DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 16 June 2025 has been entered.
Response to Amendment
Applicant’s amendment, received 10 November 2025, is reviewed and entered. This Office Action is a non-final rejection.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Status of Claims
Amended
1-4, 7
Newly Added
17-21
Canceled
5-6, 8-16
Pending
1-4, 7, 17-21
Presented for Examination
1-4, 7, 17-21
Response to Arguments
Applicant's arguments filed 16 June 2025 have been fully considered but they are not persuasive.
Drawing Objections
Overcome and withdrawn.
Specification Objections
Not overcome as the substitute specification is not entered because there is no marked-up copy.
112(a) Rejections
Overcome and withdrawn.
102 Rejections
The amendments require a new interpretation of the Hoff reference, as set forth below.
103 Rejections
Applicant does not argue against the 103 rejections.
Drawings
The drawings were received on 16 June 2025. These drawings are acceptable.
Specification
The substitute specification filed 16 June 2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the subject matter of claim 19, the long leg being sized to approximate the size of the user’s ear (claims 20-21).
The amendment filed 04 September 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: The new matter is replacing “central elastic band” with “central band,” which broadens the band to including materials other than elastic. For the same reason, “ideally” in para. 0015 is new matter because it suggests the band may be made with materials other than elastic, when the originally filed disclosure only supports an elastic band.
The new matter in para. 0012 and 0021 is the attempt to remove figure 5C from the disclosure.
The amendments to paras. 0017 and 0018 would be acceptable to enter if submitted separately from the other amendments that introduce new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Interpretation – 112(f)
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.
In claims 1, 3, 17, “detachable securing means” in interpreted as hook-and-loop fabrics or snapback straps or an equivalent (para. 0014).
In claims 7, “adjustment means” is interpreted as an adjustment buckle or an equivalent (para. 0015).
Claim Rejections - 35 USC § 102
Claim(s) 1-4, 7, 17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoff (US 5406340 A).
As to claim 1, Hoff discloses a head strap assembly for securing eye wear (“Infant-to-toddler eye wear including head straps,” title), comprising:
a central band with a left end and a right end (the central band is 54 and 56 in combination, which ends at the ends of 57);
a left over-ear strap connected to the left end of the central band, and a right over-ear strap connected to the right end of the central band (see annotated FIG 3 below; only the right side of the assembly is annotated; however, the assembly is symmetrical so all of the annotations apply to the left side as well; the term “over-ear” is an intended use recitation that has not lent any particular structure to the strap; even so, FIGS 1-2 show that the strap is “over” the wearer’s ear; the over-ear strap is integrally connected to the end of the central band);
a left strap attachment connected to the left over-ear strap, and a right strap attachment connected to the right over-ear strap (the shaded L-shaped portion, see annotated FIG 3 below, the strap attachment is integrally connected to the over-ear strap);
the left and right strap attachments each having two legs extending from an apex at an angle to create an L-shape (see annotated FIG 3 below);
a left under-ear strap connected to the left strap attachment, and a right under-ear strap connected to the right strap attachment (see annotated FIG 3 below; the term “under-ear” is an intended use recitation that has not lent any particular structure to the strap; even so, FIGS 1-2 show that portions of the strap are “under” portions of the wearer’s ear; the under-ear strap is integrally connected to the strap attachment);
a left neck strap connected to the left under-ear strap, and a right neck strap connected to the right under-ear strap (see annotated FIG 3 below, the neck strap is integrally connected to the under-ear strap); and
detachable securing means on the left neck strap and the right neck strap, for temporarily securing the left neck strap to the right neck strap (col 4 line 54-55 discloses “Velcro material 57 or snaps (not shown)”).
The recitations “over-ear” and “under-ear” are intended use recitations that do not lend any particular structure to the straps. A recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Because the prior art reference and the claimed invention are structurally identical, they are expected to be capable of being used in the same manner, and the prior art reference reads on the intended use recitation in the claim.
Applicant is respectfully reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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As to claim 2, Hoff discloses the left over-ear strap and the right over-ear strap are each configured in an arc (Fig 3).
As to claim 3, Hoff discloses a left temple pad and a right temple pad (34);
detachable securing means on the left strap attachment and the left temple pad, for temporarily securing the left strap attachment to the left temple pad (col 4 line 5-15 discloses hook and loop fasteners); and
detachable securing means on the right strap attachment and the right temple pad, for temporarily securing the right strap attachment to the right temple pad (col 4 line 5-15 discloses hook and loop fasteners).
The recitation “for temporarily securing” is an intended use recitation. A recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Because the prior art reference and the claimed invention are structurally identical, they are expected to be capable of being used in the same manner, and the prior art reference reads on the intended use recitation in the claim.
Applicant is respectfully reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case the hook and loop is capable of fastening and unfastening portions of the strap attachment and temple pad to/ from one another.
As to claim 4, Hoff discloses eye wear (frames 12, 14) connected to the left temple pad and to the right temple pad.
As to claim 7, Hoff discloses the head strap assembly of Claim 4, further comprising adjustment means in the central band, for adjusting the central band longer or shorter (57).
As to claim 17, Hoff discloses the head strap assembly of Claim 3, wherein each of the detachable securing means comprises a hook and loop attachment (col 4 line 54-55 discloses “Velcro material 57” and col 4 line 5-15 discloses hook and loop fasteners).
As to claim 20, Hoff discloses the head strap assembly of claim 1, wherein a long leg of the L-shape of the left and right strap attachments is sized to approximate the size of the user’s ear (either of the two legs is “a long leg” capable of approximating the size of the user’s ear).
Claim Rejections - 35 USC § 103
Claim(s) 18-19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoff (US 5406340 A).
As to claim 18, Hoff discloses the head strap assembly of claim 17, wherein the left and right temple pads comprise a loop fabric (34a and 34c of the temple pads 34 and 34b and 36b of the temple pads 34 are complementary hook and loop that fastens together, so there is necessarily a hook fabric and a loop fabric), but does not disclose the left and right strap attachments comprise a hook fabric.
Hoff does disclose the strap attachments are hook and loop fastener at 54c and 56c, so at least one of hook and loop if not both is present on the strap attachments.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the hook and loop fastener of the strap attachments to include a hook fabric, for the purpose of preventing slippage between the strap attachment and temple pads (Hoff col 4 line 35-40).
As to claim 19, Hoff discloses the head strap assembly of claim 18, wherein the left and right temple pads are sized such that the loop fabric coincides with the hook fabric of the left and right strap attachments (the hook and loop fastener of 34 “coincides” with the hook and loop fastener of 54c) such that the hook fabric is fully attached to the loop fabric while allowing the strap attachments to lay flat when attached and prevent the hook fabric from contacting the user’s face (FIG 3 shows 54c is fully attached to 34 at 34b and is capable of allowing the strap attachments at 54c to lay flat when attached as shown in FIG 3 and to prevent the hook fabric at 54c from contacting the user’s face; FIGS 1-2 show 54c is outward from the user and not contacting the face).
As to claim 21, Hoff discloses the head strap assembly of claim 19, wherein a long leg of the L-shape of the left and right strap attachments is sized to approximate the size of the user’s ear (either of the two legs is “a long leg” capable of approximating the size of the user’s ear; FIGS 1-2 show the leg “approximates” the size of the user’s ear).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SALLY HADEN whose telephone number is (571)272-6731. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Ostrup can be reached at 571-272-5559. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SALLY HADEN
Primary Examiner
Art Unit 3732
/SALLY HADEN/ Primary Examiner, Art Unit 3732