DETAILED ACTION
Response to Remarks
Applicant’s remarks (see pgs. 4-9 filed 11/24/2025) regarding the prior art rejection of the claims under 35 U.S.C. 102 have been fully considered but are moot upon further consideration because the new grounds of rejection in light of a change of statutory basis and/or in light of Saccardo and Masunaga’s teachings are necessitated by the Applicant’s amendments (on 11/24/2025), as detailed below.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore:
(i) inner sides of the mounting hole must be shown or the feature(s) canceled from the claim(s) 1;
(ii) an axis defined by the mounting shaft must be shown or the feature(s) canceled from the claim(s) 3;
(iii) rotation of the temple on the axis of the mounting shaft must be shown or the feature(s) canceled from the claim(s) 3;
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-3 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.
1. Claim 1 recites the newly-amended limitations: “two mounting recesses being arranged at an inner end of the mounting shaft…wherein two mounting blocks respectively project from each of two inner sides of the mounting hole”. There appears to be no reference frame or context by which one can ascertain the location of the inner end of the mounting shaft, i.e., inner end with respect to which structure/axis/reference frame? The as filed Drawings of 08/15/2023 depict a multiplicity of areas that may be considered inner ends of the mounting shaft 11 (see e.g., FIG. 1). Since no outer end is defined for the mounting shaft, it remains unclear where such a structure is located. Similarly, the claim recites “inner sides of the mounting hole”; it is unclear where such inner sides are located with respect to the mounting hole. The as-filed specification of 08/15/2023 is silent with regard to any mention of ‘inner sides of the mounting hole’ and the as-filed Drawings fail to depict such a structure, thereby rendering the positional relationships between the recited structures of the eyeglass assembly and the mounting blocks along with the mounting recesses as insufficiently defined. Thus, the claim is rendered indefinite. See MPEP § 2173.05(b), Section II, citing Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). For the purposes of examination, these limitations will be treated as: “two mounting recesses being arranged in the mounting shaft…wherein two mounting blocks respectively project from sides of the mounting hole”.
Claims 2-3 inherit the deficiencies of Claim 1, and are thus rejected under 35 U.S.C. 112(b).
2. Newly added claim 3 recites: “wherein the mounting shaft defines an axis, and each mounting block is configured to move into the corresponding mounting recess upon rotation of the temple on the axis of the mounting shaft”. It is unclear what axis is being referred to, since the as-filed specification appears to be silent with regard to the mounting shaft defining any axis in addition to rotation on said axis. None of the Figures depict any axis defined by the shaft or a rotation on said axis. Indeed, FIG. 1 shows only a single arrow depicting the movement of the mounting block into the mounting recess with no depiction of a rotation (in any of the Figures). Applicant’s remarks referring to pg. 7 as support for the newly added claim limitation is insufficient, since said portion of the disclosure (being referred to by Applicant) only supports the limitation directed to the mounting block moving into the mounting recess and not to ‘an axis’ as claimed. Thus, the claim is rendered indefinite by virtue of there being infinite number of plausible constructions for ‘the axis’ in addition to the disclosure lacking any objective standard for measuring the scope of the claim term. For the purposes of examination, this limitation will be treated as: “wherein each mounting block is configured to move into the corresponding mounting recess”.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Saccardo (US 2017/0192249 A1) in view of Masunaga (JP 2001117052 A).
Regarding Claim 1, as best understood, Saccardo discloses: An eyeglasses temple replacement assembly (¶0032: hinge device for eyeglasses; The Examiner notes that the preamble “temple replacement assembly” merely states a feature that does not limit the claim scope, since the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention such that deletion of the preamble phrase does not affect the structure of the claimed invention, thus rendering the preamble to be of no significance to the claim construction; see MPEP § 2111.02, Section II, citing Catalina Mktg. Int’l, 289 F.3d at 808-09, 62 USPQ2d at 1785 and Intirtool, Ltd. v. Texar Corp., 369 F.3d 1289, 1294-96, 70 USPQ2d 1780, 1783-84 (Fed. Cir. 2004)) comprising a pivot base (FIG. 1:15; ¶0035-36) and a temple (FIG. 1:5); wherein one end of the pivot base is connected with a frame and an other end of the pivot base has a mounting shaft projecting therefrom (¶0042: the portion 16 for accommodating the end piece 15 of the eyeglass frame; see FIG. 3); wherein two guiding grooves are respectively formed on two sides of the mounting shaft; two mounting recesses being arranged at an inner end of the mounting shaft, each mounting recess corresponding to a respective one of the guiding grooves, each of the guiding groove being in communication with the corresponding mounting recess (¶0032: an accommodation body 2 that is provided with engagement seats that enable the gripping and locking of a hinge body 3 to an end piece 15 of the eyeglass frame; see annotated FIG. 6 reproduced below, showing each mounting recess “MR” corresponding to a respective one of the guiding grooves “GG” (along 2) and in communication therewith);
PNG
media_image1.png
600
723
media_image1.png
Greyscale
wherein the temple includes a mounting hole located at a front end of the temple and corresponding to the mounting shaft of the pivot base for mounting and connecting with the mounting shaft (¶0035: central body 4 allows coupling with a temple 5 of the eyeglass frame; ¶0033: C-shaped hollow body 4 is provided with a pair of eyelets 9 [mounting hole] that are arranged one over the other and spaced apart from each other, and which allow the insertion of a pivot 6; see FIG. 6 showing mounting hole 9 at front end of temple 5 for mounting and connecting with mounting shaft); and wherein two mounting blocks respectively project from each of two inner sides of the mounting hole (FIG. 6: 7), each mounting block being configured to move through a corresponding one of the guiding grooves upon insertion of the mounting shaft into the mounting hole, to be thereby mounted into a corresponding one of the mounting recesses (¶0041: engagement between the engagement teeth 7 [mounting blocks] of the first C-shaped hollow body 4 and the engagement seats 8 of accommodation body 2; see annotated FIG. 6 reproduced above, showing each mounting block 7 on sides of mounting hole 9 moves through each GG (2+8) upon insertion, to be mounted into each mounting recess MR; see also FIGS. 3-4 showing movement of said structures).
Although Saccardo discloses a pivot base connected with the frame having a mounting shaft projecting therefrom (¶0035-36, 0042; FIGS. 1 & 6), Saccardo does not appear to explicitly disclose: wherein one end of the pivot base is pivotally connected with a frame.
Masunaga is related to Saccardo with respect to an eyeglasses temple replacement assembly comprising a pivot base and a temple with a mounting shaft projecting therefrom and two guiding grooves and recesses formed in the mounting shaft, and the temple includes a mounting blocks (¶0010, 0012-15 & FIGS. 3-4) and Masunaga teaches: An eyeglasses temple replacement assembly comprising a pivot base and a temple (¶0004, 0010); wherein one end of the pivot base is pivotally connected with a frame and an other end of the pivot base has a mounting shaft projecting therefrom (¶0014: a temple member 1 [temple] is used as the eyeglass part 1 and a hinge member 2 [pivot base] is used as the second eyeglass part 2…hinge member 2 [pivot base] has a socket hole C at one end, and this socket hole C has an insertion opening 21 at the corresponding position in the back, into which the insertion hook portion 11 of the attachment plug P is elastically fitted, and an operation opening 22 at a position corresponding to the elastic tongue 12 for operating the tongue; see FIGS. 3-4 showing temple 1 and one end of the pivot base 2 is pivotally connected with a frame and an other end of the pivot base C has a mounting shaft 21-22 projecting therefrom).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to slightly modify the eyeglasses temple replacement assembly of Saccardo in view of Masunaga to satisfy the claimed condition because such a pivot base is known and would be selected since “the temples in particular are subject to repeated opening and closing movements when putting on and taking off eyeglasses, and are therefore more susceptible to deformation due to more frequent external forces than other eyeglass parts” (¶0002 of Masunaga), thereby providing the beneficial results of “allowing eyeglass temples to be replaced quickly with a simple operation, eliminating the need for the cumbersome task of removing a pivot shaft made of a small, difficult-to-turn machine screw, as was required in conventional temple replacement. Therefore, a large number of eyeglass temples of various sizes and designs are prepared, and an appropriate temple can be selected from these depending on the occasion, allowing the wearer to enjoy stylish eyeglasses”, as taught in ¶0021 of Masunaga.
Regarding Claim 2, Saccardo discloses the eyeglasses temple replacement assembly according to Claim 1, as above.
Saccardo does not appear to explicitly disclose: wherein a positioning locking slot is formed in a lateral side of the mounting shaft, and a positioning bump corresponding to the positioning locking slot is formed in the mounting hole for being locked with and positioned by the positioning locking slot.
Masunaga is related to Saccardo with respect to an eyeglasses temple replacement assembly (see rejection of claim 1 supra) and Masunaga teaches: wherein a positioning locking slot is formed in a lateral side of the mounting shaft, and a positioning bump corresponding to the positioning locking slot is formed in the mounting hole for being locked with and positioned by the positioning locking slot (¶0014: triangular bulging elastic hook portion 11 [pos. bump] of temple member 1…hinge member 2 has an insertion opening 21 [pos. locking slot] at the corresponding position, into which the insertion hook portion 11 of the attachment plug P is elastically fitted, thereby connecting the temple member 1 and the hinge member 2 to each other; see FIGS. 3-4 showing positioning locking slot 21 formed in a lateral side of the mounting shaft (on 2), and a positioning bump 11 corresponding to the positioning locking slot formed in the mounting hole for being locked with and positioned by the positioning locking slot).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to slightly modify the eyeglasses temple replacement assembly of Saccardo in view of Masunaga to satisfy the claimed condition because such a locking slot with positioning bump are known and would be selected for providing the beneficial results of “allowing eyeglass temples to be replaced quickly with a simple operation, eliminating the need for the cumbersome task of removing a pivot shaft made of a small, difficult-to-turn machine screw, as was required in conventional temple replacement. Therefore, a large number of eyeglass temples of various sizes and designs are prepared, and an appropriate temple can be selected from these depending on the occasion, allowing the wearer to enjoy stylish eyeglasses”, as taught in ¶0021 of Masunaga.
Regarding Claim 3, as best understood, Saccardo discloses the eyeglasses temple replacement assembly according to Claim 1, as above. Saccardo further discloses: wherein the mounting shaft defines an axis, and each mounting block is configured to move into the corresponding mounting recess upon rotation of the temple on the axis of the mounting shaft (¶0041: engagement between the engagement teeth 7 [mounting blocks] of the first C-shaped hollow body 4 and the engagement seats 8 of accommodation body 2; see FIGS. 3-4 & 6 showing each mounting block 7 is configured to move into the corresponding mounting recess in 8).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 SAMANVITHA SRIDHAR whose telephone number is (571)270-0082. The examiner can normally be reached M-F 0730-1700 (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BUMSUK WON can be reached on 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BALRAM T PARBADIA/Primary Examiner, Art Unit 2872