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 .
Response to Amendment
The preliminary amendment to the claims filed 30 OCT 2024 is not in proper form according to at least one of MPEP 608.01(j) or MPEP 714(II)C(B).
In the preliminary amendment to the claims filed 30 OCT 2024, claims 6 and 7 as presented therein correspond to claims 9 and 10 as originally filed; however, no marking of text to show the cancellation text in original claims 6 and 7 or addition of text from original claims 9 and 10 to arrive at the amended claims 6 and 7 was present in the preliminary amendment.
Alternatively, claims 6-8 should have been canceled and claims 9-10 presented in the preliminary amendment; the arbitrary renumbering of the claims in the manner presented was improper in that alternative.
Further, the status of claims 8-10 as originally filed was left out of the preliminary amendment filed 30 OCT 2024 (this omission of status was corrected in the preliminary amendment filed 01 AUG 2025).
The improprieties in the preliminary amendment filed 30 OCT 2024 and perpetuated in the preliminary amendment filed 01 AUG 2025 do not introduce confusion as to the intended scope of the claims; therefore, the preliminary amendment of claims filed 01 AUG 2025 is treated as the set of claims pending examination going forward. Any claims added after this point must start with Claim 11 and proceed from there.
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.
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.
Claims 1-3 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sommer ‘431 (U.S. PGPub 2002/0118431) in view of Misura ‘612 (U.S. PGPub 2003/0045612).
Claim 1 – Sommer ‘431 teaches a method for providing a substrate with a tint and a functional coloring (e.g. PG 0054, a synthetic resin material comprising both an organic dye for tint and a photochromic dye for functional coloring), comprising the following steps (a) to (c) in this order:
(a) providing a substrate to be provided with a tint and a functional coloring (PG 0019, e.g. photochromic lenses for eyeglasses), the substrate being made of plastic glass (PG 0020, e.g. polymethylmethacrylate) and the substrate having a first main side and a second main side with a convex shape opposite the first main side (PG 0019, photochromic lens for eyeglasses, see also PG 0059 for express recitation of a lens having one convex side),
(b) applying a tint to both main sides of the substrate provided in step (a), wherein the application of the tint in step (b) is carried out by immersing the substrate in a dyeing tank containing at least one non-functional dye dissolved or dispersed in a liquid medium (PG 0054, separate application of the organic dye in a diffusion dye bath prior to application of the photochromic dye), and
(c) applying a functional coloring to the substrate provided with a tint in step (b) (PG 0056, application of a lacquer layer containing the photochromic dye), wherein the functional coloring is caused by at least one photochromic dye (PG 0056), whereby the photoresist forms a polymeric layer on the substrate (PG 0056, the lacquer layer is intended to stay on the substrate) and a substrate provided with a tint and a functional coloring is obtained, wherein the polymeric layer having the functional coloring is not removed from the substrate (PG 0056, the lacquer layer remains on the substrate).
Sommer ‘431 does not expressly teach or suggest the following:
Wherein the functional coating is applied on both main sides of the substrate.
Wherein the functional coating is applied by dip coating.
Wherein the substrate provided with a tint on both main sides is immersed in a photoresist containing the at least one photochromic dye (Examiner holds that the lacquer layer is commensurate with a photoresist, but Sommer ‘431 does not teach the immersion).
Misura ‘612 teaches compositions comprising photochromic dyes for applications to e.g. ophthalmic lenses (PG 0002). Misura ‘612 teaches that the photochromic dye may be applied to the lens by e.g. dip-coating in a solution that may comprise polymeric resin as the carrier (PG 0070) and that both principal sides of the lens may be treated at the same time (PG 0075). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made or filed to have modified the invention of Sommer ‘431 to apply the lacquer containing photochromic dye therein by dip-coating the entire lens in a solution thereof as suggested by Misura ‘612, as Sommer ‘431 generically teaches application of the lacquer and Misura ‘612 teaches a specific method suitable for the purpose.
Claim 2 – Sommer ‘431 / Misura ‘612 renders obvious the method according to claim 1, wherein the substrate provided in step (a) is made of polymethyl methacrylate, polycarbonate, polyacrylate, or polydiethylene glycol bisallyl carbonate (Sommer ‘431 PG 0020).
Claim 3 – Sommer ‘431 / Misura ‘612 renders obvious the method according to claim 1, wherein the substrate provided in step (a) is a finished part with a concave shape of the first main side, which does not require surface machining (Sommer ‘431 PG 0019, ophthalmic lens which is a distinct term of art compared to lens blank; the ophthalmic lens is held to be a finished part. As to the selection of a concave shape for the first main side, there are three categories of lens face shapes – concave, planar, and convex. Selection of a desired profile from a narrowly limited selection of options to obtain a desired final product is held as prima facie obvious absent an unexpected result accruing from the selection.).
Claim 6 – Sommer ‘431 / Misura ‘612 renders obvious the method according to claim 1, further comprising the following step (d):
applying one or more finishing layers to at least one of the two main sides of the substrate obtained in step (c), which is provided with a tint and a functional coloring on both main sides (Misura ‘612 PG 0094, application of an organic UV curable hard coating material by e.g. dip-coating).
Claim 7 – Sommer ‘431 / Misura ‘612 renders obvious the method according to claim 6, wherein the substrate provided with a tint and a functional coloring on both main sides is immersed in a hard lacquer for applying a hard layer (Misura ‘612 PG 0094, application of an organic UV curable hard coating material by e.g. dip-coating).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sommer ‘431 / Misura ‘612 as applied to claim 1 above, and further in view of Mandler ‘756 (U.S. PGPub 2007/0229756).
Claim 4 – Sommer ‘431 / Misura ‘612 renders obvious the method according to claim 1, but does not fairly teach or suggest the limitation wherein the substrate provided in step (a) is a half-part with a planar or concave shape of the first main side, which is subjected to surface machining prior to step (b). Mandler ‘756 is drawn to methods of forming ophthalmic lenses of plastic material (Abstract), said methods starting with zero or one surfaces of optical quality (PG 0033) and proceeding to surface treatment inclusive of milling, lathing, grinding, and polishing (PG 0044) to obtain a desired lens (PG 0047). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made or filed to have modified the invention of Sommer ‘431 / Misura ‘612 to use the lens fabrication process of Mandler ‘756 to produce lenses for further processing, as Sommer ‘431 / Misura ‘612612 want to treat plastic ophthalmic lenses and Mandler ‘756 teaches methods of manufacturing plastic ophthalmic lenses commensurate with Sommer ‘431 / Misura ‘612.
Claim 5 – Sommer ‘431 / Misura ‘612 / Mandler ‘756 renders obvious the method according to claim 4, wherein surface machining is carried out by milling, grinding, or polishing (Mandler ‘756 PG 0044 discloses all these types separately; PG 0047 therein contemplates multiple working steps but does not expressly disclose a process wherein two of these steps are expressly combined).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL G MILLER whose telephone number is (571)270-1861. The examiner can normally be reached M-F 9:00-5:30 EST.
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/MICHAEL G MILLER/ Primary Examiner, Art Unit 1712