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 .
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (PGPUB 20050195357) in view of DiChiara et al. (PGPUB 20110007263).
Regarding claim 1, Kim discloses an eyewear system comprising:
(a) eyewear having a bridge (3, 8 or 33), the bridge having at least one inset containing at least one eyewear magnet with a first exposed magnetic surface (6, 14 or 35/36);
(b) an auxiliary attachment that removably engages said eyewear, the auxiliary attachment comprising a bar (8 or 34) having respective outer edges (Figs. 1-6);
(c) the auxiliary attachment further comprising an L-shaped section at a center of the bar (Fig. 1 shows 8 and Fig. 3-6 shows 38to be L-shaped), the L-shaped section comprising at least one center magnet configured for attractive connection to the first exposed magnetic surface of the bridge of the eyewear (14 and Fig. 1, Fig. 3).
Kim does not disclose the eyewear further comprising ferrous material in at least part of a frame, and each outer edge securing a top of a lens at a securement location, the auxiliary attachment further comprising at least one auxiliary magnet at each securement location that, together with the outer edge, encloses the top of respective lens of the auxiliary attachment, the auxiliary magnet configured for attractive connection to the ferrous material in the at least part of the frame.
However, DiChiara teaches modular eyewear wherein the magnetically attractive material is a ferrous metal ([0016]) and wherein an outer edge securing a top of a lens at a securement location, the auxiliary attachment further comprising at least one auxiliary magnet at each securement location that, together with the outer edge, encloses the top of respective lens of the auxiliary attachment, the auxiliary magnet configured for attractive connection to the ferrous material in the at least part of the frame (Figs. 5A-C where 8 is a magnetic material in the frame and located at the top of each of the left and right lenses).
It would have been obvious to one having ordinary skill in the art as of the effective filing date of the invention to combine Kim and DiChiara such that the auxiliary attachment included magnets on the outer edges of the bridge motivated by improving lens stability.
Regarding claim 2, modified Kim discloses wherein the L-shaped section comprises two planes that meet at a corner (Figs. 1-2 and 38 Fig. 3), one of said two planes comprising the at least one center magnet configured for attractive connection to the at least one eyewear magnet in one of either a flipped up or flipped down state, the other of said two planes comprising a second at least one center magnet configured for attractive connection to the at least one eyewear magnet in the other of the flipped up or flipped down state (Abst).
Regarding claim 3, modified Kim discloses wherein the at least one auxiliary magnet comprises a first pair of auxiliary magnets at one outer edge, and a second pair of auxiliary magnets at the other outer edge (Fig. 7 DiChiara shows a plurality of magnets for each lens).
Regarding claim 4, modified Kim discloses wherein the first pair and second pair of auxiliary magnets are respective disc magnets, of approximately equal size to match the frame width at the location of the ferrous material in the frame (Fig. 7 of DiChiara).
Regarding claim 5, modified Kim discloses wherein the flipped up state comprises at least one magnet in a back plane of the L-shaped section in attractive connection to a top of the at least one eyewear magnet in the bridge (Figs. 1-3 and [0027]).
Regarding claim 6, modified Kim discloses wherein the flipped down state comprises at least one magnet in a rear-extending plane of the L-shaped section in attractive connection to a bottom of the at least one eyewear magnet in the bridge (Figs. 1-3 and [0026]-[0028]).
Regarding claim 7, modified Kim discloses wherein the L-shaped section comprises a greater height than all other parts of the bar (Figs. 1-3 and note that applicant has not specifically defined a height axis).
Regarding claim 8, modified Kim discloses wherein said bridge is removably attachable (Figs. 1-3).
Regarding claim 9, modified Kim discloses wherein said eyewear comprises clear prescription lenses ([0072] of DiChiara), and wherein said auxiliary attachment comprises nonprescription sun protection lenses ([0002] of Kim).
Regarding claim 10, modified Kim discloses wherein the lenses of the auxiliary attachment each comprise a bulge at which respective auxiliary magnets and outer edges enclose said lenses (Figs. 5A-D of DiChiara).
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not persuasive.
Regarding applicants remarks on page 3, the examiner notes that the MPEP states that prior art references are relevant for all they contain. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). MPEP 2123 I. Further, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Kim (33 or 34) and DiChiara (2) both disclose an eyewear having a bridge, an auxiliary attachment that removably engages eyewear (Fig. 3 of Kim and Fig. 1A DiChiara) a plurality of magnets (35 and 36 of Kim and 8 of DiChiara) with an L-shaped section that comprises a magnet or magnetic material (Figs. 5-6 of Kim and Fig. 8a/b or Fig. 15F of DiChiara).
Therefore, it is the combination of these two references that meet all of the limitations of the applicant’s claims. Applicant’s remarks with respect to claim limitation 1(b) is disclosed, in its entirety, but DiChiara which includes: (1) an outer edge securing a top of a lens (Figs. 5A-B); (2) magnets at each of these locations (8); and ferrous attraction of those magnets ([0016]). Applicant states that DiChiara “…does not speak…already-lensed eyewear frames”, but applicant has not claimed “already-lensed” eyewear frames in the independent claim. Regardless, the mechanism of attachment via magnets would not require any significant modification or require undue experimentation for one skilled in the art to include the magnetic attachment mechanism described by DiChiara with Kim or any other secondary lens system for eyeglass frames.
Regarding applicants remarks on page 5, the applicant argues that the modification of Kim with DiChiara introduces an unnecessary redundant feature, the office respectfully disagrees. Kim recognizes that magnetic force deteriorates over time ([0010]) while also using magnets to secure auxiliary frames. DiChiara provides an example of a magnet attached to a bridge (13 and 6, Fig. 5A) and above the center of the lens (8) while also providing magnetic seat designs that could provide more magnetic surface area (Fig. 15F). The additional magnets and improved seat design of DiChiara provides an improved longevity for the device’s magnetic deterioration that is recognized by Kim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRAVIS S FISSEL whose telephone number is (313)446-6573. The examiner can normally be reached on 9AM-5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephone Allen can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRAVIS S FISSEL/Primary Examiner, Art Unit 2872
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