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 .
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 3-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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. Evidence that claim 1 fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the reply filed 8/13/2025. In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant has stated optical element to mean frame, and this statement indicates that the invention is different from what is defined in the claim(s) because in the art an optical element is specifically a lens or mirror or something with optical power. Therefore the claim is indefinite as it utilizes optical element and optic element in the same claim. In the art, these terms are synonymous. They would not be used to describe the structure of the eyewear such as a frame.
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.
Claim(s) 1-4, 7, 9-18, and 20 is/are rejected under 35 U.S.C. 102(a1,a2) as being anticipated by Cross (US 20016/0327810 A1).
Re claim 1, Cross teaches removable reading glasses (see paragraphs 0009 and 0016 eyesight needs/corrections) for a diving mask or goggles comprising a one-piece optical element (see figure 2 numeral 110 and paragraph 0050), the optical element comprising a curved nose section adapted to bridge a nose section of the diving mask or goggles (see this section in figure 2, limitations disclosed in center nose section), two optic elements at each side of the nose section functioning as a lens (see numeral 101), wherein each optical element individually provides a positive or negative lens function (see paragraphs 0016 this implicitly discloses negative and positive values as those are basic and ordinary methods of correction) and the optical element comprising at each side thereof a fastening section for receiving a fastener (see paragraph 0050 and figure 8).
Re claim 3, Cross teaches characterized in that the inner surfaces of optic elements are substantially flat (see paragraph 0048, flush with planar surface).
Re claim 4, Cross teaches comprising a flexible fastener for attaching to a head of a user (see numeral 38 holds element to the head of the user).
Re claim 7, Cross teaches wherein the one-piece optical element is made of an optically transparent polymer (see paragraph 0049, see through numeral 100).
Re claim 9, Cross teaches wherein the fastening section each individually comprises a friction piece and a metal friction piece, the friction piece preventing the removable reading glasses in use from shifting over the diving mask or goggles, wherein optionally the fastening section comprises a removably attachable closure (see paragraphs 0032-0034 tabs, magnets fill in as friction pieces and metal).
Re claim 10, Cross teaches wherein the attachment means are configured to allow attachment of the optical structure to the head of the user, even if the ears of the user are covered (numeral 38 does not interfere or require engagement with the ears).
Re claim 11, Cross teaches wherein each optical element comprises an engagement surface for engaging an outer surface of the goggles/diving mask (see paragraph 0048, flush with planar surface).
Re claim 12, Cross teaches characterized in that the engagement surface(s) are substantially flat (see paragraph 0048, flush with planar surface).
Re claim 13, Cross teaches characterized in that the engagement surface(s) protrude from the optical structure (see paragraph 0013 protrusion).
Re claim 14, Cross teaches characterized in that the engagement surfaces(s) are made of a material that provides friction between the engagement surfaces and the goggles, when in use (see paragraph 0013 latch tab utilizes friction, 0033 clamping).
Re claim 15, Cross teaches characterized in that the engagement surface(s) are provided at opposite ends of the reading glasses (see numerals 51 and 52 located on at least both lateral ends).
Re claim 16, Cross teaches characterized in that engagement surfaces are provided along two or more edges of the reading glasses (see numerals 51 and 52 located on at least both lateral ends).
Re claim 20, Cross teaches a diving mask or goggles comprising removable reading glasses according to claim 1 (see paragraph 0010).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Cross (US 20016/0327810 A1) in view of Kirsch et al CA 2266181 A1.
Re claim 5, Cross does not explicitly disclose wherein the curved nose section is more flexible than the remainder of the reading glasses.
However, in the same area of art secondary glasses for attachment Kirsch et al disclose wherein the curved nose section is more flexible than the remainder of the reading glasses (see figure 1 and page 4. 26-35 spring like mounting strip 12).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the device of Cross to include the curved nose section is more flexible than the remainder of the reading glasses as taught by Kirsch et al for the predictable result of providing a cheaper and more efficient solution to vision correction than a second pair of glasses (see Kirsch page 3, lines 29-34)
Re claim 6, Cross does not explicitly disclose wherein the curved nose section comprises a resilient element.
However, in the same area of art secondary glasses for attachment Kirsch et al disclose wherein the curved nose section comprises a resilient element (see figure 1 and page 4. 26-35 spring like mounting strip 12).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the device of Cross to include the curved nose section comprises a resilient element as taught by Kirsch et al for the predictable result of providing a cheaper and more efficient solution to vision correction than a second pair of glasses (see Kirsch page 3, lines 29-34).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Cross (US 20016/0327810 A1) in view of Gerton (US 2016/0327810 A1).
Re claim 8, Cross does not explicitly disclose wherein the one-piece optical element is a cast element.
However in the same area of art attachments for goggles Gerton teaches wherein the one-piece optical element is a cast element (see paragraph 0029)
Therefore, it would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the device of Cross to include the one-piece optical element is a cast element as taught by Gerton for the predictable result of improving vision in an underwater environment (see paragraph 0012)
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Cross (US 20016/0327810 A1)
Re claim 19, Cross does not explicitly disclose wherein a height of the optic elements is from 1-5 cm, and wherein a thickness of the reading glasses varies between 3-15 mm, and wherein an upper part of the reading glasses is substantially straight, and wherein a lower part of the reading glasses is curved, and wherein a height of the curved nose section is 8-30 mm, and wherein the optic elements are substantially flat, and wherein the optic elements comprise Fresnel lenses, and wherein a refractive index of the optic elements is between 1.25 and 1.5, and wherein the curved nose section is adapted to fit to a diving mask or goggles when used in a lowest position, and comprising a coating selected from a protective coating, a natural or artificial rubber coating, and combinations thereof.
However, the examiner notes that these are standard features and options available when designing and choosing vision corrective eyewear and have been many years before the filing of the application. They allow one to customize the prescription, visual field and durability to One can find such adjustments in eyewear for sale and in public domain for decades. These are old facts, well known and of so noticed as of notorious character and such would be obvious to one having ordinary skill in the art to adjust these parameters in order to optimize the optical performance and durability of eyewear for a particular patient or wearer (See MPEP 2144.03).
Response to Arguments
Applicant's arguments filed 8/13/2025 have been fully considered but they are not persuasive.
The applicant’s claim uses two synonymous terms to mean different things. An optical element is the optical portion of eyewear in the art. The frame is not optical in nature unless the elements are unitary and formed as one whole element. However the applicant’s claim shows they are distinct structures and not unitary. The examiner cites MPEP 2173.05(a)
Consistent with the well-established axiom in patent law that a patentee or applicant is free to be his or her own lexicographer, a patentee or applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings if the written description clearly redefines the terms. See, e.g., Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) ("While we have held many times that a patentee can act as his own lexicographer to specifically define terms of a claim contrary to their ordinary meaning," in such a situation the written description must clearly redefine a claim term "so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term."); Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 15 USPQ2d 1039 (Fed. Cir. 1990). Accordingly, when there is more than one meaning for a term, it is incumbent upon applicant to make clear which meaning is being relied upon to claim the invention. Until the meaning of a term or phrase used in a claim is clear, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate. It is appropriate to compare the meaning of terms given in technical dictionaries in order to ascertain the accepted meaning of a term in the art. In re Barr, 444 F.2d 588, 170 USPQ 330 (CCPA 1971). See also MPEP § 2111.01.
All arguments based upon this distinction are nonvalid as the examiner applied the common definition and the lenses are held in place as claimed.
The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). MPEP § 2131
It is noted that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))." MPEP §2123.
The examiner encourages the applicant to amend the claims to clarify the difference between the two structures without utilizing virtually identical terms, one of which is being used contrary to its typical meaning without proper documentation in the specification. If the applicant makes amendments and requests an interview the examiner would be open to discussion.
Conclusion
THIS ACTION IS MADE FINAL. 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 JAMES R GREECE whose telephone number is (571)272-3711. The examiner can normally be reached 8-4.
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, Allana Bidder can be reached at 571-272-5560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R GREECE/Supervisory Patent Examiner, Art Unit 2875