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 without traverse of group I, claims 1-8 and 20, in the reply filed on 11 August 2026 is acknowledged.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 August 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: the instant specification lacks section headings consistent with US practice.
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 1-18 and 20 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 1 recites the limitation "a molded ophthalmic article comprising at least one decorative element" in lines 10-11. There is already antecedent basis for these limitation in the preamble of the claim and they should be recited as so.
Claim limitation 2 has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim recites “any mechanical or chemical means”. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claim 5 recites the limitation "an optical element" in line 2. There is already antecedent basis for this limitation in the claim upon which this claim depends and should be recited as so.
Claim 5 also recites “a transparent thermoplastic material” in line 5 but this is a second inclusion and it is unclear if this is the same or different from the transparent thermoplastic material as recited in claim 1.
Claim 7 recites “said mold element” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 is rejected on the basis that it contains an improper Markush grouping of alternatives. The Markush grouping of claim 10 is improper because the alternatives are not recited as a closed group (consisting of).
Claim 14 recites “said ophthalmic article lens” in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites "said second transparent plastic material and/or said support polymeric thin wafer" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites "said transparent plastic materials" in lines 3-4, “the whole surface” in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the optical center" in line 5. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-2, 8-10, 12, 15-17 are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Pfeffer et al. (US 2015/0293375 A1).
Regarding claim 1, Pfeffer discloses a method for manufacturing a molded ophthalmic article comprising at least one decorative element (title/abstract), said method comprising the steps of:
a. providing a composite 6, equated with the claimed mold, comprising a front mold 4, equated with the first mold element, and a rear mold 5, equated with the claimed second mold element, configured to cooperate together in a closed position to define a cavity (FIG. 4; ¶ 12);
b. fixing said at least one decorative element 1 applied to a piece of foil 2 inside said cavity (¶ 19);
c. casting a first molding liquid comprising monomers of a first transparent plastic material inside said cavity (¶ 17);
d. curing said first molding liquid comprising monomers of a first transparent plastic material and demolding said mold to obtain a molded ophthalmic article comprising at least one decorative element (¶ 23).
Regarding claim 2, Pfeffer discloses the film with decorative elements is fixed on said first mold element or said second mold element with adhesive 8 and tape 7 (¶ 22).
Regarding claim 8, Pfeffer discloses the decorative elements are anchored onto a foil by glueing or by melting and/or by means of ultrasonic sounds (¶ 19). The foils, from which the piece of foils 2 are punched out, are transparent and of high optical quality. They are colourless for use in normal spectacles or coloured for use in sunglasses. The foils can also have a defined colour progression. The colours produce the tinting of the spectacle lens. Such foils mostly have one layer. The foils can also be polarising foils. Polarising foils mostly have several layers. The foils are covered on both sides by a protective foil which is removed during the production process of the spectacle lenses, i.e. the one protective foil before the application of the decorative element(s) and the other protective foil at the latest before the deformation of the piece of foil 2 (¶ 25). Which implies that the materials are polymeric thin wafers as claimed.
Regard 9, Pfeffer discloses the support polymeric thin wafer is a transparent carrier film or a functional film having light absorbing or light reflecting characteristics, or combinations thereof (¶ 25).
Regarding claim 10, Pfeffer discloses before step b a step of surface treatment of said at least one decorative element, wherein said step of surface treatment are selected from one or more of varnish/primer, inks application, chemical etching of the surface, chemical functionalization, plasma etching, corona etching or vacuum physical-chemical surface treatments and/or depositions (¶ 21).
Regarding claim 12, Pfeffer discloses that the molded ophthalmic article is adapted to have a predefined thickness without a step of surfacing (¶ 24).
Regarding claim 15, Pfeffer discloses that said first transparent plastic material, said second transparent plastic material and/or said support polymeric thin wafer have extra functionalities and characteristics selected from photochromic layers, contrast enhancement filters, vacuum coated surfaces, anti-reflective coatings and combination thereof (¶ 25).
Regarding claim 16, Pfeffer discloses that the decorative elements are fixed using an adhesive material (¶ 19).
Regarding claim 17, Pfeffer discloses the foil is transparent or present similar or identical refractive indexes compared to the refractive indexes of said transparent plastic materials, wherein said at least one decorative element has no ability to induce a local alteration of the visible light transmission of said molded ophthalmic article, wherein said at least one decorative element is placed across the whole surface of said molded ophthalmic article (¶ 25).
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.
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.
Claims 3-4, 7-9, 11, 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Pfeffer et al. (US 2015/0293375 A1) as applied to claim 1 above, further in view of Primel et al. (US 7,022,268 B2).
Regarding claim 3, Pfeffer does not appear to expressly disclose that the second mold element is a transparent optical element.
However, Primel discloses a similar method for embedding a decorative object in a lens (title/abstract) wherein the decorative elements 16, 28 are adhered to an overmould 36 after the cavity is filled with polymer 44, which is leftover preferably after machining (FIG. 8; 6:19+).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Pfeffer to include the overmould of Primel, in order to allow for the lens body to be further machined to provide a correction in a manner known in the art.
Regarding claim 4, Primel suggests said at least one decorative element is anchored at least onto said second mold element (FIG. 4; 5:50+).
Regarding claim 7, Primel suggests after the demolding step said mold element is part of the molded ophthalmic article (FIG. 8, 6:19+).
Regarding claim 8, Pfeffer discloses the decorative elements are anchored onto a foil by glueing or by melting and/or by means of ultrasonic sounds (¶ 19). The foils, from which the piece of foils 2 are punched out, are transparent and of high optical quality. They are colourless for use in normal spectacles or coloured for use in sunglasses. The foils can also have a defined colour progression. The colours produce the tinting of the spectacle lens. Such foils mostly have one layer. The foils can also be polarising foils. Polarising foils mostly have several layers. The foils are covered on both sides by a protective foil which is removed during the production process of the spectacle lenses, i.e. the one protective foil before the application of the decorative element(s) and the other protective foil at the latest before the deformation of the piece of foil 2 (¶ 25). Which suggests that the materials are polymeric thin wafers as claimed.
Regard 9, Pfeffer discloses the support polymeric thin wafer is a transparent carrier film or a functional film having light absorbing or light reflecting characteristics, or combinations thereof (¶ 25).
Regarding claim 11, Primel suggests a step of surfacing to reduce its thickness and optionally obtain an optical power (6:19+).
Regarding claim 14, Pfeffer and Primel suggests that the thickness of the decorative element is less than about 80% (Pfeffer FIG. 5; Primel FIG. 8-10). Additionally the skilled artisan would recognize that the thickness of the resulting lens could be controlled as desired such that the decorative element is fully embedded and the lens has desired optical properties.
Regarding claim 20, Primel suggests acrylic adhesive (5:50+).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Pfeffer et al. (US 2015/0293375 A1) in view of Primel et al. (US 7,022,268 B2) as applied to claim 3 above, further in view of Zhao et al. (CN 113352660 A).
Modified Pfeffer does not appear to expressly disclose how the second mold element is obtained.
However, Zhao discloses a similar method of forming embedded elements in a lens (title/abstract) in which a second mold element is first obtained by casting and used for forming a final lens (FIG. 1-4; ¶¶ 25+).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Pfeffer to include forming the second mold element by casting of Zhao, because such a method is known in the art and could be used with expected results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Pfeffer et al. (US 2015/0293375 A1) in view of Primel et al. (US 7,022,268 B2) as applied to claim 3 above,, further in view of Nozawa (JP H07-137158 A).
Modified Pfeffer does not appear to expressly disclose partially cured polymer.
However, Nozawa discloses similar method of embedding decorative elements in lenses (title/abstract) wherein the insert is provided with jelly-like, equated with partially cured, pieces prior to hold the decorative elements prior to curing (title/abstract; ¶¶ 8+).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Pfeffer to include the jelly-like elements of Nozawa, in order to ensure the elements conform to the mold and provide adequate adhesion to the cast monomer.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Pfeffer et al. (US 2015/0293375 A1) as applied to claim 1 above, further in view of Fäecke et al. (US 2017/0368723 A1).
Pfeffer does not appear to expressly disclose photoluminescent, phosphorescent or photochromic effects.
However, Fäecke discloses a similar method of embedding elements with a cast lens (title/abstract) which includes photochromic films (¶ 38, 138).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Pfeffer to include the photochromic of Fäecke, because they are known in the art and could be used with expected results.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Pfeffer et al. (US 2015/0293375 A1) as applied to claim 1 above, further in view of Ferriani (Glasses design: compromise between resistance requirements and aesthetic needs).
Pfeffer does not appear to expressly discuss the 30mm circle in the optical center.
However, Ferriani discloses that it is undesirable to have a defects, spots or dots within 30mm diameter of the optical center (pp. 37-38).
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the process of Pfeffer to avoid the decoration in the 30 mm center of Ferriani, in order to reduce vision discomfort.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Menta; Federico et al.
US 20100141890 A1
SIMEONE; Antonio et al.
US 20230176258 A1
PIOTROWSKI; Daniel et al.
US 20200070453 A1
BARANTON; Konogan et al.
US 20220283451 A1
Lagasi; Matteo
US 12405489 B2
Hoshi; Yuji
US 11460716 B2
Rawlings; David L. et al.
US 5120121 A
Callahan; Debra L.
US 6948808 B1
Baiocchi; Paolo et al.
US 8894205 B2
Spremulli; Vincenzo et al.
US 12591148 B2
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN A SCHIFFMAN/Primary Examiner, Art Unit 1742
