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 .
The first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ) apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date on or after March 16, 2013 wherein the effective filing date is:
(i) if subparagraph (ii) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(ii) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under 35 U.S.C. 119, 365(a), or 365(b) or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, or 365(c); or
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), to any patent or application that contains or contained at any time a claim as defined in paragraph (A), above.
Status of the Claims
Claim(s) 21-38 is/are pending. Claim(s) 25, 30, and 34-37 is/are withdrawn. Claim(s) 1-20 is/are canceled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Information Disclosure Statement
The information disclosure statement filed 1/22/2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the lined through citations (FOR documents #s 1-4) were not provided with an English equivalent. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Response to Arguments
Applicant’s arguments, filed 12/16/2025, with respect to the 35 USC 112(a) rejections have been fully considered and are persuasive. The 35 USC 112(a) rejections of claims 21-24, 26-29, 31-33, and 38 has/have been withdrawn due to the Applicant’s amendments.
Applicant’s arguments with respect to claims 21-24, 26-29, 31-33, and 38 have been considered but are moot in view of the new grounds of rejection. The Examiner notes the change in prior art was necessitated by the Applicants amendments.
Applicant argues the previously cited prior art to Portney does not teach the amended claim language. Hong, previously used only for IOL diameter, is re-used herein to teach the amended language. Therefore, Applicant’s arguments are moot.
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) 21, 24, 28-29, and 31-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong, et al (Hong) (US 2010/0016961 A1).
Regarding Claim 21, Hong teaches an ophthalmic lens (e.g. abstract), comprising:
an optic (e.g. [0097], lens) comprising an optical axis (this axis is inherently present) and an optical profile extending radially from the optical axis (there is inherently some optical profile present), the optical profile comprising:
a first zone (e.g. [0098], radially inner zone and transition zone) having a first aspheric profile (e.g. [0086]),
a second zone (e.g. [0098], radially outer zone) having a second aspheric profile (e.g. [0086]) different from the first aspheric profile (e.g. [0086]; as broadly claimed, there is no particular difference; therefore, any difference meets the claim requirement; here, the location of the profiles is different), and
a phase shift feature extending from a first radial position to a second radial position (e.g. [0098], transition zone);
wherein the phase shift feature is configured to produce a controlled varying amount of phase shift of light waves passing through the phase shift feature between the first radial position and the second radial position (e.g. [0096]) to focus the light waves to a single expanded far focal region provided by the ophthalmic lens (e.g. [0097], Figure 4A).
Regarding Claim 24, the phase shift feature comprises a ridge projecting anteriorly from an anterior surface of the optic (e.g. [0100], there is a slope in this region, thus a shape that projects from the lens surface; the side of the projection is considered anterior).
Regarding Claim 28, the phase shift feature is positioned within the first zone (discussed supra with claim 21).
Regarding Claim 29, the ophthalmic lens comprises an intraocular lens (e.g. [0064]).
Regarding Claim 31, Hong teaches an ophthalmic lens (discussed supra for claim 21), comprising:
an optic (discussed supra for claim 21) comprising a surface (the optic inherently has at least two surfaces) and an optical axis (discussed supra for claim 21), the surface comprising:
a first zone extending from the optical axis to a first radial boundary (discussed supra for claim 21), the first zone having a first base curvature (discussed supra for claim 21);
a second zone extending from the first radial boundary towards an edge of the optic (discussed supra for claim 21), the second zone having a second base curvature (discussed supra for claim 21); and
a phase shift feature within the first zone (discussed supra for claim 21) configured to produce a controlled varying amount of phase shift of light waves passing through the phase shift feature to focus the light waves to a single expanded far focal region provided by the ophthalmic lens (discussed supra for claim 21);
wherein the first base curvature of the first zone is configured to provide increased range of focus in a myopic direction (e.g. Figures 4A-C, the largest peak is at a negative value, which is a myopic correction).
Regarding Claim 32, the first base curvature comprises a first aspheric profile (discussed supra for claim 21), and the second base curvature comprises a second aspheric profile (discussed supra for claim 21).
Regarding Claim 33, the first base curvature and the second base curvature have different aspheric surface profiles (discussed supra for claim 21).
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 22-23, 26-27, and 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hong, et al (Hong) (US 2010/0016961 A1) as discussed supra, alone.
Regarding Claim 22, Hong teaches the phase shift feature comprises an annular ring centered about the optical axis, the annular ring having an outer diameter between 1.6 mm and 2.4 mm (e.g. [0098], about 2.6 mm).
Thus, Hong discloses the invention substantially as claimed but fails to teach the annular ring having an outer diameter between 1.6 mm and 2.4 mm.
Hong is concerned with the same field of endeavor as the claimed invention, namely IOLs having multiple regions, including a phase shift region.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hong such that the annular ring having an outer diameter between 1.6 mm and 2.4 mm a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (MPEP 2144.05(I)).
Regarding Claim 23, the annular ring has a width between 0.1 mm and 1 mm (e.g. [0098], 2.6 mm – 2.2 mm = 0.4 mm in radial width).
Regarding Claim 26, Hong discloses the invention substantially as claimed but fails to teach the phase shift feature comprises:
a first phase shift step; a second phase shift step; and a region of increased thickness extending from the first phase shift step to the second phase shift step.
In another embodiment Hong teaches a lens where the phase shift region a first phase shift step; a second phase shift step; and a region of increased thickness extending from the first phase shift step to the second phase shift step (e.g. annotated Figure 6 below).
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Annotated Figure 6, Hong
Both embodiments of Hong are concerned with the same field of endeavor as the claimed invention, namely IOLs having multiple regions, including a phase shift region.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the embodiment of Figures 4A-C such that the phase shift region has the shape of the embodiment of Figure 6 as taught by Hong as it is a simple substitution of one known element for another to obtain predictable results (MPEP 2143(I)) of a known mechanism for providing the phase shift as taught by Hong. Here, the substituted elements function is known as discussed supra.
Regarding Claim 27, the first phase shift step has a first step height; the second phase shift step has a second step height (e.g. Figure 6); and the second step height is greater than the first step height (the step height between the first step and the second step is the first height and the step height between the second step and the outer region is the second height; thus, the second height is greater than the first height).
Regarding Claim 38, Hong the single expanded far focal region comprises between the following extended depth of focus from a far focal point: the range of diopters is at least -2 to +2 D as shown, with the largest peak ranging from about -0.5 to +0.5 D (e.g. Figures 4A-C).
Hong discloses the invention substantially as claimed but fails to teach the single expanded far focal region comprises between 0.5D and 2.5D of extended depth of focus from a far focal point.
Hong is concerned with the same field of endeavor as the claimed invention, namely IOLs having multiple regions, including a phase shift region.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hong such that the single expanded far focal region comprises between 0.5D and 2.5D of extended depth of focus from a far focal point since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LESLIE A LOPEZ whose telephone number is (571)270-7044. The examiner can normally be reached 8:30 AM - 5:30 PM, MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, THOMAS BARRETT can be reached at (571)272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LESLIE A LOPEZ/Primary Examiner, Art Unit 3774 3/6/2026