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 statements (IDS) submitted on 11/12/2024, 02/27/2025, 06/17/2026, and 10/06/2026 have been considered by the Examiner and made of record in the application file.
Election/Restrictions
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 15.
Applicant's election with traverse of claims 10-18 in the reply filed on September 15 is acknowledged. The traversal is on the ground(s) that the search and examination of the entire application could be made without serious burden. This is not found persuasive because the restriction requirement was not made on the basis of undue search burden, rather the restriction requirement was made due to lack of unity. Further, even assuming, in arguendo, that the restriction requirement was made on the basis of undue search burden, there is a search burden because inventions have acquired a separate status in the art in view of their different classification, the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
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 10-18 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 independent claim 10, the limitation “the functional region” in lines 7 and 14 lack sufficient antecedent basis. For the purposes of examination, examiner assumes “the annular functional region.” Claims 11-18 are dependent on claim 10 and therefore inherit the same issues.
Regarding claims 12-14 and 17, each formula including parameter “a” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
The parameter “a” is never defined in the claims, yet it appears in the formulas. It is stated in ¶0116 of the specification that “a is a unit fourth-order aspheric amount used for adjusting a scale, and the fourth-order aspheric coefficient is 10^-6 as one unit.”
For the purposes of examination, examiner assumes that “a” is a unit fourth-order aspheric amount used for adjusting a scale and that a = 10-6 for any aspheric surface.
Claims 13-14 are dependent on claim 12 and therefore inherit the same issues.
Further regarding claim 14, the limitation “the value c in the region H satisfies the following formula: |(Cs + a⋅As) - (Ct + a⋅At)| ≤ 0.25” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear how “c” can satisfy the formula if it never appears in the formula. It is unclear whether this is an error and if base curve value c is meant to be part of the formula or if base curve value c is not part of the formula. Examiner considered Example 1 disclosed in ¶0156-¶0164 in applicant’s specification, which appears to be the only example with numerical values, to gain clarity as to this limitation, however this limitation is not discussed or calculations shown. There is no value given for base curve value c. Further, the values given in the example do not appear to satisfy the current formula either. Using a = 10-6 (¶0116 and see rejection above), N = 1.6 (¶0158), and S = -8.00D (¶0158), the claimed formula was calculated to be |(Cs + a⋅As) - (Ct + a⋅At)| = 1.44, which is well outside the claimed range of “≤ 0.25.” Therefore, it is unclear if the formula is correct.
For the purposes of examination, examiner will consider this limitation inherent for a lens which meets the rest of the requirements of the claim.
Regarding claim 16, the limitation “the functional region” in line 2 lacks sufficient antecedent basis. It is further unclear if “an entire functional region” encompasses a different region than the annular functional region already previously stated or if it is the same region as the annular functional region.
For the purposes of examination, examiner assumes “in a planar view in the annular functional region if 20% or more and 80% or less of the annular functional region.”
Claim 17 is dependent on claim 16 and therefore inherits the same issues.
Further regarding claim 17, the formulas “Cs + 2a.As - 0.25 ≤ c ≤ Ct + a.At + 0.25” and “|(Cs + a.As) - (Ct + a.At)| ≤ 0.25” raise clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
For both formulas, it is unclear if “.” in “a.As” and “a.At” is meant to be a period, in which case these would be new variables, or if they are meant to be the dot operator. Assuming they are the dot operator, the formulas are still unclear. Further regarding the first formula “Cs + 2a⋅As - 0.25 ≤ c ≤ Ct + a⋅At + 0.25” it is unclear if the left hand side is correct. In this claim, the left hand side has “2a⋅As” whereas the closest formula found in the other claims and throughout the entire disclosure is “a⋅As”. The second formula “|(Cs + a.As) - (Ct + a.At)| ≤ 0.25” is unclear for the same reasons as set forth above in the 112(b) rejection for claim 14 and will be interpreted the same way as for claim 14.
For the purposes of examination, examiner assumes “Cs + [[2]]a⋅As - 0.25 ≤ c ≤ Ct + a⋅At + 0.25”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 10-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guillot et al. (US 20200393702 A1), hereinafter Guillot, of record.
Regarding independent claim 10, Guillot discloses a spectacle lens that has an effect of inhibiting a progression of myopia or reducing hyperopia, the spectacle lens including:
a central clear region (16; Fig. 1; ¶0086) that is a region including an eye point (Fig. 1; ¶0086-¶0088), which causes a light beam entering from an object-side surface to exit from an eyeball-side surface, enter a wearer's pupil, and converge on a retina, to achieve a prescribed refractive power (¶0086); and
an annular functional region (region with 14; Fig. 1; ¶0070) surrounding the central clear region (16) (Fig. 1),
the functional region (region with 14) including:
a base region (spherical front surface; Fig. 1; ¶0202) that allows a light beam entering from the object-side surface to exit from the eyeball-side surface, enter the wearer's pupil, and converge on the retina to achieve the prescribed refractive power (¶0086, ¶0202); and
an on-retinal non-convergence region (14; Fig. 1; ¶0070) that allows the light beam entering from the object-side surface to exit from the eyeball-side surface, while not allowing the light beam to enter the wearer's pupil to converge on the retina (¶0110-¶0112, ¶0202),
wherein in a planar view, an outer edge of the functional region is larger than a circle centering on the eyepoint and having a diameter of 35 mm (¶0173), and
a base curve value c [unit: diopter (D)] which is a curvature of a surface in a region H where the on-retinal non-convergence region is not provided on the object-side surface satisfies the following formula (c = 3.03D, calculated using r = 329.5mm; ¶0183-¶0184, ¶0202):
2Cs – Ct - 0.25 ≤ c ≤ Ct + 0.25 (2Cs – Ct - 0.25 = 1.17; Ct + 0.25 = 4.51; ¶0202)
Cs = 11.4(N-1) + 0.65S (Cs = 2.84; ¶0202)
Ct = 13.8(N-1) + 0.65S (Ct = 4.26; ¶0202)
N: refractive index of spectacle lens (N = 1.591; ¶0202)
S: horizontal refractive power in region H (S = -6D; ¶0202; it is assumed that there is a typographical error in ¶0202 and that the optical power should be -6D instead of 6D given that the lens is for myopia control, as stated in ¶0124).
Regarding claim 11, Guillot discloses the spectacle lens according to claim 10, as set forth above. Guillot further discloses wherein the value c in the region H (c = 3.52D; ¶0202) satisfies the following formula:
Cs - 0.25 ≤ c ≤ Ct + 0.25 (Cs - 0.25 = 2.59; Ct + 0.25 = 4.51; ¶0202).
Regarding claim 12, Guillot discloses the spectacle lens according to claim 11, as set forth above. Guillot further discloses the value c in the region H (c = 3.52D) satisfies the following formula:
2Cs + 2a⋅As- 2Ct - a⋅At - 0.25 ≤ c ≤ Ct + a⋅At + 0.25 (2Cs + 2a⋅As- 2Ct - a⋅At - 0.25 = -3.09; Ct + a⋅At + 0.25 = 4.51; spherical surface therefore a = 0; ¶0202)
As = (24.9 + 1.96S)(N-1)^2 (As = 4.59; ¶0202)
At = (9.7 + 0.65S)(N-1)^2 (At = 2.03; ¶0202).
Regarding claim 13, Guillot discloses the spectacle lens according to claim 12, as set forth above. Guillot further discloses the value c in the region H (c = 3.52D) satisfies the following formula:
Cs + a⋅As - 0.25 ≤ c ≤ Ct + a⋅At + 0.25 (Cs + a⋅As - 0.25 = 2.59; Ct + a⋅At + 0.25 = 4.51; ¶0202).
Regarding claim 14, Guillot discloses the spectacle lens according to claim 12, as set forth above. Guillot further discloses the value c in the region H satisfies the following formula:
|(Cs + a⋅As) - (Ct + a⋅At)| ≤ 0.25 (inherent given the structure and function, see 112(b) rejection above).
Regarding claim 15, Guillot discloses the spectacle lens according to claim 10, as set forth above. Guillot further discloses wherein in a planar view, the central clear region (16) is sized to encompass a circle having a diameter of 4 mm centered on an eye point, and is sized to be encompassed within a circle having a diameter of 16 mm centered on the eye point (¶0088).
Regarding claim 16, Guillot discloses the spectacle lens according to claim 15, as set forth above. Guillot further discloses an area of the on-retinal non-convergence region in a planar view in the functional region is 20% or more and 80% or less of an entire functional region (¶0173).
Regarding claim 17, Guillot discloses the spectacle lens according to claim 16, as set forth above. Guillot further discloses the value c in the region H (c = 3.52D) satisfies the following formula:
Cs - 0.25 ≤ c ≤ Ct + 0.25 (Cs - 0.25 = 2.59; Ct + 0.25 = 4.51; ¶0202)
Cs + a⋅As - 0.25 ≤ c ≤ Ct + a⋅At + 0.25 (Cs + a⋅As - 0.25 = 2.59; Ct + a⋅At + 0.25 = 4.51; ¶0202)
|(Cs + a⋅As) - (Ct + a⋅At)| ≤ 0.25 (inherent given the structure and function, see 112(b) rejection above)
As = (24.9 + 1.96S)(N-1)^2 (As = 4.59; ¶0202)
At = (9.7 + 0.65S)(N-1)^2 (At = 2.03; ¶0202).
Regarding claim 18, Guillot discloses a pair of eyeglasses including the spectacle lens according to claim 10 and a frame (¶0068).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 10-18 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 10-18 of copending Application No. 18/862,040 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 October 6th, 2026
/George G. King/Primary Examiner, Art Unit 2872
