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
Claims 3 and 4 are objected to because of the following informalities: both claim 3 and claim 4 contain illegible claim language. Appropriate correction is required. For examination purposes, examiner assumes that the claim language should have been written:
wherein mean sphere is defined as
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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.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 17 of co-pending 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 shown below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application (18/794,193)
Co-pending Application (18/794,182)
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; and
a plurality of optical elements disposed in a second area separate from the first refraction area,
wherein the second area surrounds the first refraction area and
a ratio between a sum of areas of optical elements located inside said second area and a second refractive area inside of said second area is between 20% and 70%.
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.
17. The lens element according to claim 2, 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%.
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 2-4, 6, 7, 11, 12, 13, and 14 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 and Fig. 4, area 1, Paragraph 0050, 8-10);
a plurality of optical elements disposed in a second area separate from the first refraction area (Fig. 1 and Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12),
wherein the second area surrounds the first refraction area and a ratio between a sum of areas of optical elements located inside said second area and a second refractive area inside of said second area is between 20% and 70% (Paragraph 0053, lines 8-12, ratio of the second areas and the first area 20% - 60%).
Regarding Claim 3, To discloses a lens wearable in front of an eye, comprising:
a base lens element including a refraction area having a refractive power based on a prescription corresponding to the eye (Fig. 1 and Fig. 4, area 1, Paragraph 0050, 8-10); and
a first optical element (Fig. 4, area 1, Paragraph 0050, 8-10) and a second optical element (Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12) formed as part of the base lens element,
wherein an average mean sphere of the first optical element is different from an average mean sphere of the second optical element (Fig. 5, the mean sphere of area 1 brings image light to a focus at the retina, Fig. 6, the mean sphere areas 2 bring image light to a focal point to a position in front of the retina, so the mean spheres are different),
wherein mean sphere is defined as
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wherein the average mean sphere of an optical element corresponds to an average of the mean sphere of points on the optical element (Fig. 5, the mean sphere of area 1 brings image light to a focus at the retina, Fig. 6, the mean sphere areas 2 bring image light to a focal point to a position in front of the retina, so the mean spheres are different, wherein all the points on the optical elements are contributing to the respective focal points).
Regarding Claim 4, To discloses a lens wearable in front of an eye, comprising:
a base lens element having at least one surface and including a refraction area having a refractive power based on a prescription corresponding to the eye (Fig. 1 and Fig. 4, area 1, Paragraph 0050, 8-10); and
a first optical element (Fig. 4, area 1, Paragraph 0050, 8-10) and a second optical element (Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12) formed as part of the base lens element,
wherein an average mean sphere of the first optical element is different from an average mean sphere of the second optical element (Fig. 5, the mean sphere of area 1 brings image light to a focus at the retina, Fig. 6, the mean sphere areas 2 bring image light to a focal point to a position in front of the retina, so the mean spheres are different),
wherein mean sphere is defined as
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wherein the average mean sphere of an optical element corresponds to an average of the mean sphere of points on the optical element (Fig. 5, the mean sphere of area 1 brings image light to a focus at the retina, Fig. 6, the mean sphere areas 2 bring image light to a focal point to a position in front of the retina, so the mean spheres are different, wherein all the points on the optical elements are contributing to the respective focal points).
Regarding Claim 6, To discloses a lens wearable in front of an eye, comprising:
a base lens element including a refraction area having a refractive power based on a prescription corresponding to the eye (Fig. 1 and Fig. 4, area 1, Paragraph 0050, 8-10); and
at least one optical element formed as part of the base lens element (Fig. 1 and Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12),
wherein a difference of an average mean sphere over a central zone (Marked first refractive area in annotated Fig. 1, below) of the optical element and of an average mean sphere over an annular zone of the optical element (Marked elements 2 within the second refractive area in annotated Fig. 1, below) surrounding the central zone is greater than 0.25 D (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 7, To discloses a lens wearable in front of an eye, comprising:
a base lens element including a refraction area having a refractive power based on a prescription corresponding to an eye (Fig. 1 and Fig. 4, area 1, Paragraph 0050, 8-10); and
at least one optical element formed as part of the base lens element (Fig. 1 and Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12),
wherein a difference of an average mean sphere over a central zone (Marked first refractive area in annotated Fig. 1, above) of the optical element and of an average mean sphere over an annular zone of the optical element (Marked elements 2 within the second refractive area in annotated Fig. 1, above) surrounding the central zone is greater than 0.3 D (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).
Regarding Claims 11 and 12, To discloses as is set forth above and further discloses wherein the central zone and the annular zone have the same geometrical center (Marked first refractive area in annotated Fig. 1, above and Marked elements 2 within the second refractive area in annotated Fig. 1, above, are concentric with respect to the geometric center of the lens).
Regarding Claims 13 and 14, To discloses as is set forth above and further discloses wherein the central zone and the optical element have the same geometrical center (Paragraph 0016, lines 1-4, and Paragraph 0017, lines 1-4).
Claims 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over To et al. (US 2017/0131567) in view of Toyoshima (US 2021/0387430).
Regarding Claims 5 and 8, To discloses as is set forth above but doesn’t specifically disclose wherein the optical element includes a base material and a coating.
However, Toyoshima, in the same field of endeavor, teaches wherein the 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 with the wherein the 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.
Claim 17 is 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), further in view of Toyoshima (US 2021/0387430).
Regarding Claim 17, To discloses a spectacle optical lens, comprising:
a refraction area having a refractive power based on a prescription corresponding to an eye of a person (Fig. 1 and Fig. 4, area 1, Paragraph 0050, 8-10); and
a plurality of optical elements disposed located on a surface of the spectacle optical lens (Fig. 1 and Fig. 4, refractive areas 2, Paragraph 0050, lines 10-12).
To discloses as is set forth above but doesn’t specifically disclose at least one of the plurality of optical elements having a non-spherical optical function, wherein the refraction area and the plurality of optical elements include a base material and a coating.
However, Lau, in the same field of endeavor discloses wherein at least one of the plurality of optical elements having a non-spherical optical function (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 plurality of optical elements having a non-spherical optical function, of Lau, for the purpose of preventing myopia progression for a patient while reducing optical aberrations.
Additionally, Toyoshima, in the same field of endeavor, teaches wherein the refraction area and the plurality of optical elements include 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 Lau with the wherein the refraction area and the plurality of optical elements include a base material and a coating, of Toyoshima, for the purpose of providing resilient eyewear that can mitigate the progression of myopia.
Allowable Subject Matter
Claims 9, 10, 15, and 16 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 claims 9 and 10, none of the prior art either alone or in combination disclose or teach a lens including, as the distinguishing feature(s) in combination with the other limitations, wherein the central zone is a disk with a diameter of 0.5 mm and the annular zone having an inner diameter comprised between 0.5 mm and 0.7 mm and an outer diameter comprised between 0.7 mm and 0.90 mm.
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 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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