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 .
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant' s submissions of the Information Disclosure Statement dated March 11th, 2014 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
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.
Claims 14 and 15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 14, the limitation “the thickness differential of at least two lenses has a monotonically-increasing relationship to a cylinder correction" is unclear and renders the claim indefinite. Specifically, it is unclear whether the thickness differential of each lens must be monotonically increasing relative to the cylinder correction of that lens, independent of any other lens, or if the thickness differential of a certain lens must be higher/lower than a thickness differential of another lens if they have different cylinder correction from each other. For the purpose of examining the claims currently pending, this limitation will be interpreted to mean the thickness differential of the lenses has a relationship with a cylinder correction.
Regarding claim 15, the limitation "the thickness differential of the at least two lenses has a linear relationship to cylinder correction" is unclear and renders the claim indefinite. Specifically, it is unclear whether or not the thickness differential of each lens must be linear relative to the cylinder correction of that lens, independent of any other lens, or if the thickness differential of a certain lens must be linear relative to a thickness differential of another lens if they have different cylinder correction from each other. For the purpose of examining the claims currently pending, this limitation will be interpreted to mean the thickness differential of the lenses has a relationship with a cylinder correction.
Regarding claims 16 and 17, these claims depend on a rejected base claim and are therefore rejected for at least the reasons stated supra.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claim 5 recites “at least two toric contact lenses” and the only limitation in claim 6 is “a plurality of toric contact lenses" which is the equivalent of the limitation in claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claim(s) 1-12, and 14-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerligand et al. (US 2011/0149231 A1).
Regarding claim 1, Gerligand teaches a system of contact lenses, comprising:
at least two contact lenses, each lens having a visual correction for a non-rotationally symmetric eye aberration (See, e.g., Fig. 3 which shows the design method of a given contact lens, and Figs. 4A, 5A, 6A, and 7A which show four examples of lenses made by the system. Further, see paragraph [0001] which explains these lenses have cylindrical correction),
wherein each lens has a different level or degree of a stabilization that comprises a thickness differential between a thickness of a stabilization zone and a thickness of a non-stabilization zone (See, e.g., Figs. 4B, 5B, 6B, and 7B which show the thicknesses of the stabilization zones to all have different profiles, thus having necessarily different thickness differentials and therefore different level of stabilization).
Regarding claim 2, Gerligand teaches the system set forth above and further teaches wherein each lens has a stabilization mechanism selected from the group consisting of prism ballast, peri-ballast, dual zone, lid-stabilized design, gravity-stabilized design, and an accelerated stabilized design (See, e.g., Figs. 4A, 5A, 6A, and 7A which show dual zone stabilization mechanisms in their respective lenses).
Regarding claim 3, Gerligand teaches the system set forth above and further teaches wherein the at least two contact lenses comprise circular lenses (See, e.g., Figs. 4A, 5A, 6A, and 7A which show circular lenses).
Regarding claim 4, Gerligand teaches the system set forth above and further teaches wherein the at least two contact lenses comprise non-circular lenses (See, e.g., the end of paragraph [0068] which explains that these lenses can be toric lenses, which are non-circular).
Regarding claim 5, Gerligand teaches the system set forth above and further teaches at least two toric contact lenses, each lens having a different thickness differential corresponding to a different astigmatic cylinder correction (See, e.g., paragraph [0068] which explains that the lenses may be toric in shape, and note that as each lens has a different thickness profile in Figs. 4B, 5B, 6B, and 7B, they necessarily have different thickness differentials, especially considering a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone. Thus, even if the profiles were the same, one could point to different thicknesses of the stabilization zone and come up with a plurality of different thickness differentials for the same lens).
Regarding claim 6, Gerligand teaches the system set forth above and further teaches a plurality of toric contact lenses (See, e.g., paragraph [0068] which explains the lenses may be toric).
Regarding claim 7, Gerligand teaches the system set forth above and further teaches wherein the thickness differential comprises a maximum thickness differential in a range from 0.1 mm to 0.5 mm (See, e.g., Figs. 4C, 5C, 6C, and 7C which show the maximum thickness differential to be approximately 0.3mm).
Regarding claim 8, Gerligand teaches the system set forth above and further teaches wherein the thickness differential is about 30% to about 95% of a maximum thickness differential (Note that as the thickness differential is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose any thickness of the stabilization zone that results in a thickness differential within the claimed range, for instance in Fig. 5C at radial distance 5.25 mm the thickness of the stabilization zone is approximately 0.3 mm and the thickness of the non-stabilization zone is 0.075mm, resulting in a thickness differential of approximately 0.225 mm, which is approximately 75% of the maximum thickness differential).
Regarding claim 9, Gerligand teaches the system set forth above and further teaches wherein the thickness differential is about 50% to about 80% of a maximum thickness differential (Note that as the thickness differential is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose any thickness of the stabilization zone that results in a thickness differential within the claimed range, for instance in Fig. 5C at radial distance 5.25 mm the thickness of the stabilization zone is approximately 0.3 mm and the thickness of the non-stabilization zone is 0.075mm, resulting in a thickness differential of approximately 0.225 mm, which is approximately 75% of the maximum thickness differential).
Regarding claim 10, Gerligand teaches the system set forth above and further teaches a first contact lens having a first degree of stabilization (See, e.g., Figs. 4A-4C); and
a second contact lens having a second degree of stabilization (See, e.g., Figs. 5A-5C), said second degree of stabilization corresponding to a higher thickness differential than that of said first contact lens (Note that as a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose thickness differentials having higher or lower values even on the same lens, and certainly can choose thickness differentials between different lenses having different values. In this case one could say the thickness differential of the lens in Fig. 4A is the difference between thicknesses at positions (0,0) and (0,-4), and the thickness differential of the lens in Fig. 5A is the difference between thicknesses at positions (0,0) and (0,-4.5) which clearly results in a higher thickness differential for the second lens).
Regarding claim 11, Gerligand teaches the system set forth above and further teaches a third contact lens having a third degree of stabilization (See, e.g., Figs. 6A-6C), said third degree of stabilization corresponding to a higher thickness differential than that of said second contact lens (Note that as a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose thickness differentials between different lenses having different values. In this case one could say the thickness differential of the lens in Fig. 5A is the difference between thicknesses at positions (0,0) and (0,-4.5), and the thickness differential of the lens in Fig. 6A is the difference between thicknesses at positions (0,0) and (0,-5.5) which clearly results in a higher thickness differential for the third lens).
Regarding claim 12, Gerligand teaches the system set forth above and further teaches a first contact lens having a first degree of stabilization for a first cylinder correction (See, e.g., Figs 4A-4C);
a second contact lens having a second degree of stabilization for a second cylinder correction (See, e.g., Figs. 5A-5C), said second degree of stabilization corresponding to a higher thickness differential than that of said first contact lens (Note that as a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose thickness differentials between different lenses having different values. In this case one could say the thickness differential of the lens in Fig. 4A is the difference between thicknesses at positions (0,0) and (0,-4), and the thickness differential of the lens in Fig. 5A is the difference between thicknesses at positions (0,0) and (0,-4.5) which clearly results in a higher thickness differential for the second lens); and
a third contact lens having a third degree of stabilization for a third cylinder correction (See, e.g., Figs. 6A-6C), said third degree of stabilization corresponding to a higher thickness differential than that of said second contact lens (Note that as a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose thickness differentials between different lenses having different values. In this case one could say the thickness differential of the lens in Fig. 5A is the difference between thicknesses at positions (0,0) and (0,-4.5), and the thickness differential of the lens in Fig. 6A is the difference between thicknesses at positions (0,0) and (0,-5.5) which clearly results in a higher thickness differential for the third lens).
Regarding claim 14, Gerligand teaches the system set forth above and further teaches wherein the thickness differential of at least two lenses has a monotonically-increasing relationship to a cylinder correction for the visual correction (Note that the thickness differential necessarily has a relationship with the cylinder correction whether it is static or changing, and in light of the 112 rejection above this limitation is met).
Regarding claim 15, Gerligand teaches the system set forth above and further teaches wherein the thickness differential of the at least two lenses has a linear relationship to cylinder correction (Note that the thickness differential necessarily has a relationship with the cylinder correction whether it is static or changing, and in light of the 112 rejection above this limitation is met).
Regarding claim 16, Gerligand teaches the system set forth above and further teaches wherein the thickness differential of the at least two lenses has a polynomial relationship to cylinder correction (Note as this claim does not require a specific polynomial, the thickness differential can be expressed in the form of a polynomial so this limitation is met).
Regarding claim 17, Gerligand teaches the system set forth above and further teaches wherein the thickness differential of the at least two lenses has a piecewise relationship to cylinder correction (Note that insofar as this claim does not define or explain how the piecewise relationship is set forth, this limitation is met as the step from one thickness to the other can be considered a piecewise step).
Regarding claim 18, Gerligand teaches a method for optimizing lens comfort for a patient, comprising:
providing a system of at least two contact lenses, each lens having a visual correction for a non-rotationally symmetric eye aberration (See, e.g., Fig. 3 which shows the design method of a given contact lens, and Figs. 4A, 5A, 6A, and 7A which show four examples of lenses made by the system. Further, see paragraph [0001] which explains these lenses have cylindrical correction), wherein each lens has a different level or degree of a stabilization that comprises a thickness differential between a thickness of a stabilization zone and a thickness of a non-stabilization zone (See, e.g., Figs. 4A, 5A, 6A, and 7A which show the different stabilization zone profiles and note that the lenses necessarily have different thickness differentials); and
selecting a lens from said system that provides the required visual correction at the lowest thickness differential (Note that any lens output, i.e. selected, by the method taught herein provides visual correction at the lowest thickness differential, as thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone and can be arbitrarily set even where the two zones meet and the differential is zero).
Regarding claim 19, Gerligand teaches the method set forth above and further teaches wherein each lens has a stabilization mechanism selected from the group consisting of prism ballast, peri-ballast, dual zone, lid-stabilized design, gravity-stabilized design, and an accelerated stabilized design (See, e.g., Figs. 4A, 5A, 6A, and 7A which show lenses having dual zone designs).
Regarding claim 20, Gerligand teaches the method set forth above and further teaches at least two toric contact lenses, each lens having a different thickness differential corresponding to a different astigmatic cylinder correction (See, e.g., paragraph [0068] which explains that the lenses may be toric in shape, and note that as each lens has a different thickness profile in Figs. 4B, 5B, 6B, and 7B, they necessarily have different thickness differentials, especially considering a thickness differential as claimed is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone. Thus, even if the profiles were the same, one could point to different thicknesses of the stabilization zone and come up with a plurality of different thickness differentials for the same lens).
Regarding claim 21, Gerligand teaches the method set forth above and further teaches wherein the thickness differential comprises a maximum thickness differential in a range from 0.1 mm to 0.5 mm (See, e.g., Figs. 4C, 5C, 6C, and 7C which show the maximum thickness differential to be approximately 0.3mm).
Regarding claim 22, Gerligand teaches the method set forth above and further teaches wherein the thickness differential is about 30% to about 95% of a maximum thickness differential (Note that as the thickness differential is merely the difference between a thickness of a stabilization zone and a thickness of a non-stabilization zone one can choose any thickness of the stabilization zone that results in a thickness differential within the claimed range, for instance in Fig. 5C at radial distance 5.25 mm the thickness of the stabilization zone is approximately 0.3 mm and the thickness of the non-stabilization zone is 0.075mm, resulting in a thickness differential of approximately 0.225 mm, which is approximately 75% of the maximum thickness differential).
Claim Rejections - 35 USC § 103
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 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gerligand (US 2011/0149231 A1).
Regarding claim 13, Gerligand teaches the device set forth above but lacks an explicit disclosure wherein said first cylinder correction comprises an astigmatic diopter cylinder |DC| ≤ 1.00 diopter (D); said second cylinder correction comprises an astigmatic diopter cylinder of 1.00D < |DC| ≤ 1.50D; and said third cylinder correction comprises an astigmatic diopter cylinder of 1.50D < |DC|.
However, the cylinder correction is a result effective variable, i.e. a variable which achieves a recognized result, in this case the cylinder correction directly impacts the vison of the user.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the cylinder corrections of the three lenses to have diopters within the claimed ranges, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result-effective variable involves only routine skill in the art, In re Aller, 105 USPQ 233 (C.C.P.A. 1955). Further, one would be motivated to make this change to control the visual correction for a specific user’s vision requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BUMSUK WON whose telephone number is (571)272-2713. The examiner can normally be reached on Monday - Thursday 7 AM - 5 PM EST.
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/MITCHELL OESTREICH/
Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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