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 .
DETAILED ACTION
The instant application having Application No. 18/250,050 filed on April 21, 2023 is presented for examination by the examiner.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 12, 2026 has been entered.
The amended claims submitted January 12, 2026 in response to the office action mailed October 10, 2025 are under consideration. Claims 12 and 14-22 are pending. Claims 1-11 and 13 are cancelled.
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.
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 12, 14 and 16-22 are rejected under 35 U.S.C. 103 as being unpatentable over Szymanski US D697,128 S (hereafter Szymanski) in view of Klein US 1,970,044 (hereafter Klein) and Ouaknine FR 2875914 A1 (cited in an IDS, hereafter Ouaknine, where reference will be made to the attached machine translation).”
Regarding claim 12, Szymanski teaches “Folding eyeglasses (Figs. 7-8), comprising
a front (the front of the sunglasses which includes the rims and the bridge) which supports a pair of lenses (left and right lenses of the sunglasses) and
a pair of temples (left and right temples) hinged to the front (see hinges between the temple and the front in the open position in Fig. 7 and in the closed position in Fig. 8), each one of said temples comprising a proximal portion (the proximal portions of the temples closest to the frame) and a distal portion (the distal portion of the temples which are shaped to curve behind the ear) which are mutually hinged by a hinge (see hinge therebetween in the open position in Fig. 7 and in the closed position in Fig. 8), … in order to arrange the proximal portion of the temple and the distal portion of the temple so that they are mutually parallel and superimposed (see mutually parallel and superimposed positions of all of the temple portions in Fig. 8).”
However, Szymanski fails to explicitly teach “wherein said hinge comprises a multi-jointed central body configured to allow a first 90° rotation of the distal portion of the temple, and a further 90° rotation of the multi-jointed central body with respect to the proximal portion of the temple…
wherein said multi- jointed central body of the hinge is interposed between said proximal portion and said distal portion of the temple by the interposition, at each side, of a slider, which is adapted to mate respectively with the proximal portion and with the distal portion of the temple by the interposition of a respective compression spring, said slider being adapted to slide respectively on said proximal portion and said distal portion of the temple and being configured to move with respect to said central portion.”
Klein teaches “Folding eyeglasses (folding spectacles of Figs. 1-4), comprising
a front (lens rims 1 and 2) which supports a pair of lenses (the lenses within the lens rims) and
a pair of temples (the pair of temples with parts 8, 9, 10 and 11) hinged to the front (metal hinges 6 and 7),
each one of said temples comprising a proximal portion (part 8) and a distal portion (part 9) which are mutually hinged by a hinge (see Fig. 5, at least elements 12,16,17, 18 and 22),
wherein said hinge comprises a multi-jointed central body (metal plate 16) configured to allow a first 90° rotation of the distal portion of the temple (see Figs. 2 and 5, part 9 is rotated 90° with respect to 16 in Fig. 2), and a further 90° rotation of the multi-jointed central body with respect to the proximal portion of the temple (see Figs. 2 and 5, part 16 is rotated 90° with respect to part 8 in Fig. 2), in order to arrange the proximal portion of the temple and the distal portion of the temple so that they are mutually parallel (see Fig. 9 all of the parts 8 and 9 are mutually parallel in the folded configuration) and superimposed (all of the parts 8 and 9 are mutually superimposed within the plane which they all occupy).”
Ouaknine teaches “wherein said hinge comprises a multi-jointed central body (middle part 2) configured to allow a first 90° rotation (the left side outer part 3 of the solar adapter to be folded, see paragraph [0007] and Fig. 5C)… and a further 90° rotation of the multi-jointed central body (the middle part 3 is folded 90° relative to the right side outer part 3 of the solar adapter when the position of Fig. 5C is fully folded), in order to arrange [the left and right sides] so that they are mutually parallel and superimposed (when the position of Fig. 5C is fully folded the left and right sides will be mutually parallel and superimposed)…
wherein said multi- jointed central body of the hinge (middle part 2) is interposed between said [left] portion and said [right] portion (2 is between the left and right rods 3) … by the interposition, at each side (left and right sides, see e.g. Figs. 1a and 5a), of a slider (left and right sleeves 12), which is adapted to mate respectively with the [left] portion and with the [right] portion (e.g. paragraph [0007]: “a rod (3) sliding inside the sleeve (12)”) … by the interposition of a respective compression spring (left and right coil springs 14 which is between middle part 2 and rods 3), said slider being adapted to slide respectively on said [left] portion and said [right] portion (e.g. paragraph [0007]: “a rod (3) sliding inside the sleeve (12)”. Note that 3 sliding within 12 means that 3 and 12 are in sliding engagement, and thus that 12 slides on the outside of 3) and being configured to move with respect to said central portion (see Fig. 5C).”
Ouaknine further teaches that in their extendable hinge, “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge thereof.” (paragraph [0007]).
Szymanski discloses the claimed invention except that a single-jointed mid-temple hinge is used instead of a multi-jointed mid-temple hinge. Klein shows that a mulit-jointed mid-temple hinge is an equivalent structure in the art. Therefore, because these two mid-temple hinges 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 structure for hinging the two portions of the temple that is multi-jointed, where the complete folding of the temples involves rotating the distal portion 90° and rotating the central body 90° as taught by Klein for the mid-temple hinge of Szymanski, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B).
In the above modification, it further would have been obvious to choose the multi-jointed elastic hinge of Ouaknine as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Note that the proposed modification replaces the single-jointed hinge of Szymanski with the multi-jointed elastic hinge of Oauknine motivated by the fact that Klein demonstrates that a multi-jointed hinge is an art-recognized equivalent for a mid-temple hinge, and Ouaknine teaches that an elastic multi-jointed hinge has the additional advantage of contributing to maintaining the open and closed positions (paragraph [0007]).
Further note that in the above combination, the orientation in which the two portions of the temples are rotated such that the temples are interposed between the lenses in the folded configuration, and the temples are superimposed in a horizontal plane in the folded configuration as taught by Szymanski can be maintained in this combination by aligning the two pivot axes of the multi-jointed hinge of Ouaknine to both have the same orientation as the single pivot axis in Szymanski.
Finally note, that the limitations “wherein said multi- jointed central body of the hinge is interposed between said proximal portion and said distal portion of the temple by the interposition, at each side, of a slider, which is adapted to mate respectively with the proximal portion and with the distal portion of the temple by the interposition of a respective compression spring, said slider being adapted to slide respectively on said proximal portion and said distal portion of the temple and being configured to move with respect to said central portion” are considered to be met by the combination of references. In particular, Ouaknine teaches the claimed configuration of the hinge parts, while Klein teaches applying such a multi-jointed hinge to a mid-temple hinge, and Szymanski teaches that the two elements being hinged are the proximal and distal portions of the temple. Thus, taken in combination the above limitations are both suggested the prior art, and obvious over the prior art for the reasons provided above.
Regarding claim 14, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” however, Szymanski fails to teach “wherein said multi- jointed central body of the hinge is provided with respective holes which are adapted to mate with holes arranged at ends of said proximal portion and said distal portion of the temple, by respective screws.”
Ouaknine teaches “wherein said multi-jointed central body of the hinge is provided with respective holes (holes in middle part 2 into which 10 is inserted) which are adapted to mate with holes arranged at ends of said [left] portion and said [right] portion (holes in sleeves 12 into which 10 is inseted)… by respective screws (screws 10).”
It would have been obvious to choose the multi-jointed elastic hinge of Ouaknine as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Note that the limitations “wherein said multi- jointed central body of the hinge is provided with respective holes which are adapted to mate with holes arranged at ends of said proximal portion and said distal portion of the temple, by respective screws” are considered to be met by the combination of references. In particular, Ouaknine teaches the claimed configuration of the hinge parts, while Klein teaches applying such a multi-jointed hinge to a mid-temple hinge, and Szymanski teaches that the two elements being hinged are the proximal and distal portions of the temple. Thus, taken in combination the above limitations are both suggested the prior art, and obvious over the prior art for the reasons provided above.
Regarding claim 16, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” however, Szymanski fails to teach “wherein said respective compression spring of said distal portion of the temple has a smaller force than said respective compression spring of said proximal portion of the temple.”
Ouaknine teaches both a first embodiment with two compression springs and a second embodiment with only one compression spring (see Figs. 4a-4b and paragraph [0012]). Thus, an ordinary skilled artisan would understand that the two coil springs do not have to apply the same force, since one of the two could be eliminated and the hinge would still function as desired.
Therefore, Ouaknine teaches “wherein said respective compression spring of said [left] portion … has a smaller force than said respective compression spring of said [right] portion (Ouaknine teaches left and right springs. These springs either have (a) equal forces, (b) the left has a smaller force than the right or (c) the right has a smaller force than the left. This is a genus with only 3 species. Thus an ordinary skilled artisan would at once envisage all of the three species including wherein said respective compression spring of said [left] portion … has a smaller force than said respective compression spring of said [right] portion).”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose one of the springs to have a smaller force than the other spring as taught by Ouaknine.
Note that the limitations “wherein said respective compression spring of said distal portion of the temple has a smaller force than said respective compression spring of said proximal portion of the temple” are considered to be met by the combination of references. In particular, Ouaknine teaches the claimed configuration of the hinge parts, while Klein teaches applying such a multi-jointed hinge to a mid-temple hinge, and Szymanski teaches that the two elements being hinged are the proximal and distal portions of the temple. Thus, taken in combination the above limitations are both suggested the prior art, and obvious over the prior art for the reasons provided above.
Regarding claim 17, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” and Szymanski further teaches “wherein said front comprises a first front portion and a second front portion which are mutually hinged (see the pair of multi-jointed hinges that allow the lenses to fold into the configuration of Fig. 8).”
However, Szymanski does not explicitly teach “by the interposition of a slider and a spring.”
Ouaknine teaches “wherein said front comprises a first front portion and a second front portion which are mutually hinged (compare Fig. 5a to Fig. 5c) by the interposition of a slider (sleeve 12) and a spring (spring 14).”
Ouaknine further teaches (paragraph [0007]) “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge 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 configure the multi-jointed bridge hinge of Szymanski to utilize a slider and a spring as taught by Ouaknine because Ouaknine teaches that such an elastic multi-joint hinge contributes to maintaining the “open” or “closed” positions by making said projection cooperate with a stop of the joint or a lateral edge thereof (Ouaknine paragraph [0007]).
Regarding claim 18, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” however Szymanski fails to teach “wherein said respective compression springs of said distal portion and said proximal portion of the temple are accommodated in a blind cavity formed at said distal portion and at said proximal portion of said temple.”
Ouaknine teaches ““wherein said respective compression springs of said [left] portion and said [right] portion of the temple are accommodated in a blind cavity (the cavity in 12 which accommodates spring 14 and rod 3, which are blind cavities see Figs. 3a and 3b) formed at said [right] portion and at said [left] portion (this cavity is on the right-most side of the left rod 3 and on the left-most side of the right rod 3).”
Ouaknine further teaches (paragraph [0007]) “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge thereof.”
It would have been obvious to choose the multi-jointed elastic hinge of Ouaknine with the claimed blind cavities as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Note that the limitations “wherein said respective compression springs of said distal portion and said proximal portion of the temple are accommodated in a blind cavity formed at said distal portion and at said proximal portion of said temple” are considered to be met by the combination of references. In particular, Ouaknine teaches the claimed configuration of the hinge parts, while Klein teaches applying such a multi-jointed hinge to a mid-temple hinge, and Szymanski teaches that the two elements being hinged are the proximal and distal portions of the temple. Thus, taken in combination the above limitations are both suggested the prior art, and obvious over the prior art for the reasons provided above.
Regarding claim 19, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 18,” however Szymanski fails to teach “wherein said respective compression spring abuts between said blind cavity of said distal portion and of said proximal portion of the temple and the respective slider.”
Ouaknine teaches “wherein said respective compression spring abuts between said blind cavity of said [right] portion and of said [left] portion … and the respective slider (paragraph [0007]: “a coil spring (14) bearing on a shoulder (18) inside the sleeve (12) at one end and on a projection (16) of this rod (3) at the other end.” thus the spring 14 abuts the end of the blind cavity, shoulder 18 on one end and the projection of the rod on the other end).”
Ouaknine further teaches (paragraph [0007]) “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge thereof.”
It would have been obvious to choose the multi-jointed elastic hinge of Ouaknine with the claimed blind cavities as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Note that the limitations “wherein said respective compression spring abuts between said blind cavity of said distal portion and of said proximal portion of the temple and the respective slider” are considered to be met by the combination of references. In particular, Ouaknine teaches the claimed configuration of the hinge parts, while Klein teaches applying such a multi-jointed hinge to a mid-temple hinge, and Szymanski teaches that the two elements being hinged are the proximal and distal portions of the temple. Thus, taken in combination the above limitations are both suggested the prior art, and obvious over the prior art for the reasons provided above.
Regarding claim 20, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” and Szymanski teaches further teaches “wherein … the hinge is a bistable mechanism (in the position of Fig. 7 the temples cannot be rotated to be open further than this straight configuration, and thus is a first stable position. In the position of Fig. 8 the temples cannot be closed further than this folded position and thus is a second stable postion. Thus the central hinge is a bistable mechanism).”
However, Szymanski fails to teach “wherein the multi-jointed central body of the hinge is a bistable mechanism.”
Ouaknine teaches “The folding eyeglasses according to claim 12, wherein the multi-jointed central body of the hinge is a bistable mechanism (paragraph [0007]: “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge thereof.”).”
Ouaknine further teaches (paragraph [0007]) “The spring (14) also contributes to maintaining the “open” or “closed” positions … by making said projection (16) cooperate with a stop (17) of the joint (7) or a lateral edge thereof.”
It would have been obvious to choose the multi-jointed elastic hinge of Ouaknine as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Regarding claim 21, the Szymanski - Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 20,” and Szymanski further teaches wherein said bistable mechanism allows the 180° rotation of the distal portion of the temple with respect to the proximal portion of said temple (compare the position of the distal and proximal portions of the temple in Fig. 8 to Fig. 7. In moving from the position of Fig.7 to Fig. 8 the distal portion of the temple is rotated by 180° with respect to the proximal portion), by vertical axes of the … hinge (the axis of the mid-temple hinge is vertical, see pivot point out of the page in Fig. 7 and vertical in Fig. 8).”
However, Szymanski fails to teach “vertical axes of the multi-jointed hinge.” However, as noted in claim 12 above, the orientation in which the two portions of the temples are rotated such that the temples are interposed between the lenses in the folded configuration, and the temples are superimposed in a horizontal plane in the folded configuration as taught by Szymanski can be maintained in this combination by aligning the two pivot axes of the multi-jointed hinge of Ouaknine to both have the same orientation as the single pivot axis in Szymanski.
Thus the combination introduced for claim 12, further teaches “vertical axes of the multi-jointed hinge” because Ouaknine teaches a multi-jointed hinge with two axes, and Szymanski teaches that they should be oriented vertically.
Regarding claim 22, the Szymanski – Klein – Ouaknine combination teaches “folding eyeglasses according to claim 12” and Szymanski further teaches “A method for folding (see steps below1) folding eyeglasses according to claim 12 (see claim 12 above), the method including the following steps:
for each one of said temples, starting from an open condition of said eyeglasses (the position of Fig. 7), rotating through 90° said distal portion of the temple with respect to said proximal portion of the temple (in the act of folding the temple fully, the first half of the rotation will be where the distal portion of the temple is rotated through 90° with respect to the proximal portion), …
rotating further through 90° said distal portion of the temple (completing the folding of the two portions of the temple by folding the distal portion another 90° to reach the position of Fig. 8), …so as to arrange said proximal portion of the temple and said distal portion of the temple so that they are mutually parallel and superimposed (see mutually parallel and superimposed positions of all of the temple portions in Fig. 8), and folding the front of the eyeglasses (see folded lens and lens rims in Fig. 8) so as to arrange first and second portions of the front so that one is superimposed on another (see superimposed lenses in Fig. 8), with said folded temples interposed (see how the folded temples are sandwiched between the lenses in Fig. 8).”
However, Szymanski fails to teach “said multi-jointed central body of the hinge remaining in the normal open position,… so as to cause said multi-jointed central hinge body to rotate with respect to said proximal portion of the temple.”
Klein teaches “A method for folding (see steps below2) folding eyeglasses according to claim 12 (see claim 12), the method including the following steps:
for each one of said temples, starting from an open condition of said eyeglasses (the position of Fig. 1), rotating through 90° said distal portion of the temple with respect to said proximal portion of the temple (the hinge with pivotal rivet 22 is independent of the hinge with pivotal rivet 17 and thus can be rotated through 90° with respect to 16 and 8), said multi-jointed central body of the hinge remaining in the normal open position (the hinge with pivotal rivet 17 is independent of the hinge with pivotal rivet 17 and thus can be kept open during this first step),
rotating further through 90° said distal portion of the temple so as to cause said multi-jointed central hinge body to rotate with respect to said proximal portion of the temple (rotating 16 90° with respect to 8), so as to arrange said proximal portion of the temple and said distal portion of the temple so that they are mutually parallel and superimposed (In Fig. 2 all parts 8 and 9 are mutually parallel and superimposed), and folding the front of the eyeglasses so as to arrange first and second portions of the front so that one is superimposed on another (see superimposed position of 1 and 2 in Fig. 2), with said folded temples interposed (the hinged portions of the temples are interposed relative to the lenses in that, proximate to the bridge, the lenses extend wider apart than the temples do).”
Ouaknine teaches “starting from an open condition of said eyeglasses, rotating through 90° said [left] portion … with respect to said [right] portion… (see Fig. 5c where the left and right rods 3 are approaching 90° angles with respect to the middle part 2)
rotating further through 90° said [right] portion … so as to cause said multi-jointed central hinge body to rotate with respect to said [left] portion (see Fig. 5c where the left and right rods 3 are approaching 90° angles with respect to the middle part 2) … so as to arrange said [left] portion … and said [right] portion… so that they are mutually parallel and superimposed (see configuration of Fig. 5c).”
Szymanski discloses the claimed invention except that a single-jointed mid-temple hinge is used instead of a multi-jointed mid-temple hinge. Klein shows that a mulit-jointed mid-temple hinge is an equivalent structure in the art. Therefore, because these two mid-temple hinges 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 structure for hinging the two portions of the temple that is multi-jointed, where the complete folding of the temples involves rotating the distal portion 90° and rotating the central body 90° as taught by Klein for the mid-temple hinge of Szymanski, and the results thereof would have been predictable. See MPEP §2144.06 and 2143 (I)(B).
In the above modification, it further would have been obvious to choose the multi-jointed elastic hinge of Ouaknine as the multi-jointed mid temple hinge because Ouaknine teaches that a multi-jointed elastic hinge contributes to maintaining the open and closed positions (paragraph [0007]).
Note that the proposed modification replaces the single-jointed hinge of Szymanski with the multi-jointed elastic hinge of Oauknine motivated by the fact that Klein demonstrates that a multi-jointed hinge is an art-recognized equivalent for a mid-temple hinge, and Ouaknine teaches that an elastic multi-jointed hinge has the additional advantage of contributing to maintaining the open and closed positions (paragraph [0007]).
Further note that in the above combination, the orientation in which the two portions of the temples are rotated such that the temples are interposed between the lenses in the folded configuration, and the temples are superimposed in a horizontal plane in the folded configuration as taught by Szymanski can be maintained in this combination by aligning the two pivot axes of the multi-jointed hinge of Ouaknine to both have the same orientation as the single pivot axis in Szymanski.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Szymanski US D697,128 S (hereafter Szymanski) in view of Klein US 1,970,044 (hereafter Klein) and Ouaknine FR 2875914 A1 (cited in an IDS, hereafter Ouaknine, where reference will be made to the attached machine translation) as applied to claim 12 above and further in view of Conner US 2004/0100615 A1 (hereafter Conner).
Regarding claim 15, the Szymanski – Klein – Ouaknine combination teaches “The folding eyeglasses according to claim 12,” however, Szymanski, Klein and Ouaknine fail to explicitly teach “wherein said multi-jointed central body of the hinge comprises two mutually opposite cam portions which are adapted respectively to rotate about rounded ends of said proximal portion and of said distal portion of the temple, said rounded ends forming the holes of said proximal portion and said distal portion of the temple.”
Conner teaches a multi-jointed hinge for eyeglasses. Conner further teaches “wherein said multi-jointed central body of the hinge (central link 38) comprises two mutually opposite cam portions (curved ends which surround orifice 72 and hinge pivot 34) which are adapted respectively to rotate about rounded ends of said [left] portion and of said [right] portion (see concavely rounded ends of 26 and 24 into which the curved ends of 38 are mated and the circularly rounded ends in which the holes for the pivot are located)… said rounded ends forming the holes of said [left] portion and said [right] portion (see orifice 74 proximate to the rounded end of 26, which must also be present in 24).”
As shown in Figs. 2a and 6, these corresponding rounded shapes of the central body and left and right portions serve to stop the rotation of the hinges from over-extending in the position of Fig. 6 and to allow the hinges to smoothly rotate to the folded configuration of Fig. 2a.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adopt the corresponding rounded shapes of the multi-jointed hinge of Conner in the eyeglasses of the Szymanski – Klein – Ouaknine combination in order to stop the rotation of the hinges from over-extending in the open position and to allow the hinges to smoothly rotate to the folded configuration as taught by Conner (Figs. 2a and 6).
Response to Arguments
In the first paragraph of page 5 of 7 of the applicant’s remarks the applicant introduces that claim 12 has been amended and points out where support for the amendment can be found. The examiner agrees, the amendment to claim 12 does not introduce any new matter.
In the second paragraph of page 5 of 7 of the applicant’s remarks the applicant introduces that they will be traversing the previous grounds of rejection in light of the amendments.
In the third paragraph of page 5 of 7 of the applicant’s remarks the applicant points to the limitations that they will be arguing are not taught nor disclosed by the proposed combination of Szymanski, Klein, and Ouaknine, namely:
“wherein said multi-jointed central body of the hinge is interposed between said proximal portion and said distal portion of the temple by the interposition, at each side, of a slider, which is adapted to mate respectively with the proximal portion and with the distal portion of the temple by the interposition of a respective compression spring, said slider being adapted to slide respectively on said proximal portion and said distal portion of the temple and being configured to move with respect to said central portion”
No specific argument is made in this paragraph.
In the paragraph spanning pages 5 and 6 of 7 of the applicant’s remarks the applicant points out that “For an obviousness rejection to be proper, the Examiner must meet the burden of establishing that all elements of the invention are disclosed in the prior art and that the prior art relied upon, coupled with knowledge generally available in the art at the time of the invention, must contain some suggestion or incentive that would have motivated the skilled artisan to modify a reference or combined references. In re Fine, 5 U.S.P.Q.2d 1596, 1598 (Fed. Cir. 1988); In Re Wilson, 165 U.S.P.Q. 494, 496 (C.C.P.A. 1970); Amgen v. Chugai Pharmaceuticals Co., 927 U.S.P.Q.2d, 1016, 1023 (Fed. Cir. 1996).” The examiner agrees, these are amongst the ingredients necessary for a proper finding of obviousness under 35 U.S.C. §103.
In the first full paragraph of page 6 of 7 of the applicant’s remarks the applicant argues that the allegedly corresponding hinge of Ouaknine fails to that the sliders are configured to move with respect to the central body because the slider element 12 is coupled to the central body 2 by means of screw 10. This argument is not persuasive, because as shown in Fig. 5C, sliders 12 pivot with respect to central body 2 about screw 10 as their pivot axis. Such a configuration of a screw as a pivot axis is commonplace within the art of eyeglasses, particularly for the hinge that connects the temples to the frame. Thus, the applicant’s argument that such a screw would prohibit the relative movement of 12 and 2 is not persuasive.
In the second full paragraph of page 6 of 7 of the applicant’s remarks it appears that the applicant is concluding from their previous argument that Ouaknine fails to teach the claimed slider. This argument has been addressed above.
In the third full paragraph of page 6 of 7 of the applicant’s remarks the applicant concludes that a prima facie case of obviousness does not exist for claims 12, 14 and 16-22 due to the above argued deficiency. The argument underlying this conclusion has been addressed above.
In the last paragraph of page 6 of 7 and the first two paragraphs of page 7 of 7 of the applicant’s remarks the applicant argues that claim 15 is also allowable for at least the reasons set forth above. This argument has been addressed above. The applicant further argues that Conner fails to remedy the deficiencies of Szymanski, Klein and Ouaknine. This argument is moot because Conner is not relied upon for the limitations in question.
No further arguments are made after the first paragraph of page 7 of 7 of the applicant’s remarks.
Conclusion
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 Note that “Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986)” MPEP §2112.02
2 Note that “Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986)” MPEP §2112.02