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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-3, 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2013/0142948) in view of Quere (US 2016/0114542).
Claims 1-2, 5, 7:
Ohta teaches a method for manufacturing a lens comprising forming a first optical surface, then applying a photochromic coating, and then forming the second optical surface (Fig. 9). It is desired that the photochromic coating is applied to only one side of the lens, so the process includes dip coating the lens to coat both sides of the lens followed by ablation during forming the second optical surface which removes the undesired second photochromic coating [0021]. The coated side can be the convex side and the uncoated side can be the concave side [0005].
Ohta does not teach applying a tint in the same manner as the photochromic coating.
However, Quere teaches a method for manufacturing a lens comprising the steps of forming an intermediate lens (100), then forming at least one optical surface (300), then treatment of at least one side of the lens (400) (Fig. 4). The treatment includes applying one or more coatings such as tinting and photochromic [0153].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Ohta and further applying a tint in the same manner as the photochromic. This practice would have realized the benefit of having both a tint and photochromic effect in the resulting lens.
Claim 3:
The lens is selected from at least polycarbonate [Ohta 0120].
Claim 6:
The steps for forming optical surfaces includes cutting, grinding, and polishing [Ohta 0174-0177].
Claim 8:
A hard coat layer is applied on the photochromic [Ohta 0155].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohta (US 2013/0142948) in view of Quere (US 2016/0114542) in view of Park (US 2018/0290408).
Previously cited prior art does not explicitly teach the details of the dyeing process. However, Park teaches a method for dyeing a lens wherein the lens is dipped into a bath of dye solution [0130-0134]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the dyeing process according the manner described by Park because it is suitable for the dyeing of lenses.
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive.
Applicant argues Ohta teaches away from the claimed invention. However, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Something does not become patentable simply because it has been described as somewhat inferior. MPEP 2123. Although Ohta does states the dip coating-ablation method is nonpreferred/somewhat inferior due to material waste, this does not detract form its teaching as a nonpreferred embodiment. This analysis would have logically applied to the tint coating of Quere as well.
Applicant argues Quere does not teach applying a tint to a semifinished part. The examiner disagrees with Applicant’s interpretation of Quere because the subtractive steps is applied to “at least one face of the ophthalmic lens”. When only one face of the lens undergoes subtractive process, then the lens is still in the semifinished state. Even assuming Quere only teaches applying coating to a finished substrate, the arguments are an improper bodily incorporation of the Quere reference into the combination. Quere is relied upon for the addition of one or more predetermined coatings including tint and photochromic in the context of ophthalmic lenses. This is considered a general teaching, and not reliant on the specifics of the additive manufacturing process.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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