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 .
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.
Claims 24- 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12, 320950. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipatory over the reference claims.
Regarding claim 24, claims of U.S. Patent No. 12,320,950 teaches:
A method for forming an ophthalmic lens using an additive manufacturing printhead, comprising:a. emitting from the additive manufacturing printhead during a first pass a first two-dimensional pattern of droplets of polymerizable material;b. receiving on a receiving surface said first two-dimensional pattern of droplets, said receiving surface including a three-dimensional shape corresponding to a surface of said ophthalmic lens to be formed, and said first two- dimensional pattern covering at least a portion of said receiving surface;c. exposing the first two-dimensional pattern of deposited droplets to a pinning process causing partial polymerization of the deposited droplets; d. emitting from the additive manufacturing printhead during a second pass a second two-dimensional pattern of droplets of said polymerizable material;e. receiving onto said first two-dimensional pattern of partially polymerized droplets said second two-dimensional pattern of droplets; said second two-dimensional pattern covering at least a portion of said first two-dimensional pattern ;f. integrating the second two-dimensional pattern with the first two- dimensional pattern to form a combined volume of polymerizable mixture;g. pinning at least some of the second two-dimensional pattern of deposited droplets; h. repeating at least steps d-f a predetermined number of times; andi. curing the combined volume of polymerizable mixture (see claim 1). Similarly, regarding claims 25-43, pertaining to placing insert, providing gray scale image, forming spectacle lens or contact lens are also found either obvious or anticipatory over the reference claims (see claims 2-26 of the reference patent).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2015/0093544 A1 – pertains to a method for printing a three-dimensional structure with a smooth surface comprising the following steps: depositing multiple droplets of printing material at least partially side by side and one above the other, and curing the deposited droplets by light irradiation to build up a three-dimensional structure, wherein UV light with different penetration capabilities is used in the first step for curing deposited droplets located inside of the three-dimensional structure, wherein a light cone of UV light is directed towards the deposited droplets having a wavelength and/or intensity gradient, and wherein the wavelength and/or intensity gradient extends parallel to a main plane of the three-dimensional structure and/or a substrate of the three-dimensional structure. Additionally, see US 2016/0003977 A1.
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NAHIDA SULTANA
Primary Examiner
Art Unit 1743
/NAHIDA SULTANA/Primary Examiner, Art Unit 1743
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