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 January 14, 2025 has been considered by the examiner.
Claim Objections
Claim 57 is objected to because of the following informalities: in line 2, it is believed that “modify” has been erroneously deleted, as it is unclear what the pulse is configured to do absent “modify”. The examiner has interpreted claim 57 to include “modify”. Appropriate correction is required.
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 29 and 48 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.
Claim 29 recites the limitation “the one or more pulses” in line 2. There is insufficient antecedent basis for this limitation in the claim. In an effort to promote compact prosecution, the examiner has interpreted “the one or more pulses” to be “the at least one pulse”.
Claim 48 recites the limitation wherein the at least one pulse is a “relatively positive powered pulse and a relatively negative powered pulse”. It is unclear to the examiner how “the at least one pulse” can be both relatively positive powered and negative powered. The examiner respectfully requests clarification.
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)(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.
Claims 17, 19, 26, 29, 30, 34, 35, 43 and 67 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lam et al (U.S. Patent Publication 2022/0404639).
With regard to independent claim 17, Lam et al teaches an ophthalmic lens configured to correct and/or treat at least one condition of the eye comprising (page 1, paragraph 2 and Figure 1): a base power profile (page 3, paragraph [0054] and Figure 1, element 145); and at least one pulse selected to modify the base power profile (Figure 1, elements 141, 142, 143 or 144) and to form one or more on-axis focal points in front of, on, and/or behind a retinal image plane (page 4, paragraph [0062]); wherein the ophthalmic lens is configured to provide a depth of focus that provides continuous or substantially continuous vision from an object in distance to an object in the near vergences while focusing on a distance object (page 4, paragraph [0062] and page 5, paragraph [004]).
With regard to dependent claim 19, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse is configured to create a diffraction effect to produce an image inside the human eye (page 3, paragraph [0053], wherein the concentric Fresnel design creates a diffraction effect).
With regard to dependent claim 26, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse has a width of less than 0.3 mm (page 3, paragraph [0052], wherein the pulse width is 0.25 mm).
With regard to dependent claim 29, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein one [of the one or more] pulses has a width of about 001 mm to 0.3 mm (page 3, paragraph [0052], wherein the pulse width is 0.25 mm).
With regard to dependent claim 30, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse has a dioptric power of between -100D to +100D (Figure 1, wherein elements 141, 142, 143 and 144 have dioptric powers between approximately 3.5D to 5D).
With regard to dependent claim 34, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse is a rapid, narrowband change in power (Figure 1, wherein elements 141, 142, 143 and 144 have a sudden and narrow change in power).
With regard to dependent claim 35, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse comprises a change in power comprising an increasing power component, a peak power component, and a decreasing power component relative to the base power profile (Figure 1, wherein elements 141, 142, 143 and 144 have: an increasing power component from 0D to a maximum power; a peak power of approximately 3.5D, 4D and 5D; and a decreasing power component from a maximum to 0D, with respect to the baseline).
With regard to dependent claim 43, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse is a positive powered pulse relative to the base power (Figure 1, wherein elements 141, 142, 143 and 144 have positive dioptric power).
With regard to dependent claim 67, Lam et al teaches all of the claimed limitations of the instant invention as outlined above with respect to independent claim 17, and further teaches such an ophthalmic lens wherein the at least one pulse comprises a plurality of narrow and/or annular concentric optical zones located on at least one of the front surface and/or the back surface and/or within the matrix of the ophthalmic lens and formed by line curvatures (page 3, paragraph [0048]).
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.
Claim 17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 26 of copending Application No. 18/021,711 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim an ophthalmic lens configured to correct and/or treat at least one condition of the eye comprising: a base power profile; and at least one pulse selected to modify the base power profile as outlined below:
U.S. Patent Application Number 18/994429
U.S. Patent Application Number 18/021711
Claim 17
An ophthalmic lens configured to correct and/or treat at least one condition of the eye comprising: a base power profile; and at least one pulse selected to modify the base power profile and to form one or more on-axis focal points in front of, on, and/or behind a retinal image plane; wherein the ophthalmic lens is configured to provide a depth of focus that provides continuous or substantially continuous vision from an object in distance to an object in the near vergences while focusing on a distance object.
Claim 1
An ophthalmic lens configured to correct or treat at least one condition of the eye comprising: a central optical zone about and including an optical axis of the ophthalmic lens, the central optical zone having a first power profile across the central optical zone; a peripheral optical zone; a base power profile to correct distance refractive error of the eye; and a plurality of annular concentric optical zones (i.e., at least one pulse) in the peripheral optical zone selected to modify the base power profile and to form one or more off-axis focal points in front of, on, or behind a retinal image plane and reduce a focal point energy level at one or more image planes; wherein the plurality of annular concentric optical zones are located on a front surface or a back surface the peripheral optical zone; wherein the first power profile of the central optical zone is different to the base power profile; and wherein each annular concentric optical zone comprises a cyclical power profile, and the cyclical power profile includes oscillations incorporating: a "m" component that is relatively more negative in power than a most negative power of the base power profile and relatively more negative in power than a most negative power of the first power profile; and a "p" component that is relatively more positive in power than a most positive power of the base power profile and relatively more positive in power than a most positive power of the first power profile of the ophthalmic lens.
Claim 26
The ophthalmic lens of claim 1, wherein the ophthalmic lens provides, at least in part, an extended depth of focus within the useable vergence ranges encountered by a user of the ophthalmic lens.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 37, 38, 44, 49, 53, 57 and 58 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: The prior art taken either singularly or in combination fails to anticipate or fairly suggest the limitations of the independent claims, in such a manner that a rejection under 35 U.S.C. §102 or §103 would be proper. Although the Lam et al (U.S. Patent Publication 2022/0404639) teaches an ophthalmic lens as outlined above, Lam et al fails to teach such an ophthalmic lens wherein: a first derivative of the pulse optical/power profile is discontinuous at a boundary between the base power profile and the at least one pulse, as claimed in dependent claim 37; the at least one pulse includes a discontinuity in the first derivative of the power profile in a least one location of the at least one pulse, as claimed in dependent claim 38; the at least one pulse is a negative powered pulse relative to the base power, s claimed in dependent claim 44; the ophthalmic lens comprises a substantially equal number of relatively positive powered pulses and a relatively negative powered pulses, as claimed in dependent claim 49; the one or more pulses are conjoined pulses, as claimed in dependent claim 53; the at least one pulse is configured to [modify] a peak RIQ of the ophthalmic lens to below 0.5, as claimed in dependent claim 57; or the at least one pulse includes a pulse located in the center of the lens, as claimed in dependent claim 58.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRYL J COLLINS whose telephone number is (571) 272-2325. The examiner can normally be reached M-Th 5:30 a.m. - 4:00 p.m.
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, Ricky L 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.
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.
/DARRYL J COLLINS/Primary Examiner, Art Unit 2872
25 August 2026
Prosecution Insights