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 .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/26/2026 has been entered.
Response to Arguments
3. Applicant’s arguments (see Remarks dated 03/26/2026) with respect to claims 1-4 and 6-10 have been fully considered, but they are not persuasive.
On pages 7-8, the applicant alleges that In re Japikse, 6 USPQ 70 (CCPA 1950), as previously cited by the examiner, “is misplaced” because it “is applicable only in circumstances where relocating a component does not change how [a] device operates.”
However, Grupp’s device operates by driving a variable voltage to adjust the absorption of a photochromatic substance (Abstract), and this voltage may be applied “automatically or manually” (column 2 lines 17). Thus, when the voltage is operated manually, there is no indication that re-positioning Grupp’s sensor 22 between 6 and 12 (Fig. 2) would change how the device operates.
On page 9, the applicant explicitly acknowledges that “Grupp discloses…a sensor cover whose transmittance corresponds to the transmittance of the photochromatic element.” However, later in the same paragraph, applicant alleges that “there is no taking into account of any sensor cover with a transmittance that corresponds to the transmittance of the photochromatic element.” These two statements directly contradict one another, and it is unclear what argument the applicant intends to make.
Lastly, the applicant argues that a PHOSITA would not be motivated to reposition Grupp’s sensor as previously argued by the examiner, since this rearrangement would not yield a more compact design. However, integrating the sensor such that its sensor surface were positioned in between the layers would indeed yield a more compact design. There is no basis for the applicant’s rebuttal that “chang[ing] the design…in this manner may cause the design to be less compact.”
The examiner’s previous rejection of claims 1-4 and 6-10 is maintained. New claims 11-12 are rejected below.
Claim Objections
4. Claim 11 is objected to because of the following informalities:
In the last line of claim 11, “the nose cutout” should read “a nose cutout” in order to establish proper antecedent basis
Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. The following is a quotation of 35 USC 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 USC 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.
6. Claim 12 is rejected under 35 USC 112(b) or 35 USC 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 USC 112, the applicant), regards as the invention.
Regarding claim 12, the applicant claims “wherein the sensor unit is outside a user’s direct field of view.” It is unclear whether “direct field of view” refers to everything that a user can see at a given moment, only the central portion of what they can see (excluding their peripherals), or something else. For the purposes of this Office action, the examiner will interpret the claim to read “
Claim Rejections - 35 USC § 103
7. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
8. 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 Japikse, 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); and also discloses that voltages may be driven “automatically or manually” (column 2 lines 17). Thus, Grupp’s sensor 22 is capable of accounting for different amounts 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).
9. 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]).
10. Claims 11-12 are rejected under 35 USC 103 as being unpatentable over Grupp in view of Chandrasekhar et al. (US 20200004050 A1).
Regarding claim 11, 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 Japikse, 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), and also discloses that voltages may be driven “automatically or manually” (column 2 lines 17). Thus, Grupp’s sensor 22 is capable of accounting for different amounts 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.
Modified Grupp fails to explicitly disclose wherein the sensor unit is arranged above the nose cutout.
However, Chandrasekhar teaches a similar sun protection device (Figs. 3-6) comprising liquid crystal (Fig. 4, 42; [0005] & [0038]), electrochromic lenses (Fig. 4, 40), and a sensor for detecting solar irradiation (Figs. 3 & 5-6, 70; [0032]), wherein the sensor is arranged above a nose cutout (Figs. 2-3 & 5-6, 70).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine modified Grupp and Chandrasekhar such that the sensor unit was arranged above a nose cutout, motivated by ensuring that a user’s vision is not impeded by the sensor unit.
Regarding claim 12, as best understood, modified Grupp discloses wherein the sensor unit is outside a user’s direct field of view (Chandrasekhar - Figs. 2-3 & 5-6, 70).
Conclusion
11. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
US 20170031182 A1 discloses a sun protection device comprising liquid crystal and a photochromatic protection element whose transmittance changes depending on solar irradiation, wherein a photosensor is arranged above a nose cutout
CH 704436 B1 discloses a sun protection device comprising liquid crystal, wherein a photosensor is arranged above a nose cutout
12. 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.
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/D. J. J./Examiner, Art Unit 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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