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
Claims 10-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/23/2026.
Applicant’s election without traverse of group I, claims 1-9 in the reply filed on 7/23/2026 is acknowledged.
Information Disclosure Statement
Applicant should note that the large number of references in the attached information disclosure statement have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b).
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claim(s) 1-2, 4, 8-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 2, 3, 4, 7, 8, 9 of U.S. Patent No. 12654028. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claim(s) is/are broader than the corresponding claim(s) in the reference patent and thus the corresponding claim(s) is/are a species of the more generic instant claim(s). It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Furthermore, they are not patentably distinct from each other because the instant application claim(s) overlap in scope with and are anticipated and/or obvious over the reference claim(s).
Regarding claim 1, U.S. Patent No. 12654028 teaches an eyewear device comprising:
an eyewear device configured to be worn by a user (claim 1 “eyewear device”);
a lens (claim 8 “lenses”); and
a passive light conversion material integrated within at least a portion of the lens (claim 3 “integrated into the at least one video display device”; claim 8 “lenses”; claim 7 “quantum dots”; see instant claim 2 which recites “quantum dots”),
wherein the passive light conversion material is configured to absorb ambient wavelengths of light from at least one of sunlight or artificial light sources and convert at least a portion of the absorbed ambient light into at least one therapeutic wavelength of photobiomodulation ("PBM") light within a range of 600nm to 1200nm (claim 1 “range of 600 nm to 1400 nm”; claim 7 “quantum dots”; see instant claim 2 which recites “passive light conversion material comprises quantum dots”; For the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. 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.), and
wherein the lens is configured to direct the PBM light toward the user's eye (claim 2 “towards the retina”; claim 4 “focus the PBM wavelengths of light into eyes”).
Regarding claim 2, U.S. Patent No. 12654028 teaches wherein the passive light conversion material comprises quantum dots (claim 7 “quantum dots”).
Regarding claim 4, U.S. Patent No. 12654028 teaches at least one optical element configured to direct the PBM light toward the user's eye (claim 2 “towards the retina.”; claim 4 “through at least one optic that is configured to focus the PBM wavelengths of light into eyes”),
wherein the optical element includes at least one of micro-optics or a waveguide structure attached to or embedded within the eyewear device (claim 2 “towards the retina.”; claim 4 “through at least one optic that is configured to focus the PBM wavelengths of light into eyes”; claim 8 “lenses”; lens would read on “waveguide”; furthermore, it would be an obvious change in shape to use micro-optics as opposed to optics; MPEP 2144.04).
Regarding claim 8, U.S. Patent No. 12654028 teaches configured to be an augmented reality eyewear device (claim 1 “An electronic eyewear device… at least one video display device; a first plurality of light emitters configured to receive first control signals that cause the first plurality of light emitters to emit wavelengths of light for producing video images on the at least one video display device; For the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. 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.).
Regarding claim 9, U.S. Patent No. 12654028 teaches being configured to be at least one of sunglasses, reading glasses, prescription glasses (claim 1 “eyewear”; claim 9 “lenses”; For the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. 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. Furthermore, it would be an obvious modification to have prescription lenses as needed for the user to see which would result in either reading glasses or prescription glasses as recited), a contact lens or a face shield.
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.
Claim(s) 1-3, 7, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gallas (US 20150017109 A1; 1/15/2015).
Regarding claim 1, Gallas teaches an eyewear device comprising:
an eyewear device configured to be worn by a user ([0025] “sunglass”);
a lens ([0025] “sunglass lens”; claim 2); and
a passive light conversion material integrated within at least a portion of the lens ([0025] “lens materials…sunglass lens”; claim 2),
wherein the passive light conversion material is configured to absorb ambient wavelengths of light from at least one of sunlight or artificial light sources and convert at least a portion of the absorbed ambient light into at least one therapeutic wavelength of photobiomodulation ("PBM") light within a range of 600nm to 1200nm ([0006]; [0008]; [0022]; [0025] “600 nm to 1200 nm”; [0036]), and
wherein the lens is configured to direct the PBM light toward the user's eye ([0025] “ophthalmic lens…ocular tissue”; [0036]; [0038] “retina…eye”).
Regarding claim 2, Gallas teaches wherein the passive light conversion material comprises quantum dots ([0033] “quantum dots”).
Regarding claim 3, Gallas teaches wherein the passive light conversion material comprises organic dyes ([0033] “Organic dyes”).
Regarding claim 7, Gallas teaches wherein the ambient wavelengths of light being converted are within a range of 320nm to 700nm (Fig. 1; Fig. 3; [0004] “400 nm to 500 nm”; [0008] “absorption of light over the region between 300 nm and 700 nm”; [0010] “between 400 nm and 480 nm”; MPEP 2131.03: A specific example in the prior art which is within a claimed range anticipates the range).
Regarding claim 9, Gallas teaches being configured to be at least one of sunglasses ([0025] “sunglass lens”), reading glasses, prescription glasses, a contact lens or a face shield.
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.
Claim(s) 4, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallas as applied to claim 1 above, in view of Rodrigues (US 20260118672 A1; Filed 10/29/2024).
Regarding claim 4, Gallas teaches further comprising at least one optical element configured to direct the PBM light toward the user's eye ([0025] “ophthalmic lens…ocular tissue”; [0036]; [0038] “retina…eye”).
Gallas does not teach wherein the optical element includes at least one of micro-optics or a waveguide structure attached to or embedded within the eyewear device. However, Rodrigues teaches in the same field of endeavor (Fig. 1; [0057]) wherein the optical element includes at least one of micro-optics or a waveguide structure attached to or embedded within the eyewear device (Fig. 2; [0045]; [0093]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gallas to include these features as taught by Rodrigues because this enables generating images ([0057]-[0058]).
Regarding claim 8, Gallas does not teach configured to be an augmented reality eyewear device. However, Rodrigues teaches in the same field of endeavor (Fig. 1; [0057]) configured to be an augmented reality eyewear device (Abstract; Fig. 1; claim 1). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gallas to include these features as taught by Rodrigues because this enables generating images (Fig. 2; [0057]-[0058]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallas as applied to claim 1 above.
Regarding claim 5, Gallas teaches wherein at least 25% of the PBM light emitted is at least one of:
a. approximately 670nm +50nm in wavelength and directed towards the user's retina (Fig. 3; [0008]; [0022]-[0023]; [0025]; [0034]; [0036]; [0054] “75% of the light is absorbed…quantum yield of about 75%”; [0062] “690 nm”; the reference is teaching use of materials within sunglass lens to absorb sunlight and convert to red to infrared wavelengths with a high yield to ocular tissue which corresponds to the recited ranges; In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.), or
b. approximately 830nm +50nm in wavelength (Fig. 3; [0008]; [0022]-[0023]; [0025]; [0034]; [0036]; [0054] 75% of the light is absorbed…quantum yield of about 75%”; the reference is teaching use of materials within sunglass lens to absorb sunlight and convert to red to infrared wavelengths with a high yield to ocular tissue which corresponds to the recited ranges; In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); MPEP 2144.05.) and directed towards the user's periocular skin (For the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. 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. The reference teaches the use of sunglasses and so it is inherent that the converted light will also be directed to user’s periocular skin just by how the structure of the sunglasses that convert light are worn on the face over the eyes).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gallas as applied to claim 1 above, in view of Chen (US 20180229051 A1; 8/16/2018).
Regarding claim 6, Gallas does not teach wherein the lens maintains more visual transparency in a central viewing zone. However, Chen teaches in the same field of endeavor (Fig. 12; Fig. 21; [0105]; [0110]) wherein the lens maintains more visual transparency in a central viewing zone ([0113]). Thus it would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to modify the teaching of Gallas to include these features as taught by Chen because this does not impede a user’s vision ([0113]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/ Primary Examiner, Art Unit 3792
