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 .
Election/Restrictions
Applicant's election with traverse of Group II (claims 11-15) in the reply filed on 04/03/2026 is acknowledged. Claims 1-10 and 16-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/03/2026.
The traversal is on the ground(s) that the process as claimed could not be practiced by an apparatus without using a lattice, because the claimed process explicitly recites the use of a lattice. This is not found persuasive because the restriction requirement was not merely based on the assumption that the process could be practiced without lattice. Instead, it was based on distinct statutory classes of the inventions and the independence of the process and the apparatus claims. Inventions I and III are processes that uses a lattice as part of its steps and invention II is an apparatus (system) that includes a lattice as one of its components. Furthermore, the process and apparatus are not mutually dependent in a way that would require them to be restricted to a single invention. The process could be theoretically be performed using alternative apparatus that achieve the same result (e.g., a system that uses a different mechanism for nanoparticles deposition, such as micro-dispensing system or electrostatic deposition).
Applicants further argues that there is no search or examination burden, but fail to provide a specific reason. The examiner notes there is a search and/or examination burden for the patentably distinct inventions required a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries even though the inventions are classified together) (refer MPEP 808.02). Moreover, in this case the methods and apparatus have separate classification as noted in the restriction, thereby employing a search burden
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a deposition apparatus configured to deposit a nanoparticle” in claim 11 with corresponding structure/scope disclosed at [0197] of instant publication.
“a dispenser configured to coat a surface with a resin” in claim 11 with corresponding structure/scope disclosed at [0197] of instant publication.
“a placing apparatus configured to place the lattice onto the surface” in claim 11 with corresponding structure/scope disclosed at [0196] of instant publication.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 11-15 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 11, recites “a resin comprising an organic material; a dispenser configured to coat a surface with a resin” which is indefinite. The second recitation of “a resin” interduces ambiguity as whether it refer to the same resin as the first instance or different resin. Additionally, the later use of “the resin” lack clear antecedent, as it is unclear whether it refers to:
a resin comprising an organic material (first instance);
a dispenser configured to coat a surface with a resin (second instance),
or a third, unspecified resin.
The limitation examined below as --a dispenser configured to coat a surface with the resin--.
Claim 11 further recites “remove the lattice from the surface after the resin has cured to the lattice” which is indefinite. The phrase “the resin is cured to the lattice” is indefinite because it fails to specify how the resin is cured (e.g., by heat, UV light, chemical reaction, or self-curing). Also what cured to lattice means (e.g., whether the resin bonds to the lattice, harden around it, or chemically react with it). The claim examined below as best understood.
Claim(s) 12-15 is/are rejected as being dependent from claim 11 and therefor including all the limitation thereof.
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asbahi (US 2018/0229262) in view of Warren (US 6,986,739), Zhu (US 2018/0315793) and Begon (WO 2006/105995).
Regarding claim 11, Asbahi teaches a system for transferring a plurality of nanoparticles onto a substrate (see Figs. 1a-1d; [0130]), comprising:
a lattice (substrate (1)) comprising a plurality of cavities (void spaces for accommodating nanoparticles (5)) (see Fig. 1 and Fig. 5; [0130]);
a capillary action mechanism to deposit a nanoparticle (5) of a plurality of nanoparticles into each cavity of the plurality of cavities (see Fig. 1a-1c and Fig. 5; [0009],[0019] and [0044]). However, Asbahi does not explicitly teach a deposition apparatus configured to deposit a nanoparticle of a plurality of nanoparticles into each cavity of the plurality of cavities.
In analogous art, systems for depositing nanoparticles into a substrate, Warren teaches an apparatus (10) for depositing materials accurately on a selected substrate (see Figs. 2A-2C; column 1, lines 24-25 and column 10, lines 40-45).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the system as taught by Asbahi in view of Warren with a deposition apparatus capable to be configured to deposit a nanoparticle of a plurality of nanoparticles into each cavity of the plurality of cavities as such is known in the art of apparatus and methods for depositing materials given the discussion of Warren above; and doing so is simple substitution of one Known element for another to obtain predictable results, with the added benefits of doing so would accurately control the deposition of materials into the substrate (Abstract of Warren).
Asbahi in view of Warren further teaches a dispenser for applying materials (see column 5, lines 30-40 of Warren). However, Asbahi in view of Warren does not teach that the dispenser configured to coat a surface with a resin comprising an organic material and a placing apparatus configured to: place the lattice onto the surface after the dispenser has coated the surface with the resin such that the plurality of cavities face the surface.
In analogous art, Zhu teaches a system for transferring micro-devices (202A,232A) from a donor substrate (204), the system comprises a dispenser configured to coat a surface with an adhesive (an organic resin) and a transfer device (200) for placing/removing micro-devices onto a surface (214) after the dispenser has coated the surface with the resin (adhesive 212) (see Figs. 2A-2B, Fig. 3; [0039-0043] and [0066-070]); and remove the micro-devices (202A,232A) from the surface after the resin has cured to the micro-devices (see [0038] and [0056]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the system as taught by Asbahi and Warren in view of Zhu with the dispenser configured to coat a surface with a resin comprising an organic material and a placing apparatus configured to: place the lattice onto the surface after the dispenser has coated the surface with the resin such that the plurality of cavities face the surface; and remove the lattice from the surface after the resin has cured to the lattice as such is known in the art of transfer of micro-devices into substrate given the discussion of Zhu above; and doing so is combining prior art elements according to known methods to yield predictable results, with the added benefits of doing so would improve adhesion and transfer reliability for nanoparticles, as adhesive bonding is a well-known solution in transfer printing and lens manufacturing.
Asbahi in view Zhu further does not teach transfer the plurality of nanoparticles from the plurality of cavities to a side of a body of a contact lens by placing the lattice onto the body of the contact lens such that the plurality of cavities face the side; and remove the lattice from the body of the contact lens.
In analogous art, Begon teaches a system for transferring coating onto at least one geometrically defined surface of a lens substrate (Abstract), comprises a transfer mechanism configured for coating a lens substrate with a resin, pressing a carrier (20) into the resin coated lens; curing the resin and removing the carrier to transfer the coating (see Fig. 7; column2, lines 30-35; column 3,lines 29-33; column 21 , lines 10-15 and lines 30-35).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the system as taught by Asbahi, Warren and Zhu in view of Begon with the placing apparatus configured to transfer the plurality of nanoparticles from the plurality of cavities to a side of a body of a contact lens by placing the lattice onto the body of the contact lens such that the plurality of cavities face the side; and remove the lattice from the body of the contact lens as such is known in the art of transferring coating into substrate given the discussion of Begon above; and doing so is combining prior art elements according to known methods to yield predictable results, with the added benefits of doing so would provide improved method for transferring coating onto substrate without deformation of lens substrate (Abstract of Begon).
Allowable Subject Matter
Claims 12-15 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.
Claims 12-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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:
Regarding claim 12, the primary reason why it is deemed novel and non- obvious over the prior art of record to have the system as instantly claimed is that the prior arts Asbahi (US 2018/0229262), Warren (US 6,986,739), Zhu (US 2018/0315793) and Begon (WO 2006/105995), which is/are regarded as being the prior arts closest to subject- matter of the claim 12, alone or in combination fails to teach that the deposition apparatus comprises: a superstrate; and a motion control device configured to cause the plurality of cavities to receive the plurality of nanoparticles by actuating the superstrate to move in a direction with respect to the lattice while the plurality of nanoparticles are interposed between the superstrate and the lattice, wherein the direction is substantially parallel to a plane along which the lattice lies.
Therefore, claim 12 is deemed novel and non-obvious over the prior art of record.
Regarding claims 13-15, they depend from claim 12; thus, they are also deemed novel and non-obvious over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AHMED ALI whose telephone number is (571)272-0347. The examiner can normally be reached 10:00 AM-7:30 PM.
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/MOHAMED K AHMED ALI/Examiner, Art Unit 1743
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