DETAILED ACTION
The instant application having Application No. 18/168,464 filed on February 13, 2023 is presented for examination by the examiner.
The amended claims submitted February 9, 2026 in response to the office action mailed October 9, 2025. Claims 1, 3-8 and 10-18 are pending and under examination.
Examiner Notes
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant' s submissions of the Information Disclosure Statement dated February 10, 2026 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Drawings
The drawings are objected to because Figs. 3C to 3F illustrate the same embodiment, where Figs. 3C and 3D are side views, Fig. 3E is a top view and 3F is a bottom view. In Figs. 3C,3D and 3F frame 203 is in the middle position between frame 204 and both of the ear pieces 208 and 209. However, in Fig. 3E frame 204 is indicated as being in the middle position. This is not possible, whichever element is in the middle position in Figs. 3C, 3D and 3F will still be in the middle position when viewed from the top. 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 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 “wherein, the second hinge is positioned within a thickness of the second lens” of claims 15 and 16 simultaneously in combination with the limitation of claims 1 “a second ear piece connected to the second frame by a second hinge protruding from a rear surface of the second frame… wherein the first frame is configured to be positioned between the rear surface of the second frame and the second ear piece in a compact configuration,” or 8 “the second ear piece configured to fold flush against the first frame such that the first frame is positioned between the second frame and the second ear piece in the compact configuration.” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Although Fig. 3E looks as if it shows this feature, Fig. 3E contains an obvious error when considered in light of Fig. 3C, 3D and 3F as explained above.
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 Objections
The objections to the claims of the previous office action have been overcome by the amendments to the claims.
Claim Rejections - 35 USC § 112
The 35 USC §112 rejections of the previous office action have not been addressed by applicant, additionally, the following new 35 USC §112 rejection is raised by the amendments to the 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, 3-8 and 10-18 are 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.
Regarding claim 1, the limitation “configured to resist torsion of the first lens and the second lens” is indefinite because it is purely functional language with no clear-cut indication of the structural features encompassed by the claim. Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). See MPEP §2173.05(g). In the current instance, although the specification discloses that the device of the instant application performs the function of “configured to resist torsion of the first lens and the second lens” it is not clear what structural features are necessary to meet this claimed function. Furthermore, the function itself is indefinite because there is no indication of how much of a torsional force the wire bridge must be able to resist. This indefiniteness is exacerbated by the fact that bending the first frame and the second frame into a compact configuration is performed by the user applying a torsional force to the wire bridge that exceeds the torsional force that the wire bridge must resist.
From MPEP §2173.05(g) “Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting.
In the instant case, (1) there is no clear cut indication of the scope of the subject matter covered by the claim because (a) it is unclear what structural features are critical to obtain this function and (b) the scope of the function itself is indefinite because there are no limits on the torsional force that should be resisted versus should allow the user to bend the frames to the compact configuration (2) the language only states a problem solves (keeping the lens in the same plane when desired) and (3) one of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claim.
Claims 3-7, 10-11, 15 and 17 depend from claim 1 and inherit and do not mitigate the above indefiniteness issue from claim 1.
Regarding claim 8, claim 8 also recites “configured to resist torsion of the first lens and the second lens” and is indefinite for the same reasons explained above for claim 1.
Claims 12-14, 16 and 18 depend from claim 8 and inherit and do not mitigate the above indefiniteness issue from claim 8.
Regarding claim 14, the limitation “wherein the resilient wire bridge is connected firstly to the first and second frames” is indefinite because it is unclear what, if any, additional meaning is conveyed by the adverb “firstly”. The term “firstly” does not appear in the specification, and thus the specification does not provide any guidance on what this term might or might not imply. Furthermore, if this limitation is taken as a product by process limitation it is unclear how the resilient wire bridge could be “firstly” connected to both the first and second frames, as opposed to, for example, being firstly connected to the first frame and secondly connected to the second frame. As such, the examiner cannot even guess at the intended import of the adverb “firstly” and thus it will not be given patentable weight when considering prior art. 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 15 and 16 are 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.
Regarding claim 15, the specification as filed fails to simultaneously disclose (claim 15) “wherein, the second hinge is positioned within a thickness of the second lens” and (claim 1) “a second ear piece connected to the second frame by a second hinge protruding from a rear surface of the second frame”. These two limitations directly contradict one another. Furthermore, the configuration where the second hinge protrudes from the rear surface of the second frame is necessary to achieve the other claimed features of (claim 1) “the first frame is configured to be positioned between the rear surface of the second frame and the second ear piece in a compact configuration” see e.g. Figs. 3A-3F. Thus the specification as filed does not provide support for this combination of features co-existing simultaneously.
Regarding claim 16, the specification as filed fails to simultaneously disclose (claim 16) “wherein, the second hinge is positioned within a thickness of the second lens” and (claim 8) “the first frame is positioned between the second frame and the second ear piece in the compact configuration.” The configuration where the second hinge protrudes from the rear surface of the second frame is necessary to achieve the compact configuration where the first frame is positioned between the second frame and the second ear piece. This claimed compact configuration of claim 8 necessitates a second hinge that bridges from the second frame to the second ear piece across the width of the first frame, and thus the second hinge cannot be positioned within a thickness of the second lens. See e.g. Figs. 3A-3F of the instant specification.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3, 6-8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shalon US 9,069,189 (hereafter Shalon) in view of Wingate US 1,915,707 A (hereafter Wingate), Shalon US 9.726,902 (hereafter Shalon 902) and Chao et al. US 6,530,660 B1 (hereafter Chao).
Regarding claim 1, Shalon teaches “An eyewear system (eyewear 50) comprising:
a first frame (a first rim 52 of the left and right rims) comprising a first lens (a first lens 51 of the left and right lenses);
a second frame (a second rim 52) comprising a second lens (a second lens 51);
a resilient wire bridge (super elastic bridge 56, which is wire see col. 4 lines 48-49: “thin super elastic alloy wire preferably made from Nitinol”) connecting the first frame and second frame (see Figs. 4A and 5B); …
wherein the resilient wire bridge is flat (super elastic bridge 56 is flat, see Fig. 4A) … such that the first frame and the second frame are maintained in the same plane in an unfolded configuration (See positions of the two rims 52 in the same plane in an unfolded configuration in Fig. 4A. The bridge is such that they are “maintained” in this configuration at least in the sense that the frames will stay in this configuration so long as no force is applied thereto.) until the resilient wire bridge is bent (see how 56 is bent in Fig. 5B) as the first frame is folded about the resilient wire bridge to the compact configuration (configuration of Fig. 5B and col. 8 lines 38-41: “folding lenses 51 around superelastic bridge 56 such that lenses 51 are positioned one on top of the other in a reverse orientation”).”
However, Shalon fails to explicitly teach “a first ear piece connected to the first frame by a first hinge… the first ear piece configured to fold flat against a rear surface of the first frame; and
a second ear piece connected to the second frame by a second hinge protruding from a rear surface of the second frame,
wherein the first frame is configured to be positioned between the rear surface of the second frame and the second ear piece in a compact configuration.”
Note however, that Shalon does teach in col. 5 lines 13-17: “It will be appreciated that the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. However, Shalon does not specifically explain how such ear pieces would be attached to the embodiment of Figs. 4 and 5B.
Wingate teaches (claim 1) “An eyewear system (the spectacles of Figs. 1-5) comprising:
a first frame (eye 1) comprising a first lens (the lens of eye 1);
a second frame (eye 2) comprising a second lens (the lens of eye 2);
a … bridge (bridge 5) connecting the first frame and second frame (see Figs. 1 and 2);
a first ear piece (the side 7 which extends from 1) connected to the first frame (see hinge 11 and Figs. 1 and 2) by a first hinge (hinge 11)… the first ear piece configured to fold flat against a rear surface of the first frame (see Figs. 3 and 4, one of ordinary skill in the art would consider the configuration of Figs. 3-5 to have side 7 flat against eye 1); and
a second ear piece (the side 7 which extends from 2) connected to the second frame by a second hinge (see hinge 12 and Figs. 1 and 2) protruding from a rear surface of the second frame (page 1 lines 65-67: “hinge 12 is sufficiently set back from the eye 2” see Fig. 2),
wherein the first frame is configured to be positioned between the rear surface of the second frame and the second ear piece in a compact configuration (See Fig. 4, first frame 1 is positioned between the rear surface of second frame 2 and the second ear piece 7, as evidenced by the fact that the compact configuration of Wingate Fig. 4 and Fig. 3C of the instant application are the same, except that Fig. 4 of Wingate is from the top and Fig. 3C of the instant application is from the side).”
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Wingate further teaches (page 1 lines 1-6): “This invention relates to folding spectacles and has for its principal object to provide spectacles which are neat in appearance and comfortable to wear, and at the same time 6 can be folded away into a particularly compact form.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that the first frame is positioned between a rear surface of the second frame and the second ear piece in a compact configuration as taught by Wingate in the eyewear of Shalon. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
However, Shalon fails to teach “wherein the resilient wire bridge is flat with the thinnest dimension facing the front of the eyewear system… and configured to resist torsion of the first lens and the second lens.”
Shalon 902 teaches (Figs. 21-24) “An eyewear system (eyeglasses 2100) comprising:
a first frame (lens 2101 and pins 2122 which are a frame in that they support the lens) comprising a first lens (lens 2101);
a second frame (lens 2103 and pins 2122 which are a frame in that they support the lens) comprising a second lens (2103);
a resilient wire bridge (bridge wire 2104, col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”) connecting the first frame and second frame (see Fig. 21);…
wherein the resilient wire bridge is flat (col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”) with the thinnest dimension facing the front of the eyewear system (Shalon 902 does not explain the orientation of the thickness and width directions of the bridge and, technically, the thickness and width directions could be any two directions that are perpendicular to the length direction of the bridge between the lenses. However, in any given orientation, one of the two directions is “facing the front of the eyewear system” at least in the sense that it is facing the front of the eyewear system more than or equal to the extent that the other dimension is facing the front of the eyewear system. Thus, there are only two possibilities, that the thickness of 0.4 mm “faces the front of the eyewear system” or that the width of 0.8 mm “faces the front of the eyewear system. Since this is a genus with only two species, an ordinary skilled artisan would at once envisage both species, including that the thinnest dimension faces the front of the eyewear system, and thus Shalon anticipates this limitation.1 See also the examiner’s markup of a portion of Fig. 21B where the thinnest dimension appears to be “facing the front of the eyewear system.”) and configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent as the first frame is folded about the resilient wire bridge to the compact configuration (col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”. Thus, the flat wire bridge is formed of the same material as the instant application paragraph [0031], its thickness of 0.4 mm is within the disclosed range of 0.1-0.5 mm thick and its width of 0.8 mm is within the claimed range of “about 1-2 mm”. Therefore, because the structure of flat wire bridge of Shalon 902 is the same as that disclosed in the present application, it must inherently perform the same function and be “configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent as the first frame is folded about the resilient wire bridge to the compact configuration.” Furthermore, given the similarity of material and dimensions it must be adapted to, at a minimum, maintain the frames in the same plane when a small external torsional force is applied, as would be consistent with it retaining its shape when worn. See MPEP §2114(I)) “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011).”).”
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Shalon 9,726,902 B2 is a continuation-in-part of pending U.S. application Ser. No. 14/659,153, filed Mar. 16, 2015; which is a continuation of U.S. application Ser. No. 14/284,879, filed May 22, 2014, now U.S. Pat. No. 9,081,209; which is a continuation-in-part of U.S. application Ser. No. 13/899,606, filed May 22, 2013, now U.S. Pat. No. 9,069,189. Thus, an ordinary skilled artisan would recognize that the teachings of Shalon 9,726,902 are either additional information about the invention presented in Shalon 9,069,189 or improvements thereof.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the dimensions of the flat wire nitinol bridge of Shalon, a width of 0.4 mm and a thickness of 0.8 mm as taught by Shalon 902, because the same inventor recognized these dimensions as being an appropriate choice for the bendable flat nitinol wire bridge of such thin, foldable eyewear.
Note that the functional limitations “configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent” are considered to be met by the combination of references because the flat wire nitinol bridge with a width of 0.4 mm and a thickness of 0.8 mm of the Shalon – Shalon 902 combination is of a sufficiently similar structure as disclosed in the present application, that it must perform the same function at least for some values of the torsional force that can be resisted and the torsional force applied to intentionally fold the arrangement into the compact configuration.
However, Shalon also fails to teach “the first hinge being positioned within a thickness of the first lens”. Note that Wingate, combined above, teaches that the first hinge 11 should be closer to the eye, and the second hinge should protrude from the rear surface of the second frame, but the first hinge is not literally positioned within a thickness of the first lens.
Chao teaches (Figs. 3, 3A) “An eyewear system (embodiment of Figs. 3 and 3A) comprising:
a first frame (left lens retaining member 14) comprising a first lens (left lens 15);
a second frame (right lens retaining member 15) comprising a second lens (right lens 15);
a … bridge (bridge 16) connecting the first frame and second frame (col. 5 lines 29-31: “The lens retaining member 14 are joined by a bridge 16”);
a first ear piece (arm 21) connected to the first frame by a first hinge (see Fig. 3 21 extends from the left side of 14 via a left hinge between 21 and 14), the first hinge being positioned within a thickness of the first lens (see Fig. 3 the hinge connecting 21 and 14 is within the thickness of 14, where in Fig. 3 the frames and lenses are the same thickness, but the thickness of the lenses could be thicker than the frames depending on the prescription of the wearer, see Fig. 1), the first ear piece configured to fold flat against the rear surface of the first frame (col. 6 lines 9-12: “arm 21 rotates from a wear position to a position where it covers the back side of the lenses by moving counterclockwise from 6 o'clock to 3 o'clock, as the glasses are viewed from the top.” This is configured to fold flat because it is the 3 o’clock position and both 14 and 21 are flat, see also Fig. 1); and
a second ear piece (arm 23) connected to the second frame by a second hinge (right hinge 30 see Fig. 3, 23 extends from the right side of 14).”
Chao further teaches an embodiment in Fig. 5 where the hinges are set back from the lens frames by two different amounts in the same manner as Fig. 2 of Wingate.
Shalon and Wingate disclose the claimed invention except that a hinge that is set back from the front frame is used as the first hinge instead of a hinge within the thickness of the front frame. Chao shows that these hinge choices are equivalent structures in the art, see Figs. 3 and 5. Therefore, because these two hinge structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a hinge that is within the thickness of the front frame for a hinge that is set back from the front frame, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B).
Note that the above modification of Shalon, Wingate and Shalon 902 does not have to incorporate the feature of Chao that the second hinge enables the second temple to rotate onto the front of the frame. Rather the configuration that both temples rotate onto the back of the frame as taught by Wingate can be retained in this modification. Further note, that modifying the first hinge to be within the thickness of the front frame is consistent with Wingate, where the two hinges have different offsets from the frame in order to accommodate the temples folding onto the rear of the frame on top of one another.
Regarding claim 3, the Shalon – Wingate – Shalon 902 - Chao combination teaches “The eyewear system of claim 1” however, Shalon fails to teach “wherein the second hinge protrudes from the second frame to accommodate the thickness of the first frame in the compact configuration.”
Wingate teaches “wherein the second hinge protrudes from the rear side of the second frame (see Fig. 2 and page 1 lines 64-68 “hinge 12 is sufficiently set back from the eye 2”) to accommodate the thickness of the first frame in the compact configuration (see page 1 lines 54-67; “the attachment of the side to one of the eyes should leave sufficient space for the other eye when folded so that both the sides lie at substantially the same level upon the top of the last named eye. For this purpose… hinge 12 is sufficiently set back from the eye 2” and Fig. 4 where the setback nature of hinge 12 allows the two eyes to lie flat on top of one another. Thus, the thickness of the first frame in the compact configuration is “accommodated” by the positioning of the second hinge.).”
Wingate further teaches (page 1 lines 59-68): “It is desirable that the attachment of the side to one of the eyes should leave sufficient space for the other eye when folded so that both the sides lie at substantially the same level upon the top of the last named eye. For this purpose the hinge 11 is set closely to the eye 1, but hinge 12 is sufficiently set back from the eye 2.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the second hinge such that it protrudes from the rear side of the second frame as taught by Wingate in the eyewear of the Shalon-Wingate-Chao combination so that the two lenses in their frames lie one on top of the other and the two sides lie adjacent to one another as shown in Figs. 3 and 4 of Wingate and discussed in page 1 lines 59-68.
Regarding claim 6, the Shalon – Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 1.” However, Shalon fails to teach “wherein the rear surface of the first frame and the rear surface of the second frame are configured to be positioned closer to a user's face and a front side configured to be positioned farther from a user's face, and wherein the first ear piece is configured to fold flat against the rear side of the first frame, and wherein the second ear piece is configured to fold flat against the rear side of the first frame.”
Wingate teaches “wherein the rear surface of the first frame and the rear surface of the second frame are configured to be positioned closer to a user's face (Fig. 2, let the rear surfaces of 1 and 2 be the surfaces that are configured to be positioned closer to a user's face) and a front side configured to be positioned farther from a user's face (the front sides of 1 and 2 in Fig. 2), and wherein the first ear piece is configured to fold flat against the rear side of the first frame (left side 7 is configured to fold flat against the rear side of 1, see Figs. 3 and 4), and wherein the second ear piece is configured to fold flat against the rear side of the first frame (right side 7 is configured to fold flat against the rear side of 1 see Figs. 3 and 4).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that the first ear piece and the second ear piece are both configured to fold flat against the rear side of the first frame as taught by Wingate. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
Regarding claim 7, the Shalon - Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 1,” however, Shalon fails to teach “wherein the first ear piece and the second ear piece are configured to fold adjacent to one another on the rear surface of the first frame.”
Wingate teaches “wherein the first ear piece and the second ear piece are configured to fold adjacent to one another on the rear surface of the first frame (see Fig. 3 the sides 7 are configured to fold adjacent to one another on the rear side of the first frame).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that they are configured to fold adjacent to one another on the rear surface of the first frame as taught by Wingate. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
Regarding claim 8, Shalon teaches “An eyewear system (eyewear 50) comprising:
a first frame (a first rim 52 of the left and right rims) comprising a first lens (a first lens 51 of the left and right lenses);
a second frame (a second rim 52) comprising a second lens (a second lens 52);
a resilient wire bridge (super elastic bridge 56, which is wire see col. 4 lines 48-49: “thin super elastic alloy wire preferably made from Nitinol” and which is flat see Fig. 4A) extending between the first frame and the second frame (see Figs. 4A and 5B), wherein a thickness of the resilient wire bridge (col. 7 lines 17-19: “Lens bridge 56 preferably has a … diameter of 0.020 inch” which is 0.508 mm) is less than a thickness of the frames (col. 5 lines 41-57: “lens … average thickness of less than 1mm… rim can be slightly thicker than the thickness of the lens 12 (0.2-0.4 mm thicker)”, see also Table 1 where the maximum thickness in mm varies from 0.7 to 1.6 mm. Thus the 0.508 mm thickness of the bridge is less than the thickness of the frames which are 0.7 mm or greater, but preferably less than 1 mm), wherein the resilient wire bridge is flat (bridge 56 is flat see Fig. 4A)… such that the first frame and second frame are maintained in the same plane in an unfolded configuration (See positions of the two rims 52 in the same plane in an unfolded configuration in Fig. 4A. The bridge is such that they are “maintained” in this configuration at least in the sense that the frames will stay in this configuration so long as no force is applied thereto.) until the resilient wire bridge is bent (see half-twist of bridge 56 in the compact configuration of Fig. 5B) as the first frame is positioned adjacent to a rear surface of the second frame in a compact configuration (see half-twist of bridge 56 in the compact configuration of Fig. 5B such that the first frame and the second frame are positioned on top of one another).
However, Shalon fails to teach “a first ear piece connected to the first frame by a hinge… the first ear piece configured to fold against the first frame; and
a second ear piece extending from a side of the second frame, the second ear piece configured to fold flush against the first frame, such that the first frame is positioned between the second frame and the second ear piece in the compact configuration.”
Note however, that Shalon does teach in col. 5 lines 13-17: “It will be appreciated that the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. However, Shalon does not specifically explain how such ear pieces would be attached to the embodiment of Figs. 4 and 5B.
Wingate teaches “An eyewear system (the spectacles of Figs. 1-5) comprising:
a first frame (eye 1) comprising a first lens (the lens of eye 1);
a second frame (eye 2) comprising a second lens (the lens of eye 2);
a … bridge (bridge 5) extending between the first frame and the second frame (see Figs. 1 and 2), … such that the first frame and the second frame are maintained… in an unfolded configuration (this is true at least because the frames and temples do not spontaneously fold upon themselves.)… the first frame is positioned adjacent to a rear surface of the second frame in a compact configuration (see Fig. 4 and page 1 lines 54-65)
a first ear piece (the side 7 which extends from 1) connected to the first frame by a hinge (hinge 11)… wherein the first ear piece is configured to fold against the first frame (see Figs. 3 and 4, side 7 is folded against eye 1); and
a second ear piece (the side 7 which extends from 2) extending from a side of the second frame (see Figs. 1 and 2), the second ear piece configured to fold flush against the first frame (see Figs. 3 and 4, one of ordinary skill in the art would consider the configuration of Figs. 3-5 to have side 7 flush against eye 1.), such that the first frame is positioned between the second frame and the second ear piece in the compact configuration (see Fig. 4 first frame 1 is folded about the bridge to be positioned between the second frame 2 and second ear piece 7).”
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Wingate further teaches (page 1 lines 1-6): “This invention relates to folding spectacles and has for its principal object to provide spectacles which are neat in appearance and comfortable to wear, and at the same time 6 can be folded away into a particularly compact form.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that the first frame is configured to fold about the bridge to be positioned between the second frame and the second ear piece as taught by Wingate in the eyewear of Shalon. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
However, Shalon fails to teach “wherein the resilient wire bridge is flat with the thinnest dimension facing the front surface of the eyewear system.”
Shalon 902 teaches (Figs. 21-24) “An eyewear system (eyeglasses 2100) comprising:
a first frame (lens 2101 and pins 2122 which are a frame in that they support the lens) comprising a first lens (lens 2101);
a second frame (lens 2103 and pins 2122 which are a frame in that they support the lens) comprising a second lens (2103);
a resilient wire bridge (bridge wire 2104, col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”) extending between the first frame and the second frame (see Fig. 21),… wherein the resilient wire bridge is flat (col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”) with the thinnest dimension facing the front of the eyewear system (Shalon 902 does not explain the orientation of the thickness and width directions of the bridge and, technically, the thickness and width directions could be any two directions that are perpendicular to the length direction of the bridge between the lenses. However, in any given orientation, one of the two directions is “facing the front of the eyewear system” at least in the sense that it is facing the front of the eyewear system more than or equal to the extent that the other dimension is facing the front of the eyewear system. Thus, there are only two possibilities, that the thickness of 0.4 mm “faces the front of the eyewear system” or that the width of 0.8 mm “faces the front of the eyewear system. Since this is a genus with only two species, an ordinary skilled artisan would at once envisage both species, including that the thinnest dimension faces the front of the eyewear system, and thus Shalon anticipates this limitation. See also the examiner’s markup of a portion of Fig. 21B where the thinnest dimension appears to be “facing the front of the eyewear system.”) and configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent (col. 11 lines 22-24: “A flat superelastic (formed, e.g., from Nitinol wire, 0.4 mm thick, 0.8 mm wide) bridge wire 2104”. Thus, the flat wire bridge is formed of the same material as the instant application paragraph [0031], its thickness of 0.4 mm is within the disclosed range of 0.1-0.5 mm thick and its width of 0.8 mm is within the claimed range of “about 1-2 mm”. Therefore, because the structure of flat wire bridge of Shalon 902 is the same as that disclosed in the present application, it must inherently perform the same function and be “configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent as the first frame is folded about the resilient wire bridge to the compact configuration.” Furthermore, given the similarity of material and dimensions it must be adapted to, at a minimum, maintain the frames in the same plane when a small external torsional force is applied, as would be consistent with it retaining its shape when worn. See MPEP §2114(I)) “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011).”) as the first frame is positioned adjacent to a rear surface of the second frame in a compact configuration (see configuration of Fig. 24)
Shalon 9,726,902 B2 is a continuation-in-part of pending U.S. application Ser. No. 14/659,153, filed Mar. 16, 2015; which is a continuation of U.S. application Ser. No. 14/284,879, filed May 22, 2014, now U.S. Pat. No. 9,081,209; which is a continuation-in-part of U.S. application Ser. No. 13/899,606, filed May 22, 2013, now U.S. Pat. No. 9,069,189. Thus, an ordinary skilled artisan would recognize that the teachings of Shalon 9,726,902 are either additional information about the invention presented in Shalon 9,069,189 or improvements thereof.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the dimensions of the flat wire nitinol bridge of Shalon, a width of 0.4 mm and a thickness of 0.8 mm as taught by Shalon 902, because the same inventor recognized these dimensions as being an appropriate choice for the bendable flat nitinol wire bridge of such thin, foldable eyewear.
Note that the functional limitations “configured to resist torsion of the first lens and the second lens such that the first frame and the second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent” are considered to be met by the combination of references because the flat wire nitinol bridge with a width of 0.4 mm and a thickness of 0.8 mm of the Shalon – Shalon 902 combination is of a sufficiently similar structure as disclosed in the present application, that it must perform the same function at least for some values of the torsional force that can be resisted and the torsional force applied to intentionally fold the arrangement into the compact configuration.
However, Shalon also fails to teach “the hinge being positioned within a thickness of the first lens”. Note that Wingate, combined above, teaches that the first hinge 11 should be closer to the eye, and the second hinge should protrude from the rear surface of the second frame, but the first hinge is not literally positioned within a thickness of the first lens.
Chao teaches (Figs. 3, 3A) “An eyewear system (embodiment of Figs. 3 and 3A) comprising:
a first frame (left lens retaining member 14) comprising a first lens (left lens 15);
a second frame (right lens retaining member 15) comprising a second lens (right lens 15);
a … bridge (bridge 16) connecting the first frame and second frame (col. 5 lines 29-31: “The lens retaining member 14 are joined by a bridge 16”);
a first ear piece (arm 21) connected to the first frame by a hinge (see Fig. 3 21 extends from the left side of 14 via a left hinge between 21 and 14), the hinge being positioned within a thickness of the first lens (see Fig. 3 the hinge connecting 21 and 14 is within the thickness of 14, where in Fig. 3 the frames and lenses are the same thickness, but the thickness of the lenses could be thicker than the frames depending on the prescription of the wearer, see Fig. 1), wherein the first ear piece configured to fold flat against the first frame (col. 6 lines 9-12: “arm 21 rotates from a wear position to a position where it covers the back side of the lenses by moving counterclockwise from 6 o'clock to 3 o'clock, as the glasses are viewed from the top.” This is configured to fold flat because it is the 3 o’clock position and both 14 and 21 are flat, see also Fig. 1); and
a second ear piece (arm 23) extending from a side of the second frame (see Fig. 3, 23 extends from the right side of 14).”
Chao further teaches an embodiment in Fig. 5 where the hinges are set back from the lens frames by two different amounts in the same manner as Fig. 2 of Wingate.
Shalon and Wingate disclose the claimed invention except that a hinge that is set back from the front frame is used as the first hinge instead of a hinge within the thickness of the front frame. Chao shows that these hinge choices are equivalent structures in the art, see Figs. 3 and 5. Therefore, because these two hinge structures were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute a hinge that is within the thickness of the front frame for a hinge that is set back from the front frame, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B).
Note that the above modification of Shalon, Wingate and Shalon 902 does not have to incorporate the feature of Chao that the second hinge enables the second temple to rotate onto the front of the frame. Rather the configuration that both temples rotate onto the back of the frame as taught by Wingate can be retained in this modification. Further note, that modifying the first hinge to be within the thickness of the front frame is consistent with Wingate, where the two hinges have different offsets from the frame in order to accommodate the temples folding onto the rear of the frame on top of one another.
Regarding claim 10, the Shalon - Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 1,” and Shalon further teaches “wherein the resilient wire bridge is connected directly to the first and second frames (see Figs. 4B and 5B).”
Regarding claim 11, the Shallon - Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 1,” however Shalon fails to teach “wherein the thickness of the eyewear system in the compact configuration comprises the thickness of the first lens, the second lens and one of the first ear piece or the second ear piece.”
Wingate teaches “wherein the thickness of the eyewear system in the compact configuration comprises the thickness of the first lens, the second lens and one of the first ear piece or the second ear piece (see Fig. 4 of Wingate as compared to Fig. 3C of the instant application. In view of the indefiniteness issues above, the thickness of the eyewear in a compact configuration is interpreted in light of the specification to be “the term ‘thickness’ shall mean the thickness of all the components in the stored configuration with lenses whose base curve is 0”. In Fig. 4 the thickness of the eyewear system in a compact configuration comprises the thickness of the first frame, the second frame and one of the first ear piece or the second ear piece, thus meeting claim 11 as interpreted in light of the specification. Furthermore, it should be noted that if the base curve of the lenses contributed any extra thickness to the compact configuration, this would also be true of Wingate, which would then have to size and position hinge 12 accordingly).”
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Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that in a compact configuration comprises the thickness of the first lens, the second lens and one of the first ear piece or the second ear piece as taught by Wingate in the eyewear of Shalon. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
Regarding claim 12, the Shalon – Wingate – Shalon 902 - Chao combination teaches “The eyewear system of claim 8,” and Shalon further teaches “wherein the resilient wire bridge, first frame, and second frame are coplanar in an unfolded configuration (see Figs. 2 and 4, the bridge and the two frames are coplanar in the unfolded configuration).”
Regarding claim 13, the Shalon – Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 8,” however, Shalon fails to teach “wherein the thickness of the eyewear system in the compact configuration comprises the thickness of the first frame, the second frame and one of the first ear piece or the second ear piece.”
Wingate teaches “wherein the thickness of the eyewear system in the compact configuration comprises the thickness of the first frame, the second frame and one of the first ear piece or the second ear piece (see Fig. 4 of Wingate as compared to Fig. 3C of the instant application).”
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Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the earpieces of Shalon, earpieces that are foldable in such a manner that in a compact configuration comprises the thickness of the first frame, the second frame and one of the first ear piece or the second ear piece as taught by Wingate in the eyewear of Shalon. One would have been motivated to add ear pieces to the eyewear of Shalon because Shalon teaches in col. 5 lines 13-17 that “the functional features of the present Pince-Nez design can also be incorporated into eyewear having ear pieces”. Furthermore, one would have been motivated to choose the ear pieces of Wingate because they enable folding spectacles that can be folded away into a particularly compact form as taught by Wingate (page 1 lines 1-6) and thus are a particularly appropriate choice given the desire for compact foldability in Shalon.
Regarding claim 14, the Shalon – Wingate – Shalon 902 – Chao combination teaches “The eyewear system of claim 8,” and Shalon further teaches “wherein the resilient wire bridge is connected firstly to the first and second frames (see Figs. 4B and 5B).”
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Shalon US 9,069,189 B2 (hereafter Shalon) in view of Wingate US 1,915,707 A (hereafter Wingate), Shalon US 9.726,902 (hereafter Shalon 902) and Chao et al. US 6,530,660 B1 (hereafter Chao) as applied to claim 1 above, and further in view of Willett USPGPub 2011/0228210 (hereafter Willett).
Regarding claim 4, the Shalon – Wingate – Shalon 902 -Chao combination teaches the “eyewear system of claim 1” and Shalon further teaches “wherein the thickness of the eyewear system, when … folded … is about 2-10 mm (Table 1 the thickness folded range between 1.3 mm and 3.2 mm which are in the claimed range).” However Shalon does not explicitly teach “wherein the thickness of the eyewear system, when the second ear piece is folded against the first frame, is about 2-10 mm” because the folded thicknesses in Shalon do not include the ear pieces.
Wingate teaches “the second ear piece is folded against the first frame”.
Willet teaches “wherein the thickness of the eyewear system, when the second ear piece is folded against the … frame, is about 2-10 mm (paragraph [0018]: “FIG. 1 … When in this folded position, the eyeglasses 100 are compact enough to fit within an area measuring 70*45*5 mm.” Thus the eyeglasses have a thickness of less than 5 mm when folded).”
Willet further teaches (paragraph [0018]): “FIG. 1 illustrates an exemplary pair of compact foldable reading eyeglasses 100 in a folded position. When in this folded position, the eyeglasses 100 are compact enough to fit within an area measuring 70*45*5 mm. (i.e., the size of a standard business card). Accordingly, the eyeglasses 100 can be conveniently carried in a purse or a pocket, for example.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the thicknesses of the frame and temple portions of the Shalon-Wingate combination such that when in a folded position the eyeglasses are compact enough to fit in a 5 mm thickness as taught by Willet for the purpose of allowing them to be conveniently carried in a purse or a pocket as taught by Willet (paragraph [0018]).
Note that the combination of limitations “wherein the thickness of the eyewear system, when the second ear piece is folded against the first frame, is about 2-10 mm” is considered to be suggested by the combination of references. In particular (1) the configuration where the second ear piece is folded against the first frame is taught by Wingate (2) such a configuration only adds one additional layer to the folded thickness of Shalon which was 1.3 to 3.2 mm (3) Willet’s teaching of the folded width being less than 5 mm, is considered to be applicable to the full width of the compact configuration of the Shalon-Wingate-Shalon 902 combination.
To put it another way, the ear pieces in Willet are clearly thinner than 5 mm, otherwise the folded width would be more than 5 mm. Even if you added a full 5 mm to the folded thickness of Shalon, the total folded thickness would still be between 2 and 10 mm.
Regarding claim 5, the Shalon – Wingate – Shalon 902 – Chao combination teaches the “eyewear system of claim 1.” Shalon further teaches “wherein the thickness of the eyewear system, when … folded … is about 2.3 mm (Table 1 the thickness folded range between 1.3 mm and 3.2 mm which are in the claimed range).” However Shallon does not explicitly teach “wherein the thickness of the eyewear system when the ear pieces are folded, is about 2.3 mm.” because the folded thicknesses in Shalon do not include the ear pieces.
Willet teaches “wherein the thickness of the eyewear system when the ear pieces are folded (paragraph [0018]: “FIG. 1 … When in this folded position, the eyeglasses 100 are compact enough to fit within an area measuring 70*45*5 mm.” Thus the eyeglasses have a thickness of less than 5 mm when folded).”
Willet further teaches (paragraph [0018]): “FIG. 1 illustrates an exemplary pair of compact foldable reading eyeglasses 100 in a folded position. When in this folded position, the eyeglasses 100 are compact enough to fit within an area measuring 70*45*5 mm. (i.e., the size of a standard business card). Accordingly, the eyeglasses 100 can be conveniently carried in a purse or a pocket, for example.”
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the thickness of the frames and temples such that the thickness in the compact configuration is less than 2.3 mm, which overlaps the disclosed range of less than 5 mm, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the thickness in a compact configuration is an art recognized results effective variable in that it facilitates storage in small spaces like pockets as taught by Willett paragraph [0018]. Thus one would have been motivated to optimize the thickness of the compact configuration because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.” Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because common eyeglass materials such as metals can readily be made thin while sufficiently rigid to support the lenses of eyeglasses.
Examiner’s note regarding claims 15 and 16
It is worth noting that although there is no prior art rejection made above of claims 15 and 16, it would be incorrect to state that claims 15-16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. In the present case, it is the sole limitation presented in claims 15 and 16 that, when taken in context of claims 1 and 8 upon which claims 15 and 16 depend, is the source of the 112(a) written description rejection. Because the limitations of claims 15 and 16 are in direct contradiction to the configurations claimed in claims 1 and 8 it would be unreasonable to state that such a configuration could be obvious when it is not physically possible.
Allowable Subject Matter
Claims 17 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Reference will be made to the following prior art references: Shalon US 9,069,189 (hereafter Shalon), Wingate US 1,915,707 A (hereafter Wingate), Shalon US 9.726,902 (hereafter Shalon 902), Chao et al. US 6,530,660 B1 (hereafter Chao) and Barnett et al. US 2017/0242267 A1 (hereafter Barnett).
Regarding claim 17, the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole: “wherein at least a portion of the first frame is configured to be folded about the resilient wire bridge and moved over the second lens to form the compact configuration, wherein, when in the compact configuration, the first hinge is configured to catch on the second hinge to hold the system in a compact configuration.”
In particular, the Shalon – Wingate – Shalon 902 – Chao combination teaches the eyewear system of claim 1, and Shalon further teaches “wherein at least a portion of the first frame is configured to be folded about the resilient wire bridge and moved over the second lens to form the compact configuration (configuration of Fig. 5B and col. 8 lines 38-41: "folding lenses 51 around superelastic bridge 56 such that lenses 51 are positioned one on top of the other in a reverse orientation")." However, Shalon fails to teach “wherein, when in the compact configuration, the first hinge is configured to catch on the second hinge to hold the system in a compact configuration.”
Barnett teaches “the first hinge is configured to catch on the second hinge to hold the system in a compact configuration (Fig. 2 and paragraph [0050]: “The lenses 12 are brought together around the hinged bridge 10 and secured in place by a connection means on the outer edge of the lenses 22 (see FIGS. 6 & 7). The connection means 22 assures proper alignment of the lenses 12 and prevents uneven stresses from misaligning the lenses 12 or breakage.” The connection means 22 is a catch at the position of the first and second hinges that connect the lens frames to the temple arms.).”
However, the compact configuration of Barnett shown in Fig. 4 has the lenses sandwiched between the temple arms to protect them, unlike the Shalon – Wingate combination where the temple arms are both disposed on the same side of the lenses. The connection means of Barnett is configured to catch together two facing surfaces of the lens rims and is not configured to catch together two side-by-side rim/temple hinges. Thus although Barnett suggests utilizing connection means (22 as well as 24), Barnett does not suggest “wherein, when in the compact configuration, the first hinge is configured to catch on the second hinge to hold the system in a compact configuration” when the compact configuration is that defined by claims 1 and 17.
Claim 18 recites substantially similar limitations to claim 17 and is allowable for the same reasons.
Response to Arguments
In the first paragraph on page 6 of 8 of the applicant’s remarks the applicant points out that support for the amendments to claims can be found “throughout the specification, but especially on [0031]-[0033] and [0058]-[0064]” and thus that no new matter has been added. The examiner agrees that the claims 1, 3-8, 10-14 and 17-18 are supported by the specification as filed. The reasons why claims 15 and 16 are found to introduce new matter are explained in the 35 U.S.C. §112(a) rejection above.
Under the heading “Claim Objections” on page 6 of 8 of the applicant’s remarks the applicant argues that the claim objections have been overcome by the amendments to the claims. The examiner agrees, the claim objections have been withdrawn.
Under the heading “Claim Rejections under 35 U.S.C. §112” page 6 of 8 of the applicant’s remarks the applicant states that they respectfully disagree with the 35 USC §112 rejection of claim 14 of the previous office action. No argument supporting this traversal is presented.
Under the heading “CLAIM REJECTIONS UNDER 35 U.S.C. § 103” on page 7 of 8 of the applicant’s remarks the applicant first enumerates the prior art rejections of claims 1, 3, 6-8 and 10-14.
In the second paragraph under the heading “CLAIM REJECTIONS UNDER 35 U.S.C. § 103” on page 7 of 8 of the applicant’s remarks the applicant notes that the rejection admits that Shalon fails to teach the first ear piece and the second ear piece and that Wingate fails to teach the first hinge positioned within the thickness of the first lens. This is an accurate reflection of the rejection largely maintained above. However, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Next in this second paragraph under the heading “CLAIM REJECTIONS UNDER 35 U.S.C. § 103” on page 7 of 8 of the applicant’s remarks the applicant argues that Wingate teaches away from a resilient wire bridge, characterizing the bridge of Wingate as being “an opposite mechanism” from the resilient wire bridge of the present claims. This argument is not persuasive for at least the following reasons. Firstly, Wingate is a secondary reference, not the primary reference. Thus the combination presented above does not modify Wingate to have a resilient wire bridge and therefor any question of “teaching away” by Wingate is not pertinent to the rejection of record. Secondly, in response to applicant's argument that Wingate’s bridge does not anticipate the claimed resilient wire bridge, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Wingate is relied upon for the configuration of the temple arms, not the nose-bridge and there is no reason why an ordinary skilled artisan would have to also adopt the nose-bridge of Wingate when modifying Shalon to add temple arms and hinges thereof.
In the last paragraph on page 7 of 8 of the applicant’s remarks the applicant alleges that Shalon 902 and Chao fail to cure the defects of Shalon and Wingate with respect to claims 1 and 8. This argument is not persuasive for at least the following reasons. Firstly, it is not clear what the alleged deficiency is that applicant is arguing isn’t cured. Secondly, with respect to the amended functional limitation “wherein the resilient wire bridge is… configured to resist torsion of the first lens and the second lens such that the first frame and second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent” the rejection does, in fact, rely upon the teachings of Shalon 902. Shalon 902 discloses the dimensions of the resilient wire bridge, which was already flat and made of Nitinol in the primary reference, Shalon. Thus, the rejection concludes that because the flat wire nitinol bridge with a width of 0.4 mm and a thickness of 0.8 mm of the Shalon – Shalon 902 combination is of a sufficiently similar structure as disclosed in the present application, it must perform the same function and be configured to resist torsion of the first lens and the second lens such that the first frame and second frame are maintained in the same plane in an unfolded configuration until the resilient wire bridge is bent at least for some values of the torsional force that can be resisted and the torsional force applied to intentionally fold the arrangement into the compact configuration.
Under the heading “Claims 4-5” on pages 7 and 8 of 8 of the applicant’s remarks the applicant argues that Willet, relied upon for elements of claims 4 and 5, fails to cure the deficiencies of Shalon, Wingate, Shalon 902 and Chao. This argument is moot, since Willet is not relied upon for any of the features argued above for claim 1.
No further arguments are made after this paragraph.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normally be reached 9AM-4PM ET M-F.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
1 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).