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 .
Claim Objections
Claim 8 and 9 objected to because of the following informalities:
Claims 8 and 9 contain a typographical error in “a ratio of an area of the first ophthalmic lens without the microlenses to the area of the first ophthalmic lens without the microlenses” based on specification para. [0086] this should read “a ratio of an area of the first ophthalmic lens with the microlenses to the area of the first ophthalmic lens without the microlenses”.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
The specification contains the same typographical error as claims 8 and 9 above in numerous locations throughout the specification. For example paras. [0017]-[0018]
Appropriate correction is required.
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 2-3 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 2-3:
The terms “closer” and “further” in claims 2 and 3 respectively are relative terms which renders the claims indefinite. The terms “closer” and “further” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It’s unclear what distance from the retina the focus would need to be to qualify as “closer” or “further”. As it’s uncertain where the focus of the light is in claims 2 and 3 other than not being focused on the retina of the eye the scope of claims 2 and 3 can only be considered to limit the microlenses to not focus the light on the retina of the eye to reduce visual acuity. However claim 1 already recites the limitation “wherein the plurality of microlenses defocus light relative to a retina of the first eye of the user” thus under this interpretation claims 2 and 3 would not further limit the subject matter of claim 1. For these reasons claims 2 and 3 have not been considered.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-8, and 12-13 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 20210389608 A1 (Marshall et al.).
Regarding claim 1:
Marshall discloses an ophthalmic lens assembly for managing eye conditions (See para. [0037]), comprising:
a first ophthalmic lens comprising a plurality of microlenses integrated with the first ophthalmic lens (Fig. 1, lens [10] with microlenses [14]); where each of the plurality of microlenses modify a focus of light (Fig. 22 showing the microlenses modifying the focus of light.); and,
a frame connected to the first ophthalmic lens (Para. [0057], the lens [10] is fitted into a wrap-around style lens frame); wherein the frame positions the plurality of microlenses substantially in front of only a first eye of a user (The lens frame of Para. [0057] is capable of positioning a lens in front of only one eye. The examiner notes that while the presence of a second ophthalmic lens with a second plurality of microlenses positioned in front of a second eye of the user would still meet this limitation it’s not unusual in the field of ophthalmic lenses to have different lenses to treat different eye conditions in each eye of a user.) and wherein the plurality of microlenses defocus light relative to a retina of the first eye of the user. (Fig. 22 showing the microlenses with differing focal lengths.)
Regarding claim 4:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
the plurality of microlenses is arranged in repeating patterns, where each of the repeating patterns comprise a ring shape, a filled circle shape, Fig. 11 shows the microlenses [20] arranged in patterns of rings or a filled circle shape.)
Regarding claim 5:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
the plurality of microlenses are arranged in Fig. 10 showing a honeycomb pattern.)
Regarding claim 6:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
the plurality of microlenses have a diameter within an inclusive range of about 0.25 to 2.0 mm. (Para. [0058] discloses an embodiment where the microlenses have a diameter of 0.4 mm)
Regarding claim 7:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
at least some of the plurality of microlenses are spaced apart from each other at a distance of about 0 to 2.0 mm measured from center points of the plurality of microlenses. (Para. [0047] and fig. 9, the microlenses [20] may have a diameter from 0.001 to 0.5 mm and have sides that are touching thus at least some of the microlenses are spaced apart from each other at a distance of 0.001 to 0.5 mm from center to center of the microlenses.)
Regarding claim 8:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
a ratio of an area of the first ophthalmic lens withPara. [0054], the array of lenses [14] may cover the entirety of the front side of lens [10], See fig. 12 showing an example where the area of the lens [10] without the microlenses is 0 percent. See also fig. 9 showing an example of array [14] densely packed to completely cover a section of lens [10])
Regarding claim 12:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
the plurality of microlenses include spherical shaped microlenses, aspherical shaped microlenses, or a combination of both. (Paras. [0047]-[0048], the microlenses may have any shape including a semi-circular cross-sectional shape.)
Regarding claim 13:
Marshall discloses the ophthalmic lens assembly of claim 1, wherein
the plurality of microlenses are located on a front surface of the first ophthalmic lens (See fig. 2, microlenses [20] on the front surface [16] of lens [10]), a back surface of the first ophthalmic lens (Fig. 3, microlenses [20] on the back surface [18] of lens [10]), both the front and back surfaces of the first ophthalmic lens (Para. [0038], the microlenses may be formed on the front [16] and back [18] surfaces of lens [10]),
Claims 1, and 14-15 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 5900921 A (Min).
Regarding claim 1:
Min discloses an ophthalmic lens assembly for managing eye conditions (See Abstract), comprising:
a first ophthalmic lens comprising a plurality of microlenses integrated with the first ophthalmic lens (Fig. 4A, lens [7] with concave microlenses [4a]); where each of the plurality of microlenses modify a focus of light (Fig. 7B showing the microlenses modifying the focus of light.); and,
a frame connected to the first ophthalmic lens (Fig. 5 showing lens [3] with frame [12]); wherein the frame positions the plurality of microlenses substantially in front of only a first eye of a user (Fig. 5 and 7A shows the lens [3] being position in front of one eye.) and wherein the plurality of microlenses defocus light relative to a retina of the first eye of the user. (Fig. 7B shows that the microlenses defocus light received at the retina of the first eye of the user. See also Col. 4 Lines 48-56.)
Regarding claim 14:
Min discloses the ophthalmic lens assembly of claim 1, further comprising
a second ophthalmic lens connected to the frame (Min fig. 5 shows a frame with two lenses.); wherein the second ophthalmic lens is free of any microlenses. (Col. 5 Lines 37-42, the second lens has no power or is an ordinary ophthalmic lens.)
Regarding claim 15:
Min discloses the ophthalmic lens assembly of claim 14, wherein
the frame is configured to position the first ophthalmic lens in front of a stronger eye of a wearer and wherein the second ophthalmic lens is positioned in front of a weaker amblyopic eye of the wearer. (Col. 5 Lines 37-42, the first lens is worn on the eye with normal (stronger) eyesight while the second lens is worn on the amblyopic eye.)
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 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 5900921 A (Min).
Regarding claim 10:
Min discloses the ophthalmic lens assembly of claim 1,
Min is silent on
wherein the plurality of microlenses are each configured to have a defocus power achieving a visual acuity value of 0.3 or less. (Min is silent on the exact visual acuity achieved by the microlenses.)
However Min teaches about the related art in col. 1 lines 50-57 that “It is conventionally known that a good eye or a normal eye of good eyesight is covered by an eye patch not to see, so that only the eye of amblyopia can see for improvement”. Wearing an eyepatch effectively causes a visual acuity of 0 in the eye covered by the eyepatch. Additionally Min teaches in col. 2 lines 11-19 about the first ophthalmic lens “covers a normal eye on behalf of the conventional eye patch by hardly seeing an object of the outside seen from the inside of the glasses, thereby improving the eyesight of the patient suffering from the diplopia or the amblyopia”. See also fig. 7B which shows the first ophthalmic lens defocusing light to reduce visual acuity.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to minimize the visual acuity to as close to 0 as possible in the ophthalmic lens of Min for the purpose of providing a lens that acts as an eyepatch for improving the eyesight of a patient with amblyopia.
Regarding claim 11:
Claim 11 rejected for the same reasons as claim 10 above.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210389608 A1 (Marshall et al.).
Regarding claim 9:
Marshall discloses the ophthalmic lens assembly of claim 1,
Marshall fails to disclose
wherein a ratio of an area of the first ophthalmic lens withMarshall teaches that the area of the lens covered by microlenses may be restricted to a portion of the lens or cover the whole lens, see figs. 12 and 13. Marshall is silent on the exact percentage of coverage.)
One of ordinary skill in the art before the effective filing date would have found it obvious to try a ratio of an area of the first ophthalmic lens with the microlenses to the area of the first ophthalmic lens without the microlenses be about 12 percent, plus-or-minus 2 percent, 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 involves only routine skill in the art. In re Aller 220 F.2d 454, 456,105 USPQ 233, 235 (CCPA 1955).
Claims 16-20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 20210389608 A1 (Marshall et al.).
Regarding claim 16:
Marshall discloses the ophthalmic lens assembly of claim 1, further comprising a second ophthalmic lens connected to the frame (While Marshall does not explicitly teach a second ophthalmic lens connected to the wrap-around style sunglass lens frames in paras. [0057]-[0058] such frames inherently accommodate two lenses as their users typically have two eyes.); wherein the plurality of microlenses is part of both the first ophthalmic lens and the second ophthalmic lens. (Marshall discloses an ophthalmic lens for treating ametropia, see para. [0003]. As a wearer of prescription glasses may require treatment for ametropia in each eye it’s inherent to prescription glasses that the two lenses are typically identical.)
Regarding claim 17:
Marshall teaches the ophthalmic lens assembly of claim 16, wherein
the plurality of microlenses is arranged in a plurality of groups of microlenses on the first ophthalmic lens and the second ophthalmic lens. (See figs. 9 or 11 showing the microlenses arranged in groups.)
Regarding claim 18:
Marshall teaches the ophthalmic lens assembly of claim 17, wherein
the plurality of groups of microlenses have a size within an inclusive range of about 6 mm to about 25 mm. (See fig. 9 and 13, microlenses are grouped [20a],[20b],[20c] in diagonal groups. Fig. 13 shows that the microlenses are isolated to a small area at the base of a lens. As 25mm is a significant portion of a typical lens for glasses such diagonal groups would have a length less then 25mm.)
Regarding claim 19:
Marshall teaches the ophthalmic lens assembly of claim 17, wherein the plurality of groups of microlenses are arranged in a ring shape on the first ophthalmic lens and the second ophthalmic lens. (See fig. 11 showing the microlenses arranged in ring shaped groups.)
Regarding claim 20:
Marshall teaches the ophthalmic lens assembly of claim 17, wherein
the plurality of groups of microlenses are arranged on only a lower half of the first ophthalmic lens and the second ophthalmic lens. (Fig. 13 shows the microlenses [14] arranged on the lower half of the lens.)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20230107026 A1 (Neitz et al.) teaches a similar ophthalmic lens with microlenses, see fig. 3A. US 20220283451 A1 (Baranton et al.) teaches a similar ophthalmic lens with the microlenses embedded within the lens se figs. 3a and 3b. US 12,638,700 B2 (Zhou et al.) teaches a similar ophthalmic lens with the microlenses only on a limited area of the lens, see for examples figs. 24. US 10,268050 B2 (To et al.) teaches a similar ophthalmic lens with the microlenses defocusing light on the retina, see fig. 6.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH D MOSER whose telephone number is (703)756-5803. The examiner can normally be reached Mon-Fri, 10am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bumsuk Won can be reached at (571)270-1782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SETH D MOSER/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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