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 .
The amendment filed on 6/13/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: New Figure 9 is not supported by the original disclosure. More specifically, the shape of eyeglass case 30 in the new figure, and the structural relationship of the eyeglass case 30 to packaging assembly 10 as shown in the new figure, is not supported by the original application disclosure.
Applicant is required to cancel the new matter in the reply to this Office Action.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of claim 17, including exactly how the cutout 300 in the packaging assembly 10 is structurally configured to facilitate access to the eyeglasses, as recited in the claim, must be shown, or the feature(s) canceled from the claim(s). See, for example, original Figure 1 and similar in which cutout 300 appears to obstruct access to the eyeglasses rather than to facilitate access to the eyeglasses. No new matter should be entered.
Figure 3 is now seen as showing the features of claim 9 and the same features recited in claim 17.
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.
The disclosure is objected to because of the following informalities: The specification does not contain a Brief Description of new Figure 9.
Appropriate correction is required.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are finally rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in the claims that was not described in the specification in such a manner as to convey possession of the claimed invention by the applicant is:
A “a fastening structure configured to restrict removal of the at least one eyeglass temple from said front face” (note, for example, claim 1)(The closest specification description of the claim feature appears to be that in the first three lines of the last paragraph of specification page 9. This part of the specification also makes reference to Figs 1-3 and 6-7. However, this specification description is of the same broad scope as the claim limitation itself, and is not made in the full, clear, concise and exact terms required by the Statute. Thus, the reader is not apprised of the configuration of the claimed fastening structure or of how the fastening structure actually restricts removal of the at least one eyeglass temple from the front face, as claimed. Nor do the referenced drawings help in this regard. A review of Figs 1-3 and 6-7 indicates that these drawings also do not describe the fastening structure 130 in the detail required by the Statute such that one reviewing the drawings can understand the configuration of the claimed fastening structure or how it functions or operates in the invention of the applicant.
Another relevant specification description of the claim feature appears in the last two sentences of the same paragraph, apparently a teaching with respect to another embodiment or non-limiting example. In this case the specification appears to teach with reference to Figs 1-3 and 6-7 that the fastening structure 130 may comprise two fastening members that themselves may comprise elastic structures configured to restrict removal of the at least one eyeglass temple from the front face 100. This description, while a little more detailed than the first, is still not in the detail required by the Statute. For example, looking at Figs 1-3 and 6-7 what exactly are the fastening members? In another example, how can each of the fastening member be said to comprise an elastic structure? Said a little differently, what exactly are the described elastic structures and how do they relate to the fastening members and to the fastening structures 130? How is one supposed to know by reading the specification and reviewing the drawings? Not only that, but the question of the adequacy of the first description pointed to above is not resolved even if the second description with regard to the other embodiment or non-limiting example is a little better than the first one. The claim language at issue presumably covers both descriptions.);
B “said fastening structure and said at least two eyeglass temple openings cooperatively structured and disposed to facilitate movement of at least one component of the pair of eyeglasses outwardly from said front face such that the pair of eyeglasses is configured in a sampling position.” (note, for example, claim 1)(The closest supporting description appears to be that in the paragraph beginning at the bottom of specification page 9, the same paragraph discussed above. In this instance also, the description is in the same broad terms as the claim limitation itself instead of being more detailed. Thus, this portion of the specification does not apprise the reader of exactly what applicant intends by the limitation in question even when referring to the figures (Figs 1-3 and 6-7) referenced in this part of the specification. What components of the pair of eyeglasses does applicant intend to be encompassed in the noted claim limitation, for example? Clearly one cannot tell from the specification description since as indicated it has the same broad scope as the claim limitation itself. Nor can one tell from the drawings either since they are not labelled to show the eyeglass components in question.
Additionally, and specifically regarding the claimed sampling position, the specification also lacks an adequate description of what this position is. One having ordinary skill in the relevant art might guess from the description in the noted paragraph that Fig 6 is intended to show the sampling position, however, the specification does not describe that Fig 6 shows the sampling position. Additionally, given this lack of specification description, if it would occur to one of ordinary skill in the art that Fig 6 shows a sampling position, that artisan would also recognize that another sampling position could be with the eyeglass temples pushed partially through the front face 100 and/or with the back face 200 being only very partially folded or not folded at all. Surely one could sample the eyeglasses in this configuration also, if one has to guess that they can be sampled in the Fig 6 position. See also the prior art of record. The point is that one should not have to guess what applicant’s sampling position(s) is/are, but in this case one has to do so given that the specification is not drafted in the requisite detail.);
C The same claim terms or parts thereof that appear in other claims.
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 1-20 are finally 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. The claims are indefinite because the portions thereof that were not well described cannot be properly interpreted. What structure, for example, is encompassed by the claimed fastening structure and exactly how does it perform the claimed functions? In another example, what does the claim language reproduced in paragraph 4 subpart B above encompass? What exactly is the claimed at least one eyeglass component? What others are encompassed by the phrase “at least one”? What is the claimed sampling position?
The claims are also indefinite because on the one hand they appear to be directed to the sub-combination of the packaging assembly only (note “for a pair of eyeglasses” in the claim preambles, for example only, indicating that the eyeglasses are not claimed) and on the other hand they appear to be directed to the combination of the packaging assembly and eyeglasses (since the claims contain limitations therein that structurally depend on the eyeglasses.). See claim 1 lines 4-11.
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.
Claim(s) 1-6 is/are finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morrow et al. (5,141,104). Morrow is only applied to the extent the claims are understood, since as set forth above, the claims are indefinite for the reasons indicated. For example only, the claims are understood to be directed to the sub-combination of the packaging assembly only. That is to say, the eyeglasses are not positively recited. Thus, all references in the claims to any eyeglasses are interpreted to the extent possible as functional recitations regarding the intended use of the claimed packaging assembly.
Accordingly, Morrow discloses all of the features claims 1-6 including a packaging assembly (hanger 2). The Morrow packaging assembly is for a pair of eyeglasses as recited in the claim 1 preamble since the packaging assembly can hold some pair of eyeglasses (not necessarily the ones shown in the Morrow drawings).
Additionally, the claimed front face can be either the body of the Morrow packaging assembly, or the front surface of the Morrow packaging assembly, that is, the surface in the Figs. 1-3 views. The claimed at least two eyeglass temple openings can be circular openings 10. The claimed fastening structure can be one or more of the parts of the packaging assembly between the slits 12.
Additionally, as best understood, the fastening structure and temple openings of Morrow are structured and disposed to facilitate movement of at least one component of some pair of eyeglasses outwardly from the front face such that the pair of eyeglasses is configured in a sampling position as required in the last 3 lines of claim 1, as follows:
The temples of the eyeglasses in Fig 6 or those of another pair of eyeglasses in the same position as the eyeglasses in Fig 6 can be pushed slightly forward through the temple openings in the direction of the front face to a slightly more forward position with respect to the packaging assembly. The eyeglasses can be tried on in this new position (while both temples are still projecting through the holes in the packaging assembly). The claimed sampling position meets this new position.
Alternatively, only one temple of the pair of eyeglasses in Morrow or of another pair of eyeglasses can be inserted into one hole of the packaging assembly such that the packaging assembly is at some position along the length of the temple. For example, the left temple in Morrow Fig. 6 can be inserted as described immediately above into the right hole in Fig 6. In this position the eyeglasses can also be tried on (with one temple inserted into a hole and the other temple free from the packaging assembly). This alternative position can also be the claimed sampling position.
Alternatively, only one temple of some pair of eyeglasses (the ones in Morrow or some other eyeglasses such as eyeglasses made of flexible material) can be pushed through both holes of the packaging assembly to a position along a portion of the length of the temple. For example, remove only the left temple from the left hole in Morrow Fig. 6 and insert that hole onto the end of the right temple such that the right temple is pushed through both holes in the packaging assembly. The packaging assembly of Morrow might have to bend slightly in a direction away from the eyeglasses, or might not have to bend at all (depending on the flexibility of the eyeglasses used therewith). This position too can be a sampling position as claimed, since one could try on the eyeglasses in this position.
Regarding claim 5 note, for example, Morrow Fig. 5 and column 3 lines 30-34.
Regarding the requirement for a stored position, as in claim 6, see the position and configuration in Fig. 6 of the Morrow eyeglasses or other eyeglasses that can be used with the Morrow packaging assembly. Or, see the position and configuration in Fig. 4 of the Morrow eyeglasses or other eyeglasses that can be used with the Morrow packaging assembly. Either can be the claimed stored position to the extent the claim requirement for the stored position can be understood.
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.
Claim(s) 7-20 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Morrow in view of either McDonagh (3,381,806) or Burchett (5,032,019). Morrow is applied in substantially the same way as before, except that this time, the front face is only the body of the Morrow hanger 2 itself. Thus, what Morrow is missing is a back face hingedly connected to the front face. Either McDonagh or Burchett is applied to meet the claim requirements for this feature. That is to say either reference discloses that it is conventional to hingedly connect a back face to a front face having temple retaining holes therein in an eyeglass packaging assembly of the same general type as disclosed in Morrow. For example, in Burchett the back face is top portion 20 without the temple retaining holes, and the front face is bottom portion 22 with the temple retaining holes, respectively. Additionally, the examiner notes that since Morrow encompasses embodiments in which the central portion of the hanger may take on any shape or have no curvature at all (note column 4 line 20), the shape of those embodiments can be even closer to the shapes of the packaging assemblies in the secondary references than the shapes shown in Figs 1-3 of Morrow. Therefore, it would have been obvious in view of either McDonagh or Burchett to provide the packaging assembly of Morrow with the missing feature, for the purpose of providing additional enclosure and/or protection to eyeglasses retained in the packaging assembly of Morrow.
It would also have been obvious to provide the apparatus of Morrow with the features of claims 12-14 (that appear to be conventional as best they are understood) for the purpose of deterring theft of the packaging assembly and/or eyeglasses therein.
Applicant's arguments filed 6/13/25 have been fully considered but they are not persuasive as to the issues remaining.
Regarding new Fig. 9 applicant argues that the drawing shows the features of claims 9 and 17. Initially, the examiner notes that as indicated above, the objection is now withdrawn at least as it relates to the features of claim 9, based on another review of Fig. 3. On the other hand, the new drawing is New Matter as indicated above. Additionally, with respect to claim 17, applicant does not point out with specificity exactly how applicant believes the feature of “the cutout being structurally configured to facilitate access to the eyeglass case” is shown by the new drawing, and the examiner cannot see it in the new drawing.
Regarding the 112 first paragraph rejection applicant argues that one of ordinary skill in the relevant art would recognize from the application description and corresponding drawings that the elastic structure as described in the subject application in at least some embodiments of the present invention is akin to a friction retention element. The examiner disagrees. Why would the artisan think about “friction” when the disclosure relates to an “elastic” element? Additionally, what are the principles of operation of the other embodiments encompassed by the claim language in question? Neither the specification nor the applicant explains. What applicant has done is to write the relevant specification description in the same broad terms as recited in the claims, and then require the reader to guess by looking at the drawings exactly what applicant means by the claim terms, including how the claimed invention works. This is insufficient to meet applicant’s burden to describe the claimed invention in the specification in full, clear, concise and exact terms (note the portion of the Statute cited in paragraph 5 above), at least in the subject application.
Regarding paragraph 6 subpart B, first refer to the commentary above. What exactly is the component and/or what exactly are the components of the eyeglasses that can be moved as recited in the last paragraph of claim 1, for example? The specification clearly does not say. Nor do the drawings clearly describe the feature(s). One is forced to guess by looking only at the drawings with no corresponding specification description. That is clearly insufficient! What of the hinges between the temples and the eyeglass lenses? Regarding the claimed sampling position, no part of the specification, including page 11 first full paragraph (apparently the most relevant description), makes clear that the specific position shown in Fig 6 is what applicant believes to be the claimed sampling position, as applicant appears to admit in the argument itself. If, as the specification apparently describes, the position in Fig 6 is one in which the eyeglasses can be sampled, what are the other such positions as suggested by the noted paragraph and the disclosure when they are read as a whole? The “stored position” described in the specification is also not described with particularity. However, the artisan looking at Fig. 3 and imagining the reconfiguration from at least that figure to a sampling position would realize given the way the specification is drafted that the sampling position could also be a position other than the one shown in Fig. 6 (in which a plane running through both eyeglass temples is apparently parallel to front face 100). Such a position could be one in which the plane running through both temples is perpendicular to or at some other angle relative to front face 100, or, a position in which the restrained temple in Fig. 6 is pulled out of one of the eyeglass temple openings (such as the one on the far right in Fig. 6). Why is the reader of applicant’s disclosure not apprised of (in the full, clear, concise and exact terms required by the Statute) exactly what position or positions applicant considers to be the claimed sampling position upon reading applicant’s specification and looking at applicant’s drawings?
Regarding the indefiniteness based on the combination/sub-combination issue, applicant’s arguments are also unconvincing for the following reasons. First of all, and contrary to some of applicant’s arguments, the examiner did not indicate that the recitation of “for a pair of eyeglasses” in claim 1 line 1, and other such recitations, by themselves, indicated other than function, or were otherwise somehow indefinite.
Second, applicant does not address in the argument at least the specific examples set forth in the rejection. Thus, for example only, claim 1 requires “temple openings structured and disposed to receive at least one eyeglass temple therethrough”. So the claim in this one instance is clearly expressly structurally limited by reference to at least an eyeglass temple. This is inconsistent with the eyeglass temple being only functionally claimed as suggested by the claim preamble’s “for a pair of eyeglasses” and argued by applicant. Moreover, the applicant does not explain with regard to this one instance what the examiner is required to find in order to meet the claim limitation. Just two openings that can receive some eyeglass temple therethrough, consistent with the temple being only functionally claimed? Or, two openings that are disclosed in the prior art to be structured and disposed to receive a particular eyeglass temple therethrough? This is a combination. Then see the other relevant claim limitations in lines 4-11 of claim 1 and in the other claims as set forth in the rejection itself.
Third, applicant’s arguments are unconvincing because, referring to applicant’s own arguments relative to the prior art, applicant whole point is that Morrow’s eyeglasses do not fit the Morrow packaging assembly the way applicant’s eyeglasses fit applicant’s packaging assembly. So clearly, applicant is not arguing for patentability of applicant’s claims based on the sub-combination of the packaging only. Rather, applicant is arguing for patentability based on the packaging and the packaging content (the eyeglasses or temples thereof), that is, applicant is arguing for patentability based on the combination of the packaging and its content. So, in addition to the inconsistent claim limitations that form the basis of the rejection, applicant’s argument that the claims only functionally recite the eyeglasses is at odds with even applicant’s own arguments contrasting the structural relationships between the Morrow eyeglasses and the Morrow packaging with that of the claimed eyeglasses and packaging.
Regarding the prior art rejection applicant’s arguments are unconvincing because applicant does not address in the arguments the manner in which Morrow is applied against the claims. The examiner is aware of the Morrow disclosure relative to the fit between the eyeglasses and packaging as clearly described in the reference. However, given the interpretation of the claims as not reciting any eyeglasses (or eyeglass parts such as temples), consistent with this packaging content being only functionally claimed, Morrow is applied as meeting the structure of the claimed packaging and the functional recitations with regard to the packaging content. Thus, as set forth in the rejection, the Morrow packaging can hold some pair of eyeglasses (including but not necessarily the Morrow ones) relative to the Morrow packaging in the manner claimed. Just look at the Morrow drawings and imagine the packaging attached to one temple of some eyeglasses (including but not necessarily the Morrow ones) with the eyeglasses being tried on with the packaging so attached. It is fairly easy to see. Moreover, the examiner gave several examples in the rejection, none of which were specifically addressed in applicant’s arguments. If one looks at Fig 6 of Morrow, those particular eyeglasses or another more flexible pair can clearly be retained in the Morrow package and be manipulated relative to the Morrow packaging as claimed. For example, one temple could be slid off it’s corresponding packaging opening and then either the packaging or the eyeglasses or both can be moved away from one another (for example by bending the packaging or the flexible glasses or by rotating the packaging around the remaining attached temple) such that one could try on the glasses with the packaging attached to one temple.
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 JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/ Primary Examiner, Art Unit 3736
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