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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/5/2024 was considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities: in lines 1-2, the phrase “… two optical elements are contiguous and independent.”, is assumed to be a typographical error and should have been written “… two optical elements are non-contiguous and independent.”. This being based on the specification of the instant application (US 2025/0035955), paragraphs 0027, 0117, 0118, 0119, and 0203 which recite “non-contiguous”, whereas “contiguous” is only recited in claim 6 (and claim 24). Appropriate correction is required.
Claim 24 is objected to because of the following informalities: in lines 1-2, the phrase “…at least two optical elements of said plurality of optical elements are contiguous.”, is assumed to be a typographical error and should have been written “…at least two optical elements of said plurality of optical elements are non-contiguous.”. This being based on the specification of the instant application (US 2025/0035955), paragraphs 0027, 0117, 0118, 0119, and 0203 which recite “non-contiguous”, whereas “contiguous” is only recited in claim 24 (and claim 6). Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “… a plurality of optical elements disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …”, as recited in claims 20 and 21, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 20, the limitations “… a plurality of optical elements disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …” lack any description in the specification, which makes examiner conclude that the inventor(s) did not have possession of the claimed invention.
Regarding Claim 21, the same analysis applies to Claim 21 as was discussed for claim 20, with the additional factor of claims 22-23 also being rejected due to pendency on claim 21.
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 2-8, 13, 16, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by To et al. (US 2017/0131567).
Regarding Claim 2, To discloses a lens element intended to be worn in front of an eye of a wearer comprising:
a first refraction area having a refractive power based on a prescription for said eye of the wearer (Fig. 1, central portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, below);
a second refraction area having the refractive power based on the prescription for said eye of the wearer (Fig. 1, peripheral portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, below); and
a plurality of optical elements (Fig. 1, refractive areas 2, Paragraph 0050, 10-12) that are disposed separate from the first refraction area, at least one optical element of the plurality of optical elements operating to not focus an image on a retina of the eye of the wearer (Paragraph 0041, 1-18),
wherein an average power of the at least one of the optical elements is greater than 3D compared to the refractive power (Paragraph 0051, lines 6-8, the second refractive power is larger than the first refractive area power by 2.00D to 5.00 D, the mathematical relation is therefore met).
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Regarding Claim 3, To discloses as is set forth above and further discloses wherein the first refraction area is disposed in a central area of the lens element (Fig. 1, central portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, above).
Regarding Claim 4, To discloses as is set forth above and further discloses wherein the at least one of the plurality of optical elements is encompassed by the second refraction area (Fig. 1, peripheral portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, above).
Regarding Claim 5, To discloses as is set forth above and further discloses wherein the second refraction area surrounds the first refraction area (see annotated Fig. 1, above).
Regarding Claim 6, To discloses as is set forth above and further discloses wherein at least two optical elements are non-contiguous and independent (Fig. 1, refractive areas 2, Paragraph 0050, 10-12, areas 2 are independent island-shaped areas, Paragraph 0052, lines 5-8, areas 2 are separated from each other).
Regarding Claim 7, To discloses as is set forth above and further discloses wherein the optical elements are positioned on a network (Paragraph 0052, lines 5-8, areas 2 are evenly arranged and separated from each other by a specific distance equal to a value of a radius d/2).
Regarding Claim 8, To discloses as is set forth above and further discloses wherein the network is a structured network (Paragraph 0052, lines 5-8, areas 2 are evenly arranged and separated from each other by a specific distance equal to a value of a radius d/2).
Regarding Claim 13, To discloses as is set forth above and further discloses wherein at least one of the optical elements has an optical function of focusing an image on a position other than the retina of the wearer (Fig. 1, refractive areas 2, Paragraph 0051, 10-11).
Regarding Claim 16, To discloses as is set forth above and further discloses wherein the first refractive area is formed as the area other than the areas formed as the plurality of optical elements (see annotated Fig. 1, above).
Regarding Claim 24, To discloses as is set forth above and further discloses wherein at least two optical elements of said plurality of optical elements are non-contiguous (Fig. 1, refractive areas 2, Paragraph 0050, 10-12, areas 2 are independent island-shaped areas, Paragraph 0052, lines 5-8, areas 2 are separated from each other).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Tse et al. (US 2015/0109574).
Regarding Claim 9, To discloses as is set forth above but doesn’t specifically disclose wherein the optical elements are positioned along a plurality of concentric rings.
However, Tse, in the same field of endeavor discloses wherein the optical elements are positioned along a plurality of concentric rings (Fig. 1A, 6 concentric defocusing zones 11, Paragraph 0073, lines 1-9), for the purpose of providing stable clear vision and retarding effectiveness in different lighting conditions.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the wherein the optical elements are positioned along a plurality of concentric rings of Tse, for the purpose of providing stable clear vision and retarding effectiveness in different lighting conditions.
Regarding Claim 10, To discloses as is set forth above but doesn’t specifically disclose wherein further comprising optical elements positioned radially between two concentric rings.
However, Tse, in the same field of endeavor discloses wherein further comprising optical elements positioned radially between two concentric rings (Fig. 1A, 6 concentric defocusing zones 11, an inner zone 11 and an outer zone 11, surrounding 4 zones 11, Paragraph 0073, lines 1-9), for the purpose of providing stable clear vision and retarding effectiveness in different lighting conditions.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the wherein further comprising optical elements positioned radially between two concentric rings of Tse, for the purpose of providing stable clear vision and retarding effectiveness in different lighting conditions.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Brennan et al. (US 2019/0227342).
Regarding Claim 12, To discloses as is set forth above but doesn’t specifically disclose wherein optical power evolution has a continuous first derivative between two optical elements.
However, Brennan, in the same field of endeavor discloses wherein optical power evolution has a continuous first derivative between two optical elements (Fig. 8C, the first derivative of the power profile 810 is continuous), for the purpose of preventing myopia progression.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the wherein optical power evolution has a continuous first derivative between two optical elements, of Brennan, ous), for the purpose of preventing myopia progression.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Newman (US 2017/0184875).
Regarding Claim 14, To discloses as is set forth above but doesn’t specifically disclose wherein at least one of the optical elements is a toric refractive micro-lens.
However, Newman, in the same field of endeavor discloses wherein at least one of the optical elements is a toric refractive micro-lens (Paragraph 0011, lines 9-13, the optical features are lenslets with a toric shape, Paragraph 0058, Fig. 3, optical feature 36), for the purpose of preventing myopia progression for a patient with astigmatism.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the wherein at least one of the optical elements is a toric refractive micro-lens, of Newman, for the purpose of preventing myopia progression for a patient with astigmatism.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Holden et al. (US 8,240,847).
Regarding Claim 15, To discloses as is set forth above but doesn’t specifically disclose wherein the optical elements are configured so that, along at least one section of the lens element, a mean sphere and/or cylinder of optical elements increases from the center of said at least one section towards peripheral part of said at least one section.
However, Holden, in the same field of endeavor discloses wherein the optical elements are configured so that, along at least one section of the lens element, a mean sphere (Fig. 3) and/or cylinder of optical elements increases from the center of said at least one section towards peripheral part of said at least one section (Fig. 3, mean cylinder power increases toward the periphery of the lens, as measured in diopters), for the purpose of preventing myopia progression for a patient with astigmatism.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the wherein the optical elements are configured so that, along at least one section of the lens element, a mean sphere and/or cylinder of optical elements increases from the center of said at least one section towards peripheral part of said at least one section, of Holden, for the purpose of preventing myopia progression.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567).
Regarding Claim 20, To discloses a lens element intended to be worn in front of an eye of a wearer comprising:
a central area having a refractive power based on a prescription for said eye of the wearer (Fig. 1, central portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, below);
a plurality of optical elements disposed in a pattern (Fig. 1, refractive areas 2, Paragraph 0050, 10-12) … an optical function of not focusing an image on a retina of the eye of the wearer (Paragraph 0041, 1-18, focusing an image in front of the retina in order to suppress the progress of myopia).
To does not specifically disclose “… disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to rearrange the optical elements “… disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …”, for focusing an image in front of the retina in order to suppress the progress of myopia.
It has been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art. In re Japiske, 86 USPQ 70 (CCPA 1950). The rearrangement in this case does not modify the operation of the device because images are still focused in front of the retina in order to suppress the progress of myopia. The benefits of this modification include simplifying the manufacturing process.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Newman (US 2017/0184875).
Regarding Claim 21, To discloses a lens element intended to be worn in front of an eye of a wearer comprising:
a central area having a refractive power based on a prescription for said eye of the wearer (Fig. 1, central portion of area 1, Paragraph 0050, 8-10, see annotated Fig. 1, below);
a plurality of optical elements disposed in a pattern (Fig. 1, refractive areas 2, Paragraph 0050, 10-12).
To does not specifically disclose “… disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …”.
It would have been obvious to one of ordinary skill in the art before the effective filing date to rearrange the optical elements “… disposed in a sunshine pattern in which optical elements surround the central area in a circle and optical elements extend outwards from the circle as a plurality of arms, at least one optical element having …”, for focusing an image in front of the retina in order to suppress the progress of myopia.
It has been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art. In re Japiske, 86 USPQ 70 (CCPA 1950). The rearrangement in this case does not modify the operation of the device because images are still focused in front of the retina in order to suppress the progress of myopia. The benefits of this modification include simplifying the manufacturing process.
To discloses as is set forth above but doesn’t specifically disclose wherein at least one optical element having a non-spherical optical function.
However, Newman, in the same field of endeavor discloses wherein at least one optical element having a non-spherical optical function (Paragraph 0011, lines 9-13, the optical features are lenslets with a toric shape, Paragraph 0058, Fig. 3, optical feature 36), for the purpose of preventing myopia progression for a patient with astigmatism.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To with the at least one optical element having a non-spherical optical function, of Newman, for the purpose of preventing myopia progression for a patient with astigmatism.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Newman (US 2017/0184875), further in view of Toyoshima (US 2021/0387430).
Regarding Claim 22, To in view of Newman discloses as is set forth above but doesn’t specifically disclose wherein the at least one optical element includes a base material and a coating.
However, Toyoshima, in the same field of endeavor, teaches wherein the at least one optical element includes a base material and a coating (Fig. 4D, both the central area and the periphery, which includes the optical elements 6, comprise of a main body 2, made of a resin, and the hardcoat layer 8 and the antireflection film 10), for the purpose of providing resilient eyewear that can mitigate the progression of myopia.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the lens element of To in view of Newman with the wherein the at least one optical element includes a base material and a coating, of Toyoshima, for the purpose of providing resilient eyewear that can mitigate the progression of myopia.
Regarding Claim 23, To in view of Newman, further in view of Toyoshima discloses as is set forth above and Toyoshima further discloses where the central area includes the base material (Fig. 4D, both the central area and the periphery, which includes the optical elements 6, comprise of a main body 2, made of a resin, and the hardcoat layer 8 and the antireflection film 10), for the purpose of providing resilient eyewear that can mitigate the progression of myopia.
Allowable Subject Matter
Claims 11, 17, and 18-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to claim 11, none of the prior art either alone or in combination disclose or teach lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein optical power evolution has a discontinuous first derivative between two optical elements.
Specifically, with respect to claim 17, none of the prior art either alone or in combination disclose or teach lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein for a circular zone having a radius comprised between 2 and 4 mm comprising a geometrical center, the geometrical center being located at a distance equal to the radius +5 mm from an optical center of the lens element that faces a pupil of a user gazing straight ahead in standard wearing conditions, a ratio between a sum of areas of parts of optical elements located inside the circular zone and a total area of said circular zone is comprised between 20% and 70%.
Specifically, with respect to claim 18, none of the prior art either alone or in combination disclose or teach lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein the lens element further comprises at least four optical elements, the optical elements being organized in at least two groups of optical elements, each group of optical element being organized in at least two concentric rings having the same center, a concentric ring of each group of optical element being defined by an inner diameter corresponding to the smallest circle that is tangent to at least one optical element of said group and an outer diameter corresponding to the largest circle that is tangent to at least one optical elements of said group.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. To et al. (US 10,268,050), To et al. (US 2006/0082729), Hones et al. (US 10,884,264), Hones et al. (US 2019/0235279), Back (US 2012/0194780), and Phillips (US 2008/0218687) are cited to show similar lens elements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM R ALEXANDER whose telephone number is (571)270-7656. The examiner can normally be reached M-F 8:30 AM- 4:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached on (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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/WILLIAM R ALEXANDER/ Primary Examiner, Art Unit 2872
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