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 .
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.
Examiner’s Comments
Claim 4 is not in the proper format for canceling claims. The language of a canceled claim should not be present (MPEP 714; CFR 1.121(c)(4)).
Response to Amendment
Applicant’s arguments with respect to claim 3 have been considered but are moot in view of the new ground(s) of rejection, as necessitated by amendment.
Drawings
The drawings were received on November 5, 2025. These drawings are accepted.
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 3, 5, 11-12 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.
As to claim 3, the claim recites (line 10) “the concentric device” which lacks antecedent basis (MPEP 2173.05(e)). Examiner suggests “the concentric leveling device”.
As to claim 3, the claim recites “the concentric device is slid over the at least one eyeglass temple and placed above an ear of a user to level the eyeglass temple with respect to ground” which is unclear to those of ordinary skill in the art as to what is intended to infringe such steps.
First, such language appears to be the method of using the device (MPEP 2173.05(p)), and thus indefinite as to whether the device itself infringes the claim, or it is required to be used in such a manner for infringement.
Second, the language is unclear as to whether the eyeglasses are positively recited as a component of the invention claimed in claim 3. As set forth by the preamble, the claim appears directed to the leveling device “for use with at least one existing eyeglasses”. Therefore the eyeglasses do not appear to be a component of the leveling device itself.
For purposes of compact prosecution, Examiner will give no patentable weight to the intended use of placing on a temple and leveling the glasses (MPEP 2114.II).
As to claim 3, the claim recites “horizontal rectangle, vertical rectangle, a square” which claims both a broad and narrow range/feature (MPEP 2173.05(c)) as well as a relative/subjective feature - horizontal vs. vertical (MPEP 2173.05(b)).
Regarding the relative terms of vertical or horizontal, such orientations are entirely arbitrary and subjective to a practitioner of the invention. While Applicant makes reference to elements 46A, 46B, if the figure is rotated 90-degrees the horizontal rectangle becomes a vertical rectangle, but of course the structure itself has not actually changed, it is still a rectangle. What if the figure is rotated 45-degrees, would Applicant’s invention no longer read on the claims merely by reorienting the drawings without any structural change?
Regarding the broad and narrow range/feature, the group recites both the genus (rectangle) and the species (square) which is unclear. All squares are rectangles, thus separating out the square feature creates confusion as to what does or does not infringe the rectangle shape.
For purposes of compact prosecution examiner will construe the claim where the shape is a rectangle.
Claims 5, 11-12 are rejected as dependent upon claim 3.
As to claims 5 and 11, the claims recite “an ellipse and a circle” which is both the broad and narrow range/feature. Specifically, all circles (species) are ellipses (genus)1. The metes and bounds are unclear since separating out the circle from the ellipse creates confusion about what does or does not infringe the ellipse (MPEP 2173.05(c)). For purposes of compact prosecution, Examiner will understand the claim where the shape is ellipse.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 11, 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As to claim 5, the claim depends on claim 3, where claim 3 recites “at least one aperture…of a given shape selected from the group consisting of a horizontal rectangle, vertical rectangle, a square”. Thus as per claim 3, the only shape is rectangle. Claim 5 fails to include all the limitations of claim 3 by replacing the rectangle with ellipse (MPEP 608.01(n).III).
As to claim 11, the claim depends on claim 3, where claim 3 recites “the given shape of the concentric device is selected from the group consisting of a horizontal rectangle, vertical rectangle, a square”. Thus as per claim 3, the only shape is rectangle. Claim 11 fails to include all the limitations of claim 3 by replacing the rectangle with ellipse (MPEP 608.01(n).III).
As to claim 12, the claim depends on claim 3, where claim 3 recites “the configuration of the ear rest is tread or recessed configuration”. Thus as per claim 3, the only shapes are tread or recessed. Claim 12 fails to include all the limitations of claim 3 by replacing the tread or recessed with flat or ellipse (MPEP 608.01(n).III).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 5, 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 3, the claim recites “the given shape of the concentric device (45) is selected from the group consisting of a horizontal rectangle (46A), a vertical rectangle (46B), a square (46C)” which appears to be prohibited new matter. Specifically, the shapes 46A, 46B, 46C are for the aperture (46). The originally filed specification does not state any such shapes for the device (45).
Claims 5, 11-12 are rejected as dependent upon claim 3.
As to claim 11, the claim recites “the given shape of the concentric device is selected from the group consisting of ellipse (46D) and circle (46E) which appears to be prohibited new matter. Specifically, the shapes 46D, 46E are for the aperture (46). The originally filed specification does not state any such shapes for the device (45).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3, 5, 11-12 are rejected under 35 U.S.C. 102(a1) as being anticipated by Murrell (US 5,002,381; of record).
As to claim 3, Murrell teaches an eyeglass temple concentric leveling device made of a material selected from the group consisting of rubber, synthetic rubber, nylon, polyester thermoplastic, alloy silicones, composite materials, and elastomeric polymers (Murrell col. 2:25-48; col. 5:25-35) for use with at least one existing eyeglass temple (Murrell Fig. 1 - 22; Fig. 6 - 92; col. 2:25-50), wherein the concentric leveling device is comprised of at least one aperture (Murrell Fig. 6 - 92; col. 7:1-18) of concentric leveling device of a given shape selected from the group consisting of a horizontal rectangle, vertical rectangle, square (Murrell Fig. 7 - aperture of (92) being “vertical rectangle”),
PNG
media_image1.png
423
253
media_image1.png
Greyscale
for the eyeglass temple and an ear rest of a configuration (Murrell Fig. 6 - 94), wherein the concentric leveling device is slid over the at least one eyeglass temple and placed above an ear of a user to level the eyeglass temple with respect to the ground (Murrell Fig. 17), wherein the given shape of the concentric device is selected from the group consisting of a horizontal rectangle, vertical rectangle, and a square (Murrell Figs. 6, 7 - 92) and the configuration of the ear rest is tread or recessed configuration (Murrell Fig. 6 - 94).
As to claim 5, Murrell teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Murrell further teaches the given shape of the aperture is ellipse or circle (Murrell Fig. 7 - 92).
As to claim 11, Murrell teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Murrell further teaches the given shape of the concentric device is ellipse or circle (Murrell Fig. 7 - 92).
As to claim 12, Murrell teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Murrell further teaches the given shape of the ear rest is a flat configuration, ellipse configuration, vee configuration, tread configuration, dimple configuration (Murrell Fig. 1 - 20; Fig. 6 - 94).
Claim 3, 5, 11-12 are rejected under 35 U.S.C. 102(a1) as being anticipated by Gardill (US 2019/0243159).
As to claim 3, Gardill teaches an eyeglass concentric leveling device (Gardill Figs. 2A-3C - 100) made of a material selected from the group consisting of rubber, synthetic rubber, nylon, polyester thermoplastic, alloy silicones, composite materials, and elastomeric polymers (Gardill Fig. 3A - 100; para. [0074]), for use with at least one existing eyeglass temple (Gardill Fig. 3A - 100, 30) wherein the concentric leveling device is comprises of at least one aperture (Gardill Fig. 3B - aperture in (100) for temple (30); Fig. 4B - 130, 131) of concentric leveling device of a given shape selected from the group consisting of horizontal rectangle, vertical rectangle, a square (Gardill Fig. 3B; Fig. 4B; Fig. 15C; para. [0213]), for the eyeglass temple and an ear rest (Gardill Fig. 3B - 100, 112; Fig. 4B - 112, 11) of a configuration wherein the concentric leveling device is slid over the at least one eyeglass temple and placed above an ear of a user to level the eyeglass temple with respect to ground (Gardill Fig. 4B), wherein the given shape of the concentric device is selected from the group consisting of horizontal rectangle, vertical rectangle, square (Gardill Fig. 3B - 100; Fig. 4B - 100, 130, 131), and the configuration of the ear rest is tread or recessed configuration (Gardill Fig. 4B - 112; Fig. 6B - 112).
As to claim 5, Gardill teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Gardill further teaches the given shape of the aperture is ellipse or circle (Gardill Fig. 6A - 130; Figs. 15A-D; para. [0213]).
As to claim 11, Gardill teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Gardill further teaches the given shape of the concentric device is ellipse or circle (Gardill Fig. 6A - 130; Figs. 15A-D; para. [0213]).
As to claim 12, Gardill teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Gardill further teaches the given shape of the ear rest is selected from the group consisting of a flat configuration and an ellipse configuration (Gardill Fig. 3B - 100; Fig. 4A - 120; Figs 16A, B - 112).
Claims 3, 5, 11-12 are rejected under 35 U.S.C. 102(a1) as being anticipated by Bussey (US 538,151; of record).
As to claim 3, Bussey teaches an eyeglass temple concentric leveling device made of a material selected from the group consisting of rubber, synthetic rubber, nylon, polyester thermoplastic, alloy silicones, composite materials, and elastomeric polymers (Bussey page 1:lines 44-52 - composite) for use with at least one existing eyeglass temple (Bussey page 1:lines 44-52) wherein the concentric leveling device is comprised of at least one aperture of concentric leveling device (Bussey Fig. 1 - A, b) of a given shape for the eyeglass temple with at least one aperture (Bussey Figs. 1-3 - b; Fig. 5 - f) of concentric leveling device of a given shape selected from the group consisting of horizontal rectangle, vertical rectangle, square (Bussey Fig. 1 - b) for the eyeglass temple and an ear rest of a configuration (Bussey Figs. 1-2, 4 - a; page 2:lines 15-30), wherein the concentric leveling device is slid over the at least one eyeglass temple and placed above an ear of a user to level the eyeglass temple with respect to the ground (Bussey Figs. 1-4; page 2:lines 15-30), the given shape of the concentric device is selected from the group consisting of a horizontal rectangle, vertical rectangle, square (Bussey Figs. 1, 3 - A), and the configuration of the ear rest is treat or recessed configuration (Bussey Figs. 1, 2, 4 - a).
As to claim 5, Bussey teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Bussey further teaches the given shape of the aperture is ellipse or circle (Bussey Fig. 5 - f).
As to claim 11, Bussey teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Bussey further teaches the given shape of the concentric device is circle or ellipse (Bussey Figs. 1-4 - a).
As to claim 12, Bussey teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Bussey further teaches the given shape of the ear rest is a flat configuration, ellipse configuration (Bussey Fig. 2 - a).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3, 5, 11-12 are rejected under 35 U.S.C. 102(a1) as being anticipated by Understood (The Different Types of Pencil Grips for Kids (YouTube video) - herein Understood; of record)2.
As to claim 3, Understood teaches an eyeglass temple concentric leveling device, made of a material selected from the group consisting of rubber, synthetic rubber, nylon, polyester thermoplastic, alloy silicones, composite material, and elastomeric polymer (Understood - min:1:00 showing composite/elastomeric polymer (plastic) material) for use with at least one existing eyeglass temple wherein the concentric leveling device is comprised of at least one aperture of concentric leveling device of a given shape (Understood - min: 1:00 showing grip device having an aperture for the pencil; see below) for the eyeglass temple (Understood - min: 1:00 - aperture of grip) and an ear rest of a configuration (Understood - min: 1:00 showing saddles/indents for fingers which are structurally the same as ear rests), wherein the concentric leveling device is slid over at least one eyeglass temple and placed above an ear of a user to level the eyeglass temple with respect to the ground (Understood - min: 1:00 showing a pencil grip with all the claimed structure, thus the claim is anticipated MPEP 2114.II - A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), and the configuration of the ear rest is tread or recessed (Understood - min: 1:00 showing the saddles/indents).
PNG
media_image2.png
475
667
media_image2.png
Greyscale
Understood doesn’t specify the aperture/device is/are rectangles. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the aperture/device as rectangular, since it has been held that a mere change in shape of an element is generally recognized as being with in the level of ordinary skill in the art when the change in shape is not significant to the function of the combination. In re Dailey 149 USPQ 47 (CCPA 1966). Such rectangle (or square) continues to allow the grip to be place over pencils (or placed over glasses temples) and held.
As to claim 5, Understood teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Understood further teaches the given shape of the aperture is an ellipse/circle (Understood - min: 1:00 - showing circular aperture for the pencil).
As to claim 11, Understood teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Understood further teaches the given shape of the concentric device is ellipse/circle (Understood - min: 1:00 - showing the grip surface/exterior being circular and/or elliptical).
As to claim 12, Understood teaches all the limitations of the instant invention as detailed above with respect to claim 3, and Understood further teaches the given shape of the ear rest is a flat configuration or ellipse configuration (Understood - min 1:00 - saddle/indents are at least flat, or ellipse).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Gardill (US 10,955,686) is cited as the corresponding patent to Gardill above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
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, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY W WILKES/Primary Examiner, Art Unit 2872
December 30, 2025
1 https://mathworld.wolfram.com/Ellipse.html
2 “The Different Types of Pencil Grips for Kids.” YouTube, Understood, 7 Sept. 2017, www.youtube.com/watch?v=KVf51TojK1U.