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
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to protective eyewear, classified in CPC G02C1/04.
II. Claims 17-20, drawn to a method of making protective eyewear, classified in CPC B29C45/14008.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the protective eyewear claimed could be made in a process that did not involve integral molding of the lens body, for example using welding.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification (see CPC classifications above);
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter (protective eyewear and methods of integral molding techniques are divergent subject matter);
(c) the inventions require a different field of search (for example, searching
different classes/subclasses or electronic resources, or employing different search queries) (in addition to the different classifications above, the groups would require different search queries pertinent to the structural features of group I and the process limitations of group II);
(d) the prior art applicable to one invention would likely not be applicable to another invention (there is no reason to expect prior art that is pertinent to the protective eyewear of group I to also disclose the method of making of group II).
During a telephone conversation with Taylor Lavender on January 29, 2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Drawings
The applicant’s drawings submitted on February 5, 2024 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statements dated February 5, 2024 and August 12, 2025 are acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Objections
Claims 9 and 16 are objected to because of the following informalities: “the protective eyewear comprise” should be “the protective eyewear comprises”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 11, the limitation “so that the metallic materials of the metal marker are detectable upon placement of the protective eyewear near a metal detector” is indefinite because it is unclear what structural attributes of the protective eyewear that are not already recited in the claim are required to meet this functional limitation. Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). From MPEP §2173.05(g) “Examiners should consider the following factors when examining claims that contain functional language to determine whether the language is ambiguous: (1) whether there is a clear cut indication of the scope of the subject matter covered by the claim; (2) whether the language sets forth well-defined boundaries of the invention or only states a problem solved or a result obtained; and (3) whether one of ordinary skill in the art would know from the claim terms what structure or steps are encompassed by the claim. These factors are examples of points to be considered when determining whether language is ambiguous and are not intended to be all inclusive or limiting.
In the instant case, the metal detector is not part of the protective eyewear but the attributes of the metal detector, the speed with which the protective eyewear passes by the metal detector, the orientation of the metal with respect to the detector and any product within which the eyewear is hidden, will contribute to whether or not the metal marker is detectable, not just the weight, shape and type of metal of the metal marker.1 Furthermore, the specification does not disclose the amount of metal needed to be detectable as a function of the choice of the metal material. Rather the specification discloses exemplary weights in grams of the metal components, but not the minimum weight or minimum size required to meet the claimed function for a given choice of metal. Thus (1) the claim does not set out a clear-cut indication of the scope of the subject matter covered by the claim (2) the functional language only states a result obtained (3) an ordinary skilled artisan would not know from the claim terms what structures are encompassed by the claim.
To overcome this 112(b) issue the examiner recommends either deleting this functional limitation and/or amending the claim to recite a minimum weight of the metal marker. Appropriate correction is required. For the purpose of considering prior art it will be assumed that protective eyewear that meet the rest of the structural limitations of the claim will also inherently meet the functional limitation of “so that the metallic materials of the metal marker are detectable upon placement of the protective eyewear near a metal detector” for some existing or improved detector under some measurement conditions.
Claims 2-10 depend from claim 1 and inherit and do not mitigate the above indefiniteness issue from claim 1.
Claims 12-16 depend from claim 11 and inherit and do not mitigate the above indefiniteness issue from claim 11.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Love et al. US 2021/0069019 A1 (hereafter Love).
Regarding claim 1, Love teaches (Figs. 7 and 12) “Protective eyewear (protective eyewear (PTE) of Figs. 7 and 12, see paragraph [0047] Fig 12 is a “non-limiting example of one or more manufacturing processes and/or techniques by which protective eyewear lens assemblies in accordance with the subject matter of the present disclosure can be produced.” Thus AS4’ can be manufactured by the technique of Fig. 12) comprising:
a lens body (optically transparent portions 106 and bridge portion 108) configured to protect eyes of a user (see paragraph [0002] the device is protective eyewear, thus the optically transparent portions 106 protect the eyes of the user), the lens body having a first lens, a second lens, and a nosepiece interconnecting the first lens and the second lens (paragraph [0028]: “optically-transparent portions 106 with a bridge portion 108 disposed therebetween” see left and right lenses and nose-bridge in Fig. 7),
a metal marker (Metal-detectable component 200″′ in Fig. 7, the metal detectable component 200 on the upper portion of the inside surface 116 in Fig. 12) including metallic materials (paragraph [0033]: “As non-limiting examples, detectable components 200 could be at least partially formed from a metal material and/or a metal-infused polymeric material.”), and
a marker holder (cover wall portion 154 which forms the body periphery portion 112 that can be distinct from 106 see paragraph [0029]) formed to include a forwardly-facing metal receiver to receive the metal marker therein (in Fig. 12 cover wall portion 154 includes a recess into which 200 is received see paragraph [0047]: “one or more metal-detectable components 200, 200′, 200″ and/or 200′″ are shown in FIG. 12 as being disposed along segment 112A embedded, encased, encapsulated and/or otherwise captured within cover wall portion 154” The recess which holds 200 to the inner surface 116 is forwardly-facing.) and configured to couple the metal marker to the lens body (see Fig. 12 and paragraph [0047]) without embedding the metal marker in the lens body (paragraph [0047]: “one or more of metal-detectable components 200, 200′, 200″ and/or 200′″ are positioned on or along one or more of inside and outside surface portions 116 and/or 118... metal-detectable components 200, 200′, 200″ and/or 200″′ can be secured on or along the corresponding one or more of the inside and/or outside surface portions by way of an adhesive and/or flowed-material joint” emphasis added. Thus 200 can merely be adhered to the surface of the optically transparent portion 106.) so that the metallic materials of the metal marker are detectable upon placement of the protective eyewear near a metal detector (Metal-detectable component 200″′),
wherein the marker holder is coupled to a top portion of the lens body (see Fig. 12) to extend above the first lens, the second lens, and the nosepiece (see Fig. 7 and paragraph [0042]: “a substantially continuous length of magnetically-detectable material can extend across lens body 100 from end 102 to end 104.” and paragraph [0047]: “cover wall portion 154, which extends on and/or along one or more surfaces and/or portions of lens body 100, such as from on or along any one or more of optically-transparent portion 106, bridge portion 108,”).”
Regarding claim 2, Love teaches “The protective eyewear of claim 1, wherein the marker holder forms a topmost portion of the protective eyewear (see Fig. 12 154 forms 112 which is the topmost portion of the eyewear).”
Regarding claim 3, Love teaches “The protective eyewear of claim 1, wherein the forwardly-facing metal receiver formed in the marker holder is a long, narrow groove that extends above the first lens, the second lens, and the nosepiece and is sized to receive the metal marker therein (see Fig. 7 and paragraph [0042]: “a substantially continuous length of magnetically-detectable material can extend across lens body 100 from end 102 to end 104.” Thus, because of the elongated shape of 200”’ in Fig. 7, the recess in 154 which is formed around 200”’ is a long, narrow groove that extends above the first lens, the second lens, and the nosepiece and is sized to receive the metal marker therein).”
Regarding claim 4, Love teaches “The protective eyewear of claim 3, wherein the forwardly-facing metal receiver opens only toward a portion of the lens body (see Fig. 12 the forward-facing recess in 154 where 200”’ resides opens only toward the top portion of the lens body 106).”
Regarding claim 11, Love teaches (Figs. 7 and 12) “Protective eyewear (protective eyewear (PTE) of Figs. 7 and 12, see paragraph [0047] Fig 12 is a “non-limiting example of one or more manufacturing processes and/or techniques by which protective eyewear lens assemblies in accordance with the subject matter of the present disclosure can be produced.” Thus AS4’ can be manufactured by the technique of Fig. 12) comprising:
a lens body (optically transparent portions 106 and bridge portion 108) having a first lens, a second lens, and a nosepiece interconnecting the first lens and the second lens (paragraph [0028]: “optically-transparent portions 106 with a bridge portion 108 disposed therebetween” see left and right lenses and nose-bridge in Fig. 7),
a metal marker (Metal-detectable component 200″′ in Fig. 7, the metal detectable component 200 on the upper portion of the inside surface 116 in Fig. 12) including metallic materials (paragraph [0033]: “As non-limiting examples, detectable components 200 could be at least partially formed from a metal material and/or a metal-infused polymeric material.”), and
a marker holder (cover wall portion 154 which forms the body periphery portion 112 that can be distinct from 106 see paragraph [0029]) configured to couple the metal marker to the lens body (see Fig. 12 and paragraph [0047]: “metal-detectable components 200, 200′, 200″ and/or 200′″ are shown in FIGS. 16 and 15 as being permanently embedded, encased, encapsulated and/or otherwise captured within cover wall portion 154”) without embedding the metal marker in the lens body (paragraph [0047]: “one or more of metal-detectable components 200, 200′, 200″ and/or 200′″ are positioned on or along one or more of inside and outside surface portions 116 and/or 118... metal-detectable components 200, 200′, 200″ and/or 200″′ can be secured on or along the corresponding one or more of the inside and/or outside surface portions by way of an adhesive and/or flowed-material joint” emphasis added. Thus 200 can merely be adhered to the surface of the optically transparent portion 106.) so that the metallic materials of the metal marker are detectable upon placement of the protective eyewear near a metal detector (Metal-detectable component 200″′).”
Regarding claim 12, Love teaches “The protective eyewear of claim 11, wherein the marker holder is formed to include a metal receiver to receive the metal marker therein(in Fig. 12 cover wall portion 154 includes a recess into which 200 is received see paragraph [0047]: “one or more metal-detectable components 200, 200′, 200″ and/or 200′″ are shown in FIG. 12 as being disposed along segment 112A embedded, encased, encapsulated and/or otherwise captured within cover wall portion 154”), and wherein the marker holder is coupled to a top portion of the lens body (see Fig. 12) to extend above the first lens, the second lens, and the nosepiece (see Fig. 7 and paragraph [0042]: “a substantially continuous length of magnetically-detectable material can extend across lens body 100 from end 102 to end 104.” and paragraph [0047]: “cover wall portion 154, which extends on and/or along one or more surfaces and/or portions of lens body 100, such as from on or along any one or more of optically-transparent portion 106, bridge portion 108,”).”
Regarding claim 13, Love teaches “The protective eyewear of claim 12, wherein the metal receiver formed in the marker holder is a forwardly-facing groove (see Fig. 12. The recess which holds 200 to the inner surface 116 is forwardly-facing.) sized to receive the metal marker therein (see Fig. 12), and wherein the forwardly-facing groove extends above the first lens, the second lens, and the nosepiece (see Fig. 7 and paragraph [0042]: “a substantially continuous length of magnetically-detectable material can extend across lens body 100 from end 102 to end 104.” and paragraph [0047]: “cover wall portion 154, which extends on and/or along one or more surfaces and/or portions of lens body 100, such as from on or along any one or more of optically-transparent portion 106, bridge portion 108,”).”
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 6-8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Love et al. US 2021/0069019 A1 (hereafter Love).
Regarding claim 6, Love teaches “The protective eyewear of claim 3, wherein the metal marker is an elongated metal wire (see elongated wire shape in Fig. 7 which is made of metal see paragraph [0033]: “As non-limiting examples, detectable components 200 could be at least partially formed from a metal material and/or a metal-infused polymeric material.”) having a uniform … cross-sectional shape (see Fig. 7 and paragraph [0042]. One of ordinary skill in the art would consider 200”’ as having a uniform cross-sectional shape at least to the extent that no deviations in the cross-sectional shape were deemed worthy of mentioning in the text, and no deviations of the size of 200”’ are depicted in Fig. 7.).”
However, Fig. 12, relied upon above for claim 1 does not show the cross-sectional shape of 200 as being cylindrical.
However, Love does teach in paragraph [0033]: “It will be appreciated that detectable components 200 can be of any suitable size, shape and/or configuration.” Also, in Fig. 10, Love teaches a metal-detectable component with a circular cross-sectional shape.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the cross-sectional shape of 200”’ in Figs. 7 and 12 a circular or cylindrical shape as taught by Love Fig. 10, because Love teaches that detectable components 200 can be of any suitable size, shape and/or configuration (Love paragraph [0033]) and Fig. 10 demonstrates that a cylindrical cross-section is amongst the suitable shapes for the metal-detectable component.
Regarding claim 7, Love teaches “The protective eyewear of claim 6, wherein the lens body has a first top length (the full top length of 106 from the far edge of end 102 to the far edge of end 104 in Fig. 7), the long, narrow groove formed in the marker holder has a second top length (the top-length of the recess in 154 that accommodates 200”’), and the metal marker has a third top length (the top-length of 200”’), the first top length is greater than … the third top length (see Fig. 7, the top-length of 106 is greater than the top-length of 200”’’).”
However, Love fails to explicitly teach “the first top length is greater than the second top length and the second top length is greater than the third top length” because Love does not disclose the specifics of the manner in which 154 would enclose the ends of the metal-marker.
It is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
The instant claims and the prior art differ by the recitation of a relative dimension, the top-length of the groove relative to the top-length of the lens body and the top-length of the metal-detectable component. The prior art and the instant claim do not perform differently from one another.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the relative dimension of the top-length of the groove to be less than the top length of the lens body and greater than the top-length of the metal-detectable component, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
Regarding claim 8, Love teaches “The protective eyewear of claim 6, wherein the metal marker is formed as a single, integral component (paragraph [0042]: “a single metal-detectable component can extend lengthwise extending along or otherwise across one of segments 112A of body periphery portion 112 disposed along an upper portion of the outer peripheral edge, along or otherwise across bridge portion 108, and then along or otherwise across the other one of segments 112A. In this manner, a substantially continuous length of magnetically-detectable material can extend across lens body 100 from end 102 to end 104.”).”
Regarding claim 15, Love teaches “The protective eyewear of claim 11, wherein the metal marker is an elongated metal wire (see elongated wire shape in Fig. 7 which is made of metal see paragraph [0033]: “As non-limiting examples, detectable components 200 could be at least partially formed from a metal material and/or a metal-infused polymeric material.”) having a uniform… cross-sectional shape (see Fig. 7 and paragraph [0042]. One of ordinary skill in the art would consider 200”’ as having a uniform cross-sectional shape at least to the extent that no deviations in the cross-sectional shape were deemed worthy of mentioning in the text, and no deviations of the size of 200”’ are depicted in Fig. 7.) and the metal marker extends above the first lens, the second lens, and the nosepiece (see Fig. 7 and paragraph [0042]).”
However, Fig. 12, relied upon above for claim 11 does not show the cross-sectional shape of 200 as being cylindrical.
However, Love does teach in paragraph [0033]: “It will be appreciated that detectable components 200 can be of any suitable size, shape and/or configuration.” Also, in Fig. 10, Love teaches a metal-detectable component with a circular cross-sectional shape.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose as the cross-sectional shape of 200”’ in Figs. 7 and 12 a circular or cylindrical shape as taught by Love Fig. 10, because Love teaches that detectable components 200 can be of any suitable size, shape and/or configuration (Love paragraph [0033]) and Fig. 10 demonstrates that a cylindrical cross-section is amongst the suitable shapes for the metal-detectable component.
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Love et al. US 2021/0069019 A1 (hereafter Love) as applied to claims 1 and 11 above, and further in view of Kocalar et al. US 2023/0400711 A1 (hereafter Kocalar).
Regarding claims 9 and 16, Love teaches the protective eyewear of claims 1 and 11, “wherein the protective eyewear comprise a plurality of metal components including the metal marker (metal detectable component 200”’)… a first hinge pin (left suitable fastener 124, such as a pin, screw, rivet see paragraph [0031]), a second hinge pin (right suitable fastener 124).”
However, Love fails to teach “a plurality of metal components including … a first hinge pin, a second hinge pin, a first temple plate, and a second temple plate, and wherein at least about 29% of the plurality of metal components are positioned to lie above the lens body.”
Kocalar teaches smart eyewear comprising “a plurality of metal components (paragraph [0064]: “the metal components 602 (e.g., left-hinge pin, right-hinge pin, left-front cosmetic insert, etc.)”) including … a first hinge pin (first fastener 114a), a second hinge pin (second fastener 114b), a first temple plate (decorative or cosmetic feature 220 in Fig. 2 is a temple plate in that it is located on the temple and has a plate-shaped outer surface and is necessarily no thicker than the temple itself, and thus is plate-shaped), and a second temple plate (paragraph [0038]: “the eyewear may include one or more other metal components such as metal cosmetic decorative shapes” thus there can be more than one decorative or cosmetic feature 220.).”
Kocalar further teaches (paragraph [0003]): “Smart eyewear are glasses (or smart glasses) that add information alongside what the wearer sees through the glasses. Superimposing information (e.g., digital images) onto a field of view may be achieved through smart optics such as an optical head-mounted display (OHMD), or embedded wireless glasses with a transparent heads-up display (HUD), or augmented reality (AR) overlay.”
(paragraph [0005]): “At least one of the first temple and the second temple includes one or more electronic components and at least one of the first hinge and the second hinge is electrically connected to at least one of the electronic components and is used as an electrical contact to access signals from the electronic components. That is, at least one of the first hinge and the second hinge is thus electrically connected to at least one of the electronic components and provided to form an access point at the eyewear device for accessing signals from the one or more electronic components by connecting an external device to the least one of the first hinge and the second hinge.”
(paragraph [0064]): “for accessing the electronic components of the smart eyewear through the metal components of the smart eyewear. In the circuit 600 of FIG. 6, the metal components 602 (e.g., left-hinge pin, right-hinge pin, left-front cosmetic insert, etc.) of the eyewear are used”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the hinge pins of Love to be made of metal as taught by Kocalar in order to provide an access point at the eyewear device for accessing signals from the one or more electronic components by connecting an external device to the least one of the first hinge and the second hinge as taught by Kocalar (paragraph [0005]). One would further have been motivated to make such a modification in order to add desired features of smart eyewear to the safety glasses such as superimposing information on the field of view of the user (Kocalar paragraph [0003]).
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to also incorporate decorative metal temple plates as taught by Kocalar in the eyewear of Love both for the purpose of decoration and as a method of accessing the electronic components of the eyewear as taught by Kocalar (paragraph [0005]).
However, the Love – Kocalar combination fails to explicitly teach “wherein at least about 29% of the plurality of metal components are positioned to lie above the lens body.”
It is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
The instant claims and the prior art differ by the recitation of a relative dimension, the percentage of the metal components that are positioned to lie above the lens body. The prior art and the instant claim do not perform differently from one another.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the relative dimension of the metal-detectable component to be at least about 29% of the plurality of metal components, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Love et al. US 2021/0069019 A1 (hereafter Love) as applied to claim 1 above, and further in view of Chen US 2017/0336652 A1 (hereafter Chen).
Regarding claim 10, Love teaches “The protective eyewear of claim 1, further comprising a first temple (a first of the two temples 122) coupled to the lens body (see Fig. 7) and configured to support the lens body relative to the user upon placement of the protective eyewear on the user (this is what temples of eyewear do), the first temple including a first temple body (the body of temple 122).”
However, Love fails to teach “a first temple body formed to include a first plate receiver and a first temple plate comprising metallic materials and configured to lie in the first plate receiver of the first temple body, and wherein the first temple plate is formed to include a retainer receiver extending through the first temple plate, and wherein the first temple body is formed to include a retainer extending outwardly into the plate receiver to extend through the retainer receiver of the first temple plate to maintain a position of the first temple plate in the first plate receiver.”
Chen teaches eyewear (Figs. 5A, 8A, 8B eyewear with temple 201) with “a first temple (one of temple assemblies 201A or 201B) coupled to the lens body (see Fig. 5A) and configured to support the lens body relative to the user upon placement of the protective eyewear on the user (this is what eyewear temples do, see head and ear of the user in Figs. 8A and 8B), the first temple including a first temple body (temple substrate 601) formed to include a first plate receiver (the region within 601 where 300 is received see Figs. 8A and 8B) and a first temple plate (insert 300) comprising metallic materials (paragraph [0094]: “the insert 300 may be comprised of a first material… the first material may be a metal or metal alloy such as nickel titanium”) and configured to lie in the first plate receiver of the first temple body (see Figs. 8A and 8B), and wherein the first temple plate is formed to include a retainer receiver extending through the first temple plate (see Figs. 7A, 7C and 8A, the U-shaped openings where vertical portions 304 are not present are a first plate receiver in that they receive the material of the temple substrate 601 and extend through the first temple plate 300), and wherein the first temple body is formed to include a retainer extending outwardly into the plate receiver to extend through the retainer receiver of the first temple plate (the portion of the temple substrate 601 is a retainer that extends outwardly from the inside of the temple through the U-shaped holes in the temple plate) to maintain a position of the first temple plate in the first plate receiver (see Fig. 8A, the embedded nature of 300 in 601 including the portions of 601 that are present in the u-shaped regions where 304 are not present serve to maintain the relative position of 300 within 601).”
Chen further teaches (paragraph [0094]): “the insert 300 may be comprised of a first material having sufficient rigidity and elastic deformation properties to impose the spring force to secure and retain the eyewear 501 to the head of the user. The first material may additionally have elastic deformation properties allowing for the repeated elastic deformation during use of the eyewear 501. Thus, the first material may be stressed or bent repeatedly without plastically deforming. For example, the first material may be a metal or metal alloy such as nickel titanium that may include a pre-loaded spring force.”
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 structure of the temples of Chen in the protective eyewear of Love for the purpose of creating a desired spring force to secure the eyewear on the head of the user and to additionally have elastic deformation properties allowing for the repeated elastic deformation during use of the eyewear such that the first material may be stressed or bent repeatedly without plastically deforming as taught by Chen (paragraph [0094]).
Allowable Subject Matter
Claims 5 and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, Love teaches “The protective eyewear of claim 4,” however, Love fails to teach “wherein the long, narrow groove formed in the marker holder is filled with materials of the lens body to prevent removal of the metal marker therefrom.” because although the lens body extends into an upper, downwardly facing groove in 154, the lens body does not extend into the forwardly-facing recess that defines the long, narrow groove of claim 3. Thus the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole: “wherein the long, narrow groove formed in the marker holder is filled with materials of the lens body”.
Regarding claim 14, the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole: “wherein the forwardly-facing groove is filled with materials of the lens body to prevent removal of the metal marker therefrom.” Although Love teaches that the lens body extends into an upper, downwardly facing groove in 154, the lens body does not extend into the forwardly-facing recess of claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Although much of the prior art below could form a basis for a prior art rejection, such rejections were considered both duplicative and burdensome to applicant at this time.
DiChiara US 2013/0271722 A1 “Eyewear Frames with Magnetic Lens Attachments” Fig. 1E and paragraph [0124] pertinent to at least claims 11 and 15.
Voit US 3824006 A “Optical Spectacles Including Adhesive Bonding Means Between Metal Spectacle Frames and Ophthalmic Lenses” Figs. 5 and 6 pertinent to at least claim 11.
Zhang CN 113835236 A “A Plank Stuff Glasses Leg Combined Hinge Adapted to Multi-specification Spectacle Frame” pertinent to claim 10.
안명희 KR 20110010877 U “Plastics Cover Combination Half Frame Eye-glasses” pertinent to at least claim 11.
Ma CN 104460028 A “A Spectacles With Replaceable Lens” Figs. 1-3 pertinent to at least claim 11.
Zhang et al. CN 113786280 A “A Safety Goggles For Measuring Dust Concentration In Workshop By Laser And Manufacturing Method Thereof” Figs. 1 and 3 pertinent to at least claim 11.
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/CARA E RAKOWSKI/Primary Examiner, Art Unit 2872
1 See NPL document Advanced Detection Systems https://adsdetection.com/how-is-sensitivity-in-metal-detection-measured/