DETAILED ACTION
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.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/16/26 has been entered.
Response to Amendment
The amendments on 01/16/26 have been entered.
Response to Arguments
Applicant’s argument on pages 6-9, filed on 01/16/26 have been fully considered and are not persuasive.
Applicant asserts on pages 6–9 that Jadidian fails to disclose: (i) an antenna disposed on the support structure, (ii) a conductive layer that is separate and distinct from the antenna, and (iii) an antenna that is laterally adjacent to a rim of the lens. Applicant further asserts that Jadidian does not disclose (iv) a conductive layer of the lens that is separate and distinct from the antenna, and (v) a lens modified by removal of a portion of conductive material from the conductive layer that is separated from and proximate to the antenna disposed on the support structure.
The Examiner respectfully disagrees.
With respect to (i), Figures 3 and 4 of Jadidian disclose antenna segments 404 disposed adjacent to the support structure (frame 106). With respect to (ii), Figure 4 and 5 discloses conductive traces 410, 510 that form a conductive layer distinct from the antenna segments 404 with antenna 501. With respect to (iii), Figure 3 shows antenna segments 404 laterally adjacent to the rim, which is part of frame 106 surrounding the lens, With respect to (iv), Figures 4 and 5 discloses conductive traces 410 which is the conductive layer that is separate and distinct from antenna which is antenna segments 404 with 501. With respect to (v), antenna segments 404a, 404b, and 404c with antenna 501 are shown as being separated from the conductive traces 410, thereby disclosing a conductive layer separated from and proximate to the antenna.
Additionally, the Examiner notes that the claim limitation “modified” constitutes a product-by-process limitation. Although product-by-process claims are defined by the recited process, patentability is determined based on the claimed product itself. The patentability of a product does not depend on the method of its manufacture. If the product recited in a product-by-process claim is the same as, or obvious from, a product of the prior art, the claim is unpatentable, even if the prior product was made by a different process. See MPEP § 2113.
Accordingly, Jadidian teaches the claimed product, and the claims are unpatentable over the cited reference.
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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)(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.
Claims 1, 5-12, 15, 16, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jadidian et al. (US 20230099937).
Regarding claim 1, Jadidian teaches a system (fig. 1, 4, and 5) comprising, a support structure (frame 106R, 106L); a lens (502, 104R, 104L) mounted to the support structure (106R, 106L), the lens (502, 104R, 104L) including conductive layer (conductive traces 510, 410) that includes conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)); and an antenna (antenna 501, 102L, 102R, 404, 404b, 404c) disposed on the support structure (106R, 106L), the antenna (501,404, 404b, 404c) distinct from the conductive layer (510, 410) and laterally adjacent to a rim (note: part of the frame that surrounds the lens) of the lens (104R, 104L), wherein the lens (502, 104R, 104L) is modified by removal of a portion of the conductive material from the conductive layer (510) separated from and proximate to the antenna (501) such that the antenna (501) is spaced (shown below in annotated figure 5) from the conductive material (510) by a distance, to reduce electrical coupling (note: reducing coupling means minimizing the interaction to prevent antenna’s signal from being adversely affected by the conductive material in the lens, which could degrade performance. It done by spacing the conductive materials to lessen electromagnetic interaction between the antenna and the conductive layer) between the antenna (501) and the layer of conductive material (510) in the lens (502, 104R, 104L) when the conductive material (510) is electrically activated.
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Regarding claim 5, Jadidian teaches the system of claim 1, wherein the distance corresponds to a minimum distance (shown in fig. 5 above) between the antenna (501) and the conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)) of the conductive layer (510) that is sufficient for the antenna to operate at a minimum radiated power for the antenna (¶23).
Regarding claim 6, Jadidian teaches the system of claim 1, wherein the conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)) covers at least at minimum specified portion (shown in fig. 5 above) of the lens (502, 104R, 104L).
Regarding claim 7, Jadidian teaches the system of claim 6, wherein the removal of the portion of the conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu); annotated and shown above in fig. 5) comprises etching of the material conductive material (510) from the lens (502, 104R, 104L). Also, the examiner notes that claim limitation of “etching” can be considered as product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113. Jadidian teaches claim product.
Regarding claim 8, Jadidian teaches the system of claim 6, wherein an amount of conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)) removed from the lens (502, 104R, 104L) is determined based on a minimum radiated power specified for use by the antenna (501) and a layer of insulating material (¶35, insulating layer 508) applied to the lens to increase electrical resistance between the antenna (501) and the conductive layer (510, top of 508). Because the structure of the claimed system, as identified above and in she original action, is the same as that claimed, it must inherently perform the same function and property. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Regarding claim 9, Jadidian teaches the system of claim 6, wherein an amount of conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)) removed from the lens (502, 104R, 104L) is determined based on a specified maximum amount of signal loss for the antenna (501). Because the structure of the claimed system, as identified above and in she original action, is the same as that claimed, it must inherently perform the same function and property. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Regarding claim 10, Jadidian teaches the system of claim 1, wherein an antenna feed (¶35, conductive film 506 may comprise a plurality of antenna segments with any suitable antenna layout) of the antenna (501) is routed away from the conductive layer (510) by at least the distance (shown in annotated fig. 5 above). Because the structure of the claimed system, as identified above and in she original action, is the same as that claimed, it must inherently perform the same function and property. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). MPEP §2114.
Regarding claim 11, Jadidian teaches the system of claim 10, wherein one or more traces of the antenna (¶35, conductive film 50 may comprise a plurality of antenna segments with any suitable antenna layout) are routed to a position on the support structure (106R, 106L) that is at least the distance away from the conductive layer (510).
Regarding claim 12, Jadidian teaches the system of claim 1, wherein the lens (502, 104R, 104L) includes an insulating material (insulating layer 508) disposed between the antenna (501 comprising 506) and the conductive layer (510) to increase a surface resistance (508 is an insulating layer) of the conductive material (510).
Regarding claim 15, Jadidian teaches a wearable device (fig. 1 and 5) comprising, a support structure (frame 106R, 106L); a lens (502, 104R, 104L) mounted to the support structure (106R, 106L), the lens (502, 104R, 104L) including at least one conductive layer (conductive traces 510) that includes conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)); and an antenna (antenna 501, 102L, 102R) disposed on the support structure (106R, 106L), the antenna (501, 404, 404b, 404c) distinct form the conductive layer (510, 410) and laterally adjacent to a rim (note: part of the frame that surrounds the lens) of the lens (104R, 104L), wherein the lens (502, 104R, 104L) is modified by removal of a portion of the conductive material form the conductive layer (510) separated from and proximate to the antenna (501) such that the antenna (501) is spaced (shown above in annotated figure 5) from the conductive material (510) by the distance, to reduce electrical coupling (note: reducing coupling means minimizing the interaction to prevent antenna’s signal from being adversely affected by the conductive material in the lens, which could degrade performance. It done by spacing the conductive materials to lessen electromagnetic interaction between the antenna and the conductive layer) between the antenna (501) and the layer of conductive material (510) in the lens (502, 104R, 104L) when the conductive material (510) is electrically activated. Also, the examiner notes that claim limitation of “modified” can be considered as product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113. Jadidian teaches claim product.
Regarding claim 16, Jadidian teaches the wearable device of claim 15, wherein an antenna feed (¶35, conductive film 506 may comprise a plurality of antenna segments with any suitable antenna layout) associated with the antenna (501) is routed at least a minimum specified distance away from the conductive layer (510) of the lens (shown in annotated fig. 5 above).
Regarding claim 20, Jadidian teaches a method of manufacturing (fig. 1 and 5) comprising, providing a support structure (frame 106R, 106L); mounting a lens (502, 104R, 104L) to the support structure (106R, 106L), the lens (502, 104R, 104L) including at least one conductive layer (conductive traces 510) that includes conductive material (¶36, conductive traces 510 may comprise a conductive metal (e.g., Au, Ag, Cu)); and disposing an antenna (antenna 501, 102L, 102R) on the support structure (106R, 106L), the antenna (501, 404, 404b, 404c) distinct from the conductive layer (510, 410) and laterally adjacent to a rim (note: part of the frame that surrounds the lens) of the lens (104R, 104L), wherein the lens (502, 104R, 104L) is modified by removal of a portion of the conductive material from the conductive layer (510) separated from and proximate to the antenna (501) such that the antenna (501) is spaced (shown above in annotated figure 5) from the conductive material (510) by a distance, to reduce electrical coupling (note: reducing coupling means minimizing the interaction to prevent antenna’s signal from being adversely affected by the conductive material in the lens, which could degrade performance. It done by spacing the conductive materials to lessen electromagnetic interaction between the antenna and the conductive layer) between the antenna (501) and the layer of conductive material (501) in the lens (502, 104R, 104L) when the conductive material (510) is electrically activated.
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Jadidian et al. US 20230099937) as applied to claim 1 above, and further in view of Biver et al. (US 20240045298).
Regarding claim 2, Jadidian teaches the invention as set forth above but does not specifically teach wherein the conductive layer of the lens comprises an active dimming layer configured to actively dim incoming light when the conductive material is electrically activated. However, in a similar field of endeavor, Biver teaches the system, wherein the conductive layer of the lens comprises an active dimming layer configured to actively dim incoming light (¶89, the EC cells have a higher transmittance in the passive state and become darker in the active state) when the conductive material is electrically activated (¶90, the electronic system configured to control the lens; note: the conductive material that is used to transmit a signal). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the system of Jadidian with the conductive layer of the lens comprises an active dimming layer configured to actively dim incoming light when the conductive material is electrically activated of Biver, for the purpose of modifying on demand the color and transmittance (¶89).
Regarding claim 3, Jadidian teaches the invention a set forth above and Biver further teaches
the conductive material of the active dimming layer (¶36, electrically conductive layer) comprises a transparent conductive oxide (¶36 and ¶37, comprises of transparent conductive oxide (TCO)). Motivation to combine is the same as in claim 2.
Regarding claim 4, Jadidian teaches the invention a set forth above and Biver further teaches the conductive material of the active dimming layer (¶36, electrically conductive layer) comprises indium tin oxide (¶36 and ¶37, comprises of ITO). Motivation to combine is the same as in claim 2.
Claims 13, 14, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Jadidian et al. (US 20230099937) as applied to claim 10 above, and further in view of Ross-Messemer (US 20090212953).
Regarding claim 13, Jadidian teaches the invention as set forth above but does not specifically teach the lens includes one or more slits cut into the conductive layer of the lens to increase a surface resistance of the conductive material. However, in a similar field of endeavor, Ross-Messemer teaches the system, wherein the lens includes one or more slits (700, line coming from the circle shown in fig. 7 and 7a, there is a space between them which can be considered a slit) cut into the conductive layer of the lens to increase a surface resistance of the conductive material (¶19, transparent and electrically conductive coating and ¶26, TCO, note: it would be inherent to have some form of surface resistance). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the system of Jadidian with the lens includes one or more slits cut into the conductive layer of the lens to increase a surface resistance of the conductive material of Ross-Messemer, for the purpose of the antenna being configured to be optically transparent (¶43). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art unless a new and unexpected result is produced. In re Harza, 124 USPQ 378 (CCPA 1960). Also, the examiner notes that claim limitation of “cutting” can be considered as product by process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Regarding claim 14, Jadidian in view of Ross-Messemer teaches the invention as set forth above and Ross-Messemer further teaches wherein the slits cut into the conductive layer (¶19, transparent and electrically conductive coating and ¶26, TCO) of the lens (700) comprise non-visible slits (700, line coming from the circle shown in fig. 7 and 7a, there is a space between them which can be considered a slit and the slit is clear therefore not visible). Motivation to combine is the same as in claim 13.
Regarding claim 17, Jadidian teaches the invention as set forth above but does not specifically teach wherein the antenna is modified to include thickness of the conductive material on the conductive layer. However, in a similar field of endeavor, Ross-Messemer teaches the system, wherein the antenna (710) is modified to include thickness of the conductive material (¶19 and ¶26, TCO) on the conductive layer (¶19 and ¶26, TCO). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the system of Jadidian with wherein the antenna is modified to include thickness of the conductive material on the conductive layer of Ross-Messemer, for the purpose of the antenna being configured to be optically transparent (¶43). Further, it has been held that a mere change in shape of an element is generally recognized as being within 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, 357 F.2d 669 (CCPA 1966). The shape of increasing the thickness within the lens does not change the their functions.
Regarding claim 18, Jadidian teaches the invention as set forth above but does not specifically teach wherein the antenna is configured to include one or more slits formed into the conductive layer of the lens. However, in a similar field of endeavor, Ross-Messemer teaches the wearable device, wherein the antenna is configured to include one or more slits formed into the conductive layer of the lens (¶19, transparent and electrically conductive coating and ¶26, TCO; line coming from the circle shown in fig. 7 and 7a, there is a space between them which can be considered a slit). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the system of Jadidian with wherein the antenna is configured to include one or more slits formed into the conductive layer of the lens of Ross-Messemer, for the purpose of the antenna being configured to be optically transparent (¶43). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art unless a new and unexpected result is produced. In re Harza, 124 USPQ 378 (CCPA 1960).
Regarding claim 19, Jadidian teaches the invention as set forth above but does not specifically teach wherein the slit comprises at least one of a length of the slits, a shape of the slits, or a placement of the slits on the conductive layer of the lens to reduce electrical coupling. However, in a similar field of endeavor, Ross-Messemer teaches the wearable device, wherein the slit comprises at least one of a length of the slits, a shape of the slits, or a placement of the slits on the conductive layer of the lens to reduce electrical coupling (700, line coming from the circle shown in fig. 7 and 7a, there is a space between them which can be considered a slit). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the system of Jadidian with wherein the slit comprises at least one of a length of the slits, a shape of the slits, or a placement of the slits on the conductive layer of the lens to reduce electrical coupling of Ross-Messemer, for the purpose of the antenna being configured to be optically transparent (¶43). Further, it has been held that a mere change in shape of an element is generally recognized as being within 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, 357 F.2d 669 (CCPA 1966). The change of the slit shape within the lens does not change the their functions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY DUONG whose telephone number is (571)270-0534. The examiner can normally be reached Monday-Friday from 9:00 AM to 5:00 PM.
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/HENRY DUONG/Primary Patent Examiner, Art Unit 2872 02/07/26