DETAILED ACTION
This office action is in response to the amendment filed December 26, 2025 in which claims 1-17 and 19-21 are presented for examination and claim 18 is canceled.
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 .
Response to Arguments
Applicant’s First Argument: Objection to the drawings should be withdrawn at least in view of current amendments to the drawings.
Examiner’s Response: Agreed. The objection is withdrawn.
Applicant’s Second Argument: No claim limitations should be interpreted under 35 USC 112(f) at least because “first fastening element” and “second fastening element” were amended to recite “first fastener” and “second fastener,” respectively, and “securing element” does not use the term “means” and the term “securing element” is “understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
Examiner’s Response: Examiner agrees that the limitations “first fastener” and “second fastener” do not invoke 35 USC 112(f) but respectfully maintains that the limitation “securing element” does invoke 35 USC 112(f). Although “securing element” does not use the term “means,” it nevertheless invokes 35 USC 112(f) because it uses a substitute for the term “means” that is a generic placeholder (i.e., element) modified by functional language (i.e., securing), with the generic placeholder not being modified by sufficient structure, material, or acts to perform the claimed function (see MPEP § 2181). To Applicant’s argument that “securing element” has a “sufficiently definite meaning,” it is noted that 35 USC 112(f) is not a rejection or an assertion that the term “securing element” is indefinite. It is further respectfully noted that invocation of 35 USC 112(f) is not optional; either a limitation invokes 35 USC 112(f) or it does not. If Applicant does not wish to invoke 35 USC 112(f), claims 11 and 12 may be amended to recite sufficient structure along with the limitation “securing element” to perform the recited function or may amend the limitation “securing element” to recite, for example, “plastic mating fastener.”
Applicant’s Third Argument: Objection to various claims for minor informalities should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: Agreed. The objection is withdrawn.
Applicant’s Fourth Argument: Rejection of the claims under 35 USC 102 and/or 35 USC 103 over various cited references should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: In view of Applicant’s amendment, the search has been updated and new prior art has been identified and applied. Applicant’s arguments, which appear to be drawn only to the newly amended limitations and previously presented rejections, have been considered but are moot in view of the new grounds of rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “securing element” in claims 11-12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 8-17, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 0,879,749 Dieckmann in view of USPN 0,327,438 Fuller, and in further view of US Pub No. 2020/0122015 Mast and US Pub No. 2015/0085244 Carter.
To claim 1, Dieckmann discloses a mask (see Figures 1-7, reproduced below for convenience; pg. 1, line 56 – pg. 2, line 108) comprising:
a flexible body (18) (see Figure 1; pg. 2, lines 76-77);
a strap connected to the flexible body and configured to secure the flexible body to a user's face (not pictured; pg. 2, lines 92-108);
at least one lens (14) mounted in the flexible body such that the at least one lens is aligned with an eye of the user when the flexible body is secured to the user's face (see Figures 1-7; pg. 1, lines 70-75; pg. 2, lines 25-35).
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Dieckmann does not disclose a mask comprising at least one cover element movably mounted on the flexible body to move between a closed position in which the at least one cover element covers the at least one lens and an open position in which the at least one lens is uncovered such that the user is able to see through the at least one lens, when the mask is secured to the user’s face.
However, Fuller discloses a mask (see Figures 1-4, reproduced below for convenience; pg. 1, line 38 – pg. 2, line 9) comprising: a flexible body (A,D) (see Figures 1-4; pg. 1, lines 38-74); a strap (B) connected to the flexible body and configured to secure the flexible body to a user's face (see Figures 1-4; pg. 1, lines 38-52); and at least one cover element (F) movably mounted on the flexible body to move between a closed position (see Figures 1-2; pg. 1, lines 53-74) in which the at least one cover element covers at least one aperture and an open position (see Figures 3-4; pg. 1, lines 53-74) in which the at least one aperture is uncovered such that the user is able to see through the at least one aperture, when worn (see Figures 1-4; pg. 1, lines 53-74).
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Dieckmann and Fuller teach analogous inventions in the field of masks. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the mask of Dieckmann to include at least one cover element as taught by Fuller because Fuller teaches that this configuration is known in the art and allows the mask to be used in initiation rituals for societies and lodges (pg. 1, lines 14-31). It would further have been obvious to one of ordinary skill in the art that adding the at least one cover element of the mask of Fuller to the mask of Dieckmann would be beneficial for non-initiation related situations in which the wearer wishes to obscure light such as when sleeping.
The modified invention of Dieckmann (i.e., Dieckmann in view of Fuller, as detailed above) teaches a mask wherein the at least one lens may be a vision-corrective lens (pg. 1, lines 70-75 and pg. 2, lines 25-35 of Dieckmann).
The modified invention of Dieckmann does not explicitly teach a mask wherein the at least one lens is positioned such that a vertex distance between a cornea of the user and a back of the at least one lens when in use is 9 mm to 13 mm and has a pantoscopic tilt of 5-15 degrees.
However, Mast teaches at least one lens positioned such that a vertex distance between a cornea of the user and a back of the at least one lens when in use is 9 mm to 13 mm (paras. 0120, 0156 of Mast) and Carter teaches at least one lens positioned to have a pantoscopic tilt of 5-15 degrees (para. 0037 of Carter).
The modified invention of Dieckmann, Mast, and Carter teach analogous inventions in the field of lenses. Therefore, 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 at least one lens of the modified invention of Dieckmann to have a vertex distance of 9 mm to 13 mm as taught by Mast because Mast teaches that the vertex distance is usually in that range for eyeglass lenses (para. 0120 of Mast) and to have a pantoscopic tilt of 5-15 degrees as taught by Carter because Carter teaches that such a tilt is common in the eyeglass industry (para. 0037 of Carter). It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05) and additionally that the disclosure of the instant application does not recite any criticality for the recited ranges (see para. 0063 of the instant specification, which notes that the vertex distance may be lower than 9 mm and may be larger than 13 mm and that the pantoscopic angle may be less than 5 degrees or more than 15 degrees).
To claim 2, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the flexible body comprises:
a first opening configured to receive the at least one lens (see especially Figure 3 and pg. 1, lines 53-74 of Fuller; see especially Figure 1 and pg. 2, lines 25-35 of Dieckmann); and
a first fastener (F’ of Fuller) configured to hold the at least one cover element over the first opening to cover the at least one lens (see Figures 1-4 and pg. 1, lines 53-74 of Fuller).
To claim 8, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask further comprising:
a second lens (14 of Dieckmann) mounted in the flexible body such that the second lens is aligned with a second eye of the user when the flexible body is secured to the user's face (see especially Figure 3 and pg. 1, lines 53-74 of Fuller; see especially Figure 1 and pg. 2, lines 25-35 of Dieckmann); and
a second cover element (F of Fuller) movably mounted on the flexible body to move between a closed position in which the second cover element covers the second lens and an open position in which the second lens is uncovered such that the user is able to see through the second lens, when worn (see Figures 1-4 and pg. 1, lines 53-74 of Fuller).
To claim 9, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the flexible body further comprises:
a second opening configured to receive the second lens (see especially Figure 3 and pg. 1, lines 53-74 of Fuller; see especially Figure 1 and pg. 2, lines 25-35 of Dieckmann); and
a second fastening element (F’ of Fuller) configured to hold the second cover element over the second opening to cover the second lens (see Figures 1-4 and pg. 1, lines 53-74 of Fuller).
To claim 10, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the strap is integrated into the flexible body (see Figures 1-4 and pg. 1, lines 38-52 of Fuller).
To claim 11, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask further comprising a securing element (c of Fuller) configured to adjustably secure the strap to the flexible body such that a length of the strap is adjustable (see especially Figure 3 and pg. 1, lines 38-52 of Fuller).
To claim 12, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask further comprising a securing element (20 of Dieckmann) configured to releasably secure the strap to the flexible body (see Figures 1-2 and pg. 2, lines 92-108 of Dieckmann).
To claim 13, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the flexible body comprises a first bezel element (1,5 of Dieckmann) surrounding the first opening and configured to receive the at last one lens (see especially Figures 2-3 and 6 and pg. 1, line 83 – pg. 2, line 35 of Dieckmann).
To claim 14, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the first bezel element includes a slot configured to receive the at least one lens (see especially Figures 2-3 and 6 and pg. 1, line 83 – pg. 2, line 35 of Dieckmann).
To claim 15, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the at least one lens includes a peripheral seal extending around a periphery of the at least one lens and sized to fit in the slot (see especially Figures 2-3 and 6 and pg. 1, line 83 – pg. 2, line 35 of Dieckmann).
To claim 16, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the at least one lens is a corrective lens (pg. 1, lines 70-75 and pg. 2, lines 25-35 of Dieckmann).
To claim 17, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the flexible body is configured such that the at least one lens is mounted in the flexible body at a desired pantoscopic tilt (see Figures 1-7and pg. 1, line 83 – pg. 2, line 108 of Dieckmann; para. 0037 of Carter).
To claim 20, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the at least one lens is mounted in the flexible body to provide a desired vertex distance between a cornea of the user and a back of the at least one lens, when worn (see Figures 1-7and pg. 1, line 83 – pg. 2, line 108 of Dieckmann; paras. 0120, 0156 of Mast).
To claim 21, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the body is configured to provide a desired pupillary distance between a center of the at least one lens and a center of the second lens (see Figures 1-7and pg. 1, line 83 – pg. 2, line 108 of Dieckmann; paras. 0120, 0156 of Mast).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Dieckmann in view of Fuller, Mast, and Carter (as applied to claim 1, above), in further view of US Pub No. 2023/0000188 Dubois et al.
To claim 3, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) further teaches a mask wherein the flexible body comprises:
an outer surface made of a soft material (see Figure 1 and pg. 1, lines 56-82 of Dieckmann).
The modified invention of Dieckmann does not expressly disclose at least one foam element covered by the soft material.
However, Dubois teaches a mask (see Figures 1-6; paras. 0065-0079) further comprising foam (paras. 0073-0074).
The modified invention of Dieckmann and Dubois teach analogous inventions in the field of masks. Therefore, 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 mask of the modified invention of Dieckmann to include foam as taught by Dubois because Dubois teaches that this configuration is known in the art and provides comfort for the wearer (para. 0074). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
To claim 4, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller, Mast, Carter, and Dubois, as detailed above) further teaches a mask wherein the soft material is silk (para. 0067 of Dubois). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
To claim 5, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller, Mast, Carter, and Dubois, as detailed above) further teaches a mask wherein the soft material is satin (para. 0067 of Dubois). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
To claim 6, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller, Mast, Carter, and Dubois, as detailed above) further teaches a mask wherein the foam is memory foam (para. 0074 of Dubois). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Dieckmann in view of Fuller, Mast, and Carter (as applied to claim 1, above), in further view of USPN 4,811,430 Janusz.
To claim 7, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) teaches a mask as recited in claim 1, above.
The modified invention of Dieckmann does not expressly teach a mask wherein the first fastener is a hook and loop type fastener.
However, Janusz teaches a mask (see Figures 1-2; col. 2, line 30 – col. 3, line 31) comprising a first fastener that is a hook and loop type fastener (see Figures 1-2; col. 2, line 60 – col. 3, line 4).
The modified invention of Dieckmann and Janusz teach analogous inventions in the field of masks. Therefore, 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 first fastener of the modified invention of Dieckmann to be a hook and loop type fastener as taught by Janusz because Janusz teaches that this configuration is known in the art and beneficial for providing a selectively-viewable lens on a mask (see Figures 1-2; col. 2, line 60 – col. 3, line 4).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Dieckmann in view of Fuller, Mast, and Carter (as applied to claim 1, above), in further view of USPN 9,739,916 Weber et al.
To claim 19, the modified invention of Dieckmann (i.e., Dieckmann in view of Fuller and in further view of Mast and Carter, as detailed above) teaches a mask as recited in claim 1, above.
The modified invention of Dieckmann does not expressly teach a mask wherein the at least one lens is a blue light blocking lens.
However, Weber teaches lenses that are blue light blocking lenses (Abstract).
Therefore, 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 lenses of the modified invention of Dieckmann to be blue light blocking lenses as taught by Weber because Weber teaches that this configuration is known in the art and aids with sleeping (col. 1, lines 21-49).
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 GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/F Griffin Hall/Primary Examiner, Art Unit 3732