8DETAILED 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Election/Restrictions
Applicant's election with traverse of group I, claims 1-7, in the reply filed on 19 May 2026 is acknowledged. The traversal is on the ground(s) that Piotrowski does not explicitly state the geometry shown in Fig 2 relied upon for the lack of unity requirement and that the flat facet identified in Piotrowski is “an incidental, unlabeled, and undescribed surface”. This is not found persuasive because even if not explicitly described in the written specification, the figures of the publication are still considered to be part of the prior art and teach all that they contain as “When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.” (See MPEP 2125(I))
Additionally, the traversal is also on the grounds that the claimed invention solves a specific problem not recognized by Piotrowski and therefore makes a contribution over the prior art. This is not found persuasive because any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected (see MPEP 716.02). The burden is on Applicant to establish that the results are unexpected and significant. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." (see MPEP 716.02(b)). Applicant has the burden of explaining any data they proffer as evidence of non-obviousness (see MPEP 716.02(b)(II)). Moreover, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP 715.02(d)). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d)(II)).
Furthermore, the reasoning or use in the prior art references does not need to be the same or identical to those discovered by Applicant so long as there is some teaching, suggestion, or motivation to make the combination, which the prior art references provide. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-12 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 19 May 2026.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5, L2: a second chamfer located between the edge face and a second of the main faces.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Piotrowski et al. (US20170144391) (of record).
Regarding claim 1, Piotrowski discloses an ophthalmic lens molding shell having two main faces (“optical surface” (5) of “moulding shell” (1) and the opposing face, Fig 2) and an edge face surrounding the main faces (“side edge” (6)), a first of said main faces being adapted to face another molding shell (“moulding shell” (2)) during the molding of the ophthalmic lens (Fig 2), wherein the ophthalmic lens molding shell also comprises:
a flat facet extending along an outer edge of the first main face (surface between "optical surface" (5) and "chamfer" (7)); and
a first chamfer extending along an outer edge of the flat facet, between said flat facet and said edge face (“chamfer” (7)).
Regarding claim 5, Piotrowski discloses all limitations of claim 1 as set forth above. Additionally, Piotrowski discloses that ophthalmic lens molding shell further comprises a second chamfer located between the edge face and a second of the main faces (angled surface between “side edge” (6) and the face of “moulding shell” (1) opposing “optical surface” (5)).
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.
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.
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.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Piotrowski et al. (US20170144391) (of record) as set forth above in the 35 U.S.C. 102(a)(1)/(a)(2) rejection and further in view of Otsuka et al. (US20150226937).
Regarding claim 2, Piotrowski discloses all limitations of claim 1 as set forth above. While Piotrowski is silent as to the dimensions of the flat facet, specifically that it has a width equal to 0.5 mm with a tolerance of plus or minus 0.1, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application to do so given that Otsuka, which is within the lens molding art, teaches that for a molding shell (“side bush” (26)) with a flat facet (left-ward facing surface of “step processing portion” (26b)) teaches that said step processing portion should be positioned 0.2 mm or more outside the molding surface (Fig 8B, [0059], [0080] which would correspond to a width of the “step processing portion” (26b) being 0.2 mm or more, which overlaps with the claimed width of 0.5 mm with a tolerance of plus or minus 0.1) for the benefit of securing a minimum margin required for polishing ([0080]).
While not relied upon for the basis of a rejection as set forth above, examiner notes that, outside of generalized statements on p.2 and 6, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range, either through explanation of how values outside of the claimed range teach away from the claimed invention and/or through experimental data via a sufficient number of tests both inside and outside the claimed range to show its criticality (See MPEP 716.02(d)(II)).
Claim(s) 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Piotrowski et al. (US20170144391) (of record) as set forth above in the 35 U.S.C. 102(a)(1)/(a)(2) rejection and further in view of Robinson (US3915609).
Regarding claim 3, Piotrowski discloses all limitations of claim 1 as set forth above. While Piotrowski is silent as to the dimensions of the first chamfer, specifically that the edge face extending around a central axis, in each cross-section of said first chamfer in a plane passing through said central axis, the first chamfer is tilted relative to the flat facet by an angle of 40o with a tolerance of plus or minus 5o, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application date, given that Robinson, which is within the lens making art, teaches that a chamfer (“edge” (23)) of a lens molding shell (“base” (10)) can be set to be tilted relative to a plane passing through the central axis (Fig 2) and furthermore that the selection of “an appropriate curvature [which would include the angle] as well known to those skilled in the art” (C3 L48-57) and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (See MPEP 2144.05 (II)). One would have been motivated to optimize the claimed angle as it is recognized to be known to those skilled in the art.
While not relied upon for the basis of a rejection as set forth above, examiner notes that, outside of generalized statements on p.2 and 6, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range, either through explanation of how values outside of the claimed range teach away from the claimed invention and/or through experimental data via a sufficient number of tests both inside and outside the claimed range to show its criticality (See MPEP 716.02(d)(II)).
Regarding claim 4, Piotrowski discloses all limitations of claim 1 as set forth above. While Piotrowski is silent as to the dimensions of the first chamfer, specifically that the edge face extending around a central axis, the first chamfer has a width, measured radially relative to said central axis, equal to 0.08 mm, with a tolerance of plus or minus 0.05 mm, it would have been obvious to one of ordinary skill in the art prior to the earliest effective priority date of the instant application date, given that Robinson, which is within the lens making art, teaches that a chamfer (“edge” (23)) of a lens molding shell (“base” (10)) can be set to be tilted relative to a plane passing through the central axis (Fig 2) and furthermore that the selection of “an appropriate curvature [which would include the width] as well known to those skilled in the art” (C3 L48-57) and it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (See MPEP 2144.05 (II)). One would have been motivated to optimize the claimed width as it is recognized to be known to those skilled in the art.
While not relied upon for the basis of a rejection as set forth above, examiner notes that, outside of generalized statements on p.2 and 6, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range, either through explanation of how values outside of the claimed range teach away from the claimed invention and/or through experimental data via a sufficient number of tests both inside and outside the claimed range to show its criticality (See MPEP 716.02(d)(II)).
Claim(s) 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Piotrowski et al. (US20170144391) (of record).
Regarding claim 6, Piotrowski discloses all limitations of claim 5 as set forth above. Additionally, Piotrowski discloses the edge face extending around a central axis, in each cross-section of said second chamfer in a plane passing through said central axis, the second chamfer is tilted relative to the edge face (Fig 2). While Piotrowski does not explicitly state whether the figure is drawn to scale, one of ordinary skill in the art would have nonetheless found it obvious that the second chamfer angle would be reasonably in the range of 45o. Therefore, this value falls within the claimed range of 45o with a tolerance of plus or minus 5o. Case law holds 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 (See MPEP 2144.05).
While not relied upon for the basis of a rejection as set forth above, examiner notes that, outside of generalized statements on p.2-3 and 6, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range, either through explanation of how values outside of the claimed range teach away from the claimed invention and/or through experimental data via a sufficient number of tests both inside and outside the claimed range to show its criticality (See MPEP 716.02(d)(II)).
Regarding claim 7, Piotrowski discloses all limitations of claim 5 as set forth above. While Piotrowski does not explicitly disclose that the edge face extending around a central axis, the second chamfer has a width, measured radially relative to said central axis, equal to 0.5 mm, with a tolerance of plus 0.2 mm or minus 0.1 mm, it would have been obvious to one of ordinary skill in the art at the earliest priority date of the instant application to do so, given that such a modification would involve only a mere change in size of a component and scaling up or down of an element which merely requires a change in size is generally considered as being within the ordinary skill in the art (see MPEP 2144.04(IV)(A)). One would have been motivated to scale the size of the chamfer width to be 0.5 mm with a tolerance of plus 0.2 mm or minus 0.1 mm in order to properly size the moulding shell for operation.
While not relied upon for the basis of a rejection as set forth above, examiner notes that, outside of generalized statements on p.3 and 6, applicant’s original disclosure fails to provide a conclusive showing of unexpected results for the claimed range, either through explanation of how values outside of the claimed range teach away from the claimed invention and/or through experimental data via a sufficient number of tests both inside and outside the claimed range to show its criticality (See MPEP 716.02(d)(II)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Appleton et al. (US5271875) teaches a lens molding shell (“anterior mold” (20), Fig 5) comprising of a flat facet (“collar” (50)) adjacent to a chamfer (“inwardly sloping area” (49)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER D BOOTH whose telephone number is 571-272-6704. The examiner can normally be reached M-Th 7:00-4:30.
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, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER D BOOTH/Examiner, Art Unit 1749
/SEDEF E PAQUETTE/Primary Examiner, Art Unit 1749
Prosecution Insights