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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/5/2026 has been entered.
Status of Claims
Claim(s) 1, 3-7, 9-16, 18-25 is/are pending of which Claim(s) 1 and 16 is/are presented in independent form.
All references relied up on and not cited in the current Form 892 may be found in previous 892's or IDS'.
Response to Arguments
Applicant's arguments filed 6/5/2026 have been fully considered but they are not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, in the rejections below motivations/teachings/suggestions are all provided for the 103 combinations. Applicant appears to be arguing claim limitations that were not provided via 103 combination but a finding of the primary reference.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Applicant appears to be using a different interpretation of a “longitudinal axis” than is claimed, as the indicated longitudinal axes of the headband portions 22a/22b of Leonardi are longitudinal axes of those portions even with such discussed bifurcation) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further appears to argue against design choice where there is a difference in function of the prior art and the claimed invention; however, there does not appear to be any evidence for how the prior art is different in function than the present application.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Drawings
The drawings are objected to because the Figure 4 submitted on 12/30/2025 provides for the acute angle ß however the previous Figure 4 of 1/6/2023 has a drawn and shown angle lambda which is now missing. The drawings should be corrected to show the missing figure information. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 1, 3-7, 9-15 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 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 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a lower edge of the headband” in line 11, wherein there is already a previous recited as amended “a lower edge” in line 3. Thus, the claim as written has two structures with the same claim term and as such claim 1 is rejected under 112b for lack of clarity. Examiner presumes this should be -the lower edge of the headband-.
Claims 3-7, 9-15 rejected as being dependent on claim 1.
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.
Claim(s) 1, 3-7, 9-16, 18-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Leonardi (US5183059A) in view of Goffman (US4862902A).
Regarding claim 1, Leonardi discloses an eye patch for use by a patient (Fig. 1-6; wherein the examiner is interpreting the eye patch as a piece of material fit over the eye socket area), comprising:
a continuous headband 22 having a longitudinal axis (Fig. 1 and 4; the two part band 22 is the headband therein, as seen in the annotated figure 1 the longitudinal axis of each strap 22a and 22b is drawn when worn, wherein the flexible straps may be manipulated therein when non-worn to be in such a position as well, being continuous between its two ends therein), wherein at least a portion of the headband 22 is formed of elastic material (Col. 6, lines 57-61),
wherein the headband 22 has an upper edge 22b and a lower edge 22a (Fig. 1 and 4);
a mount assembly 12 having first sheet of material positioned in opposition to a second sheet of material (Fig. 6, the mount assembly 12 as shown has a bottom and top sheet on the shell 11), the first and second sheets being connected about a portion of the respective circumferential edges of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (Fig. 5-6, wherein the two sheets as shown are joined at their circumferential edges therein to form the structure as a whole, wherein a pocket is formed between the two sheets to hold the shell 11 therein);
wherein the opposed first and second sheets define a central opening in the mount assembly 12 (Fig. 4-6, a central opening is formed wherein the shell 11 is placed and covering said central opening) wherein the mount assembly 12 is coupled to a portion of an exterior surface of the headband 22 (Fig. 4-6, headband 22 is connected to the mount assembly 12 thus so is its surfaces including its exterior surfaces therein) such that a major axis of the central opening is positioned at an acute angle ß with respect to the longitudinal axis of the headband 22 and with respect to a lower edge 22a of the headband 22 (See Annotated Fig. 1 below, wherein the longitudinal axis and major axis of the central opening are easily seen to make an acute angle ß with respect to a long axis of the headband and the lower edge 22a);
a strap 14 mounted to and extending outwardly from a portion of the circumferential edges of the first and second sheets of the mount assembly 12 (Fig. 4, strap 14 mounted to and extending from the circumferential edges of assembly 12 therein), in a non-worn position, the strap 14 extends along an axis generally coaxial to the major axis of the central opening (See Annotated Fig. 1, which shows the strap 14 in a worn configuration having the same axis as the major axis of the central opening, thus being co-axial therein, wherein while Fig. 1 shows this configuration in a worn state, the straps can be in this position in a non-worn state as the straps are flexible as shown, for an example one may lay out the device on a table and place the flexible straps in the positions as shown in a worn state, thus also being present in a non-worn state);
wherein at least a portion of the strap 14 is formed of elastic material (Col. 6, lines 57-61) and wherein a distal end portion 28 of the strap 14 is configured to be selectively and releasably coupled to a rear portion 26 of the headband 22 to ensure a desired degree of tension is placed on the strap 14 and the coupled mount assembly 12 to assure the seated secure non-adhesive positioning of the mount assembly 12 to the patient is achieved in a mounted position (Fig. 1-3 shows the mounted positions of the device; Col. 3 lines 15-27, the ends 28 and 26 are releasable and selectively attached therein, wherein as the attachment is performed on a head of a user there will be a formed tension formed within the elastic straps therein).
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Leonardi fails to explicitly disclose the opening being elliptically shaped therein, a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22.
However, Goffman teaches an analogous mount assembly having an analogous first sheet of material positioned in opposition to an analogous second sheet of material, the first (See Annotated Fig. 2 below; fabric cover 58) and second sheets (See Annotated Fig. 2 below; interior surfaces 61) being connected about a portion of the respective circumferential edges (See Annotated Fig. 2 below; elastic means 59) of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (See Annotated Fig. 2 below); wherein the opposed first and second sheets define an elliptically shaped central opening in the mount assembly (See Annotated Fig. 2 below; wherein the examiner notes the central opening is capable of taking an elliptical shape).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to modify the pocket of the mount assembly 12 of Leonardi to have the central opening being elliptically shaped therein as taught by Goffman to provide an improved pocket with a purpose of removably receiving an eye shield, would improve post-surgical care as it would allow for periodic cleaning and inspection of the eye and allows users to interchange the eye shields as needed.
Leonardi as combined fails to explicitly recite a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22.
However, Leonardi (Annotated Fig. 1) shows how the longitudinal axis of the headband 22 and the lower edge 22a are movable via being flexible straps (See Fig. 1-3 of Leonardi), such that as combined with Goffman the focus of the elliptically shaped central opening would be capable of being positioned such that it is between one of the longitudinal axis and the lower edge 22 of Leonardi considering that the position of the eye covering and the headband structures are implicitly flexible/movable (Fig. 1-3 of Leonardi).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have understood that the apparatus of Leonardi as combined with Goffman is capable of having the focus of the elliptically shaped central opening to be positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22.
Furthermore, Applicant’s application fails to provide any significant functionality to the positioning of the focus of the ellipse shape of the central opening relative to the longitudinal axis and lower edge of the headband. Applicant’s paragraph [0037] recites “Optionally, the focus F of the elliptically shaped central opening 50 can be positioned between the longitudinal axis L of the headband 30 and the lower edge 34 of the headband” which is the only discussion of the focus as claimed. Thus, the focus positioning appears to be merely a design choice of shape with little patentable weight.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have also modified Leonardi/Goffman as combined such that a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22, as firstly, as changes in shape have been held to be a matter of design choice absent persuasive evidence that the particular configuration of the claimed shape was significant. See MPEP 2144(IV)(B) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), and secondly, as a matter of Rearrangement by Parts MPEP 2144.IV.C “Rearrangement by Parts” states: “In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). The positioning of the focus relative to the headband does not appear to have any functionality that specifically modifies the operation of the present invention.
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Regarding Claim 3, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi further discloses wherein a portion of the circumferential edges of the first and second sheets 12 is positioned proximate the upper edge 22b of the headband 22 (Fig. 4, the upper edge 22b is proximate near the circumferential edge of the sheets 12).
Regarding Claim 4, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 30 degrees to about 60 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 30 to 60 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 30 degrees to about 60 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 5, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 40 degrees to about 50 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 40 to 50 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 40 degrees to about 50 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 6, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß is about 45 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 45 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 40 degrees to about 50 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 7, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi discloses the eye patch is reversible and can be configured to be worn on either the left or right eye of the patient (Fig. 1-6; wherein the eye patch is capable of being reversible as it can be configured to the user by simply flipping the eye patch).
Regarding Claim 9, Leonardi in view of Goffman discloses the invention of claim 1 above.
Leonardi further discloses an eye shield 11, having a generally ovoid shape and a peripheral edge (Fig. 1-6; ovate shell 11), wherein the eye shield 11 is configured to be selectably seated within the pocket of the mount assembly 12 (Fig. 6; wherein the shell 11 is placed within the pocket formed by the mount assembly 12).
Regarding Claim 10, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein the generally ovoid shape is a generally teardrop shape (Fig. 1-6; ovate shell 11 is a teardrop shape).
Regarding Claim 11, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein the eye shield 11 is rigid (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum thus is rigid) and the peripheral edge is shaped to conform to the facial contours of the patient (Fig. 1-6, wherein the shell 11 and its edges is concave on the interior thus matching an external convex curve of a face, as shown in Fig. 1-3 the shell conforms to area around the eye; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 12, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi further discloses wherein at least a portion of the eye shield 11 is deformable to allow the peripheral edge of the eye shield 11 to deform to the facial contours of the patient (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum, wherein these materials are deformable under with enough mechanical pressure or addition of heat thus being able to deform to the facial contours of the patient; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 13, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi fails to disclose an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield.
However, Goffman teaches an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield (Fig. 2 and 3, Col. 3, lines 54-56; annular cover member 57).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to incorporate the annular cover member 57 of Goffman such that it overlies the eye shield of Leonardi to provide an improved eye patch as the annular cover member protects the user from the rigid edges of the eye shield.
Regarding Claim 14, Leonardi in view of Goffman discloses the invention of claim 9 above.
Leonardi discloses wherein a portion of respective circumferential edges of the first and second sheets of the mount assembly 12 defines an access opening thereto the circumferentially extending pocket (See Annotated Fig. 6 below, wherein the cushion 12 formed by the defined first and second “sheets”, has an access opening into the pocket that the shell 11 resides), wherein the access opening has an elongate length that is configured to allow passage of the eye shield 11 into the circumferentially extending pocket (Fig. 1-6 and Annotated Fig. 6, the access opening implicitly would have an elongated length therein for receiving the shell 11); and
wherein the access opening is configured to be selectively opened or sealed by the patient to selectively seat the eye shield 11 therein the circumferentially extending pocket (Annotated Fig. 6, the access opening is implicitly capable of being opened as the cushion 12 is elastomeric, Col. 2 lines 40-53, thus able to opened to place or remove the shell 11 therein).
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Regarding Claim 15, Leonardi in view of Goffman discloses the invention of claim 14 above.
Leonardi in view of Goffman discloses wherein the elongate length of the access opening (Annotated Fig 6) has a length that is at least a length of the minor axis of the elliptically shaped central opening (Fig. 1-6 of Leonardi as modified by Goffman, the elongate length of the access opening is clearly as long as the minor axis of an ellipse, being at least the length of a major axis of an ellipse).
Regarding claim 16, Leonardi discloses a reversible eye patch configured to be worn on either the left or right eye of the patient (Fig. 1-6; wherein the examiner is interpreting the eye patch as a piece of material fit over the eye socket area, the patch clearly reversible in position on the user for the right or left eye), comprising:
a continuous headband 22 having a longitudinal axis (Fig. 1 and 4; the two part band 22 is the headband therein, as seen in the annotated figure 1 the longitudinal axis of each strap 22a and 22b is drawn when worn, wherein the flexible straps may be manipulated therein when non-worn to be in such a position as well, being continuous between its two ends therein), wherein at least a portion of the headband 22 is formed of elastic material (Col. 6, lines 57-61),
wherein the headband 22 has an upper edge 22b and a lower edge 22a (Fig. 1 and 4);
a mount assembly 12 having first sheet of material positioned in opposition to a second sheet of material (Fig. 6, the mount assembly 12 as shown has a bottom and top sheet on the shell 11), the first and second sheets being connected about a portion of the respective circumferential edges of the first and second sheets and define a circumferentially extending pocket between the respective inner surfaces of the first and second sheets (Fig. 5-6, wherein the two sheets as shown are joined at their circumferential edges therein to form the structure as a whole, wherein a pocket is formed between the two sheets to hold the shell 11 therein);
wherein the opposed first and second sheets define a central opening in the mount assembly 12 (Fig. 4-6, a central opening is formed wherein the shell 11 is placed and covering said central opening) wherein the mount assembly 12 is coupled to a portion of an exterior surface of the headband 22 (Fig. 4-6, headband 22 is connected to the mount assembly 12 thus so is its surfaces including its exterior surfaces therein) such that a major axis of the central opening is positioned at an acute angle ß with respect to the longitudinal axis of the headband 22 and with respect to a lower edge 22a of the headband 22 (See Annotated Fig. 1 below, wherein the longitudinal axis and major axis of the central opening are easily seen to make an acute angle ß with respect to a long axis of the headband and the lower edge 22a);
an eye shield 11, having a generally ovoid shape and a peripheral edge (Fig. 1-6; ovate shell 11), wherein the eye shield 11 is configured to be selectably seated within the pocket of the mount assembly 12 (Fig. 6; wherein the shell 11 is placed within the pocket formed by the mount assembly 12),
a portion of respective circumferential edges of the first and second sheets of the mount assembly 12 defines an access opening thereto the circumferentially extending pocket (See Annotated Fig. 6 below, wherein the cushion 12 formed by the defined first and second “sheets”, has an access opening into the pocket that the shell 11 resides), wherein the access opening has an elongate length that is configured to allow passage of the eye shield 11 into the circumferentially extending pocket (Fig. 1-6 and Annotated Fig. 6, the access opening implicitly would have an elongated length therein for receiving the shell 11); and
wherein the access opening is configured to be selectively opened or sealed by the patient to selectively seat the eye shield 11 therein the circumferentially extending pocket (Annotated Fig. 6, the access opening is implicitly capable of being opened as the cushion 12 is elastomeric, Col. 2 lines 40-53, thus able to opened to place or remove the shell 11 therein),
a strap 14 mounted to and extending outwardly from a portion of the circumferential edges of the first and second sheets of the mount assembly 12 (Fig. 4, strap 14 mounted to and extending from the circumferential edges of assembly 12 therein), in a non-worn position, the strap 14 extends along an axis generally coaxial to the major axis of the central opening (See Annotated Fig. 1, which shows the strap 14 in a worn configuration having the same axis as the major axis of the central opening, thus being co-axial therein, wherein while Fig. 1 shows this configuration in a worn state, the straps can be in this position in a non-worn state as the straps are flexible as shown, for an example one may lay out the device on a table and place the flexible straps in the positions as shown in a worn state, thus also being present in a non-worn state);
wherein at least a portion of the strap 14 is formed of elastic material (Col. 6, lines 57-61) and wherein a distal end portion 28 of the strap 14 is configured to be selectively and releasably coupled to a rear portion 26 of the headband 22 to ensure a desired degree of tension is placed on the strap 14 and the coupled mount assembly 12 to assure the seated secure non-adhesive positioning of the mount assembly 12 to the patient is achieved in a mounted position (Fig. 1-3 shows the mounted positions of the device; Col. 3 lines 15-27, the ends 28 and 26 are releasable and selectively attached therein, wherein as the attachment is performed on a head of a user there will be a formed tension formed within the elastic straps therein).
Leonardi as combined fails to explicitly recite a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22.
However, Leonardi (Annotated Fig. 1) shows how the longitudinal axis of the headband 22 and the lower edge 22a are movable via being flexible straps (See Fig. 1-3 of Leonardi), such that as combined with Goffman the focus of the elliptically shaped central opening would be capable of being positioned such that it is between one of the longitudinal axis and the lower edge 22 of Leonardi considering that the position of the eye covering and the headband structures are implicitly flexible/movable (Fig. 1-3 of Leonardi).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have understood that the apparatus of Leonardi as combined with Goffman is capable of having the focus of the elliptically shaped central opening to be positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22.
Furthermore, Applicant’s application fails to provide any significant functionality to the positioning of the focus of the ellipse shape of the central opening relative to the longitudinal axis and lower edge of the headband. Applicant’s paragraph [0037] recites “Optionally, the focus F of the elliptically shaped central opening 50 can be positioned between the longitudinal axis L of the headband 30 and the lower edge 34 of the headband” which is the only discussion of the focus as claimed. Thus, the focus positioning appears to be merely a design choice of shape with little patentable weight.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have also modified Leonardi/Goffman as combined such that a focus of the elliptically shaped central opening is positioned between the longitudinal axis of the headband 22 and the lower edge 22a of the headband 22, as firstly, as changes in shape have been held to be a matter of design choice absent persuasive evidence that the particular configuration of the claimed shape was significant. See MPEP 2144(IV)(B) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), and secondly, as a matter of Rearrangement by Parts MPEP 2144.IV.C “Rearrangement by Parts” states: “In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). The positioning of the focus relative to the headband does not appear to have any functionality that specifically modifies the operation of the present invention.
Regarding Claim 18, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi further discloses wherein a portion of the circumferential edges of the first and second sheets 12 is positioned proximate the upper edge 22b of the headband 22 (Fig. 4, the upper edge 22b is proximate near the circumferential edge of the sheets 12).
Regarding Claim 19, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 30 degrees to about 60 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 30 to 60 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 30 degrees to about 60 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 20, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß ranges from about 40 degrees to about 50 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 40 to 50 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 40 degrees to about 50 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 21, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman does not disclose wherein the acute angle ß is about 45 degrees.
However, one of ordinary skill in the art would see Figure 1 of Leonardi, and firstly be able to know that the straps 22a/22b are placed into acute angles relative the major axis of the eye patch, wherein acute angles are known in the art to be less than ninety degrees including 45 degrees.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 40 degrees to about 50 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have provided wherein the acute angle ß ranges from about 30 degrees to about 60 degrees as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP § 2144.05; wherein the Figure 1 of Leonardi may be optimized to have the acute angles as claimed herein.
Regarding Claim 22, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi further discloses wherein the eye shield 11 is rigid (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum thus is rigid) and the peripheral edge is shaped to conform to the facial contours of the patient (Fig. 1-6, wherein the shell 11 and its edges is concave on the interior thus matching an external convex curve of a face, as shown in Fig. 1-3 the shell conforms to area around the eye; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 23, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi further discloses wherein at least a portion of the eye shield 11 is deformable to allow the peripheral edge of the eye shield 11 to deform to the facial contours of the patient (Col. 2 lines 40-53, shell 11 is plastic or a metal such as aluminum, wherein these materials are deformable under with enough mechanical pressure or addition of heat thus being able to deform to the facial contours of the patient; the present application provides for aluminum as a preferred material having these characteristics).
Regarding Claim 24, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi fails to disclose an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield.
However, Goffman teaches an annular cover member configured to be mounted about the periphery of the eye shield and overlie the peripheral edge of the eye shield (Fig. 2 and 3, Col. 3, lines 54-56; annular cover member 57).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to incorporate the annular cover member 57 of Goffman such that it overlies the eye shield of Leonardi to provide an improved eye patch as the annular cover member protects the user from the rigid edges of the eye shield.
Regarding Claim 25, Leonardi in view of Goffman discloses the invention of claim 16 above.
Leonardi in view of Goffman discloses wherein the elongate length of the access opening (Annotated Fig 6) has a length that is at least the length of the minor axis of the elliptically shaped central opening (Fig. 1-6 of Leonardi as modified by Goffman, the elongate length of the access opening is clearly as long as the minor axis of an ellipse, being at least the length of a major axis of an ellipse).
Conclusion
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/KEVIN S ALBERS/Patent Examiner, Art Unit 3786
/KERI J NELSON/Primary Examiner, Art Unit 3786
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