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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 6, 8, 10, 21-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner thanks applicant for the amendment of the title, and cancellation of many claims, and for significant claim amendments. Examiner notes that due to the significant amendments, examiner has performed a new search and given new consideration to the claim language, as discussed below.
Examiner notes that applicant now claims “protrusions” as annotated in figure 3b on applicant’s arguments, 7/27/2026, page 8. Examiner notes that these parts were never mentioned in the specification, are not shown to have a particular purpose, and can only be claimed as being present in the general position and shape as shown in figure 3b. Applicant also adds claim 21, stating “hinge mechanism assembly configured to engage a bottom surface of the hinge member”. Examiner notes that hinge mechanism assembly 306 is mentioned twice and only shown in figure 3d. Examiner believes applicant is correct in interpreting figure 3d that 306 is “configured to engage a bottom surface of the hinge member”, but any further claim language on this topic must be fully supported in the drawings and the specification; applicant does not provide any structural details regarding part 306 in any figure or specification, and applicant does not provide a function for the protrusions of annotated 3b in any figure or specification.
Drawings
The drawings are objected to because the first and second protrusions are not indicated in the drawings. Examiner notes that the protrusions as indicated in applicant’s arguments of 7/27/2026 page 8 are not properly indicated in the drawings of the application, and are not listed in the specification Examiner also notes that “vertical direction” is not indicated in any drawing or indicated in the specification. The “side surface of the hinge member” is not indicated.
Applicant discloses the fasteners connected the curved surface to the glasses arm; the hinge member seems to be integral with the curved surface as shown in figure 3b. Therefore, the hinge member is not coupled to the curved surface “via the fasteners extending through each hole” as amended in claim 1.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
Specification
The disclosure is objected to because of the following informalities: the claimed “protrusions” and the claimed “vertical direction” and “horizontal direction”, and the “side surface of the hinge member”, the two curves of claim 22, are not indicated in the drawings nor mentioned in the specification. Examiner believes these are shown in the original drawings, but are not indicated, and are not mentioned in the specification.
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, 6, 8, 10, 21-22 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 claim 1, applicant positively claims the “one fastener through each hole”, and positively claims “at least two holes”. The curved surface is “configured to be secured to a portion of a glasses arm by the one fastener”. First, there are at least two fasteners, so examiner assumes both fasteners are connecting the curved surface to the glasses arm. Second, applicant later claims “hinge member coupled to the curved surface, via the fasteners extending through each hole”. Examiner notes that the screws are not shown to attach hinge member 208 to curved surface 203, figure 3b seems to indicate these are integral parts. Therefore, examiner assumes the inclusion of the phrase “via the fasteners extending through each hole” is erroneously included.
Claim 1 also claims “such that the hinge member comprises a first protrusion…and a second protrusion…”. Examiner assumes that applicant is positively claiming the structure of the first and second protrusions, and therefore, assumes that “such that” is erroneously included.
Examiner assumes that applicant intends “a hinge member coupled to the curved surface, the hinge member comprises a first protrusion…and a second protrusion…”.
Regarding claim 1, applicant claims new terms “protrusions”, “side surface of the hinge member”, “vertical direction”, “horizontal direction”, which are not clearly shown in the drawings nor mentioned specifically in the specification. Examiner relies on applicant’s amended figure 3b in the remarks (7/27/2026 page 8) to define the “protrusions”. This does not define the side surface or the directions.
Regarding claim 1, applicant claims “first protrusion is structured to bend in a downward vertical direction from the first proximal end”. Examiner notes that the first protrusions comprises the first proximal end, so the record is not clear how the protrusion can “bend in a downward vertical direction” from itself. Examiner assumes the “first proximal ends extends in a downward vertical direction from the side surface of the hinge member”, and similarly regarding the second protrusion.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Claim(s) 1, 10, 21, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over in view of 3189912 Miller in view of 2316096 Metzger, or 3189912 Miller in view of 1924001 Rosenbaum.
An assembly (figure 1) for coupling a glasses arm with a frame (as shown in figure 1), the assembly comprising:
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a curved surface 30 defining at least two holes (44 and 46) extending through the curved surface 30, wherein one fastener (40 and 42) extends through each hole,
the curved surface 30 is configured to be secured to a portion of a glasses arm by the one fastener (as shown in figure 4);
and a hinge member (as annotated in Miller figure 6) coupled to the curved surface 30, via the fasteners extending through each hole (assumed to be erroneous based on previous claim language and applicant’s figure 3d, please see 112b above), such that (assumed that applicant is positively claiming the inclusion of the protrusions, so this phrase is assumed to be erroneous) the hinge member comprises a first protrusion 28 including a first proximal end and a first distal end (as indicated in figure 3) and a second protrusion 28 including a second proximal end and a second distal end (in the same manner as first protrusion), wherein:
the first proximal end extends from a side surface of the hinge member 30 (in the manner shown in figure 3), and the first protrusion is structured to bend in a downward vertical direction from the first proximal end (as assumed in the 112b above, and shown in figure 3 of Miller), terminating at the distal end of the first protrusion (as shown in figure 3), and
the second proximal end extends from the side surface of the hinge member (in an identical manner to the first protrusion), and the second protrusion is structured to bend in a downward vertical direction from the second proximal end (as assumed in the 112b above, and shown in figure 3 of Miller), terminating at the distal end of the second protrusion.
Note that it has been held that 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. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Miller does not particularly disclose and the “protrusion bends in a horizontal direction away from the side surface of the hinge member”.
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Metzger discloses an eyeglass hinge which has a surface 13 with a hole that connects to a part of the eyeglasses, the hole having a fastener 17 through it, and a hinge member 28 coupled to the surface, having a proximal end and a distal end (as annotated in figure 2), the protrusion extends in both a horizontal direction and a vertical direction from the plate.
It would have been obvious to one of ordinary skill in the art before the effective filing date to relocate the protrusions of Miller to be in the horizontal and vertical bent location as known in Metzger, as this would allow a different location of the axis of the pin within the protrusions of both Miller and Metzger. The rearrangement of known parts into a known arrangement is considered obvious to one of ordinary skill in the art. See MPEP 2144.04 (VI) (c).
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Rosenbaum discloses an eyeglass hinge which has a hinge member coupled to the surface/plate 11, having a proximal end and a distal end (as annotated in figure 2), the protrusion extends in both a horizontal direction and a vertical direction from the plate 11. The protrusion of figure 2 has a “serpentine shape comprising two curves” as annotated (from claim 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date to relocate and/or reshape the protrusions of Miller to have the two curves and extend in the vertical and horizontal directions in the manner as taught by Rosenbaum, as this would allow a different location of the axis pin within the protrusions of both Miller and Rosenbaum. The rearrangement of known parts into a known arrangement is considered obvious to one of ordinary skill in the art. See MPEP 2144.04 (VI) (c).
Regarding claim 10, Miller as modified discloses the curved surface of claim 1, wherein the at least two holes 44 and 46 have a diameter (as shown in figure 6 above) that is greater than a diameter of the fasteners (so that the fasteners 40 and 42 can extend therethrough).
Regarding claim 21, Miller as modified discloses the assembly of claim 1, further comprising a hinge mechanism assembly 18 configured to engage a bottom surface of the hinge member (hinge member as annotated has several “bottom surfaces”, and the hinge mechanism assembly 18 has protrusions 26 which engage the “bottom surfaces” of several of the protrusions/hinge member, as is shown in figures 1 and 5/6.
Regarding claim 22, Miller as modified discloses the assembly of claim 1 (Miller in view of Rosenbaum), wherein the protrusions (28 of Miller reshaped to extend in the manner of Rosenbaum) are structured in a serpentine shape comprising two curves, as annotated in Rosenbaum figure 3 shown in claim 1 above).
Claim(s) 6, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Metzger as applied to claim 1 above, and further in view of 3846018 Gerson.
Regarding claim 6, Miller as modified discloses the curved surface of claim 1, which uses a threaded fastener 40/42 (“screws or small bolts” column 1 line 63) to lock the position of the threaded fastener in a fixed position (as shown in figure 1 of Miller). Miller does not particularly disclose the inclusion of a nut.
Gerson discloses a hinge for eyeglasses which includes multiple threaded fasteners 44 and 50 with nuts 66.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a nut as known in the art of Gerson with the “screws or small bolts” of Miller, as this is an extra pieces to perform the identical function known in Miller, as the inclusion of the nut does not alter the form, function, or use, of the screws of Miller. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claim 8, Miller as modified discloses the curved surface of claim 6, wherein the screws/bolts of Miller have an engagement feature configured to engage a tool. It would have been obvious to one of ordinary skill in the art before the effective filing date to change the engagement feature to match the available screwdriver for the user, whether this is a flat head, a Phillips head, a star, a torx, or any other shape, this does not affect the form, function, or use, of the screw, it merely changes the tool which the user can engage the existing threaded fasteners of Miller. A change of shape is considered a matter of choice. See MPEP 2144.04 (IV) (b).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
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 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 EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677
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