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 .
Information Disclosure Statement
Acknowledgment is made of receipt of Information Disclosure Statement (PTO-1449) filed 04/29/2025. An initialed copy is attached to this Office Action.
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.
Claims 1-3, 5, 6, 8-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Farnam (USPG Pub No. 2014/0293025) in view of DeMeio et al. (USP No. 9,030,740), hereinafter “DeMeio”.
Regarding claim 1, Farnam discloses eyewear (100) (see Fig. 1) comprising: a frame portion (110) having a first and a second lens retainer (see Fig. 1), a pair of arms (side extension of frame 110 with temple 120 – see annotated Fig. 2 below) having at least one recess (210) (see Fig. 2), at least one lateral protective member (120), and a nose bridge connecting the first and the second lens retainers thereto (see Figs. 1, 2); a first and second lens (102, 104) for inserting into the first and the second lens retainers (see Fig. 1); and wherein the at least one lateral protective member (120) is removably attached (via 215) to the frame portion (see Figs. 1, 2, Paragraphs 29, 55 - any arrangement of the attachment mechanism is a known alternative with predictable results); wherein the at least one lateral protective member (120) is coated with an anti- reflective material (Paragraph 56); and has been applied to the lateral protective member (Paragraph 56). Farnam discloses the claimed invention, but does not specify at least a portion of which includes properties of optical birefringence; and wherein it is visibly apparent to a user that the anti-reflective material has been applied to the member. In the same field of endeavor, DeMeio discloses at least a portion of which includes properties of optical birefringence (Col. 4, Line 53 – Col. 5, Line 3; Col. 53, Lines 7-9); and wherein it is visibly apparent to a user that the anti-reflective material has been applied to the member (Col. 53, Lines 7-25 – the optical effect of the article indicates the application of said material). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the eyewear of Farnam with at least a portion of which includes properties of optical birefringence; and wherein it is visibly apparent to a user that the anti-reflective material has been applied to the member of DeMeio for the purpose of providing the desired optical effect in order to reduce reflected light glare (Col. 1, Lines 37-40, 56-57).
It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
It has been held that a mere reversal of the essential working parts of an invention involves only routine skill in the art. In re Einstein, 8 USPQ 67.
It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
PNG
media_image1.png
426
612
media_image1.png
Greyscale
Regarding claim 2, Farnam further discloses wherein the lateral protective member (120) is attached to and extends from at least one recesses (210) of the pair of arms (side extension of frame 110 with temple 120) (see Fig. 2).
Regarding claim 3, Farnam further discloses wherein the anti-reflective material is applied to the lateral protective member using at least one of: dip coating, spray coating, explosion coating, and electroplating (Paragraph 56 – “coated with anti-reflection coatings”). The phrase is inclusive of coating techniques known in the art. In addition, the method of forming is not germane to the issue of patentability of the structure itself. Therefore, this limitation has not been given patentable weight.
Regarding claim 5, Farnam further discloses wherein the lateral protective member (120) is inserted into the at least one recesses (210) of the arm by a snap-in mechanism and/or magnetic mechanism (see Figs. 1, 2, Paragraphs 29, 55 - any arrangement of the attachment mechanism is a known alternative with predictable results).
Regarding claim 6, Farnam further discloses wherein the lateral protective member (120) is removably inserted into the at least one recesses (210) of the arm (see Figs. 1, 2, Paragraphs 29, 55 - any arrangement of the attachment mechanism is a known alternative with predictable results).
Regarding claim 8, Farnam discloses eyewear (100) comprising: a frame portion (110) having a pair of arms (side extension of frame 110 with temple 120 – see annotated Fig. 2 above) and a brow bar (upper surface of frame 110) having at least one recess (see Fig. 1); a lens carrier comprising: a first and a second lens retainers attached together by a nose bridge portion (see Fig. 1); and a first and second lens (102, 104) for inserting into the first and second lens retainers (see Fig. 1); wherein lens carrier is coated with an anti-reflective material (Paragraph 56); and has been applied to the lens carrier (Paragraph 56). Farnam discloses the claimed invention, but does not specify at least a portion of which includes properties of optical birefringence; and wherein it is visibly apparent to a user that the anti-reflective material has been applied. In the same field of endeavor, DeMeio discloses at least a portion of which includes properties of optical birefringence (Col. 4, Line 53 – Col. 5, Line 3; Col. 53, Lines 7-9); and wherein it is visibly apparent to a user that the anti-reflective material has been applied (Col. 53, Lines 7-25 – the optical effect of the article indicates the application of said material). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the eyewear of Farnam with at least a portion of which includes properties of optical birefringence; and wherein it is visibly apparent to a user that the anti-reflective material has been applied of DeMeio for the purpose of providing the desired optical effect in order to reduce reflected light glare (Col. 1, Lines 37-40, 56-57).
It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
It has been held that a mere reversal of the essential working parts of an invention involves only routine skill in the art. In re Einstein, 8 USPQ 67.
It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 9, Farnam further discloses further comprising at least one lateral protective member (120) that is removably attached to the frame portion (see Fig. 2).
Regarding claim 10, Farnam further discloses wherein the at least one lateral protective member (120) is attached to and extends from at least one recesses (210) of the pair of arms (side extension of frame 110 with temple 120 – see annotated Fig. 2 above).
Regarding claim 11, Farnam further discloses wherein the anti-reflective material is applied to the lens carrier using at least one of: dip coating, spray coating, explosion coating, and electroplating (Paragraph 56 – “coated with anti-reflection coatings”). The phrase is inclusive of coating techniques known in the art. In addition, the method of forming is not germane to the issue of patentability of the structure itself. Therefore, this limitation has not been given patentable weight.
Regarding claim 12, Farnam discloses wherein the at least one lateral protective member is coated with an anti-reflective material (Paragraph 56); has been applied to the lateral protective member (Paragraph 56). In addition, DeMeio discloses and wherein it is visibly apparent to a user that the anti-reflective material (Col. 53, Lines 7-25 – the optical effect of the article indicates the application of said material). It would have been obvious to one of ordinary skill to provide the eyewear of Farnam with the teachings of DeMeio for at least the same reasons as those set forth above with respect to claim 8.
Regarding claim 15, Farnam further discloses wherein the lateral protective member (120) can be inserted into the at least one recesses (210) of the arm by a snap-in mechanism and/or magnetic mechanism (see Figs. 1, 2, Paragraphs 29, 55 - any arrangement of the attachment mechanism is a known alternative with predictable results).
Claims 4, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Farnam (USPG Pub No. 2014/0293025) in view of DeMeio (USP No. 9,030,740) as applied to claims 1 and 8 above, and further in view of Petsch et al. (USPG Pub No. 2010/0141729), hereinafter “Petsch”.
Regarding claims 4 and 13, Farnam discloses to the lateral protective member the anti-reflective material is applied to the lateral protective member (Paragraph 56). Farnam and DeMeio disclose the claimed invention except for wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied. In the same field of the endeavor, Petsch discloses wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied (Paragraphs 9, 88). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the eyewear of Farnam and DeMeio with wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied of Petsch for the purpose of providing information (Paragraphs 5, 9).
Regarding claim 14, Farnam discloses to the lens carrier the anti-reflective material is applied to the lens carrier (Paragraph 56). Farnam and DeMeio disclose the claimed invention except for wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied. In the same field of the endeavor, Petsch discloses wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied (Paragraphs 9, 88). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the eyewear of Farnam and DeMeio with wherein a marking is applied once the anti-reflective material is applied to make it visibly apparent to a user that the coating has been applied of Petsch for the purpose of providing information (Paragraphs 5, 9).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Farnam (USPG Pub No. 2014/0293025) in view of Petsch et al. (USPG Pub No. 2010/0141729), hereinafter “Petsch”.
Regarding claim 7, Farnam discloses a method of manufacturing eyewear (100) (see Fig. 1) comprising: Forming a frame portion (110) having a first and a second lens retainer (see Fig. 1), a pair of arms (side extension of frame 110 with temple 120 – see annotated Fig. 2 above) having at least one recess (210), and a nose bridge connecting the first and the second lens retainers thereto (see Figs. 1, 2); inserting a first and second lens (102, 104) into the first and the second lens retainers (see Fig. 1); forming at least one lateral protective member (120) having at least one attachment member (215, 225) (see Fig. 2); coating the at least one lateral protective member with an anti-reflective material (Paragraph 56); applying to the at least one lateral protective member once the anti- reflective material coating has been applied (Paragraph 56); and attaching the at least one lateral protective member (120) to the recesses (210) of the at least one pair of arms (side extension of frame 110 with temple 120) (see Figs. 1, 2, Paragraphs 29, 55 - any arrangement of the attachment mechanism is a known alternative with predictable results). Farnam discloses the claimed invention, but does not specify applying a marking to make it visibly apparent that a coating has been applied. In the same field of the endeavor, Petsch discloses applying a marking to make it visibly apparent that a coating has been applied (Paragraphs 9, 88). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the method of Farnam with applying a marking to make it visibly apparent that a coating has been applied of Petsch for the purpose of providing information (Paragraphs 5, 9). It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.It has been held that a mere reversal of the essential working parts of an invention involves only routine skill in the art. In re Einstein, 8 USPQ 67. It has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Response to Arguments
Applicant’s arguments with respect to claims 1-6 and 8-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. DeMeio cures the deficiencies of Farnam and addressed the challenged subject matter of independent claims 1 and 8.
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 MAHIDERE S SAHLE whose telephone number is (571)270-3329. The examiner can normally be reached Monday-Thursday 8:00 AM to 5:00 PM.
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.
/MAHIDERE S SAHLE/Primary Examiner, Art Unit 2872 11/22/2025
Prosecution Insights