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 .
Drawings
The drawings were received on 19 May 2026. These drawings are acceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 6b. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation at least one cup, and the claim also recites the cup which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the limitation "the inner surface" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
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(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peck (US 6029808) further in view of Chien (US 20190177063).
Claim 1: Peck discloses a blister pack 10 (contact lens package) comprising: a base 11 (accommodation element) which has at least one recess 13 (cup) for accommodation of a contact lens fluid and a contact lens; and a cover 12 (cover film) which is connected to the base 11 (accommodation element) in order to close the at least one recess 13 (cup) (see fig. 1).
Peck does not disclose wherein the accommodation element has, at least in a region of the at least one cup, a coating containing silicon oxide or aluminium oxide; wherein the coating is configured to seal the accommodation element in the region of the cup and to reduce or eliminate diffusion of the contact lens fluid through the accommodation element.
Chien teaches an anti-contamination contact lens package 100 including a substrate 10 having an inner surface 101 with a receiving groove 11 for receiving contact lenses and a photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) formed on at least the inner surface 101 (see P. 0015, 0024 and fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the blister pack 10 (contact lens package) to have a photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) formed on at least the at least one recess 13 (cup), as taught by Chien, in order to give the blister pack 10 (contact lens package) anti-contamination properties as the photocatalyst material will convert light energy into chemical energy thereby causing the decomposition of organisms (such as bacteria) when irradiated.
The photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) of the combination inherently or in the alternative obviously is configured to seal the accommodation element in the region of the recess 13 (cup) and to reduce or eliminate diffusion of the contact lens fluid through the base 11 (accommodation element) as the prior art combination discloses a structurally identical blister pack 10 (contact lens package) to the inventions claimed contact lens package and as the material of the prior art photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) of silicon dioxide is one of the disclosed materials of the invention. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) does not seal the accommodation element in the region of the recess 13 (cup) and reduce or eliminate diffusion of the contact lens fluid through the base 11 (accommodation element). Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
Claim 2: The combination discloses wherein the base 11 (accommodation element) has, in the region of the at least one recess 13 (cup), a wall thickness of less than 0.55 mm which overlaps the claimed range of between 0.05 mm and 0.6 mm (see C. 2 L. 52-54).
Examiner notes that no criticality has been established for the claimed range.
Claim 3: The combination discloses wherein the photocatalyst film layer 20 (coating) has a layer thickness which is between 0.003 micrometers to 86 micrometers which the claimed range of 10 nm and 250 nm lies within (see P. 0019).
Examiner notes that no criticality has been established for the claimed range.
Claim 4: The combination discloses wherein the photocatalyst film layer 20 (coating) has a layer thickness which is between 0.003 micrometers to 86 micrometers which the claimed range of 20 nm and 80 nm lies within (see P. 0019).
Examiner notes that no criticality has been established for the claimed range.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peck (US 6029808) and Chien (US 20190177063) as applied to claim 1 above, and further in view of Wills (US 20190015561).
Claim 3: En arguendo, if applicant disagrees that the disclosure of 0.003 micrometers to 86 micrometers obviates the claimed range, Wills teaches a blister pack having a barrier coating 288 of SiOx with a thickness in the range of at least 10 nm and at most 300 nm which contains the claimed range of between 10 nm and 250 nm (see P. 0091 and 0064).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the thickness of the photocatalyst film layer 20 (coating) be in the range of at least 10 nm and at most 300 nm, as taught by Wills in order to reduce the ingress of atmospheric gas and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In. re Aller, 105 USPW 233.
Claim 4: En arguendo, if applicant disagrees that the disclosure of 0.003 micrometers to 86 micrometers obviates the claimed range, Wills teaches a blister pack having a barrier coating 288 of SiOx with a thickness of at least 20nm and at most 80 nm (between 20 nm and 80 nm) (see P. 0091 and 0064).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the thickness of the photocatalyst film layer 20 (coating) be between 20 nm and 80 nm, as taught by Wills in order to reduce the ingress of atmospheric gas and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In. re Aller, 105 USPW 233.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peck (US 6029808) further in view of Wills (US 20190015561).
Claim 1: Peck discloses a blister pack 10 (contact lens package) comprising: a base 11 (accommodation element) which has at least one recess 13 (cup) for accommodation of a contact lens fluid and a contact lens; and a cover 12 (cover film) which is connected to the base 11 (accommodation element) in order to close the at least one recess 13 (cup) (see fig. 1).
Peck does not disclose wherein the accommodation element has, at least in a region of the at least one cup, a coating containing silicon oxide or aluminium oxide; wherein the coating is configured to seal the accommodation element in the region of the cup and to reduce or eliminate diffusion of the contact lens fluid through the accommodation element.
Wills teaches a blister pack having a barrier coating 288 of SiOx, where x is from 1.5 to 2.9 and therefore discloses silicone dioxide, directly applied only to the inside surface 303 of thermoplastic wall 214 with a thickness in the range of at least 10 nm and at most 300 nm or of at least 20nm and at most 80 nm (between 20 nm and 80 nm) (see fig. 1-2 & P. 0091, 0093, and 0064).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the blister pack 10 (contact lens package) to have a barrier coating 288 of SiO2 (silicon dioxide) directly applied only to an inner surface of the at least one recess 13 (cup), as taught by Wills, in order to give the blister pack 10 (contact lens package) anti-contamination properties as the photocatalyst material will convert light energy into chemical energy thereby causing the decomposition of organisms (such as bacteria) when irradiated and in order to reduce ingress of atmospheric gas into the at least one recess 13 (cup).
The coating 288 of SiO2 (silicon dioxide) of the combination inherently or in the alternative obviously is configured to seal the accommodation element in the region of the recess 13 (cup) and to reduce or eliminate diffusion of the contact lens fluid through the base 11 (accommodation element) as the prior art combination discloses a structurally identical blister pack 10 (contact lens package) to the inventions claimed contact lens package, as the thickness of the coating 288 of SiO2 (silicon dioxide) covers the disclosed range of 20-80 nm, and as the material of the prior art coating 288 of SiO2 (silicon dioxide) is one of the disclosed materials of the invention. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the photocatalyst film layer 20 of silicon dioxide (coating containing silicon oxide) does not seal the accommodation element in the region of the recess 13 (cup) and reduce or eliminate diffusion of the contact lens fluid through the base 11 (accommodation element). Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
Claim 2: The combination discloses wherein the base 11 (accommodation element) has, in the region of the at least one recess 13 (cup), a wall thickness of less than 0.55 mm which overlaps the claimed range of between 0.05 mm and 0.6 mm (see C. 2 L. 52-54).
Examiner notes that no criticality has been established for the claimed range.
Claim 3: The combination discloses wherein the barrier coating 288 has a layer thickness in the range of at least 10 nm and at most 300 nm which contains the claimed range of between 10 nm and 250 nm (see P. 0091 and 0064).
Examiner notes that no criticality has been established for the claimed range.
Claim 4: The combination discloses wherein the barrier coating 288 has a layer thickness of at least 20nm and at most 80 nm (between 20 nm and 80 nm) (see P. 0091 and 0064).
Examiner notes that no criticality has been established for the claimed range.
Claim 5: The combination discloses wherein only the inner surface of the at least one recess 13 (cup) has the barrier coating 288 (see fig. 1 ‘561).
Response to Arguments
The drawing objections in paragraphs 2-3 of office action dated 19 February 2026 are withdrawn in light of the amended disclosure filed 19 May 2026.
The specification objections in paragraph 4 of office action dated 19 February 2026 are withdrawn in light of the amended disclosure filed 19 May 2026.
Examiner reminds applicant that all changes to the drawings shall be explained, in detail, in either the drawing amendment or remarks section of the amendment paper as required by 37 C.F.R. 1.121. As applicant has failed to do so, Examiner herewith requires a marked-up copy of any further amended drawing figures including annotations indicating the changes made.
Applicant's arguments filed 19 May 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that none of the references teach every element of the claims, the Examiner responds that this is a piecemeal analysis. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that Chien does not disclose a coating “configured to seal the accommodation element in the region of the cup and to reduce or eliminate diffusion of the contact lens fluid through the accommodation element” as claimed as Chien relates to a coating for a different mechanism and a different purpose such that even a combination of Peck and Chien fails to teach or suggest a silicon oxide or aluminium oxide coating that is configured to seal the cup region and reduce or eliminate diffusion of contact lens fluid and that Chien lists a large number of suitable photocatalyst materials and does not single out silicon dioxide for use as a diffusion barrier or for the claimed sealing function and does not disclosure reducing or eliminating diffusion of contact lens fluid through a wall of a contact-lens package, the Examiner responds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant’s argument that there is no apparent reason to combine the teachings of Peck and Chien in the manner claimed because the rationale of giving the contact lens package anti-contamination properties does not provide a reason why a person of ordinary skill in the art would have modified Peck to include a silicon oxide or aluminium oxide coating configured to seal the cup region against diffusion of contact lens fluid as diffusion of the contact lens fluid is not discussed in Chien at all and nothing in Chien indicates that such a photocatalyst film layer would be selected, configured, or optimized to provide the barrier effect now in claim 1, such that Chien does not provide a teaching or reasonable expectation of success for the barrier effect as claimed, the Examiner replies that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). MPEP 2144 IV.
In response to applicant’s argument that Chien lists a large number of suitable photocatalyst materials and the Office Action’s selection of silicon dioxide from this broad list of photocatalyst materials without any articulated basis why a skilled artisan would select silicon dioxide, e.g. as opposed to Chien’s exemplified TiO2 is thus based on hindsight, the Examiner replies that it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLAN D STEVENS whose telephone number is (571)270-7798. The examiner can normally be reached Monday-Friday 12-8 ET.
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, Orlando E. Aviles can be reached at (571)270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLAN D STEVENS/Primary Examiner, Art Unit 3736
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