DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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 1-2 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1 “the blocking bar” and 2 “the blocking bars” have antecedent issues and raise clarity issues. It is unclear if the at least one blocking bar is meant (assumed) or if new/different elements are being introduced. Further, changing from singular to plural makes it unclear if more than one blocking bar is required in claim 2 (assumed) or not. For purposes of examination the examiner will use “the at least one blocking bar” in claim 1 line 12 and “wherein the at least one blocking bar comprises two blocking bars, wherein the two blocking bars are respectively” in claim 2 line 2.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,248,199. Although the claims at issue are not identical, they are not patentably distinct from each other because substantially claim the same invention.
Instant application
12,248,199
1. A detachable side shield structure of spectacles, which mainly comprises a temple having a pivot joint arranged corresponding with the frame and a catching portion arranged at the pivot joint, and a side shield unit arranged on the temple, wherein
the side shield unit corresponds with the catching portion forms a detachable latch positioning structure, wherein the side shield unit comprises a shielding portion for shielding, a snap portion provided on an inner edge of a top surface of the shielding portion, at least one blocking bar protruded from an outer edge of the top surface, a space for accommodating the temple formed between the blocking bar and the snap portion, and a locking cover portion covering a top edge of the temple provided above the snap portion, wherein the snap portion has a detachable embedded portion arranged on one side corresponding with the catching portion.
1. A spectacle temple side shield structure, which comprises a spectacle frame and side shield devices, wherein
a pivot joint of two temples each is pivotally connected with both sides of the spectacle frame, and each of the temples has a detent seat corresponding with the pivot joint, wherein
each of the side shield devices has a shielding piece arranged thereon for shielding, a detent unit provided on an inner edge of a top end of the shielding piece, at least one blocking bar protruded from an outer edge of the top end of the shielding piece, a space for accommodating the temple formed between the blocking bar and the detent unit, and a locking cover portion covering a top surface of the temple provided at an upper end of the detent unit, wherein the detent unit has grooves correspondingly arranged on upper and lower parts thereof, an elastic part formed between the upper and lower two corresponding grooves, and a detent protrusion protruded from the elastic part, which is latch-locked and fixed with the detent seat of the temple of the spectacle frame corresponding to each other.
2. The spectacle temple side shield structure as claimed in claim 1, wherein the blocking bars are respectively protruded from the outer edge of the top surface of the shielding portion corresponding to the two sides of the snap portion.
2. The spectacle temple side shield structure as claimed in claim 1, wherein the blocking bars are disposed correspondingly on both sides of the detent unit.
In light of their respective specification, it is noted that ‘199 uses the term “detent unit … wherein the detent unit has grooves correspondingly arranged on upper and lower parts thereof, an elastic part formed between the upper and lower two corresponding grooves, and a detent protrusion protruded from the elastic part, which is latch-locked and fixed with the detent seat of the temple of the spectacle frame corresponding to each other” is commensurate to the instant application’s “catching portion … with the catching portion forms a detachable latch positioning structure … wherein the snap portion has a detachable embedded portion arranged on one side corresponding with the catching portion”. For example see ‘199 figures 2- & 5-6 and instant application figures 1 & 4-6.
Examiner’s Comments
Upon filing a Terminal Disclaimer claims 1-2, if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action, would be allowable.
The following is a statement of reasons for the indication of allowable subject matter: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103. Specifically, with respect to claim 1 (and therefore dependent claim 2) none of the prior art either alone or in combination disclose or teach of the claimed spectacle temple side shield structure specifically including, as the distinguishing features in combination with the other limitations, a temple having a pivot joint arranged corresponding with the frame and a catching portion arranged at the pivot joint, and a side shield unit arranged on the temple, wherein the side shield unit corresponds with the catching portion forms a detachable latch positioning structure, wherein the side shield unit comprises a shielding portion for shielding, a snap portion provided on an inner edge of a top surface of the shielding portion, at least one blocking bar protruded from an outer edge of the top surface, a space for accommodating the temple formed between the at least one blocking bar and the snap portion, and a locking cover portion covering a top edge of the temple provided above the snap portion, wherein the snap portion has a detachable embedded portion arranged on one side corresponding with the catching portion.
Looking at prior art with some similarities:
Prince US Patent 3,721,490; which has a detachable side shield structure with some similarities, see figure 3, but at least fails to disclose a catching portion on the temple arranged near the hinge that is part of a detachable latch positioning structure.
Hirschman et al. US Patent 5,548,351; which has a detachable side shield structure with some similarities, see figure 3, but at least fails to disclose a catching portion on the temple arranged near the hinge that is part of a detachable latch positioning structure.
Teng US Patent Application Publication 2006/0268217; which has a detachable side shield structure with some similarities, see figures 1-3, but at least fails to disclose at least one blocking bar.
Sadler et al. US Patent Application Publication 2014/0340629; which has a detachable side shield structure with some similarities, see figures 5-8, but at least fails to disclose at least one blocking bar.
Chen et al. US Patent Application Publication 2019/0086688; which has a detachable side shield structure with some similarities, see figure 3, but at least fails to disclose a catching portion on the temple arranged near the hinge that is part of a detachable latch positioning structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen foreign patent document TWM653486U, in regards to a substantially similar invention, see figures 1-6, but fails to qualify as prior art.
Chen foreign patent document TWM651662U, in regards to a substantially similar invention, see figures 1-6, but fails to qualify as prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George G King whose telephone number is (303)297-4273. The examiner can normally be reached 9-5.
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/George G. King/Primary Examiner, Art Unit 2872 October 27, 2025