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
The instant application having Application No. 18/497,561 filed on October 30, 2023 is presented for examination by the examiner.
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 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submission of the Information Disclosure Statement dated October 30, 2023 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending. However, the examiner notes that no references were listed in the submitted form.
Claim Objections
Claim 12 is objected to because of the following informalities: line 5 “eyeglasses” is not consistent with the choice of nomenclature in claim 1 of “eyeglass”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: line 1 “glasses” is not consistent with the choice of nomenclature in claim 1 of “eyeglass”. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: lines 1 and 2 “eyeglasses” is not consistent with the choice of nomenclature in claim 1 of “eyeglass”. Appropriate correction is required.
When considering how to rectify these inconsistencies in terminology, the indefiniteness issues below should also be considered. The examiner would prefer if all references to eyewear, eyeglass frame, eyeglasses, and glasses were changed to “eyewear” and “eyewear frame” given that this is “an eyewear system”. If the applicant considers the eyewear to be the entire system, then the examiner’s second choice would be to consistently refer to “eyeglasses” and “eyeglasses frame” as the most commonly used terms in the art. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: claim 18 does not end in a period.
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 1-20 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, claim 1 recites the limitation "said eyeglass frame" in line 9. There is insufficient antecedent basis for this limitation in the claim. Additionally, it is unclear what is meant by “said eyeglass frame is joined to an eyeglass by the cords” because the cords in the specification would normally be considered to connect the eyewear system to an eyeglass, not one part of an eyeglass frame to another part of an eyeglass frame, although this is technically also true. If the examiner has guessed correctly, it is believed that line 9 should instead recite “said eyewear system is joined to an eyeglass frame by the cords”. Appropriate correction is required. Note that specifying “eyeglass frame” in the second half of this phrase provided antecedent basis for this term in claim 2.
Regarding claim 1, the terms “cord” and “chain” are indefinite because it is unclear what cord and chain-like structures would or would not qualify as cords and chains in the context of the specification. In particular, the specification paragraph [0007] explains “In one embodiment the holder, the cord and the chain are made of a flexible material. In an embodiment the flexible material can be a polymer material. In another embodiment the chain is made of a metal material. In another embodiment the cords and the chain are made of a combination of a metal and a flexible material. In another embodiment the chain, cord and holder are made of the same material.” Likewise claims 4-8 and 17-18 recite similar material compositions. Thus the term “chain” would appear to encompass structures that are not connected links of metal like a necklace, but also any tether than can support or attach to something. Likewise, the term “cord” would appear to encompass structures that are not just plastic or fabric cords, but also any tether than can support or attach to something. If this broad interpretation of the terms “cord” and “chain” are the meaning that the applicant intended to encompass then only appropriate comment is required. If the applicant intended to limit the cord or the chain to more specific structures, the examiner recommends enumerating the options thereof in the claim.
For the purpose of examination, both cord and chain will be taken as synonyms for “tether”.
Claims 2-20 depend from claim 1 and inherit and do not mitigate the above indefiniteness issues from claim 1.
Regarding claims 12 and 13, claims 12 and 13 are indefinite because it is not readily apparent whether it is directed to a method of using the eyewear system, or to the eyewear system itself. There is nothing inherently wrong with method claims that depend from device claims. However, claim 12 recites steps of using the device without introducing claim 12 as a method claim in the preamble. If the applicant wishes claims 12 and 13 to be directed to a method, the examiner recommends amending the preamble of claim 12 to recite: “12. A method of using the eyewear system as recited in claim 1,” and the preamble of claim 13 to recite “13. The method of using the eyewear system as recited in claim 12”. On the other hand, if steps (a) and (b) and claim 13 are intended to be interpreted as functional language, step (a) does not itself have an indefiniteness issue, because it is clear that in order to perform this function, the two “circles”, one formed by the eyeglass frame and the cords, and the other formed by the chain and the portion of the cord past the adjustment mechanism, must each be long enough to place over the user’s head. Likewise the step of claim 13 is interpreted in terms of the appropriate elements having the lengths necessary to perform the claimed function. However, step (b) appears to be written as if the entirety thereof is optional, rendering the scope of step (b) indefinite. Appropriate correction is required.
Claim 12 recites the limitation "the slider" in line 4. There is insufficient antecedent basis for this limitation in the claim. The slider was introduced in claim 9, not claim 1. Appropriate correction is required.
Regarding claim 14, the functional limitation “wherein the user retains the ability to retrieve the eyeglasses if the eyeglasses fall from the top of the user's head” is indefinite because it is unclear what structure or structures are required to meet this function. 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). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). See MPEP §2173.05(g).
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 current instance, (1) there is no clear-cut indication of the scope of the subject matter covered by the claim, at least because so long as the eyeglasses do not drop a great distance (such as into the ocean, down a well or off a skyscraper), the user can retrieve them by bending over or bending down. Thus, it is unclear what, if any, additional structural limitations are required by this function. Further, the claim does not specify whether the eyeglasses fall towards the user’s back or to the user’s chest, which would also change what structures are required for the user to be able to retrieve the eyeglasses without bending. Further (2) the language at best only states a problem solved or a result obtained and does not set forth well-defined boundaries, thus (3) one of ordinary skill in the art would not know from the claim terms what structure is encompassed by the claim.
Regarding claim 18, the limitation “the chain, the holder, and the cord are made of different material” is indefinite because it is unclear how many elements must be made of a different material in order to meet the claim. For example, if the chain is made of a different material than the cord and the holder, this might or might not be sufficient to meet the claim. Alternatively, the applicant could have intended that each of the chain, the holder and the cord are made of different materials than each other. If the first interpretation is the intended meaning the examiner suggests amending claim 18 to recite: “wherein at least one of the chain, the holder, and the cord are made of a different material than the other two of the chain, the holder, and the cord.” If the second interpretation is the intended meaning, the examiner suggests amending claim 18 to recite “the chain, the holder, and the cord are made of three different materials.”. Appropriate correction is required. For the purpose of examination, either interpretation will be considered to meet the claim.
Regarding claim 19, the term “decorative” is a subjective term which renders the claim indefinite. The term “decorative” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although the specification states “A non-limiting example of a decorative element may be a charm, a gemstone, or a crystal”, these non-limiting examples are not sufficient to ascertain the scope of this limitation. See MPEP §2173.05(b)(IV) “A claim term that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893, 167 USPQ 280, 289 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350, 75 USPQ2d 1801, 1807 (Fed. Cir. 2005))… [f]or some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term within the specification." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261, 113 USPQ2d 1097, 1108 (Fed. Cir. 2014).”
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 1-5, 9-11, 14-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Businger US D774,591 S (hereafter Businger) in view of Purcell US 2009/0165189 A1 (hereafter Purcell).
Regarding claim 1, Businger teaches “An eyewear system for a user (Fig. 8 and annotated version of Fig. 7 below), comprising:
a cord (the left or right proximal portion of the tether that connects to the temple arms, defined with one end at the holder and the other end at the second connecting point marked in Fig. 7 below):
a chain (the distal portion of the tether which starts and ends at the second connecting point making two enclosed loops); and
an [adjustment] means (the first connecting point between the two tethers marked in Fig. 7 below),
wherein the cord has a holder at one end (the hollow portion of the tether that slides over the ends of the temple arms) and [a clasp] at the opposite end (the second connecting point between the two tethers),
[the clasp] is connected to the chain at one end of the chain (the chain is defined to begin at the second connecting point),
the chain is connected to a second cord by [a clasp] at the second end of the chain (the chain extends around the end loop to re-engage with the second connecting point to the right or left proximal portion),
the eyeglass cords are joined by the [adjustment] means (the left and right proximal portions of the tether are joined by the first connecting point), and said eyeglass frame is joined to an eyeglass by the cords (the temples of the eye glasses are joined by the tethers).”
[AltContent: textbox (chain)][AltContent: textbox (second connecting point)][AltContent: arrow][AltContent: arrow][AltContent: textbox (first connecting point)][AltContent: textbox (right cord)][AltContent: arrow][AltContent: arrow][AltContent: textbox (holders)][AltContent: textbox (loop)][AltContent: textbox (left cord)]
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However, Businger fails to explicitly teach “an adjustment means” and “a clasp”.
Purcell teaches “An eyewear system for a user (Fig. 1), comprising:
a cord (the portion of 22 between 42 and 24):
a chain (the portion of 22 and 23 between 24 and 30/36); and
an adjustment means (dual mode adjustment member 50),
wherein the cord has a holder at one end (connector 46) and a clasp at the opposite end (break-away connection 24 which is a clasp in that it allows the two parts to separate under excess force or to enable easy substitution of parts, see paragraph [0026]),
the clasp is connected to the chain at one end of the chain (the chain portion begins at 24),
the chain is connected to a second cord by a clasp (there is a second break-away connection joining the two halves of 23, where the portion between 24 and 36 corresponds to the chain, and the portion between 24 and 46 corresponds to the second cord) at the second end of the chain (where 23 meets 24 is a second end of the chain),
the eyeglass cords are joined by the adjustment means (see Fig. 1 and paragraph [0023]), and said eyeglass frame is joined to an eyeglass by the cords (the temples of 12 are connected to each other by cord 20).”
Purcell further teaches (paragraph [0023]): “Dual mode adjustment member 50 is positionable along the length of cord 20 in two modes. There is a first mode 52 that adjustably shortens the length of the cord between adjustment member 50 and eye end 40 of the cord to thereby provide a force to tension eye protector connectors 46 toward each other, for example, when the user wants to secure the eye protectors about his/her head. And, there is a second mode 54 that adjustably lengthens the length of cord 20 between adjustment member 50 and eye end 40 of the cord to thereby reduce the force of tension between eye protector connectors 46 and enable them to be moved further away from each other, for example, when the user wants to remove the eye protectors from his/her head.”
Thus it would have been obvious to use an adjustment member as taught by Purcell as the first connecting point of Businger for the purpose of enabling the user to shorten and lengthen the portion of the cord between the adjustment member and the temple holder as taught by Purcell such that the shortening the tether can secure the eyewear to the user’s head in the worn position, and lengthening the tether can create a larger loop such as to remove the eyewear as taught by Purcell (paragraph [0023]).
Purcell also teaches (paragraph [0026]): “at least one of left ear end 32, right ear end 34, left eye end 42, and the right eye end 44, may be a break-away connection 24. … FIG. 5 shows one example where cord or strand 20, 22, 23 snuggly fits inside break-away connection channel 25 such that friction maintains the two parts together but if a force in excess of the static friction force holding the parts together is experienced, then the two parts separate at connection 24. … Without being limited to a theory of understanding or advantage, these features can enhance the versatility of device 20 by enabling easy substitution of parts of the device or of other parts with the device, for example, ear engaging members and in particular earplugs.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the second connecting point of Businger with two break-away connecting clasps as taught by Purcell for the purpose of enabling the cord and chain to detach under excessive force and enhancing the versatility of the device by enabling easy substitution of parts as taught by Purcell (paragraph [0026]).
Regarding claim 2, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” and Businger further teaches “wherein the eyewear system is incorporated into the eyeglass frame by the holders (see Fig. 7 the eyewear system is “incorporated into” the eyeglass frame by the hollow portions at the ends thereof marked in the annotated version of Fig. 7 above, where “incorporated” is interpreted in concordance with paragraph [0034] of the specification of the instant application as meaning “to unite with something else to form a whole”).”
Regarding claim 3, the Businger – Purcell combination teaches “The eyewear system as recited in claim 2,” and Businger further teaches “wherein said eyeglass frame is incorporated by the arms (see Fig. 7).”
Regarding claim 4, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” and Businger further teaches “wherein said cord is made of a flexible material (the cord is a flexible material in that it is flexible enough to form an eyeglass tether and thus must be flexible in the sense of deformable).”
Regarding claim 5, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” and Businger further teaches “wherein said chain is made of a flexible material (the chain is a flexible material in that it is flexible enough to form an eyeglass tether and thus must be flexible in the sense of deformable).”
Regarding claim 9, the Businger – Purcell combination introduced for claim 1 above teaches “The eyewear system of claim 1, wherein the adjustment means is a slider (Purcell paragraph [0023]: “Dual mode adjustment member 50 is positionable along the length of cord 20” an adjustment member that is positionable along a length of cord is a slider).”
Regarding claim 10, the Businger – Purcell combination teaches “The eyewear system of claim 1,” however, Businger does not explicitly teach “wherein the cord attaches to the chain by a male female connector.”
Purcell teaches “wherein the cord attaches to the chain by a male female connector (see Fig. 5 and paragraph [0026]: “FIG. 5 shows one example where cord or strand 20, 22, 23 snuggly fits inside break-away connection channel 25 such that friction maintains the two parts together” thus the cord or strand is male and the connector 24 has a female channel 25 thus making a male female connector).”
Purcell also teaches (paragraph [0026]): “at least one of left ear end 32, right ear end 34, left eye end 42, and the right eye end 44, may be a break-away connection 24. … FIG. 5 shows one example where cord or strand 20, 22, 23 snuggly fits inside break-away connection channel 25 such that friction maintains the two parts together but if a force in excess of the static friction force holding the parts together is experienced, then the two parts separate at connection 24. … Without being limited to a theory of understanding or advantage, these features can enhance the versatility of device 20 by enabling easy substitution of parts of the device or of other parts with the device, for example, ear engaging members and in particular earplugs.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the second connecting point of Businger with two break-away connecting clasps each formed as male female connectors as taught by Purcell for the purpose of enabling the cord and chain to detach under excessive force and enhancing the versatility of the device by enabling easy substitution of parts as taught by Purcell (paragraph [0026]).
Regarding claim 11, the Businger – Purcell combination introduced for claim 1 above teaches “An eyewear system as recited in claim 9, wherein the slider adjusts the length of the cords simultaneously (Purcell Fig. 1 and paragraphs [0023] and [0025] “Adjustment member 50 may frictionally engage … strands 22, 23 to adjustably shorten or lengthen the length of cord/strands between adjustment member 50 and the eye end 40.”).”
Regarding claim 14, the Businger – Purcell combination teaches “The eyewear system of claim 1,” and Businger further teaches “wherein the user retains the ability to retrieve the eyeglasses if the eyeglasses fall from the top of the user's head (This is met in at least two ways. First if the eyeglass tether is worn in a typical position with the eyewear on the face and the cord portions of the tether on the back of the head/neck, and the eyeglasses were placed on the top of the head, and then the eyeglasses fell forward towards the user’s chest, the eyeglasses and tether would form a necklace configuration such that the user retains the ability to retrieve the eyeglasses without bending down. Secondly, even if the eyewear fell entirely off the user’s person onto the floor, the user still retains the ability to retrieve the eyeglasses by bending down. To put it another way, this functional limitation has to be interpreted in terms of the structural implications for the eyewear system. The claim does not recite “wherein the eyeglasses remain attached to the user’s body if the eyeglasses fall either forwards or backwards off a user’s head”.).”
Regarding claims 15 and 16, the Businger – Purcell combination teaches “The eyewear system of claim 2,” however Businger does not explicitly teach (claim 15) “wherein the holders are flexible” and (claim 16) “wherein the holders are composed of a flexible polymer material.”
Purcell teaches (claim 15) “wherein the holders are flexible (paragraph [0027]: “Eye protector connectors 46 may be made from a flexible material).”
(claim 16) “wherein the holders are composed of a flexible polymer material (paragraph [0027]: “Eye protector connectors 46 may be made from a flexible material that is injection or blow moldable into a bulb that does not permanently deform when stressed by stretching (e.g., when putting onto and removing from eye protector 12. Examples could be polyurethane, santoprene, polyethylene, or polypropylene.”).”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 flexible polyurethane, santoprene, polyethylene, or polypropylene as the material for the holders as taught by Purcell in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07. In the instant case one would have been motivated to make such a choice because Purcell teaches that these materials do not permanently deform when stressed by stretching (Purcell paragraph [0027]) and thus are appropriate choices for re-usable eyeglass tether connectors.
Regarding claim 18, the Businger – Purcell combination teaches “The eyewear system of claim 1,” however, Businger fails to explicitly teach “wherein the chain, the holder and the cord are made of different material.”
Purcell teaches “wherein the chain, the holder and the cord are made of different material (paragraph [0027]: “Eye protector connectors 46 may be made from a flexible material that is injection or blow moldable into a bulb that does not permanently deform when stressed by stretching (e.g., when putting onto and removing from eye protector 12. Examples could be polyurethane, santoprene, polyethylene, or polypropylene… For cord 20 and strands 22, 23, these may be shoe strand like materials or other molded, extruded or formed materials as are common for lanyard devices.” Thus Purcell teaches the holder being made of flexible polymers, while the chain and cord can be made of any shoe strand like material which would include both 100% cotton and leather, neither of which are polymers. Although, cotton and leather are not specifically stated by Purcell, one of ordinary skill in the art would have at once envisaged cotton and leather because dress-shoe laces are made of leather, and cotton shoe laces were standard for gym shoes prior to the prevalence of elastic shoe laces.1 ).”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 a flexible polymer as the material for the holder and a non-polymer material for the chain and cord as taught by Purcell in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Claims 6-8 rejected under 35 U.S.C. 103 as being unpatentable over Businger US D774,591 S (hereafter Businger) in view of Purcell US 2009/0165189 A1 (hereafter Purcell) as applied to claim 1 above and further in view of Fulks US 2018/0335640 A1 (hereafter Fulks).
Regarding claim 6, the Businger – Purcell combination teaches “ The eyewear system as recited in claim 1,” however, Businger fails to teach “wherein said chain is made of a metal material.”
Fuchs teaches an eyewear tether system including a chain or cord.
Fuchs teaches “wherein said chain is made of a metal material (paragraph [0022]: “Each temple member 110 includes a retractable cord 116 (which could include: a traditional fiber cord, a metal cable, a plastic cable, a silicon cord, a leather cord, a sailing rope, and combinations thereof)”).”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 metal as the material for the chain as taught by Fuchs in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Regarding claim 7, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” however, Businger fails to teach “wherein said cords are made of a combination of a metal and a flexible material.”
Fuchs teaches an eyewear tether system including a chain or cord.
Fuchs teaches “wherein said cords are made of a combination of a metal and a flexible material (paragraph [0022]: “Each temple member 110 includes a retractable cord 116 (which could include: a traditional fiber cord, a metal cable, a plastic cable, a silicon cord, a leather cord, a sailing rope, and combinations thereof)”. Thus Fuchs teaches the combination of a metal cable and a flexible material such as a fiber cord, a plastic cable, a silicon cord, a leather cord, or a sailing rope).”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 the combination of a metal and a flexible material as the material for the cord as taught by Fuchs in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Regarding claim 8, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” however, Businger fails to teach “wherein said chain is made of a combination of a metal and a flexible material.”
Fuchs teaches an eyewear tether system including a chain or cord.
Fuchs teaches “wherein said chain is made of a combination of a metal and a flexible material (paragraph [0022]: “Each temple member 110 includes a retractable cord 116 (which could include: a traditional fiber cord, a metal cable, a plastic cable, a silicon cord, a leather cord, a sailing rope, and combinations thereof)”. Thus Fuchs teaches the combination of a metal cable and a flexible material such as a fiber cord, a plastic cable, a silicon cord, a leather cord, or a sailing rope).”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 the combination of a metal and a flexible material as the material for the chain as taught by Fuchs in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Claims 12-13 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Businger US D774,591 S (hereafter Businger) in view of Purcell US 2009/0165189 A1 (hereafter Purcell) as applied to claim 1 above and further in view of Ushakov US 2016/0070110 A1 (hereafter Ushakov).
Regarding claim 12, the Businger – Purcell combination teaches “The eyewear system as recited in claim 1,” and Businger further teaches “wherein the eyewear system is worn by:
…b. The user optionally places eyeglasses on the user's face in the eye region (this is where eyeglasses are typically worn and thus is anticipated by any eyeglasses) or on the top of the user's head while leaving the chain on the chest and the slider behind the user's head near the neck and shoulders (the entirety of this step is optional).”
However, Businger fails to teach “wherein the eyewear system is worn by: a. Placing the chain and eyeglass over the head so both are on the user's chest and the slider is behind the user's head near the neck and shoulders.” Note that to meet this functional limitation merely requires that the loop made by the cords and the loop made by the chain are both long enough to pass over the user’s head.
Ushakov teaches (claim 1) “An eyewear system for a user (the wearable device of Figs. 1 and 11), comprising:
a cord (wire 9a):
a chain (neck loop 1); and
an [adjustment] means (node 11 which mechanically connects wires 9a and 9b see Fig. 11 and paragraph [0141]),
wherein the cord has a holder at one end (the connection between connection between the temple 7b and wire 9a see Fig. 11 and paragraph [0141]) and [a clasp] at the opposite end (node 10 which connects 9a and 9b to neck loop 1),
[the clasp] is connected to the chain at one end of the chain (10 is connected to a first end of neck loop 1),
the chain is connected to a second cord by [a clasp] at the second end of the chain (neck loop 1 is connected to wire 9b by node 10 at a second end of neck loop 1),
the eyeglass cords are joined by [the adjustment means] (9a and 9b are connected by node 11, see Fig. 11 and paragraph [0141]), and said eyeglass frame is joined to an eyeglass by the cords (7a and 7b are joined by wires 9a, 9b and neck loop 1).”
(claim 12) “wherein the eyewear system is worn by:
a. Placing the chain and eyeglass over the head so both are on the user's chest and the slider is behind the user's head near the neck and shoulders (see Fig. 1, the neck loop 1 is on the user’s chest and node 11 is behind the user's head near the neck and shoulders. Further, it is clear that the user could choose to remove the eyeglasses from their face and place them on their chest without removing the eyewear system, as this is one of the typical manners in which eyeglass tether systems are utilized); and
b. The user optionally places eyeglasses on the user's face in the eye region or on the top of the user's head while leaving the chain on the chest and the slider behind the user's head near the neck and shoulders (see worn positioning in Fig. 1 where the eyeglasses are on the user's face in the eye region while leaving the chain on the chest and the slider behind the user's head near the neck and shoulders).”
Furthermore, Purcell teaches a slider adjustment means 50, introduced for claim 1 above, that can lengthen the portion of the cord that extends from the temples to the slider 50 behind the user’s neck that enables the user to make this portion long enough to rest the eyeglasses on the user’s chest with the slider positioned behind the user’s neck.
It is a well-established proposition that a change of size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP §2144.04(IV)(A).
Businger discloses the claimed invention except for explicitly disclosing that the lengths of the cords and chains are sufficient to enable placing the chain and eyeglass over the head so both are on the user's chest and the slider is behind the user's head near the neck and shoulders. It would have been an obvious matter of choice to size the loop made by the cords and eyeglass frame and the loop made by the chain sufficiently large to pass over the user’s head as taught by Ushakov and Purcell, since such a modification would have involved a mere change in the size of the component. A change of size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). See MPEP §2144.04(IV)(A).
Regarding claim 13, the Businger – Purcell – Ushakov combination introduced for claim 12 above teaches “The eyewear system of claim 12, wherein the glasses can fall to the back of the head without falling off the user, while the chain remains on the user's chest or neck (see Ushakov Fig. 1, if the eyeglasses fell off the back of the user’s head, the chain would remain around the user’s chest and neck such that the eyeglasses would not fall off the user. Choosing the length of the chain such that the chain can sit like a necklace was already introduced for claim 12 above.).”
Regarding claim 19, the Businger – Purcell combination teaches “The eyewear system of claim 1,” however, Businger does not explicitly teach “wherein the chain holds at least one decorative element.”
Ushakov teaches (claim 1) “An eyewear system for a user (the wearable device of Figs. 1 and 11), comprising:
a cord (wire 9a):
a chain (neck loop 1); and
an [adjustment] means (node 11 which mechanically connects wires 9a and 9b see Fig. 11 and paragraph [0141]),
wherein the cord has a holder at one end (the connection between connection between the temple 7b and wire 9a see Fig. 11 and paragraph [0141]) and [a clasp] at the opposite end (node 10 which connects 9a and 9b to neck loop 1),
[the clasp] is connected to the chain at one end of the chain (10 is connected to a first end of neck loop 1),
the chain is connected to a second cord by [a clasp] at the second end of the chain (neck loop 1 is connected to wire 9b by node 10 at a second end of neck loop 1),
the eyeglass cords are joined by [the adjustment means] (9a and 9b are connected by node 11, see Fig. 11 and paragraph [0141]), and said eyeglass frame is joined to an eyeglass by the cords (7a and 7b are joined by wires 9a, 9b and neck loop 1).”
(claim 19) “wherein the chain holds at least one decorative element (see control means 23, 24 and 25 in Fig. 14, which while comprising control means such as buttons or keys, are also clearly designed to be decorative).”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a decorative element to the portion of the chain that sits like a necklace on the chest of the wearer as taught by Ushakov in the eyewear system of the Businger – Purcell combination. One would have been motivated to do so because when the chain is long enough to be worn in a necklace configuration it would have been obvious to make it fashionable.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Businger US D774,591 S (hereafter Businger) in view of Purcell US 2009/0165189 A1 (hereafter Purcell) as applied to claim 1 above and further in view of Terreri US 2015/0316785 A1 (hereafter Terreri).
Regarding claim 17, the Businger – Purcell combination teaches “The eyewear system of claim 1,” however Businger fails to teach “wherein the chain, the holder, and the cord are made of the same material.” Note however, that in Businger the holder, cord and chain appear to be one continuous material, and thus Businger suggests that they are made of the same material.
Purcell teaches “wherein the chain, the holder, and the cord are made of the same material (paragraph [0027]: “Eye protector connectors 46 may be made from a flexible material that is injection or blow moldable… Examples could be polyurethane, santoprene, polyethylene, or polypropylene… For cord 20 and strands 22, 23, these may be shoe strand like materials or other molded, extruded or formed materials as are common for lanyard devices.”)
Terreri teaches an eyewear retainer with tethers that have integrally formed holders, similar to Businger. Terreri teaches (paragraph [0030]) “various materials are suitable for use in retaining bands and elongated members, such as cordage, various flexible plastics and polymers, coated or uncoated wire, etc.”)
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 flexible polyurethane, santoprene, polyethylene, or polypropylene which are flexible plastics and polymers as the material for both the holders and the tethers as taught by Purcell and Terreri in the eyewear system of the Businger – Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Businger US D774,591 S (hereafter Businger) in view of Purcell US 2009/0165189 A1 (hereafter Purcell) as applied to claim 1 above and further in view of Brune et al. WO 2023/200977 A1 (hereafter Brune).
Regarding claim 20, the Businger – Purcell combination teaches “The eyewear system of claim 1,” however, Businger fails to explicitly teach “wherein the eyewear system is manufactured using 3D printing.”
Purcell teaches (paragraph [0027]): “Eye protector connectors 46 may be made from a flexible material that is injection or blow moldable into a bulb that does not permanently deform when stressed by stretching (e.g., when putting onto and removing from eye protector 12. Examples could be polyurethane, santoprene, polyethylene, or polypropylene. Adjustment member 50 may be made from flexible and/or elastic materials such as polyurethane, santoprene, polyethylene, or polypropylene, that may be formed or molded. For cord 20 and strands 22, 23, these may be shoe strand like materials or other molded, extruded or formed materials as are common for lanyard devices.”
It is a well-established proposition that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
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 flexible polymers as the material for the elements of the eyewear system as taught by Purcell in the eyewear system of the Businger-Purcell combination since it has been held that the selection of a known material based on its suitability for its intended use is within the skill of one of ordinary skill in the art Sinclair & Carroll Co. v.Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In reLeshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP §2144.07.
Brune teaches (paragraph [0069]): “The clips and tethers disclosed herein can be fabricated together or separately using any suitable technique known in the art. By way of example, the presently disclosed clip and/or tether can be produced using 3D printing, injection molding, additive manufacturing, compression molding, thermoforming, or a combinations thereof.”
Brune further teaches (paragraph [0068]): “In various implementations, the tether comprises a flexible polymeric material securely loop around an object. For example, the flexible polymeric material can include polypropylene, polyethylene, polyethylene terephthalate, polyethylene terephthalate (PET), polyester, plasticized polyvinyl chloride (PPVC), polycarbonate, and copolymers thereof. In various implementations, one or both of the clip and tether are made from a disposable polymeric material. However, a polymeric material (e.g., a molded polyethylene, polyvinyl chloride, polystyrene, or the like) that is either reusable and/or sterilizable is also contemplated.”
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 3D printing as the manufacturing method for the tether of the Businger – Purcell combination that is made from flexible polymers because Brune teaches that 3D printing is amongst the appropriate methods of manufacture for tethers and clips made of flexible polymeric materials (Brune paragraphs [0068]-[0069]). One would have been motivated to make such a choice for the method of manufacturing because Businger is silent regarding the method of manufacturing and Purcell includes “formed” as amongst the methods of manufacturing (see paragraph [0027]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gill US 5,087,118 “Article Holder” pertinent to the state of the art.
Ignatowski US 7,322,214 B2 “Convertible Eyeglass Retainer/jewelry Article” pertinent to the state of the art.
Pettingill US 7,896,492 B2 “Dual Strap Eyewear and Identification Strap Holder” pertinent to the state of the art.
Johnson et al. US 2013/0162941 A1 “Braided Eyewear Retainer” pertinent to the state of the art.
Ruhland US 2016/0025998 A1 “Device for Rapid Detachment of Eyewear” Figs. 4B and 8, pertinent to the state of the art.
Cagnone WO 2022/090978 A1 “Spectacle Frame and Jewelry Kit or the Like Comprising a Combination with Said Spectacle Frame” pertinent to the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARA E RAKOWSKI whose telephone number is (571)272-4206. The examiner can normal