purpose of providing a spectacle lens that effectively improves user’s acuity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWAYNE A PINKNEY whose telephone number is (571)270-1305. The examiner can normally be reached M-F 9-5.
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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 06/05/2026
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