DETAILED ACTION
This action is in response to the amendment filed 8/25/2025. Currently, claims 1 and 3-12 are pending in the application. Claim 2 is cancelled by Applicant.
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 .
Response to Arguments
Applicant’s arguments with respect to the previous objection to claim 1 have been fully considered and are persuasive. The objection to claim 1 has been withdrawn.
Applicant’s amendment to claim 3 is sufficient to overcome the previous objection to claim 3.
Applicant’s amendment to claim 1 is not wholly sufficient to overcome the previous rejection of claims 1 and 3-12 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Claims 1 and 3-12, therefore, remain rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph for the reason(s) detailed below.
Applicant’s amendment to claim 3 is sufficient to overcome the previous rejection of claim 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Applicant’s amendment to claim 1 is sufficient to overcome the previous rejection of claim 6 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Applicant's arguments filed 8/25/2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that Beliveau does not teach a face shield that covers the user’s mouth, the examiner respectfully disagrees. As detailed below, Beliveau teaches in Figures 1 and 14A, columns 3-4, lines 66-4, column 4, lines 52-54, column 5, lines 3-6 and the abstract a resilient flexible sheet (“flexible face mask,” taught in the abstract; columns 3-4, lines 66-4 teaches the face mask being made of “nylon material;” nylon is a known elastic/resilient material) having an upper edge (as defined in the annotated copy of Figure 1 provided below) and left and right edges (as defined in the annotated copy of Figure 1 provided below) and adapted to flex (the abstract teaches the face mask being “flexible”) in an arc to cover a front of the user's face and mouth and a lower portion of the user's nose (column 4, lines 52-54 teaches that the face mask “mask covers the user's nose, upper lip, cheeks, and ears;” the upper lip is part of the user’s mouth). The examiner also reminds Applicant that claim 1 limitation “adapted to flex in an arc to cover a front of the user's face and mouth and a lower portion of the user's nose” is an intended use claim limitation, and 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 the present case, the face mask is capable of being positioned to cover a front of a user’s mouth (depending on the size/shape of a particular user’s anatomy).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the face shield covers the user’s mouth such that it provides an effective barrier to the transmission of disease; that the face shield covers the entire mouth) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant’s argument that Beliveau does not teach a mask that is adapted to conduct air exhaled behind the resilient flexible sheet away from the lenses, the examiner again respectfully disagrees. As detailed below, the unassembled upper seam 35 is an opening that is capable of providing a conduit to direct air exhaled behind the face mask and from the user’s nose therethrough and away from lenses of eyeglasses attached to the face mask.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “a lens opening” and “a bypass opening,” which are claim limitations lacking proper antecedent basis in the specification. This is not an issue of new matter. Applicant should amend the specification to include the cited language to avoid this error. 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 and 3-12 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 opening” in line 19 of the claim. It is unclear if this recited “opening” is intended to correspond to the previously recited “lens opening,” the previously recited “bypass opening” or one of the previously recited “pair of openings.” Claims 3-12 depend on claim 1 and therefore, includes the same error.
Claim Rejections - 35 USC § 102
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 and 3-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beliveau (US 8,387,163 B2).
In regards to claim 1, Beliveau teaches in Figures 1 and 14A, columns 3-4, lines 66-4, column 4, lines 52-54, column 5, lines 3-6 and the abstract
a resilient flexible sheet (“flexible face mask,” taught in the abstract; columns 3-4, lines 66-4 teaches the face mask being made of “nylon material;” nylon is a known elastic/resilient material) having an upper edge (as defined in the annotated copy of Figure 1 provided below) and left and right edges (as defined in the annotated copy of Figure 1 provided below) and adapted to flex (the abstract teaches the face mask being “flexible”) in an arc to cover a front of the user's face and mouth and a lower portion of the user's nose (column 4, lines 52-54 teaches that the face mask “mask covers the user's nose, upper lip, cheeks, and ears;” the upper lip is part of the user’s mouth; the face mask is capable of being positioned to cover a front of a user’s mouth (depending on the size/shape of a particular user’s anatomy)) and rearwardly along the temples of the eyeglasses when attached to the temples and as worn by the user (as shown in Figure 14A; column 5, lines 3-6 teaches “the face mask further comprises curved insertion slits 30, which are through-cuts on left and right ear strap portions 25 of the mask configured to receive the temples of eyeglasses and thus secure the face mask to the user's eyeglasses”), the resilient flexible sheet (“flexible face mask,” taught in the abstract) further providing:
(a) a pair of openings (slits 30; Figure 1 teaches two slits 30 positioned in the left ear strap portion 25 and two slits 30 positioned in the right ear strap portion 25) at each of (as shown in Figure 1; column 5, lines 3-4 teaches “the face mask further comprises curved insertion slits 30, which are through-cuts on left and right ear strap portions 25 of the mask”) left and right portions (left and right ear strap portions 25) on the resilient flexible sheet (“flexible face mask,” taught in the abstract), the left and right portions (left and right ear strap portions 25) proximate to (as shown in Figure 1, the left and right ear strap portions 25 are defined by and thus, proximate to, the left and right edges, respectively, and the upper edge) the left and right edges (as defined in the annotated copy of Figure 1 provided below), respectively, and the upper edge (as defined in the annotated copy of Figure 1 provided below) of the resilient flexible sheet (“flexible face mask,” taught in the abstract), the pair of openings (slits 30) through which the temples of the eyeglasses may be threaded to retain the left and right portions (left and right ear strap portions 25) against the temples (column 5, lines 3-6 teaches “the face mask further comprises curved insertion slits 30, which are through-cuts on left and right ear strap portions 25 of the mask configured to receive the temples of eyeglasses and thus secure the face mask to the user's eyeglasses”); and
(b) an lens opening (“opening” defined in the annotated copy of Figure 1 provided below; capable of receiving lenses of a user’s glasses therethrough) positioned beneath (as shown in Figure 1) the upper edge (as defined in the annotated copy of Figure 1 provided below) and between (as shown in Figure 1) the left and right portions (left and right ear strap portions 25) to provide an upper cut out edge (as defined in the annotated copy of Figure 1 provided below) fitting in front of and passing along a lower edge of the lenses (the upper cut out edge is capable of fitting in front of and passing along a lower edge of the lenses); and
further including a breath bypass vent (unassembled upper seam 35) adapted to be positioned below the lower edge of the lenses and centered vertically beneath the bridge portion of the eyeglasses (unassembled upper seam 35 is capable of being positioned below the lower edge of the lenses and centered vertically beneath the bridge portion of the eyeglasses) to provide a bypass opening (Figure 1 teaches unassembled upper seam 35 being structured as an opening through the face mask) through the resilient flexible sheet (“flexible face mask,” taught in the abstract) bounded (as shown in Figure 1) on the lower edge (bottom edge of unassembled upper seam 35) of the opening (Figure 1 teaches unassembled upper seam 35 being structured as an opening through the face mask) by the resilient flexible sheet (“flexible face mask,” taught in the abstract) and vertically beneath the bridge portion (as shown in Figure 14A, the unassembled upper seam 35 is positioned to sit vertically beneath the bide portion of eyeglasses in use) and above a lower portion of the user's nose in front of the nose (as shown in Figure 14A, the unassembled upper seam 35 is positioned to sit above a lower portion of the user's nose in front of the nose in use) adapted to conduct air exhaled behind the resilient flexible sheet (“flexible face mask,” taught in the abstract) away from the lenses (as shown in Figures 1 and 14A, the unassembled upper seam 35 is an opening that is capable of providing a conduit to direct air exhaled behind the face mask and from the user’s nose therethrough and away from lenses of eyeglasses attached to the face mask).
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In regards to claim 3, Beliveau teaches the apparatus of claim 1. Beliveau teaches in Figures 1 and 14A that the breath bypass vent (unassembled upper seam 35) extends downwardly away from (as shown in Figure 1) the upper cut out edge (as defined in the annotated copy of Figure 1 provided above) aligning with the bridge portion of the eyeglasses (as shown in Figure 14A, the unassembled upper seam 35 is positioned to align with the bridge portion of the eyeglasses in use).
In regards to claim 4, Beliveau teaches the apparatus of claim 1. Beliveau teaches in Figure 1 guidelines ("C" cuts 15) positioned around (as shown in Figure 1, the "C" cuts 15 are curved around lateral sides of the unassembled upper seam 35) the breath bypass vent (unassembled upper seam 35) defining cut lines to remove additional material to increase the size of the breath bypass vent ("C" cuts 15 are capable of being used as a visual guide as to where a user should begin cutting to remove additional material to increase the size of the breath bypass vent).
In regards to claim 5, Beliveau teaches the apparatus of claims 1 and 4. Beliveau teaches in Figures 1 and 14B and column 5, line 31 that the guidelines ("C" cuts 15) are perforations (taught in column 5, line 31 to be “cuts”) promoting a separation of the resilient flexible sheet (“flexible face mask,” taught in the abstract) along the perforations (as shown in Figure 14B).
In regards to claim 6, Beliveau teaches the apparatus of claim 1. Beliveau teaches in Figure 1 that the pair of openings (slits 30; Figure 1 teaches two slits 30 positioned in the left ear strap portion 25 and two slits 30 positioned in the right ear strap portion 25) are vertically extending slots (Figure 1 teaches the slits 30 having a height that extends in an upward direction).
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) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beliveau (US 8,387,163 B2).
In regards to claim 7, Beliveau teaches the apparatus of claim 1. Beliveau teaches in column 4, lines 27-30 that “it should also be understood that the face masks disclosed herein can be made in different sizes to suit various users, and the dimensions of mask features can be modified while keeping with the spirit of the invention.”
Beliveau does not explicitly teach that the resilient flexible sheet has a perimeter that fits within an 8.25 x 11.5" rectangle.
However, it would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to provide that the resilient flexible sheet has a perimeter that fits within an 8.25 x 11.5" rectangle, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. One having ordinary skill in the art before the effective filing of the present invention would find it obvious that the size of the resilient flexible sheet could be modified in order to best accommodate the size of an individual user.
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beliveau (US 8,387,163 B2) in view of Bernstein et al. (US 11,400,323).
In regards to claim 8, Beliveau teaches the apparatus of claim 1. Beliveau does not teach that the resilient flexible sheet is transparent.
However, Bernstein et al. teaches in column 6, lines 50-52 and claim 1 an analogous device wherein the resilient flexible sheet (mask piece 10; taught in claim 1 to be “formed of a flexible material”) is transparent (column 6, lines 50-52 teaches “the mask piece 10 may be made from a transparent plastic such as polyethylene, polypropylene, polycarbonate, acrylic, or PETG”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the resilient flexible sheet of Beliveau to be transparent as taught by Bernstein et al. because this element is known to “allow for the mouth and adjacent portions of the face to be seen when the mask is worn so that others can discern the facial expressions and lip movements of the wearer,” as Bernstein et al. teaches in column 6, lines 52-57.
In regards to claim 11, Beliveau teaches the apparatus of claim 1. Beliveau does not teach an anti-fog coating on at least one surface of the resilient flexible sheet.
However, Bernstein et al. teaches in Figure 1A, column 6, lines 52-61 and claim 1 an analogous device with an anti-fog coating on at least one surface of (column 6, lines 52-61 teaches the mask piece 10 having “a non-fogging or fog-resistant coating”) the resilient flexible sheet (mask piece 10; taught in claim 1 to be “formed of a flexible material”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the resilient flexible sheet of Beliveau to include an anti-fog coating on at least one surface of the resilient flexible sheet as taught by Bernstein et al. because this element is known to enable the resilient flexible sheet to “be worn by a user without the need for constant adjustment,” as Bernstein et al. teaches in column 2, lines 3-10.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beliveau (US 8,387,163 B2) in view of Nabai (US 2016/0353815).
In regards to claim 9, Beliveau teaches the apparatus of claim 1. Beliveau teaches in column 4, lines 29-30 that “the dimensions of mask features can be modified while keeping with the spirit of the invention.”
Beliveau does not explicitly teach that the resilient flexible sheet has a thickness of less than 0.01 inches.
However, Nabai teaches in Figure 4 and [0038] an analogous device wherein the resilient flexible sheet (face shield 100; [0038] teaches “face shield 100, like the face shield portion 14, comprises a thin, relatively flexible sheet of plastic”) has a thickness of less than 0.01 inches ([0038] teaches that face shield 100 “may be 4 mil (0.1 mm) polyethylene terephthalate (PET);” the thickness of 0.1 mm is equivalent to 0.0039 inches; 0.0039 inches is less than 0.01 inches).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the resilient flexible sheet of Beliveau to have a thickness of less than 0.01 inches as taught by Nabai because this element is known to provide a “durable material” suitable for use as a “face field,” as Nabai teaches in [0038].
In regards to claim 10, Beliveau teaches the apparatus of claim 1. Beliveau does not teach that the resilient flexible sheet is a polymer selected from the group consisting of polyester, PET, PETG, and polycarbonate.
However, Nabai teaches in Figure 4 and [0038] an analogous device wherein the resilient flexible sheet (face shield 100; [0038] teaches “face shield 100, like the face shield portion 14, comprises a thin, relatively flexible sheet of plastic”) is a polymer selected from the group consisting of polyester, PET, PETG, and polycarbonate ([0038] teaches “the face shield portion 14 and face shield 100 may be PET, polycarbonate, or another such transparent, durable material”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the resilient flexible sheet of Beliveau to be a polymer selected from the group consisting of polyester, PET, PETG, and polycarbonate as taught by Nabai because this element is known to be a “transparent, durable material” suitable for use as a “face field,” as Nabai teaches in [0038].
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beliveau (US 8,387,163 B2) in view of Kubischta et al. (US 11,243,417).
In regards to claim 12, Beliveau teaches the apparatus of claim 1. Beliveau teaches the eyeglasses in Figure 14A.
Beliveau does not teach that the eyeglasses provide eye loupes extending forwardly from front surfaces of the lenses of the eyeglasses.
However, Kubischta et al. teaches in Figures 1 and column 4, lines 59-62 an analogous device wherein the eyeglasses provide eye loupes (loupes 2) extending forwardly from front surfaces of the lenses of the eyeglasses (as shown in Figure 1; column 4, lines 59-62 teaches “an article of personal protective equipment (PPE) 10 for covering a wearer's face 1 when wearing loupes 2 and/or a light 3 mounted to an eyeglass frame 4 is depicted”).
It would have been obvious to one having ordinary skill in the art before the effective filing of the present invention to modify the eyeglasses of Beliveau such that the eyeglasses provide eye loupes extending forwardly from front surfaces of the lenses of the eyeglasses as taught by Kubischta et al. because this element is known to enable healthcare professionals “to see areas of the body under magnification, while maintaining proper body ergonomics,” as Kubischta et al. teaches in column 1, lines 39-41.
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 VICTORIA H FISHER whose telephone number is (571)270-7033. The examiner can normally be reached M-TH 6:00AM-4:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at (571) 270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICTORIA HICKS FISHER/Primary Examiner, Art Unit 3786 9/25/2025