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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/25/2025 was considered by the examiner.
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.
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-8 of U.S. Patent No. 11,724,471. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Instant Application (18/897,041)
U.S. Patent No. 11,724,471
1. A method for manufacturing a photoabsorbing contact lens, the method comprising:
(a) providing a mold assembly comprised of a base curve and a front curve, the base curve and the front curve defining and enclosing a cavity therebetween, the cavity containing a reactive mixture, wherein the reactive mixture comprises at least one polymerizable monomer, a photoinitiator which absorbs at an activating wavelength, and a photoabsorbing compound which displays absorption at the activating wavelength; and (b) curing the reactive mixture to form the photoabsorbing contact lens by exposing the reactive mixture to radiation that includes the activating wavelength, wherein the radiation is directed at both the base curve and the front curve of the mold assembly, and wherein the
radiation's radiant energy at the base curve is greater than the radiation's radiant energy at the front curve.
2. The method of claim 1 wherein the radiant energy is provided by a first light source that is proximate to the base curve of the mold assembly and a second light source that is proximate to the front curve of the mold assembly.
3. The method of claim 2 wherein the first light source is a light emitting diode and the second light source is a light emitting diode.
4. The method of claim 1 wherein the photoabsorbing compound is a static photoabsorbing compound.
5. The method of claim 1 wherein the photoabsorbing compound is a high energy visible light absorber.
6. The method of claim 1 wherein the photoabsorbing compound is a photochromic compound.
7. The method of claim 1 wherein the base curve and front curves of the mold assembly are comprised of
polyethylene, polypropylene, polystyrene, hydrogenated styrene butadiene block copolymers, cyclic olefin polymers, and combinations thereof.
1. A method for manufacturing a photoabsorbing contact lens, the method comprising:
(a) providing a mold assembly comprised of a base curve and a front curve, the base curve and the front curve defining and enclosing a cavity therebetween, the cavity containing a reactive mixture, wherein the reactive mixture comprises at least one polymerizable monomer, a photoinitiator which absorbs at an activating wavelength, and a photoabsorbing compound which displays absorption at the activating wavelength; and (b) curing the reactive mixture to form the photoabsorbing contact lens by exposing the reactive mixture to radiation that includes the activating wavelength, wherein the radiation is directed at both the base curve and the front curve of the mold assembly, and wherein the
radiation has an intensity at the base curve that is less than 350 percent greater than the radiation's intensity at the front curve.
3. The method of claim 1 wherein the radiation is provided by a first light source that is proximate to the base curve of the mold assembly and a second light source that is proximate to the front curve of the mold assembly.
4. The method of claim 3 wherein the first light source is a light emitting diode and the second light source is a light emitting diode.
5. The method of claim 1 wherein the photoabsorbing compound is a static photoabsorbing compound.
6. The method of claim 1 wherein the photoabsorbing compound is a high energy visible light absorber.
7. The method of claim 1 wherein the photoabsorbing compound is a photochromic compound.
8. The method of claim 1 wherein the base curve and front curve of the mold assembly are comprised of at least one or polyethylene, polypropylene, polystyrene, hydrogenated styrene butadiene block copolymers, cyclic olefin polymers, or combinations thereof.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,128,641. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Instant Application (18/897,041)
U.S. Patent No. 12,128,641
1. A method for manufacturing a photoabsorbing contact lens, the method comprising:
(a) providing a mold assembly comprised of a base curve and a front curve, the base curve and the front curve defining and enclosing a cavity therebetween, the cavity containing a reactive mixture, wherein the reactive mixture comprises at least one polymerizable monomer, a photoinitiator which absorbs at an activating wavelength, and a photoabsorbing compound which displays absorption at the activating wavelength; and
(b) curing the reactive mixture to form the photoabsorbing contact lens by exposing the reactive mixture to radiation that includes the activating wavelength, wherein the radiation is directed at both the base curve and the front curve of the mold assembly, and wherein the radiation's radiant energy at the base curve is greater than the radiation's radiant energy at the front curve.
2. The method of claim 1 wherein the radiant energy is provided by a first light source that is proximate to the base curve of the mold assembly and a second light source that is proximate to the front curve of the mold assembly.
3. The method of claim 2 wherein the first light source is a light emitting diode and the second light source is a light emitting diode.
4. The method of claim 1 wherein the photoabsorbing compound is a static photoabsorbing compound.
5. The method of claim 1 wherein the photoabsorbing compound is a high energy visible light absorber.
6. The method of claim 1 wherein the photoabsorbing compound is a photochromic compound.
7. The method of claim 1 wherein the base curve and front curves of the mold assembly are comprised of polyethylene, polypropylene, polystyrene, hydrogenated styrene butadiene block copolymers, cyclic olefin polymers, and combinations thereof.
8. The method of claim 1 wherein the radiant energy is controlled by the radiation's intensity, the radiation's wavelength, or combinations thereof.
9. The method of claim 8 wherein the radiant energy is controlled by the radiation's intensity.
10. The method of claim 9 wherein the intensity at the base curve is greater than the intensity at the front curve.
11. The method of claim 1 wherein the intensity at the base curve is less than 350 percent greater than the intensity at the front curve.
12. The method of claim 8 wherein the radiant energy is controlled by the radiation's wavelength.
13. The method of claim 12 wherein the wavelength at the base curve is shorter than the wavelength at the front curve.
14. The method of claim 1 wherein the wavelength at the base curve is at least about 10 nanometers shorter than the wavelength at the front curve.
15. A photoabsorbing contact lens prepared by the method of claim 1.
16. The photoabsorbing contact lens of claim 15, the lens having
a root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture that has been reduced as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
17. The lens of claim 16 wherein
the root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture has been reduced by at least 3% as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
18. The lens of claim 16 wherein the root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture has been reduced by at least 0.0020 microns as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
1. A method for manufacturing a photoabsorbing contact lens, the method comprising:
(a) providing a mold assembly comprised of a base curve and a front curve, the base curve and the front curve defining and enclosing a cavity therebetween, the cavity containing a reactive mixture, wherein the reactive mixture comprises at least one polymerizable monomer, a photoinitiator which absorbs at an activating wavelength, and a photoabsorbing compound which displays absorption at the activating wavelength; and
(b) curing the reactive mixture to form the photoabsorbing contact lens by exposing the reactive mixture to radiation that includes the activating wavelength, wherein the radiation is directed at both the base curve and the front curve of the mold assembly, and wherein the radiation's radiant energy at the base curve is greater than the radiation's radiant energy at the front curve,
wherein the photoabsorbing contact lens has a root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture that has been reduced as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
2. The method of claim 1 wherein the radiant energy is provided by a first light source that is proximate to the base curve of the mold assembly and a second light source that is proximate to the front curve of the mold assembly.
3. The method of claim 2 wherein the first light source is a light emitting diode and the second light source is a light emitting diode.
4. The method of claim 1 wherein the photoabsorbing compound is a static photoabsorbing compound.
5. The method of claim 1 wherein the photoabsorbing compound is a high energy visible light absorber.
6. The method of claim 1 wherein the photoabsorbing compound is a photochromic compound.
7. The method of claim 1 wherein the base curve and front curves of the mold assembly are comprised of polyethylene, polypropylene, polystyrene, hydrogenated styrene butadiene block copolymers, cyclic olefin polymers, and combinations thereof.
8. The method of claim 1 wherein the radiant energy is controlled by the radiation's intensity, the radiation's wavelength, or combinations thereof.
9. The method of claim 8 wherein the radiant energy is controlled by the radiation's intensity.
10. The method of claim 9 wherein the intensity at the base curve is greater than the intensity at the front curve.
11. The method of claim 1 wherein the intensity at the base curve is less than 350 percent greater than the intensity at the front curve.
12. The method of claim 8 wherein the radiant energy is controlled by the radiation's wavelength.
13. The method of claim 12 wherein the wavelength at the base curve is shorter than the wavelength at the front curve.
14. The method of claim 1 wherein the wavelength at the base curve is at least about 10 nanometers shorter than the wavelength at the front curve.
15. A photoabsorbing contact lens prepared by the method of claim 1.
16. The lens of claim 15 wherein
the root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture has been reduced by at least 3% as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
16. The lens of claim 15 wherein
the root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture has been reduced by at least 3% as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
17. The lens of claim 15 wherein the root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture has been reduced by at least 0.0020 microns as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
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 1, 2, 6-12, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Alvarez-Carrigan et al. (US 2011/0248415, of record).
Regarding Claim 1, Alvarez-Carrigan discloses
a method for manufacturing a photoabsorbing contact lens (abstract, paragraphs 0022, 0026, i.e. including a photochromic dye), the method comprising:
providing a mold assembly comprised of a base curve and a front curve,
the base curve and the front curve defining and enclosing a cavity therebetween (fig 2B); the cavity containing a reactive mixture (abstract, paragraphs 0040-0041); wherein the reactive mixture comprises at least one polymerizable monomer (paragraph 0034); a photoinitiator which absorbs at an activating wavelength (abstract); and a photoabsorbing compound which displays absorption at the activating wavelength (abstract, paragraphs 0022, 0026);
curing the reactive mixture to form the photoabsorbing contact lens by exposing the reactive mixture to radiation that includes the activating wavelength (paragraphs 0033-0034, 0050- 0052); wherein the radiation directed at both the base curve and the front curve of the mold assembly (fig 6, paragraphs 0050-0052); and wherein the radiation's radiant energy at the base curve is greater than the radiation's radiant energy at the front curve
(paragraph 0052 disclosing that while one embodiment may have equal intensities from both light sources, another embodiment can have the light source intensity of the front curve side at 1 mW/cm2 with the light source intensity at the base curve side of 2 mW/cm2 i.e. “radiation intensity at the base curve side being greater than the radiation intensity at the front curve side’).
Regarding Claim 2, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the radiant energy is provided by a first light source that is proximate to the base curve of the mold assembly and a second light source that is proximate to the front curve of the mold assembly (figure 6, paragraph 0050).
Regarding Claim 6, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the photoabsorbing compound as a photochromic compound (abstract, paragraphs 0022, 0026).
Regarding Claim 7, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the base curve and front curves of the mold assembly are comprised of polyethylene, polypropylene, polystyrene, hydrogenated styrene butadiene block copolymers, cyclic olefin polymers, and combinations thereof (paragraph 0034 such as the disclosed polypropylene).
Regarding Claim 8, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the radiant energy is controlled by the radiation's intensity (paragraph 0052, radiation intensity is increased), the radiation's wavelength (paragraph 0006, radiation (i.e., radiant energy) is absorbed at specific wavelengths) or combinations thereof.
Regarding Claim 9, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the radiant energy is controlled by the radiation's intensity (paragraph 0052, radiation intensity is increased).
Regarding Claim 10, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the intensity at the base curve is greater than the intensity at the front curve (paragraph 0052 disclosing a 100% difference in intensity).
Regarding Claim 11, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the intensity at the base curve is less than 350 percent greater than the intensity at the front curve (paragraph 0052 disclosing a 100% difference in intensity).
Regarding Claim 12, Alvarez-Carrigan discloses as is set forth above and further discloses wherein the radiant energy is controlled by the radiation's wavelength (paragraph 0006, radiation (i.e., radiant energy) is absorbed at specific wavelengths).
Regarding Claim 15, Alvarez-Carrigan discloses as is set forth above and further discloses wherein a photoabsorbing contact lens prepared by the method of claim 1 (Paragraphs 0006 and 0022).
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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Alvarez-Carrigan et al. (US 2011/0248415, of record).
Regarding Claim 3, Alvarez-Carrigan discloses as is set forth above but the main embodiment does not further disclose wherein the first light source is a light emitting diode and the second light source is a light emitting diode.
However, Alvarez-Carrigan (other embodiments) teaches the first light source is a light emitting diode and the second light source is a light emitting diode (Paragraph 0043, lines 19-24), for the purpose of not needing to use filters.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the method of Alvarez-Carrigan (main embodiment) with the first light source is a light emitting diode and the second light source is a light emitting diode of Alvarez-Carrigan (other embodiments), for the purpose of not needing to use filters.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Alvarez-Carrigan et al. (US 2011/0248415, of record) in view of Duis et al. (US 2011/0249234, of record).
Regarding Claim 4, Alvarez-Carrigan discloses as is set forth above but does not specifically disclose wherein the photoabsorbing compound is a static photoabsorbing compound.
However, Duis, in the same field of endeavor, teaches wherein the photoabsorbing compound is a static photoabsorbing compound (Paragraphs 0021-0024, dyes which block UV light), for the purpose of minimizing damage from sunlight to the eyes.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the method of Alvarez-Carrigan (main embodiment) with the photoabsorbing compound is a static photoabsorbing compound, of Duis, for the purpose of minimizing damage from sunlight to the eyes.
Regarding Claim 5, Alvarez-Carrigan discloses as is set forth above but does not specifically disclose wherein the photoabsorbing compound is a high energy visible light absorber.
However, Duis, in the same field of endeavor, teaches wherein the photoabsorbing compound is a high energy visible light absorber (Paragraphs 0021-0024, dyes which block UV light), for the purpose of minimizing damage from sunlight to the eyes.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the method of Alvarez-Carrigan (main embodiment) with the wherein the photoabsorbing compound is a high energy visible light absorber, of Duis, for the purpose of minimizing damage from sunlight to the eyes.
Allowable Subject Matter
Claims 13, 14, and 16-18 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 claim 13, none of the prior art either alone or in combination disclose or teach a method including, as the distinguishing feature(s) in combination with the other limitations wherein the wavelength at the base curve is shorter than the wavelength at the front curve.
Specifically, with respect to claim 14, none of the prior art either alone or in combination disclose or teach a method including, as the distinguishing feature(s) in combination with the other limitations wherein the wavelength at the base curve is at least about 10 nanometers shorter than the wavelength at the front curve.
Specifically, with respect to claim 16, none of the prior art either alone or in combination disclose or teach a method including, as the distinguishing feature(s) in combination with the other limitations wherein the lens having a root mean squared optical path wavefront deviation from lens design target with spherical and cylindrical power as well as coma removed as measured using a 6.5 millimeter aperture that has been reduced as compared to an otherwise identical lens made under conditions of equal radiant energy at the base and front curves.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lindacher et al. (US 2006/0192310), Widman et al. (US 2010/0047380), Widman et al. (US 2013/0075577), Widman et al. (US 2012/0187590), and Widman et al. (US 2014/0049745) are cited to show similar methods of forming lenses.
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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