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 .
DETAILED ACTION
This is in response to Application filed November 1, 2021, in which claim(s) 1 and 3-20 is/are presented for examination.
Status of Claims
Claim(s) 1, 3, 4, and 9-14 is/are pending of which Claim(s) 1 is/are presented in independent form.
All references relied up on and not cited in the current Form 892 may be found in previous 892's or IDS'.
Response to Arguments
Applicant’s First Argument: Rudo does not disclose that the eye mask substantially matches contours of the user’s face—there is no 3D profile thus it is not innately contoured.
Rudo does not disclose that the infraorbital region has a higher rigidity relative to the side portion and Examiner inaccurately states that the additional layer and snap fastener confers rigidity.
Examiner’s Response: Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. Applicant’s claim does not require a “3D profile” as argued. The claim reads “substantially matches contours of the user’s face” and Examiner maintains that Rudo fully discloses this feature by the fabric being pliable and the bands intended to be tied to “adhere” the fabric to the user’s face when worn as discussed in at least col. 2, lines 23-31.
Regarding the higher rigidity, this is also not found persuasive. Applicant argues that the claimed mask is “structurally more rigid” than the rest of the side portion yet fails to persuasively argue how the claimed structure is different. An area with more layers (in this case the additional layer includes a mechanical fastener which is clearly more rigid than fabric) than a surrounding area is more rigid - even if only marginally. Applicant has failed to distinguish any structural limitations that overcome the prior art.
Applicant’s Second Argument: Cadous does not disclose one or more protrusions within the infraorbital region as currently amended.
Examiner’s Response: Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. Contrary to Applicant’s argument Examiner maintains that 16 of Cadous is a protrusion that is located “within the infraorbital region” as currently amended. Applicant has failed to point out specifically how Cadous fails as both Figs. 2 and 3 of Cadous appear to coincide with Applicant’s provided figure of the “infraorbital region”. Examiner would like to reference the nose in Fig. A of Applicant’s submitted figure, the infraorbital region exactly matches the drawing shown in Cadous’ Figs. 2 and 3. Furthermore, Applicant’s argument that 16 is not a “protrusion” is not found persuasive since Applicant’s claim has no structural feature that distinguishes it from the prior art.
Applicant’s Third Argument: Bially is non-analogous art.
Examiner’s Response: Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. Bially is a sleeping mask which is the exact same field of endeavor as Cadous as well as Applicant’s invention. Examiner maintains that it is analogous art.
Applicant’s Fourth Argument: Garza is not a protrusion per se. Garza does not disclose increased rigidity. Garza has different functions.
Examiner’s Response: Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. First, Applicant provides no specific reason why Garza’s protrusion is not a protrusion. Second, Applicant appears to have made a typo that an increase in thickness does increase rigidity (“does not insignificant change the rigidity”) and then the following sentence is not persuasive since “substantially similar” rigidity does acknowledge a different in rigidity. Examiner maintains that increase in thickness correlates to increase in rigidity. Third, Garza may not recognize the same functions as Applicant but structure is the same and thus provides the same intended use as Applicant is claiming.
Applicant’s Fifth Argument: Anderson teaches away.
Examiner’s Response: Applicant's arguments filed March 19, 2026 have been fully considered but they are not persuasive. Anderson is a face covering used as a secondary reference to teach the use of a specific fabric used in face coverings. Examiner maintains this is analogous and a proper combination.
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, 3-4, and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cadous USPN 2,342,840.
Regarding Claim 1, Cadous discloses an eye mask (Fig. 1) capable for treating and/or preventing periorbital puffiness, including two side portions (Fig. 1, 10) extending either side of a bridge portion (15); and a retaining component (18) for attaching the eye mask to a face of a user; wherein each of the two side portions includes an orbital region (Fig. 4), and an infraorbital region that includes one or more protrusions within the infraorbital region (Figs. 2-3, 16; p. 1, col. 1, lines 53-55; as shown in Figs. 2-3 the protrusions 16 are within the infraorbital region) that extend away from a user-facing surface of the eye mask such that a pressure is applied to a corresponding infraorbital region of the face when the eye mask is attached to the face of the user (p. 1, col. 1, lines 53-55; there is at least enough pressure to prevent light from entering the edge of the mask); wherein the eye mask substantially matches contours of the user's face (p. 1, col. 1, lines 40-41); and wherein the infraorbital region has a higher rigidity relative to rest of the side portion (p. 1, col. 2, line 8; side portions may be cloth whereas the infraorbital region further includes the soft padding, by virtue of the additional layer of padding the infraorbital region must have higher rigidity under BRI). Though Cadous does not explicitly disclose that the eye mask is for treating periorbital puffiness, all structural claims have been met, like structure is deemed to have like functional characteristics. Additionally, Applicant’s claim does not currently include distinguishing features that separate the claimed eye mask limitation from intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have understood that the prior art having same claimed structural features would be capable of being used in the same functional manner as claimed by Applicant; since like structure is deemed to have like functional properties/characteristics.
Regarding Claim 3, Cadous further discloses wherein each infraorbital region of the eye mask includes an elongate compression region (Fig. 4).
Regarding Claim 4, Cadous further discloses wherein each infraorbital region of the eye mask includes an elongate compression region, and wherein the elongate compression region is crescent-shaped (Fig. 4).
Regarding Claim 11, Cadous further discloses wherein the side portions have a shore A hardness in the range from about 10A to 100A (p. 1, col. 2, line 8; any cloth would be encompassed in the range of “about 10A to 100A” as this limitation is extremely broad and the range encompasses practically every material available).
Regarding Claim 12, Cadous further discloses wherein the bridge portion is more rigid than the side portions (p. 1, col. 2, lines 10-11; spring material is more rigid than cloth).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cadous USPN 2,342,840 in view of Bially USPUB 2014/0331383.
Regarding Claims 9-10, Cadous disclose(s) the invention as claimed above. Cadous does not disclose what type of cloth is used in the eye mask. However Bially teaches wherein the side portions of an eye mask are made of a flexible polymer material, the flexible polymer material is selected from the group consisting of thermoplastic polyurethane (TPU), polylactic acid (PLA), thermoplastic elastomer (TPE), plasticized copolyamide TPE (PCTPE), nylon, and a combination of any two or more thereof (Para. [0031] nylon).
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, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Garza USPN 5,537,687.
Regarding Claim 1, Garza discloses an eye mask (Figs. 1-10) capable for treating and/or preventing periorbital puffiness, including two side portions (Figs. 2, 4, 7, 8, and 9) extending either side of a bridge portion (exemplary bridge portion is generally seen at 6 in Fig. 4); and a retaining component (30, 32, 66, 68, 166, 168; col. 3, lines 20-21) for attaching the eye mask to a face of a user (as shown in most Figs. 1-10); wherein each of the two side portions includes an orbital region (Figs. 1-10), and an infraorbital region that includes one or more protrusions within the infraorbital region that extend away from a user-facing surface of the eye mask (Fig. 5, col. 7, lines 30-65 and Fig. 11 shows that the infraorbital area is only 70G which has an increased thickness as shown in Fig. 5) such that a pressure is applied to a corresponding infraorbital region of the face when the eye mask is attached to the face of the user (the “thickness” of this area would cause an amount of pressure on this area compared to other areas in the mask with less thickness as described in Col. 7); wherein the eye mask substantially matches contours of the user's face (col. 4, lines 28-38); and wherein the infraorbital region has a higher rigidity relative to rest of the side portion (higher thickness is considered to meet this limitation since anything that is thicker than another portion is considered to have higher rigidity). Though Garza does not explicitly disclose that the eye mask is for treating periorbital puffiness, all structural claims have been met, like structure is deemed to have like functional characteristics. Additionally, Applicant’s claim does not currently include distinguishing features that separate the claimed eye mask limitation from intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have understood that the prior art having same claimed structural features would be capable of being used in the same functional manner as claimed by Applicant; since like structure is deemed to have like functional properties/characteristics.
Regarding Claim 13, Garza further discloses wherein the bridge portion is made of a material selected from the group consisting of polylactic acid (PLA), acrylonitrile butadiene styrene (ABS), nylon, and polycarbonate (col. 5, lines 49-61).
Regarding Claim 14, Garza further discloses wherein the bridge portion is made of the same material as the side portions (col. 5, lines 49-61), and has a greater thickness than the side portions (col. 8, chart and lines 14-22; additional discussion of the variable thickness is discussed in col. 7, lines 30-65).
*Subsequent claims have not been treated in the obvious alternative for the sake of brevity, however, the lack of a rejection does not preclude a rejection in a subsequent action under the prior art of Garza.
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.
Alternative Rejection - Claim(s) 1 is/are rejected under 35 U.S.C. 102a(1) as being anticipated by Rudo USPN 3,354,884.
Regarding Claim 1, Rudo discloses an eye mask (Fig. 1) for treating and/or preventing periorbital puffiness (col. 1, lines 20-26, col. 2, lines 14-22), including two side portions extending either side of a bridge portion (Fig. 1); and a retaining component (8, 8’) for attaching the eye mask to a face of a user; wherein each of the two side portions includes an orbital region, and an infraorbital region that includes one or more protrusions within the infraorbital region (Figs. 1-3, 4; the protrusions 4 are considered to fall at least in the upper portion of the infraorbital region) that extend away from a user-facing surface of the eye mask such that a pressure is applied to a corresponding infraorbital region of the face when the eye mask is attached to the face of the user (col. 1, lines 6-11); wherein the eye mask substantially matches contours of the user's face (col. 2, lines 11-13; and wherein the infraorbital region has a higher rigidity (7) relative to rest of the side portion. At least by virtue of the additional layers of the protrusion layer 4 and the snap fasteners, the infraorbital region has a higher rigidity than the 2 ply layer of the rest of the side portions of the eye mask.
*Subsequent claims have not been treated in the anticipated alternative for the sake of brevity, however, the lack of a rejection does not preclude a rejection in a subsequent action under the prior art of Rudo.
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) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rudo USPN 3,354,884 in view of Anderson USPUB 20150000006.
Regarding Claim 13, Rudo discloses the invention as claimed above. Rudo does not disclose the specific fabric material. However, Anderson teaches a similar face covering where the eye covering is made of nylon (Para. [0078]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used nylon fabric to construct the mask of Rudo as taught by Anderson; because Anderson teaches that this configuration is known in the art (Para. [0078]). It would be further obvious that nylon provides the added benefit of comfort as well as excellent washability for a wearer/user. Thus, as combined, Anderson teaches wherein the bridge portion is made of a material selected from the group consisting of polylactic acid (PLA), acrylonitrile butadiene styrene (ABS), nylon, and polycarbonate.
Regarding Claim 14, as combined the prior art teaches wherein the bridge portion (bridge shown in Fig. 1) is made of the same material as the side portions (as combined above nylon fabric has been used to for fabric 10 and 10’ of Rudo), and has a greater thickness than the side portions. Interpreting under BRI, the side portions as shown in Fig. 2 can be seen to taper at least near the stitching where the eye openings are provided at 3. At least in this portion of the side portions the bridge is thicker due to the soft material 11 being in the bridge portion and not being confined by edge stitching.
*Subsequent claims have not been treated in the obvious alternative for the sake of brevity, however, the lack of a rejection does not preclude a rejection in a subsequent action under the prior art of Rudo/Anderson.
Conclusion
Applicant's amendment necessitated the updated 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 ANNA K KINSAUL whose telephone number is (571)270-1926. The examiner can normally be reached Monday-Friday 8:30am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Moffat can be reached at 571-272-4390. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA K KINSAUL/Supervisory Patent Examiner, Art Unit 3731
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