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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-21) in the reply filed on 02/10/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/07/2025 has been considered by the examiner.
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 1-4, 7 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pascual et al. (US 2022/0118685).
Regarding claim 1, Pascual discloses, An eyewear lens resin containment system used to create an eyewear lens (Fig. 2), the resin containment system comprising one of:
a first cone-shaped wall attached to an eyewear lens substrate, wherein the attachment includes a first resin-tight connection between the first cone-shaped wall and the substrate, and wherein the substrate and the first cone-shaped wall are configured to have resin dispensed on them;
a walled substrate having a second cone-shaped wall that is an integral part of an eyewear lens substrate, a second resin-tight connection between the second cone-shaped wall and the substrate, and wherein the second cone-shaped substrate and wall are configured to have resin dispensed on them;
a first containment wall printed on an eyewear lens substrate, a third resin-tight connection between the first containment wall and the substrate, and wherein the substrate and the first containment wall are configured to have resin dispensed on them; or
a second containment wall (210) manufactured on an eyewear lens substrate (220), a fourth resin-tight connection between the second containment wall and substrate (Para. 0035 and see Fig. 2), and wherein the substrate and the second containment wall are configured to have resin dispensed on them (Para. 0035-0036 and see 230, 240).
Regarding claim 2, Pascual discloses, the resin containment system does not have optical quality (Para. 0035 and see 210) and is shaped/configured to hold more resin on the substrate than the substrate holds without the resin containment system (see Fig. 2; note, the Examiner interprets that without the walls, some of the deposited resin would spill over the sides of the substrate), and wherein the substrate is configured to form the eyewear lens by volumetric printing using the resin containment system to contain resin used for the printing (Para. 0005-0007).
Regarding claim 3, Pascual discloses, resin dispensed on the substrate and the one of the first cone-shaped wall (Para. 0035-0036 and see 230, 240), the second cone-shaped wall and the first containment wall (see 210 to the left of 230, 240).
Regarding claim 4, Pascual discloses, the substrate and resin containment system are configured to have UV shined incident upon them to create a polymerization front when the light propagates through them (Para. 0035-0036 and see 200).
Regarding claim 7, in regards to the limitations, “the first containment wall is printed just over a concave top surface of the substrate the first by a fused deposition modeling (FDM) printing, resin-jet printing, stereolithography, or direct energy deposition”, the Examiner points out that while not objectionable, the Office reminds Applicant that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161 ; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. Furthermore, for a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Note that applicant has the burden of proof in such cases, as the above case law makes clear. Thus, no patentable weight will be given to those process steps which do not add structural limitations to the final product.
Furthermore, to expedite prosecution, the Examiner points out that Pascual discloses the manner in which the device is made, namely, the first containment wall is printed just over a concave top surface of the substrate the first by a fused deposition modeling (FDM) printing, resin-jet printing, stereolithography, or direct energy deposition (shown as conventional in Para. 0005-0007).
Regarding claim 9, Pascual discloses, the substrate is selected from the group including CR-39®, polycarbonate, polyurethane-based plastic or glass (Para. 0040).
Regarding claim 10, Pascual discloses, a polymerization apparatus coupled to the substrate to create a formed lens by transmitting light from a light source (200) onto and through a diffuser into a chamber containing resin and the substrate according to an irradiation pattern (Para. 0045-0046).
Regarding claim 11, Pascual discloses, one of: transmitting light includes transmitting light such that each point in the resin is illuminated by light from at least 10% of the locations on the diffuser (Para. 0045-0046); at least 15% of the diffuser receives light from the light source; or a diameter of the diffuser is greater than or equal to a diameter of the substrate.
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.
Claims 5-6, 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Pascual et al. (US 2022/0118685) as applied to claim 1 above.
Pascual remains as applied to claim 1 above.
Regarding claim 5, Pascual discloses, the first cone-shaped wall is attached to an outer edge of the substrate (see Fig. 2), and wherein the first cone-shaped wall and the substrate are formed in different processes and are different pieces of structure (Para. 0035-0036 and see 210 and 220), and the first resin-tight connection is adequately connected (see Fig. 2).
Pascual discloses the claimed invention as set forth above, but, does not explicitly disclose the first resin-tight connection includes one of a tight mechanical attachment or an adequate sealing adhesive. However, 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 resin-tight connection includes one of a tight mechanical attachment or an adequate sealing adhesive for the purpose of an adequate and effective connection.
Regarding claim 6, Pascual discloses the claimed invention as set forth above, but, does not explicitly disclose the second cone-shaped wall and the substrate are a same piece of structure formed of a single cast or injection molded material. However, it has been held that forming in one piece an article which has formally been formed in two pieces and put together only involves routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1983). Among the benefits of this modification includes an eyewear lens that is easy to manufacture and has reduced cost since less materials are needed.
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 second cone-shaped wall and the substrate are a same piece of structure formed of a single cast or injection molded material for the purpose of providing an eyewear lens that is easy to manufacture and has reduced cost since less materials are needed.
Regarding claim 8, Pascual discloses the claimed invention as set forth above, but, does not explicitly disclose the second containment wall and the substrate are made of the same UV curable resin or photocurable resin. However, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for intended use as matter of obvious design choice. In re Leshin, 125 USPQ 416. Among the benefits of this modification includes an eyewear lens that is easy to manufacture and has reduced cost since less materials are needed.
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 second containment wall and the substrate are made of the same UV curable resin or photocurable resin for the purpose of providing an eyewear lens that is easy to manufacture and has reduced cost since less materials are needed.
Regarding claim 12, Pascual teaches, in a different embodiment that it would have been desirable to include one of: a drainage apparatus including a spinning machine to remove remaining resin from the formed lens (Para. 0094-0096); or a post-curing apparatus including at least one selected from the group including a heater and a light emitter, wherein the post-curing apparatus further comprises an inner chamber and is configured to create a vacuum in the inner chamber (Para. 0098-0099).
Therefore, it would have been obvious to one of ordinary skill in the art to include one of: a drainage apparatus including a spinning machine to remove remaining resin from the formed lens; or a post-curing apparatus including at least one selected from the group including a heater and a light emitter, wherein the post-curing apparatus further comprises an inner chamber and is configured to create a vacuum in the inner chamber as taught by Pascual in an eyewear lens for the purpose of providing an eyewear lens that effectively removes uncured resin or effectively and adequately cures the entire lens.
Claims 13-21 are rejected under 35 U.S.C. 103 as being unpatentable over Pascual et al. (US 2022/0118685) in view of Ambler et al. (US 2017/0139230).
Regarding claim 13, Pascual discloses, an eyewear lens substrate (220) having a resin containment system (210) used to create an eyewear lens (Figs. 2 and 7A-B) where the lens includes a concave surface closer to the eye (Para. 0078 and see 701 closest to 702) and a convex surface further away from the eye (Para. 0078 and see 701 closest to 705) and such that the resin containment system comprises one of:
1. for strong negative prescriptions, at least one of:
a. the concave surface presents asphericity such that a mean surface curvature increases towards an edge of the lens, so the substrate can hold enough resin to print a negative prescription lens;
b. said asphericity increases the mean surface curvature toward the edge to also contribute to reduce the thickness of the printed portion of the lens; or
c. the substrate has negative paraxial power to further reduce the thickness of a printed part of the lens; or
2. for strong positive prescriptions, at least one of:
a. the concave surface has asphericity such that a mean surface curvature decreases toward an edge of the lens, allowing a finished lens with reduced edge thickness; or
b. the substrate may have positive paraxial power to further reduce a thickness of a printed part of the lens;
3. for mild positive and negative prescriptions, the substrates may have spherical or aspherical surfaces (Para. 0040); or
4. the substrate will have revolution symmetry, and the concave surface of the substrate is astigmatic to further reduce the thickness of a printed part of the lens for strong astigmatic prescriptions.
Pascual does not explicitly disclose the base curve of each substrate is defined as the central refractive power of the convex surface.
Ambler teaches, from the same field of endeavor that in an eyewear lens that it would have been desirable to make the base curve of each substrate is defined as the central refractive power of the convex surface (Para. 0074).
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 base curve of each substrate is defined as the central refractive power of the convex surface as taught by the eyewear lens of Ambler in the eyewear lens of Pascual since Ambler teaches it is known to include this feature in an eyewear lens for the purpose of providing an eyewear lens with enhanced optical performance and effective vision correction.
Regarding claim 14, Pascual in view of Ambler discloses and teaches as set forth above, and Ambler further teaches, from the same field of endeavor that in an eyewear lens that it would have been desirable to make for strong or mild negative prescriptions the resin containment system comprises one of: a first aspherical substrate having a base curvature of 2 diopters and an optical power of -2 D; a second aspherical substrate (Para. 0053) having a base curvature of 4 diopters and an optical power of 0 D (Para. 0074); a third aspherical substrate having a base curvature of 6 diopters and an optical power of 0 D; or a fourth aspherical substrate having a base curvature of 8 diopters and an optical power of 2 D.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the above mentioned limitations as taught by the eyewear lens of Ambler in the eyewear lens of Pascual since Ambler teaches it is known to include this feature in an eyewear lens for the purpose of providing an eyewear lens with enhanced optical performance and effective vision correction.
Regarding claim 15, Pascual in view of Ambler discloses and teaches as set forth above, but, does not explicitly disclose the first aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 13 mm, a bottom surface that curves up from the bottom of the center to a height of 3 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; the second aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 10 mm, a bottom surface that curves up from the bottom of the center to a height of 6.5 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; the third aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 1.5 mm, a bottom surface that curves up from the bottom of the center to a height of 10 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; and the fourth aspherical substrate has a center thickness of 2.5 mm, edges with a thickness of 1.5 mm a bottom surface that curves up from the bottom of the center to a height of 14 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges. However, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955). Among the benefits of providing an eyewear lens that effectively and accurately corrects a user’s vision.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Pascual in view of Ambler such that the first aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 13 mm, a bottom surface that curves up from the bottom of the center to a height of 3 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; the second aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 10 mm, a bottom surface that curves up from the bottom of the center to a height of 6.5 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; the third aspherical substrate has a center thickness of 1.5 mm, edges with a thickness of 1.5 mm, a bottom surface that curves up from the bottom of the center to a height of 10 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges; and the fourth aspherical substrate has a center thickness of 2.5 mm, edges with a thickness of 1.5 mm a bottom surface that curves up from the bottom of the center to a height of 14 mm above the bottom of the center at the bottom of the edges, and a top surface that curves from the top of the center the top of the edges, in order to provide an eyewear lens that effectively and accurately corrects a user’s vision.
Regarding claim 16, Pascual in view of Ambler discloses and teaches a set forth above, and Pascual further discloses, the resin containment system has aspherical surfaces (Para. 0039) that have the double purpose of containing the resin (210) and reducing the thickness (Para. 0039; note, discloses making thinner lenses) of polymerized material in the final lens (230, 240), and wherein the substrate has an optical region that presents power (Para. 0102) to further reduce the thickness of a polymerized material (Para. 0039; note, discloses making thinner lenses) in a final lens (Para. 0040).
Regarding claim 17, Pascual in view of Ambler discloses and teaches a set forth above, and Pascual further discloses, the substrate is selected from the group including CR-39, polycarbonate, polyurethane-based plastic or glass (Para. 0040).
Regarding claim 18, Pascual in view of Ambler discloses and teaches a set forth above, and in regards to the limitations, “the substrate is configured to form the eyewear lens by volumetric printing using the resin containment system to contain resin used for the printing”, the Examiner points out that while not objectionable, the Office reminds Applicant that "product by process" limitations in claims drawn to structure are directed to the product, per se, no matter how actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161 ; In re Wethheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or otherwise. Furthermore, for a product-by-process claim and even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Note that applicant has the burden of proof in such cases, as the above case law makes clear. Thus, no patentable weight will be given to those process steps which do not add structural limitations to the final product.
Furthermore, to expedite prosecution, the Examiner points out that Pascual discloses the manner in which the device is made, namely, the substrate is configured to form the eyewear lens by volumetric printing using the resin containment system to contain resin used for the printing (Para. 0005-0007).
Regarding claim 19, Pascual in view of Ambler discloses and teaches a set forth above, and Pascual further discloses, a polymerization apparatus coupled to the substrate to create a formed lens by transmitting light from a light source (200) onto and through a diffuser into a chamber containing resin and the substrate according to an irradiation pattern (Para. 0045-0046).
Regarding claim 20, Pascual in view of Ambler discloses and teaches a set forth above, and Pascual further discloses, one of: transmitting light includes transmitting light such that each point in the resin is illuminated by light from at least 10% of the locations on the diffuser (Para. 0045-0046); at least 15% of the diffuser receives light from the light source; or a diameter of the diffuser is greater than or equal to a diameter of the substrate.
Regarding claim 21, Pascual in view of Ambler discloses and teaches a set forth above, and Pascual further teaches, in a different embodiment that it would have been desirable to include one of: a drainage apparatus including a spinning machine to remove remaining resin from the formed lens (Para. 0094-0096); or a post-curing apparatus including at least one selected from the group including a heater and a light emitter, wherein the post-curing apparatus further comprises an inner chamber and is configured to create a vacuum in the inner chamber (Para. 0098-0099).
Therefore, it would have been obvious to one of ordinary skill in the art to include one of: a drainage apparatus including a spinning machine to remove remaining resin from the formed lens; or a post-curing apparatus including at least one selected from the group including a heater and a light emitter, wherein the post-curing apparatus further comprises an inner chamber and is configured to create a vacuum in the inner chamber as taught by Pascual in an eyewear lens for the purpose of providing an eyewear lens that effectively removes uncured resin or effectively and adequately cures the entire lens.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jethmalani et al. (US 2005/0104240) and Tagawa (US 2004/0051839) discloses an eyewear lens resin containment system that comprises a second containment wall manufactured on an eyewear lens substrate, a fourth resin-tight connection between the second containment wall and substrate.
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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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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/DAWAYNE PINKNEY/Primary Examiner, Art Unit 2872 04/29/2026
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