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 .
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 1-8 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.
Regarding claim 1, the claim recites casting a thermoset lens in the preamble. However, line 3 of the claim recites forming a thermoplastic lens. It’s not clear if the apparatus is for casting a thermoset lens or thermoplastic lens.
Claims 2-8 are rejected for depending from claim 1.
The term “hard” in claim 6 is a relative term which renders the claim indefinite. The term “hard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The hardness of the coating in the claim has been rendered indefinite by the use of the term “hard”.
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 is rejected for depending from claim 7.
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.
Claim(s) 1-3, 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoshima (English translation of WO2019124353) in view of Newman (2020/012123).
Regarding claim 1, Toyoshima discloses a mold apparatus 12 for casting a thermoset lens 2 (claim 2) comprising:
An upper mold element 14 having disposed thereon microstructures 14a, 14b in relief;
A lower mold element 16; and
A gasket or tape 18 to retain the upper mold element in separation from the lower mold element and to form thereby a chamber for filling into it a monomer 30 to be cured through thermosetting, in order to form the thermoset lens (fig. 1-2, 4, abstract, claims 2, 5).
Toyoshima does not teach the upper mold element is a thermoplastic mold. However, Newman teaches an injection molding machine for forming a mold to make a lens (fig. 4, para 65). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toyoshima with the teaching of Newman since Newman teaches that molding of lens mold with thermoplastic material is known in the field of lens making.
Regarding claim 12, Toyoshima does not teach wherein the lower mold element is also thermoplastic. However, Newman teaches an injection molding machine for forming a mold to make a lens (fig. 4, para 65). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toyoshima with the teaching of Newman since Newman teaches that molding of lens mold with thermoplastic material is known in the field of lens making.
Regarding claim 3, the claim is drawn to a mold apparatus, therefore, it’s not limited by the method of making it.
Regarding claim 6, Toyoshima discloses a hard multi-coat 108 is disposed over the microstructures of the thermoplastic upper mold element or both the thermoplastic upper and the lower mold elements such that the hard multi-coat is transferred to the lens subsequent to curing (fig. 6B, claim 3).
Regarding claim 7, Toyoshima discloses wherein the microstructures are micro-lenses optically configured with respective focal points, and preferably wherein the thermoset lens is a single vision lens for correcting myopia (para 2-3, 24).
Regarding claim 8, Toyoshima discloses wherein the thermoset lens is a single vision lens for correcting myopia (para -23, 24).
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toyoshima in view of Newman as applied to claim 2 above, and further in view of Shan et al. (US 9,242,418).
Regarding claim 4, Toyoshima as modified does not teach wherein the thermoplastic upper mold element and the lower mold element are fabricated from a polymer which is one of polycarbonate, alicyclic polycarbonate copolymer, PMMA, poly (methyl methacrylimide), thermoplastic polyurethane, cyclic olefin copolymer, polyarylates, polyamide, polysulfone, polyester and PEEK, or any combination thereof. However, Shane et al. teaches that plastic mold inserts such as polycarbonate inserts are useful for replicating microstructure during conventional injection molding (col. 5, line 25-39. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Toyoshima with the teaching of Shan et al. in order to result in a lens with high fidelity structure replication.
Regarding claim 5, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to fabricate both the thermoplastic upper mold element and the lower mold element from the same polymer in order to form a lens with high fidelity structure replication.
Conclusion
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/X.H.L/Examiner, Art Unit 1742 /CHRISTINA A JOHNSON/Supervisory Patent Examiner, Art Unit 1742
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