DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
2. Applicant’s arguments (see Remarks dated 08/27/2025) with respect to claims 1-10 have been considered, but are moot because of the new grounds of rejection.
Claim Rejections - 35 USC § 103
3. The following is a quotation of 35 USC 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.
4. The factual inquiries for establishing a background for determining obviousness under 35 USC 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.
5. Claims 1-3 and 6-9 are rejected under 35 USC 103 as being unpatentable over Grupp (US 5608567 A, of record).
Regarding claim 1, Grupp discloses a sun protection device (Fig. 1) comprising:
at least one optical sun protection filter (column 1 lines 10-13) which has at least one liquid crystal cell (Fig. 2, 12; column 3 lines 20-26) and at least one photochromatic protection element whose transmittance changes depending on the solar irradiation (column 2 lines 4-52, photochromic substance),
a sensor unit (Fig. 2, 22), which is configured at least for detecting solar irradiation (column 3 lines 39-47), and
a control and/or regulating unit (Fig. 2, 18), which is configured at least for controlling and/or regulating a transmittance of the liquid crystal cell depending on the detected solar irradiation (Abstract), wherein the sun protection device further comprises a sensor cover (Fig. 2, 6), covering a sensor surface of the sensor unit (Fig. 2, 6 covers 22) and having a transmittance which corresponds to the transmittance of the photochromatic protection element (Abstract, the transmittance of 6 corresponds to the transmittance of the photochromic substance).
Grupp fails to disclose wherein the liquid crystal cell is not covering the sensor surface.
However, it has been held that a mere rearrangement of elements without modification of the operation of the device involves only routine skill in the art. In re Japiske, 86 USPQ 70 (CCPA 1950). The rearrangement in this case does not modify the operation of the device because Grupp discloses that the sensor may either be arranged in front of or behind all of the optical layers (column 3 lines 53-62). Thus, Grupp’s sensor 22 is capable of accounting for different intensities/wavelengths of light, depending on its placement within the device. In this case, it would have been obvious to one of ordinary skill in the art as of the effective filing date of the invention to place 22 between 6 and 12 (Fig. 2), motivated by achieving a more compact design.
Regarding claim 2, Grupp discloses wherein the optical sun protection filter has a total transmittance which is formed at least by a transmittance of the liquid crystal cell and the transmittance of the photochromatic protection element (claim 5).
Regarding claim 3, Grupp discloses the sun protection device comprising a protective layer which is arranged as the outermost layer on the optical sun protection filter (Fig. 2, 6), the photochromatic protection element being applied on the protective layer or being embedded in the protective layer (column 2 lines 50-52).
Regarding claim 6, Grupp discloses the sun protection device wherein the sensor unit is at least partially arranged between the photochromatic protection element and the liquid crystal cell (Figs 1-2; case law rejection of claim 1).
Regarding claim 7, Grupp discloses the sun protection device comprising a spectacle frame configured for receiving the optical sun protection filter (Fig. 1, frame 2).
Regarding claim 8, Grupp discloses a method of operating the sun protection device (column 2 lines 64-67, “equipping the glasses”).
Regarding claim 9, Grupp discloses wherein the transmittance of the liquid crystal cell is adjusted in at least one method step at least in dependence on the transmittance of the photochromatic protection element (Fig. 2, control circuit 18 & sensor 22).
6. Claims 4 and 10 are rejected under 35 USC 103 as being unpatentable over Grupp in view of Cano et al. (US 20180210233 A1, of record).
Regarding claim 4, Grupp fails to disclose wherein the optical sun protection filter has at least one polarisation layer, wherein the photochromatic protection element is applied on the polarisation layer or is embedded in the polarisation layer.
However, Cano teaches a similar pair of photochromic sunglasses ([0074]), and discloses wherein an optical sun protection filter ([0042] and [0061]) has at least one polarisation layer ([0074]), wherein the photochromatic protection element is applied on the polarisation layer or is embedded in the polarisation layer ([0074])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Grupp and Cano such that the optical sun protection filter had at least one polarisation layer, motivated by mitigating glare.
Regarding claim 10, Grupp fails to disclose a method for manufacturing a sun protection device.
However, Cano teaches a similar pair of photochromic sunglasses ([0074]), and discloses a method for manufacturing a sun protection device ([0085]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Grupp and Cano such that a method of manufacturing was used to manufacture the sun protection device, motivated by allowed for manipulation of parameters of the cell ([0085]).
Conclusion
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Jeffery Jordan whose telephone number is 571-270-7641. The examiner can normally be reached 9:30a-6:00p.
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, Stephone Allen can be reached at 571-272-2434. 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.
/D. J. J./Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872