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.
Response to Amendment
This office action is in response to the communication filed 8/12/2024.
Amendments to claims 4-7 and 10-14, filed 8/12/2024, are acknowledged and accepted.
Amendments to the title and the abstract, filed 8/12/2024, are acknowledged and accepted.
Information Disclosure Statement
The information disclosure statements submitted on 8/20/2024, 9/16/2024, and 3/11/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings are objected to because of their failure to comply with at least 37 CFR 1.84(l), (m), and (p). FIGs. 5-15 are especially compromised in terms of quality and legibility. Contributing issues include faded figures, contour plots with isolines/labels that are completely indiscernible, and axes and tick labels that do not comply with basic sizing requirements. 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.
Specification
The abstract of the disclosure is objected to because it is generally unclear, grammatically deficient. It consists of a single lengthy sentence that is difficult to parse, particularly due to improper list structure, excessive coordination, and constant shifting of subject. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The disclosure is further objected to because the specification is replete with informalities and terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. Examples of some informalities and unclear, inexact, or verbose terms used in the specification are listed as follows:
In ¶ 2, lines 1-2, “As an ophthalmic lens, for example, a contact lens, an intraocular lens, etc., are known” is ungrammatical and should read “Ophthalmic lenses, for example contact lenses, intraocular lenses, etc., are known” or similar
In ¶ 2, lines 3-5“contact lenses include multifocal contact lenses (multifocal lenses) each ensuring both of a near-vision power for seeing a near distance and a far-vision power for seeing a far distance with a single lens” is ungrammatical and unclear with some redundancy; it may be corrected to read “contact lenses include multifocal contact lenses (multifocal lenses) that each have both a near-vision power for seeing a near distance and a far-vision power for seeing a far distance” or similar
In ¶ 50, lines 4-5, “One of the characteristics of the present embodiment resides in that this technical characteristics are utilized [...]” is incoherent and unclear
Newlines creating new paragraphs are sporadically littered across the document; this also renders the paragraph numbering system rather inaccurate/meaningless
Examiner notes that this list is not exhaustive, and reiterates that the specification should be revised carefully in order to comply with 35 U.S.C. 112(a). Applicant' s specification should be provided in clear and proper idiomatic English and contain no new matter.
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 and 7-13, are 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 and 8-9, claim 2, lines 3 and 5; claim 3, lines 4 and 7; claim 8, lines 3 and 5; and claim 9, lines 4 and 7 all recite “the lens” which lacks a proper antecedent basis. For examination purposes, all instances of “the lens” shall be read as “the ophthalmic lens” which was introduced on line 1 of clams 1 and 7.
Regarding claims 7-13, the claims all recite some “method of designing an ophthalmic lens”, but not a single claims appears to have recited any design steps. The method has no specific bounds and the associated claims are all therefore indefinite.
Further regarding claims 8-13, claim 8, line 1; claim 9, line 1; claim 10, line 1; claim 12, line 1; and claim 13, lines 1, 3, and 4 all recite “an ophthalmic lens”. However, line 1 of claim 7 already recited “an ophthalmic lens”. The phrase is thus overloaded with multiple introductions, causing ambiguity as to whether each “ophthalmic lens” refers to a common object or distinct ones. For examination purposes, each instance of “an ophthalmic lens” is understood to refer to a common object.
Claims not specifically addressed in the rejection above inherit the indefiniteness of the claim from which they depend.
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 1-2, 4-8, and 10-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shimojo and Nakazawa (WO 2020075312 A1, hereinafter “Shimojo”).
Regarding claims 1, 7, and 14, Shimojo discloses an ophthalmic lens (multifocal contact lens 6) comprising (see ¶s 1-6 and 75-86, FIGs. 1 and 4-5. FIG. 1 and ¶s 4-6 detail basic aspects of a conventional lens. FIGs. 4-5 and ¶ 75-86 onwards detail inventive embodiments whose “configuration in plan view is the same as in Figure 1” – ¶ 82):
an optical portion (4) that includes a near-vision portion (1) having a near-vision power that corresponds to a near distance, a far-vision portion (2) having a far-vision power that corresponds to a distance that is farther than the near distance, and an annular intermediate portion (3) that connects the near-vision (1) portion and the far-vision portion (2) to each other, a central optical portion (i.e. near- or far-vision portions 1 or 2) which is the near-vision portion (1) or the far-vision portion (2) being arranged at the center (O) and an outer optical portion (i.e. far- or near-vision portions 2 or 1) which is the far-vision portion (2) or the near-vision portion (1) that is not arranged at the center (O) being arranged in a ring shape along an outer edge of the intermediate portion (3) (note, per ¶ 30, that Shimojo’s disclosure captures embodiments where near-/far-vision portions may occupy the intermediate portion’s interior/exterior and vice versa), the ophthalmic lens (multifocal contact lens 6) further including a front surface that is arranged on an object side (i.e. facing out of the page in FIG. 1) and a rear surface that is opposed to the front surface (i.e. facing into the page in FIG. 1),
wherein the front surface is a composite surface including a progressive surface and a toric surface (note the following:
¶ 81 establishes a progressive lens; see also FIG. 4 (or 6, 8, etc.) showing an exemplary spherical/distance power profile S with a continuous/progressive near-to-far vision transition in the intermediate portion 3 (i.e. from N(’) [Wingdings font/0xE0] F1(’); see FIG. 1)
¶ 109 describes how Shimojo’s rear surface is held spherical, while lens power/ prescription(= “frequency”) is locally adjusted by shaping the front surface
FIGs. 4 and 5 provide spherical and cylindrical profiles which, together, indicate toricity; ¶ 136 also calls out toric lenses as a specific application), and
a cylinder power of the near-vision portion (1) is equal to an astigmatism correction power set in the near-vision portion (1), and a cylinder power of the far-vision portion (2) is equal to an astigmatism correction power set in the far-vision portion (2). (See exemplary cylinder/astigmatism power profile C in FIG. 5 (or 7, 9, etc.); see also ¶ 13: ‘In this specification, "cylinder power" refers to the magnitude of astigmatism’)
Further regarding claim 7, Shimojo discloses a method of designing the ophthalmic lens. (See ¶s 143-148, covering sections headed as < 2. Contact Lens Design Method (Manufacturing Method) >
< 3. Intraocular Lens (IOL) and its Design Method (Manufacturing Method) > )
Further regarding claim 14, Shimojo discloses an ophthalmic lens set comprising a plurality of the ophthalmic lenses (see ¶s 149-153).
Regarding claims 2 and 8, Shimojo discloses the ophthalmic lens according to claim 1 and the method of designing an ophthalmic lens according to claim 7.
Shimojo further discloses (see annotated FIGs. 1 and 4 below, ¶s 86-90) wherein the intermediate portion (3) includes a portion A1 (A) in which a power is strengthened (i.e. grows more negative) and thereafter weakened (i.e. approaches zero) when the lens (multifocal contact lens 6) is viewed in an X direction from the center (O) toward the periphery, and the intermediate portion (3) includes a portion A1' (A’) in which the power is strengthened (i.e. grows more negative) and thereafter weakened (i.e. approaches zero) when the lens (multifocal contact lens 6) is viewed in an X' direction from the center (O) toward the periphery, the X' direction being exactly opposite to the X direction, the power being strengthened in the portion A1 (A) and the portion A1' (A’) to be stronger than the far-vision power of the far-vision portion (2) that is arranged in the ring shape along the outer edge of the intermediate portion (3) or the near-vision power of the near-vision portion (1) that is arranged in the ring shape along the outer edge of the intermediate portion (3). (Again note, per ¶ 30, that Shimojo’s disclosure captures embodiments where near-/far-vision portions may occupy the intermediate portion’s interior/exterior and vice versa)
[AltContent: textbox (FIGs. 1 and 4 of Shimojo are annotated to highlight various features)]
Regarding claims 4 and 10, Shimojo discloses the ophthalmic lens according to claim 2 and the method of designing an ophthalmic lens according to claim 8.
Shimojo further discloses (see FIG. 5 cylinder powers) wherein a cylinder power of the near-vision portion (1) (i.e. from N [Wingdings font/0xE0] N’; see FIG. 1) is equal to a cylinder power of the far-vision portion (3) (i.e. from F1(’) [Wingdings font/0xE0] F2(’); see FIG. 1).
Regarding claims 5 and 11, Shimojo discloses the ophthalmic lens according to claim 1 and the method of designing the ophthalmic lens according to claim 7.
Shimojo further discloses (see ¶s 1-4, 78) wherein the ophthalmic lens (multifocal contact lens 6) is a contact lens.
Regarding claims 6 and 12, Shimojo discloses the ophthalmic lens according to claim 1 and the method of designing an ophthalmic lens according to claim 7.
Shimojo further discloses wherein the ophthalmic lens (multifocal contact lens 6) is an intraocular lens. (Note from ¶s 1-4: “This invention relates to an ophthalmic lens […] Examples of ophthalmic lenses include contact lenses and intraocular lenses”, “we will refer to them as multifocal contact lenses”. Thus, while the ophthalmic lens is often taken as a contact lens for exemplary/discussion purposes, Shimojo’s teachings more generally apply to ophthalmic lenses that include intraocular lenses as well. This aspect is further emphasized at other points throughout the disclosure, e.g.:
¶ 39: “A tenth aspect of the present invention is […] wherein the ophthalmic lens is an intraocular lens”
¶ 146: “the technical concept of the present invention is also fully applicable to intraocular lenses (IOL)”).)
Regarding claim 13, Shimojo discloses a method of manufacturing an ophthalmic lens, comprising:
a design step of designing an ophthalmic lens using the method of designing an ophthalmic lens according to claim 7; and
a processing step of manufacturing the designed ophthalmic lens using a processing device.
(See ¶s 145, 148)
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.
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shimojo, as applied to claims 2 and 8 above, and in view Shimojyou and Nakazawa (EP 3575858 A1, hereinafter “Shimojyou”).
Regarding claims 3 and 9, Shimojo discloses the ophthalmic lens according to claim 2 and the method of designing an ophthalmic lens according to claim 8.
Shimojo does not disclose wherein the near-vision portion or the far-vision portion that is arranged at the center of the optical portion includes a portion A2 in which a power is strengthened and thereafter weakened when the lens is viewed in the X direction from the center toward the periphery, and the near-vision portion or the far-vision portion that is arranged at the center of the optical portion includes a portion A2' in which the power is strengthened and thereafter weakened when the lens is viewed in the X' direction from the center toward the periphery, the X' direction being exactly opposite to the X direction.
Shimojo and Shimojyou share the same authors and commonly relate to ophthalmic lenses.
Shimojyou discloses (see ¶s 1-17 and 58-73, FIGs. 1, 4(a-b))wherein the near-vision portion (near portion 1) or the far-vision portion (distance portion 2) that is arranged at the center of the optical portion (3) includes a portion A2 (A) in which a power is strengthened (“intensified”) and thereafter weakened when the lens is viewed in the X direction from the center (O) toward the periphery, and the near-vision portion (near portion 1) or the far-vision portion (distance portion 2) that is arranged at the center (O) of the optical portion (3) includes a portion A2' (A’) in which the power is strengthened and thereafter weakened when the lens is viewed in the X' direction from the center (O) toward the periphery, the X' direction being exactly opposite to the X direction.
It would have therefore been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Shimojo with features of Shimojyou’s central power profile (near- or far-sighted) – in order to keep good balance between the central and outer optical portions, ensure that the central optical portion is sufficient powered, and ensure that the outer optical portion is wide enough (Shimojyou ¶ 14, 73).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAI-GA D. HO whose telephone number is (571)270-1624. The examiner can normally be reached Monday through Friday, 10AM - 6PM E.T..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.D.H./Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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