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 .
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.
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Claims 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,210,228. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following.
Current application 18/984,164
Patent No. 12,210,228
1. A lens element intended to be worn in front of an eye of a wearer comprising: a prescription portion configured to provide to the wearer a first optical function based on the prescription of the wearer for correcting an abnormal refraction of said eye of the wearer; and a plurality of optical elements, wherein each optical element of the plurality of optical elements has a simultaneously bifocal optical function that provides simultaneously: a second optical function, and a third optical function of not focusing an image on a retina of the eye in standard wearing conditions so as to slow down a progression of the abnormal refraction of the eye.
1. A lens element adapted for a wearer and intended to be worn in front of an eye of said wearer comprising: a prescription portion configured to provide to the wearer in standard wearing conditions a first optical function based on the prescription of the wearer for correcting an abnormal refraction of said eye of the wearer, and a plurality of contiguous diffractive optical elements, wherein each contiguous diffractive optical element has a simultaneously bifocal optical function that provides simultaneously: a second optical function in standard wearing conditions, and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions to slow down the progression of the abnormal refraction of the eye.
2. The lens element according to claim 1, wherein an optical power of the second optical function is smaller than or equal to 0.25 diopters.
2. The lens element according to claim 1, wherein an optical power of the second optical function in standard wearing conditions is smaller than or equal to 0.25 diopters.
3. The lens element according to claim 1, wherein the lens element is an edged lens element intended to be mounted in a spectacle frame and the whole surface of at least one face of the lens element is covered with the plurality of optical elements.
3. The lens element according to claim 1, wherein the lens element is an edged lens element intended to be mounted in a spectacle frame and the whole surface of at least one face of the lens element is covered with the plurality of contiguous optical elements.
4. The lens element according to claim 3, wherein at least part of the optical elements are arranged along a plurality of concentric rings.
4. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are arranged along a plurality of concentric rings.
5. The lens element according to claim 1, wherein at least part of the optical elements are located on the front surface of the lens element.
5. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are located on the front surface of the lens element.
6. The lens element according to claim 1, wherein at least part of the optical elements are made of a birefringent material.
6. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are made of a birefringent material.
8. The lens element according to claim 1, wherein at least part of the optical elements are π-Fresnel lenses.
7. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are π-Fresnel lenses.
9. The lens element according to claim 7, wherein at least part of the diffractive lenses comprise a metasurface structure.
8. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements comprises a metasurface structure.
10. The lens element according to claim 1, wherein at least part of optical elements are multifocal binary components.
9. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are multifocal binary components.
11. The lens element according to claim 1, wherein at least part of the optical elements are pixelated lenses.
10. The lens element according to claim 1, wherein at least part of the contiguous diffractive optical elements are pixelated lenses.
12. The lens element according to claim 1, wherein a difference between an optical power of the second optical function and an optical power of the third optical function is greater than or equal to 0.5 D.
11. The lens element according to claim 1, wherein a difference between an optical power of the second optical function and an optical power of the third optical function is greater than or equal to 0.5D.
13. The lens element according to claim 1, wherein a difference between an optical power of the first optical function and an optical power of the third optical function is greater than or equal to 0.5 D.
12. The lens element according to claim 1, wherein the difference between the optical power of the first optical function and the optical power of the third optical function is greater than or equal to 0.5D.
14. A method for providing a lens element intended to be worn in front of an eye of a wearer, comprising: providing a lens member configured to provide to the wearer a first refractive power based on a prescription for the wearer for correcting an abnormal refraction of said eye of the wearer; providing an optical patch comprising a plurality of optical elements; forming a lens element by placing the optical patch on one of the front or back surface of the lens member, wherein each optical element of the plurality of optical elements has a simultaneously bifocal optical function that provides simultaneously when said patch is placed on one of the surfaces of the lens member: a second optical function, and a third optical function of not focusing an image on a retina of the eye in standard wearing conditions so as to slow down a progression of the abnormal refraction of the eye.
13. A method for providing a lens element intended to be worn in front of an eye of a wearer including a prescription portion configured to provide to the wearer in standard wearing conditions a first optical function based on the prescription of the wearer for correcting an abnormal refraction of said eye of the wearer, and including a plurality of contiguous diffractive optical elements, wherein each contiguous diffractive optical element has a simultaneously bifocal optical function that provides simultaneously: a second optical function in standard wearing conditions, and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye, wherein the method comprises: providing the lens element configured to provide to the wearer in standard wearing conditions a first refractive power based on the prescription for the wearer for correcting an abnormal refraction of said eye of the wearer, providing an optical patch comprising the plurality of contiguous diffractive optical elements, and forming a lens element by placing the optical patch on one of the front or back surface of the lens element, wherein each contiguous diffractive optical element has a simultaneously bifocal optical function that provides simultaneously when said patch is placed on one of the surfaces of the lens element: a second optical function in standard wearing conditions, and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions to slow down the progression of the abnormal refraction of the eye.
15. A method for providing a lens element intended to be worn in front of an eye of a wearer, comprising: casting the lens element and during the casting providing an optical patch having a plurality of optical elements, each optical element of the plurality of optical elements having a simultaneously bifocal optical function that provides simultaneously when said lens element is worn before said eye of the wearer: a second optical function, and a third optical function of not focusing an image on a retina of the eye in standard wearing conditions so as to slow down a progression of an abnormal refraction of the eye.
14. A method for providing a lens element intended to be worn in front of an eye of a wearer including a prescription portion configured to provide to the wearer in standard wearing conditions a first optical function based on the prescription of the wearer for correcting an abnormal refraction of said eye of the wearer, and a plurality of contiguous diffractive optical elements, wherein each contiguous diffractive optical element has a simultaneously bifocal optical function that provides simultaneously: a second optical function in standard wearing conditions, and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye, wherein the method comprises: casting the lens element and during the casting step providing an optical patch comprising the plurality of diffractive contiguous optical elements each contiguous diffractive optical element having a simultaneously bifocal optical function that provides simultaneously when said lens element is worn before said eye of the wearer: a second optical function in standard wearing conditions, and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions to slow down the progression of the abnormal refraction of the eye.
As shown in the table above, a nonstatutory obviousness double patenting rejection is appropriate because the claims of the present application are not patentably distinct from the claims of the parent patent. The present claims recite substantially the same lens element, optical functions, and myopia control features, while merely omitting or broadly reciting limitation such as “contiguous” and “diffractive.” Accordingly, the present claims are anticipated by the patent claims.
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.
Claim(s) 1, 3-5, 8 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO et al. US 2017/0131567 in view of TSE et al. US 2012/0062836.
Regarding claim 1, TO teaches a lens element intended to be worn in front of an eye of a wearer (para [0001]: teaches spectacle lens see also Figs. 5 and 6: spectacle 10 worn in front of an eye) comprising:
a prescription portion (Fig. 5: portion 1) configured to provide to the wearer a first optical function based on the prescription of the wearer for correcting an abnormal refraction of said eye of the wearer (para 50: “Such a spectacle lens 10 has a first refraction area 1 having a first refractive power based on a prescription for correcting myopia”), and
a plurality of optical elements (Fig. 6: portion 2), wherein each optical element has an optical function that provides:
a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (para 51 and Fig. 6 and 7: “as shown in FIG. 6, the image is focused on a point in front of the retina in the second refraction areas 2.”).
TO fails to teach: a plurality of optical element that has a simultaneously bifocal optical function and that provides a second optical function in standard wearing conditions simultaneously with the third optical function.
In the same field of endeavor, TSE teaches a lens element intended to be worn in front of an eye of a wearer (para [0071]: teaches the apparatus for the optical element could be spectacle lens, contact lens), comprising: a plurality of optical elements (Fig.1A: 131-136 and 122-127 ), wherein each optical element has a simultaneously bifocal optical function (para [0071]: “A concentric bifocal lens splits incoming light rays and focuses them into two images”) that provides: simultaneously:
a second optical function in standard wearing conditions and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (see Fig. 3A and para [0082]: “a myopic eye fitted with a concentric multi-zone multi-defocusing lens 30 has a partial sinusoidal power profile. The multiple non homogeneous defocused images 34 produced by the present multi-defocusing lens 30 are non-homogeneous and are dim compared to the focused image 33 on the retina 29”). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO by utilizing a plurality of optical element that provides a simultaneously of a second and third optical function as taught by TSE in order to inhibit myopic eye growth as describe in para 0007 of TSE.
Regarding claim 3, the combination of TO and TSE teaches the lens element according to claim 1, and TO further teaches wherein the lens element is an edged lens element intended to be mounted in a spectacle frame and the whole surface of at least one face of the lens element is covered with the plurality of optical elements (see para 0001 and Fig. 7).
Regarding claim 4, the combination of TO and TSE teaches the lens element according to claim 3, and TSE further teaches wherein at least part of the optical elements are arranged along a plurality of concentric rings (at least in Fig. 1A and multi-concentric rings are depicting).
Regarding claim 5, the combination of TO and TSE teaches the lens element according to claim 1, and TO further teaches wherein at least part of the optical elements are located on the front surface of the lens element (see Figs. 3 and 4).
Regarding claim 8, the combination of TO and TSE teaches the lens element according to claim 1, and TO further teaches wherein at least part of the optical elements are π-Fresnel lenses (see para: 0035, 0038 and 0039).
Regarding claim 12, the combination of TO and TSE teaches the lens element according to claim 1, and TSE further teaches wherein the difference between the optical power of the second optical function and the optical power of the third optical function is greater than or equal to 0.5 D (see para 0021).
Regarding claim 13, the combination of TO teaches the lens element according to claim 1, and TO further teaches wherein the difference between the optical power of the first optical function and the optical power of the third optical function is greater than or equal to 0.5 D (para 0051: “the refractive power of the second refraction areas 2 is larger than the first refractive power of the first refraction area by 2.00 D to 5.00 D.”).
Regarding claim 14, TO teaches a method for providing a lens element intended to be worn in front of an eye of a wearer (see abstract and para 0001) according to claim 1, wherein the method comprises the steps of:
providing a lens member configured to provide to the wearer in standard wearing conditions a first refractive power based on the prescription for the wearer for correcting an abnormal refraction of said eye of the wearer (para 50: “Such a spectacle lens 10 has a first refraction area 1 having a first refractive power based on a prescription for correcting myopia”),
providing an optical patch comprising a plurality of optical elements (Fig. 6: portion 2),
forming a lens element by placing the optical patch on one of the front or back surface of the lens member (see Figs. 3 and 4: portion 2 is on the front surface of lens element 1), and
a third optical function of not focusing an image on the retina of the eye in standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (para 51 and Fig. 6 and 7: “as shown in FIG. 6, the image is focused on a point in front of the retina in the second refraction areas 2.”).
TO fails to teach: wherein each optical element has a simultaneously bifocal optical function that provides simultaneously when said patch is placed on one of the surfaces of the lens member: a second optical function in standard wearing conditions
In the same field of endeavor, TSE teaches a lens element intended to be worn in front of an eye of a wearer (para [0071]: teaches the apparatus for the optical element could be spectacle lens, contact lens), comprising: a plurality of optical elements (Fig.1A: 131-136 and 122-127 ), wherein each optical element has a simultaneously bifocal optical function (para [0071]: “A concentric bifocal lens splits incoming light rays and focuses them into two images”) that provides: simultaneously:
a second optical function in standard wearing conditions and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (see Fig. 3A and para [0082]: “a myopic eye fitted with a concentric multi-zone multi-defocusing lens 30 has a partial sinusoidal power profile. The multiple non homogeneous defocused images 34 produced by the present multi-defocusing lens 30 are non-homogeneous and are dim compared to the focused image 33 on the retina 29”). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO by utilizing a plurality of optical element that provides a simultaneously of a second and third optical function as taught by TSE in order to inhibit myopic eye growth as describe in para 0007 of TSE.
Regarding claim 15, TO teaches a method for providing a lens element intended to be worn in front of an eye of a wearer (see abstract and para 0001), comprising: casting the lens element and during the casting step providing an optical patch comprising a plurality of optical elements (Fig. 6: portion 2) and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (para 51 and Fig. 6 and 7: “as shown in FIG. 6, the image is focused on a point in front of the retina in the second refraction areas 2.”).
TO fails to teach: each optical element of the plurality of optical elements having a simultaneously bifocal optical function that provides simultaneously when said lens element is worn before said eye of the wearer: a second optical function.
In the same field of endeavor, TSE teaches a lens element intended to be worn in front of an eye of a wearer (para [0071]: teaches the apparatus for the optical element could be spectacle lens, contact lens), comprising: a plurality of optical elements (Fig.1A: 131-136 and 122-127 ), wherein each optical element has a simultaneously bifocal optical function (para [0071]: “A concentric bifocal lens splits incoming light rays and focuses them into two images”) that provides: simultaneously:
a second optical function in standard wearing conditions and a third optical function of not focusing an image on the retina of the eye in said standard wearing conditions so as to slow down the progression of the abnormal refraction of the eye (see Fig. 3A and para [0082]: “a myopic eye fitted with a concentric multi-zone multi-defocusing lens 30 has a partial sinusoidal power profile. The multiple non homogeneous defocused images 34 produced by the present multi-defocusing lens 30 are non-homogeneous and are dim compared to the focused image 33 on the retina 29”). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO by utilizing a plurality of optical element that provides a simultaneously of a second and third optical function as taught by TSE in order to inhibit myopic eye growth as describe in para 0007 of TSE.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Back et al. US 2012/0176582.
Regarding claim 2, the combination of TO teaches the lens element according to claim 1, and but the combination of TO and TSE fails to specify wherein the optical power of the second optical function in standard wearing conditions is smaller than or equal to 0.25 diopters.
TSE teaches the correcting zone and defocusing zone having a refractive power (see para 0021), thus it would have been obvious to one of ordinary skill in the art to optimize the optical power of the lens element of TO and TSE to inhibit myopic eye growth. It is also noted that the specification fails to provide teachings about the criticality of having the optical power of the second optical function in standard wearing conditions is smaller than or equal to 0.25 diopters. Differences in optical power will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such optical power are critical. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the workable ranges by routine experimentation”. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
In any event, in the same field of endeavor, Back teaches: lens element for correcting an abnormal refraction of an eye (see para 0005), wherein the optical power of the second optical function in standard wearing conditions is smaller than or equal to 0.25 diopters (see para [0029]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO and TSE by utilizing the claimed optical power as taught by Back in order to minimize in ocular accommodative error.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Meyers et al. US 2009/0268154.
Regarding claim 6, the combination of TO and TSE teaches the lens element according to claim 1, but fails to teach wherein at least part of the optical elements are made of a birefringent material.
In the same field of endeavor, Meyers teaches a vision correcting optical element such as spectacle or contact lens made of birefringent material (see paragraphs 0014, 0061: a system of myopia control comprises a vision correcting device, such as a spectacle or contact lens, having a birefringent material.”). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the optical element of TO and TSE by utilizing the claimed birefringent material as taught by Meyers in order to simultaneously correcting visual acuity while minimizing the signal for axial growth and hence myopic progression.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Ando US 2018/0275428.
Regarding claim 7, the combination of TO and TSE teaches the lens element according to claim 1, but fails to teach wherein at least part of the optical elements are diffractive lenses.
TO, TSE and Ando are related with respect to multi-focal lens.
Ando teaches a diffractive multi-focal lens (see para [0004]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO and TSE by utilizing the claimed diffractive lenses as taught by Ando because diffractive lenses are advantageous of being able to set a high lens power while inhibiting an increase in lens thickness as describe in para 0004 of Ando.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Capasso et al. US 2019/0154877.
Regarding claim 9, the combination of TO teaches the lens element according to claim 7, but fails to teach wherein at least part of the diffractive lenses comprises a metasurface structure.
However, Capasso teaches that diffractive lenses that comprise a metasurface are a well know in providing focusing and providing high-resolution imaging (see para [0005-0006]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO and TSE by utilizing the claimed diffractive lenses comprise metasurface as taught by Capasso in order to enhance the focusing of the lens element thus provide high quality of images.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Liao et al. US 2019/0004334.
Regarding claim 10, the combination of TO and TSE teaches the lens element according to claim 1, but fails to teach wherein at least part of the optical elements are multifocal binary components.
However, Liao teaches a lens element with multifocal binary components (para [0008]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO and TSE by utilizing the claimed multifocal binary components as taught by Liao in order to effectively correct chromatic aberration and improve image quality.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over TO and TSE as applied to claim 1 above, and further in view of Bonnin et al. US 2015/0241717.
Regarding claim 11, the combination of TO teaches the lens element according to claim 1, but fails to teach wherein at least part of the optical elements are pixelated lenses.
However, Bonnin teach that pixelated lenses are well-known in correction of visual defects (see para [0173]). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lens element of TO and TSE by utilizing the claimed pixilated lens as taught by Bonnin in order to enhance correction of visual defects.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US-20200073147: is pertinent because it teaches a prescription spectacle lens incorporating a plurality of microlenslets that produces both in focus and hyperopically defocused retinal light to slow myopia progression.
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/EPHREM Z MEBRAHTU/Primary Examiner, Art Unit 2872
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