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.
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 “… wherein the optical elements are organized along a plurality of radial rays.”, of Claim 17, 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 Objections
Claim 23 is objected to because of the following informalities: in lines 1-2, the phrase “…wherein a part of the optical elements are contiguous.”, is assumed to be a typographical error and should have been written “…wherein a part of the optical elements [[are]]is non-contiguous..”. This being based on the specification of the instant application (US 2025/0035955), paragraphs 0027, 0118, 0119, 0120, and 0202 which recite “non-contiguous”, whereas “contiguous” is only recited in claim 23. Appropriate correction is required.
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 2-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-15 of U.S. Patent No. 11,067,832 in view of Ho et al. (US 2010/0296058). As shown below.
Instant Application (18/794,189)
US Patent 11,067,832
2. A method for determining a lens element, the method comprising:
obtaining wearer prescription data relating a prescription of a wearer; obtaining wearing condition data relating to wearing conditions of the lens element by the wearer;
obtaining wearer retina data relating to a shape of a retina of the wearer; and determining,
by processing circuitry,
a lens element including a prescription portion and a plurality of at least three optical elements so that the prescription portion provides in wearing conditions corresponding to wearing data and, for foveal vision,
a first optical power based on the prescription of the wearer and that at least one optical element has an optical function of not focusing an image on the retina of an eye for peripheral vision.
3. The method according to claim 2, wherein during the lens element determining at least 50% of the optical elements are determined to focus an image at a given distance of the retina.
4. The method according to claim 2, wherein the method further comprises
front surface data representative of a front surface of the lens element are provided, and wherein during the lens element determining step the shape of a back surface and the optical elements to be placed on the front surface are determined
so that the prescription portion provides in wearing conditions corresponding to the wearing data and for foveal vision a first optical power based on the prescription of the wearer and at least one optical element has an optical function of not focusing an image on the retina of the eye for peripheral vision.
13. A method for determining a lens element adapted to slow down progression of abnormal refraction of an eye of a wearer, the method comprising:
obtaining wearer prescription data relating a prescription of the wearer; obtaining wearing condition data relating to wearing conditions of the lens element by the wearer;
obtaining wearer retina data relating to a shape of a retina of the wearer; and determining
Ho et al. (US 2010/0296058) teaches (Paragraph 0053, lines 1-3) of a computer-based design process for the purpose of increasing the precision of the corrective lens design process. a lens element including a prescription portion and at least three optical elements so that the prescription portion provides, in wearing conditions corresponding to the wearing condition data and for foveal vision,
a first optical power based on the prescription of the wearer and at least one optical element of the at least three optical elements has an optical function of not focusing an image on the retina of the eye for peripheral vision, ………………
14. The method according to claim 13, wherein during the determining at least 50% of the at least three optical elements are determined to focus an image at a given distance of the retina.
15. The method according to claim 13, further comprising:
obtaining front surface data representative of a front surface of the lens element, wherein, during the determining a shape of a back surface and the at least three optical elements to be placed on the front surface are determined
so that the prescription portion provides, in wearing conditions corresponding to the wearing condition data and for foveal vision, the first optical power based on the prescription of the wearer and the at least one optical element of the at least three optical elements has the optical function of not focusing the image on the retina of the eye for peripheral vision.
Claims 5-8, 16, 18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 7-10, and 13-14 of copending Application No. 18/794,182 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because as described below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application (18/794,189)
Co-pending application (18/794,182)
5. A lens element intended to be worn in front of an eye of a wearer comprising: a refraction area having a refractive power based on a prescription for said eye of the wearer; and
a plurality of optical elements,
at least one optical element
having an optical function of not focusing an image on a retina of the eye of the wearer.
6. The lens element according to claim 5, wherein the optical elements are positioned on a network.
7. The lens element according to claim 6, wherein the network is a structured network.
8. The lens element according to claim 5, wherein the optical elements are positioned along a plurality of concentric rings.
16. The lens element according to claim 8, further comprising optical elements positioned radially between two concentric rings.
18. The lens element according to claim 5, 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.
20. The lens element according to claim 5, wherein at least one of the optical elements is a toric optical element.
2. 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;
a second refraction area having the refractive power based on the prescription for said eye of the wearer; and
a plurality of optical elements
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,
wherein an average power of the at least one of the optical elements is greater than 3D compared to the refractive power.
7. The lens element according to claim 2, wherein the optical elements are positioned on a network.
8. The lens element according to claim 7, wherein the network is a structured network.
9. The lens element according to claim 8, wherein the optical elements are positioned along a plurality of concentric rings.
10. The lens element according to claim 2, further comprising optical elements positioned radially between two concentric rings.
13. The lens element according to claim 2, 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.
14. The lens element according to claim 2, wherein at least one of the optical elements is a toric refractive micro-lens.
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Ho et al. (US 2010/0296058) in view of To et al. (US 2017/0131567).
Regarding Claim 2, Ho discloses a method for determining a lens element (Fig. 3, Paragraphs 0038-0057), the method comprising:
obtaining wearer prescription data (Fig. 3, input step 42, refractive error, Paragraph 0045, lines 1-2) relating a prescription of a wearer;
obtaining wearing condition (Fig. 3, patient’s predisposition 46 is input, Paragraph 0045, lines 1-2) data relating to wearing conditions of the lens element by the wearer;
obtaining wearer retina data relating to a shape of a retina of the wearer (Fig. 3, input step 42, Paragraph 0046, lines 1-4, distance between cornea and retina at both central and peripheral regions results in the shape of the retina); and
determining, by processing circuitry (Paragraph 0053, lines 1-3, computer-based design process of an ophthalmic correction lens), a lens element including a prescription portion and a plurality of optical elements so that the prescription portion provides in wearing conditions corresponding to wearing data and, for foveal vision, a first optical power based on the prescription of the wearer and that at least one optical element has an optical function of not focusing an image on the retina of an eye for peripheral vision (Fig. 3, central visual acuity area being the prescription region and peripheral region area to defocus on retina, Paragraph 0053, lines 5-9).
Ho does not specifically disclose a plurality of at least three optical elements.
However, To, in the same field of endeavor, teaches a plurality of at least three optical elements (Fig. 1, there are at least three optical elements 2), for the purpose of sufficiently defocusing the image data.
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 Ho with a plurality of at least three optical elements, of To, for the purpose of sufficiently defocusing the image data.
Regarding Claim 3, Ho in view of To discloses as is set forth above and To further discloses during the lens element determining at least 50% of the optical elements are determined to focus an image at a given distance of the retina (Fig. 1, there are at least three optical elements 2, Paragraph 0053, lines 8-15, the lens elements take up 20-60%), for the purpose of sufficiently defocusing the image data.
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 5, 6, 7, 18, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by To et al. (US 2017/0131567).
Regarding Claim 5, To discloses a lens element intended to be worn in front of an eye of a wearer comprising:
a 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 plurality of optical elements (Fig. 1, refractive areas 2, Paragraph 0050, 10-12) at least one optical element having an optical function of not focusing an image on a retina of the eye of the wearer (Paragraph 0041, 1-18, Paragraph 0051, lines 10-11).
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Regarding Claim 6, 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 7, 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 18, 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 (Paragraph 0041, 1-18, Paragraph 0051, lines 10-11).
Regarding Claim 23, To discloses as is set forth above and further discloses wherein a part of the optical elements is 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).
Claims 19 and 20 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).
Regarding Claim 19, To discloses as is set forth above but doesn’t specifically disclose wherein at least one of the optical elements has a cylindrical power.
However, Newman, in the same field of endeavor discloses wherein at least one of the optical elements has a cylindrical power (Paragraph 0011, lines 9-13, the optical features are lenslets with a toric shape, a toric shape comprising cylindrical power, 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 has a cylindrical power, of Newman, for the purpose of preventing myopia progression for a patient with astigmatism.
Regarding Claim 20, To discloses as is set forth above but doesn’t specifically disclose wherein at least one of the optical elements is a toric optical element.
However, Newman, in the same field of endeavor discloses wherein at least one of the optical elements is a toric optical element (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 optical element, of Newman, for the purpose of preventing myopia progression for a patient with astigmatism.
Claim 8, 9, 10, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Lau et al. (US 2016/0377884).
Regarding Claim 8, 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, Lau, in the same field of endeavor discloses wherein the optical elements are positioned along a plurality of concentric rings (Fig. 12A, two concentric rings comprising lenslets 1210, Paragraphs 0021 and 0049), for the purpose of customized prevention of myopia progression for a patient.
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 Lau, for the purpose of customized prevention of myopia progression for a patient.
Regarding Claim 9, To in view of Lau discloses as is set forth above and Lau further discloses wherein the optical elements correspond to different sectors of concentric rings (Paragraphs 0021, lines 11-14, non-coaxial plus power zones), for the purpose of customized prevention of myopia progression for a patient.
Regarding Claim 10, To in view of Lau discloses as is set forth above and Lau further discloses wherein optical elements positioned on one of the concentric rings have a corresponding power profile (Paragraphs 0021, lines 11-14, non-coaxial plus power zones), for the purpose of customized prevention of myopia progression for a patient.
Regarding Claim 21, To discloses as is set forth above but doesn’t specifically disclose wherein at least one of the optical elements is an aspherical microlens.
However, Lau, in the same field of endeavor discloses wherein at least one of the optical elements is an aspherical microlens (Paragraph 0021, lines1-14, Claim 18), for the purpose of preventing myopia progression for a patient while reducing optical aberrations.
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 an aspherical microlens, of Lau, for the purpose of preventing myopia progression for a patient while reducing optical aberrations.
Claim 22 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 22, To discloses as is set forth above but doesn’t specifically disclose wherein a mean sphere at a center of an optical element of the optical elements differs from a mean sphere at a peripheral part of said optical element.
However, Holden, in the same field of endeavor discloses wherein a mean sphere at a center of an optical element of the optical elements differs from a mean sphere at a peripheral part of said optical element (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 a mean sphere at a center of an optical element of the optical elements differs from a mean sphere at a peripheral part of said optical element, of Holden, for the purpose of preventing myopia progression.
Allowable Subject Matter
Claims 4, 11-13, 14, 15, 16, and 17 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 4, none of the prior art either alone or in combination disclose or teach a method including, as the distinguishing feature(s) in combination with the other limitations, wherein the method further comprises front surface data representative of a front surface of the lens element are provided, and wherein during the lens element determining step the shape of a back surface and the optical elements to be placed on the front surface are determined so that the prescription portion provides in wearing conditions corresponding to the wearing data and for foveal vision a first optical power based on the prescription of the wearer and at least one optical element has an optical function of not focusing an image on the retina of the eye for peripheral vision.
Specifically, with respect to claim 11, none of the prior art either alone or in combination disclose or teach a lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein at least part of the optical elements have a variable cylindrical axis.
Specifically, with respect to claim 14, none of the prior art either alone or in combination disclose or teach a lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein a distance between two successive concentric rings of optical elements is comprised between 2.0 mm and 5.0 mm.
Specifically, with respect to claim 15, none of the prior art either alone or in combination disclose or teach a lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein the concentric rings of optical elements have a diameter comprised between 9 mm and 60 mm.
Specifically, with respect to claim 16, none of the prior art either alone or in combination disclose or teach a lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein further comprising optical elements positioned radially between two concentric rings.
Specifically, with respect to claim 17, none of the prior art either alone or in combination disclose or teach a lens element including, as the distinguishing feature(s) in combination with the other limitations, wherein the optical elements are organized along a plurality of radial rays.
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), Phillips (US 2008/0218687), Bakaraju et al. (US 2022/0373824), Bakaraju et al. (US 2022/0342234), Sankaridurg et al. (US 2020/0183185), Martinez et al. (US 2017/0146824), and Buehren (US 2014/0375949) are cited to show similar methods and 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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