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 Amendment
This Office Action is in response to Applicant’s response of 1/28/2026. In that response, Applicant amended the specification and amended claim 2.
DETAILED ACTION
The instant application having Application No. 18/378,314 filed on 10/10/2023 is presented for examination by the Examiner.
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.
Election/Restrictions
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/4/2025.
Claim Rejections - 35 USC § 112
The rejection of claim 2 under 35 U.S.C. 112(a) and under 35 U.S.C. 112(b) has been overcome.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Zelazowski (US 2010/0309425, hereinafter, “Zelazowski”) in view of Dahnoun (US 11,474,375, hereinafter, “Dahnoun”).
Regarding claim 1, Zelazowski discloses a nose pad structure for eyeglasses (Fig. 28, 29), comprising:
a first element (402a, 3), having a pad 402a configured to contact a user's nose and a magnet 3 affixed to a side of the pad opposite the user's nose, wherein said pad is configured to distribute a portion of the weight of eyeglasses over an area of the nose and is constructed from at least one of silicone, polyvinyl chloride, and polycarbonate, and wherein said magnet is a permanent magnet (Fig. 29, [0092], [0111], [0112]); and
a second element (3, 402b), being T-shaped and having a stem 402b and a flange 3, wherein said stem is configured to couple the second element to an individual pad arm of the eyeglasses, and said flange is comprised of a ferromagnetic material and is configured to magnetically couple with the magnet of the first element to removably secure the first element to the eyeglasses (Fig. 28, 29, [0111]-[0113], [0115]).
Zelazowski does not disclose the second element comprises a mounting aperture to facilitate attachment to said eyeglasses. In Zelazowski, the second element (3, 402b) is attached to the eyeglasses via a magnet 3 ([0113]). However, Zelazowski discloses that the second element (3, 402b) may be connected to the eyeglasses frame by conventional means ([0111]).
Dahnoun discloses eyeglass frames 5 comprising a nose pad structure 20 (Fig. 1a, col. 5, lines 30-35). In one embodiment, Dahnoun discloses that the nose pad 20 can be attached to the main frame of the eyeglass frames using screws (col. 6, lines 47-64). It is noted that if screws are used this implies a mounting aperture through which the screws are positioned.
Both Zelazowski and Dahnoun disclose eyewear glasses.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Zelazowski so that the second element (3, 402b) is attached to the eyeglasses mechanically, i.e., by means of a mounting aperture through which screws are positioned, as taught by Dahnoun, for mounting the second element of the nose pad to the eyeglasses in a more secure and permanent way. It is noted that Zelazowski suggests that the second element of the nose pad structure may be connected to the eyeglass frame permanently ([0113]).
Regarding claim 2, Zelazowski/Dahnoun discloses the nose pad structure of Claim 1,
wherein
the pad 402a of the first element has a shape chosen from a group consisting of: D-shaped, oval, round, teardrop-shaped, half-moon-shaped, rectangular, and trapezoidal (Fig. 29 in Zelazowski).
Regarding claim 3, Zelazowski/Dahnoun discloses the nose pad structure of Claim 1,
wherein
the magnet of the first element is coupled to the pad by an adhesive (col. 6, lines 58-60 in Dahnoun).
Regarding claim 4, Zelazowski/Dahnoun discloses the nose pad structure of Claim 1,
wherein
the magnet is constructed from at least one material selected from a group consisting of: neodymium, ceramic material, barium ferrite, strontium ferrite, alnico, and samarium cobalt ([0076] in Zelazowski).
Regarding claim 5, Zelazowski/Dahnoun discloses the nose pad structure of Claim 1,
wherein
the second element is made from at least one material selected from a group consisting of: iron, steel, nickel, cobalt, and their alloys ([0074] in Zelazowski. 402b is a member 2 which may be made of steel).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Zelazowski, Dahnoun in view of Chen (US 6,079,825, hereinafter, “Chen”).
Regarding claim 6, Zelazowski/Dahnoun discloses the nose pad structure of Claim 1.
Zelazowski/Dahnoun does not disclose wherein the mounting aperture in the stem of the second element is oriented to pass laterally through the stem and is perpendicular to both the axis of the stem and the axis of the flange.
Chen discloses a nose pad for eyeglasses (Fig. 2, col. 1, lines 60-63). In discussing prior art, Chen discloses that a nose pad may comprise a block 110 on a pad 11 fitted in a recess 101 of block 100, where a screw N engages in the hole 111 of block 110 (Fig. 1, col. 1, lines 9-22. In the nose pad of Chen, the mounting aperture 111 passes laterally through the stern 110 and is perpendicular to both the axis of the stern and the axis of the flange 11).
Both Zelazowski and Chen disclose eyewear glasses.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Zelazowski/Dahnoun so that the second element (3, 402b) is attached to the eyeglasses mechanically, i.e., by means of a mounting aperture through which screws are positioned, and such that mounting aperture passes laterally through the stern 402b and being perpendicular to both the axis of the stem 402b and the axis of the flange 3, as taught by Chen, for a more secure attachment of the second element of the nose pad to the frame of the eye glasses.
Response to Applicant’s Arguments
Regarding independent claim 1 Applicant stated that 1) the Examiner’s combination of Zelazowski and Dahnoun lacks proper motivation (pages 7, 8, 9 of the Remarks) 2) Dahnoun does not teach or suggest the claimed structure (pages 9, 10 of the Remarks) 3) the combination requires impermissible hindsight (page 10 of the Remarks) and 4) the claims recite patentably distinct subject matter (page 11 of the Remarks).
Applicant's arguments have been fully considered but they are not persuasive.
Regarding 1) Applicant stated that “this combination fundamentally contradicts the core teaching and purpose of Zelazowski, which would teach away from such a modification” and that “this modification would: 1. Reintroduce the exact problem that Zelazowski was designed to solve (miniature screws that are difficult to handle and easily lost); 2. Contradict Zelazowski's express teaching that the magnetic connector replaces conventional connection means; 3. Negate the core benefit of Zelazowski's invention, which is to provide a screw-free connection system”.
The Office notes that, unlike Applicant’s assertion, Zelazowski does not teach away from modifying the disclosed eyewear pad so that the pad engages with the frame by means other than magnetic, for example, via screws. In fact, Zelazowski specifically mentions that other means may be used, such as welding, soldering, gluing or the like ([011], ([0114]). The fact that a magnetic attachment disclosed by Zelazowski contradicts conventional connection means and offers benefits does not negate Zelazowski's actually disclosed mechanical connection, which is in the heart of the cited combination.
Regarding 2) Applicant stated that “Dahnoun does not disclose or suggest a T-shaped element with a stem comprising a mounting aperture as claimed”.
The Office notes that Zelazowski was cited for said feature, not Dahnoun. Applicant's arguments against the references individually, one cannot show non-obviousness 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).
Regarding 3) Applicant stated that “this rationale is based on impermissible hindsight reconstruction using Applicant's disclosure”. The Office notes that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Moreover, Applicant stated that (referring to paragraph [0113] of Zelazowski) “This refers to permanently attaching the entire nose pad arm to the eye-wire frame, not to permanently attaching the nose pad elements to each other. The magnetic coupling between the first and second elements (402a and 402b) is designed to be detachable, which is the entire point of Zelazowski's magnetic nose pad assembly. See Zelazowski [0111]-[0113]”.
The Office notes that the claim language recites the attaching of the entire nose pad to the eyewear frame, not attaching nose pad elements to each other.
Regarding 4) Applicant stated that “Even if the references could be combined (which Applicant respectfully submits they cannot), the claimed invention represents a unique and non-obvious combination of features that solves a problem not addressed by either reference”.
The Office notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding dependent claim 6 Applicant stated that “Chen Also Teaches Away from Screw-Based Mounting” because “Figure 1 is explicitly labeled "PRIOR ART" in Chen. Chen's entire invention is directed to eliminating screw-based attachments in nose pads, just as Zelazowski eliminates screw-based attachments through magnetic connections” and “Chen emphasizes that the nose pad "is easily and quickly combined with the pad hanger, without using any screws or any tools, in a very convenient manner." See Chen, col. 2, lines 24-27”, see pages 12, 13 of the Remarks.
The Office notes that, even if Fig. 1 in Chen is labeled as “Prior Art” and Chen’s disclosed nose pad assembly utilizes two parallel fitting members with a gap therebetween, Fig. 1 is still a disclosed prior art which is relevant to the combination of Zelazowski and Dahnoun, and discloses the feature missing from the combination.
In addition, Applicant stated that the proposed triple combination contradicts all three references because all three disclose eliminating screws, and the combination would 1. contradict Zelazowski's express teaching that magnetic connectors replace conventional screw-based attachments; 2. contradict Chen's express teaching that snap-fit designs eliminate screw-based attachments; 3. reintroduce the exact problems that both Zelazowski and Chen were designed to solve (page 13 of the Remarks).
The Office states each of Zelazowski and Chen explicitly disclose mechanical connection and Dahnoun was only cited for a particular mounting structure.
Finally, Applicant stated that “Chen's Prior Art Structure Differs from the Claimed Invention” since “Chen's prior art structure lacks the T-shaped configuration, lacks the ferromagnetic flange, and lacks the direct connection to a pad arm. The structural differences are substantial” and (in Chen) “This is a pivotal connection system between the nose pad body and an intermediate connector block, not a direct mounting of a T-shaped stem to an eyeglass pad arm as claimed” (page 14 of the Remarks).
Again, regarding Applicant's arguments against the references individually, one cannot show non-obviousness 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). Moreover, regarding the “not a direct mounting” comment, it is noted that this is not recited in the claim language
Applicant's arguments have been fully considered but they are not persuasive, thus, the rejection of claim 1 and its dependents is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/L.B./
Patent Examiner, AU 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872