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 .
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 11/28/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The amendments to the claims in the submission dated 11/28/2023 are acknowledged and accepted. Claims 1-7 are canceled. Claims 8-22 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In particular the following limitations are being interpreted under 112(f): in claims 12-17, line 4, and in claims 18-22, line 3, “means of connection.”
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 8-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tardif US 2022/0283447 A1 (hereinafter referred to as Tardif), and further in view of Chen et al., CN 201864234 U (hereinafter referred to as Chen and where reference is made to the attached machine translation retrieved electronically from Espacenet 02/06/2026).
As to claim 8, Tardif teaches an element for joining the front portion of spectacles to sidepieces for securing to the head of a user (Tardif, Fig. 1, 10b, paragraph [0032], “the removable, interchangeable, unbreakable, screwless, one-piece flexible spring hinge system for eyewear” is a hinge 10b used for joining the chassis C and left temple T2), the element comprising:
a core made of a thermoplastic elastomer of vegetable origin made up of a regular linear chain of flexible polyether and rigid polyamide segments (Tardif, Fig. 2A, 10, paragraph [0033], the materials of the hinge 10 are thermoplastic elastomers, “hundreds, if not thousands, of variations of thermoplastic elastomers and thermoplastic polymer may exist to fill such a need and are intended to be encompassed by the disclosure”); and
a coating of thermoplastic rubber (Tardif, Fig. 2A, 10, paragraph [0033], “the materials may include but are not limited to thermoplastic elastomers comprising polypropylene, a copolymer of ethylene, propylene, ethylene-propylene rubber, the like and/or combinations thereof.”), where the element has a first end face (Tardif, Fig. 4, 23, paragraph [0035], the hinge 10 has a first end face facing the chassis/hinge fissure 23) and a second end face which (Tardif, Fig. 4, 22, paragraph [0035], the hinge 10 has a second end face facing the temple/hinge fissure 24), with the element in a state of rest, form between them an angle defined within the range of 50° and 80° (Tardif, Fig. 3, 10, paragraph [0012], the hinge is curved substantially inward at rest closing the spectacles assembly, paragraph [0035], “at rest both of the right temple T1 and left temple T2 may be in an inwardly curved position making spectacles S closed for storage,” as can be seen in the annotated figure 2A below the angle defined by the first end face and the second end face is within the range of 50° and 80°), such that starting from the first end face, the element has a first side of the element with a first curved portion with a first radius that provides a concave section to the element (Tardif, Fig. 2A, 21, paragraph [0033], along the hinge outward side 11 there is V-shaped narrowing 21); and a second side of the element, opposite to the first side, has a third curved portion with a second radius that provides a concave section to the element (Tardif, Fig. 2A, 12, paragraph [0033], hinge 10 having hinge inward side 12 may be curved substantially inwardly toward hinge inward side 12).
Tardif does not teach the element comprising the first side of the element such that starting from the first end face, the element has a first side of the element with a first curved portion with a first radius that provides a concave section to the element, up to a second curved portion, of opposite curvature to the first curved portion that connects with a first flat portion that is perpendicular to the second end face; and a second side of the element, opposite to the first side, has a third curved portion with a second radius that provides a concave section to the element, then a second flat portion that reaches the first end face perpendicularly.
However, in the same field of endeavor Chen teaches an element for joining the front portion of spectacles to sidepieces for securing to the head of a user (Chen, Figs. 1-3, 3, translation, paragraph [0028], “an elastically adjustable pair of glasses, including a frame 1, temples 2, and an elastic footplate 3 for connecting the two”), the element comprising:
a core made of a thermoplastic elastomer of vegetable origin made up of a regular linear chain of flexible polyether and rigid polyamide segments (Chen, Figs. 1-3, 3, translation, paragraphs [0029]-[0030], “the soft material is a thermoplastic elastomer, such as thermoplastic polyurethane elastomer (TPU), polyamide thermoplastic elastomer (TPA), and polyether ester thermoplastic elastomer… preferably, the resilient footplate 3 is made of Pebax material. Pebax (block polyether amide elastomer)”); and
where the element has a first end face (Chen, Fig. 3, 3, translation, paragraph [0035], “the end of the elastic foot plate 3 near the frame”) and a second end face which (Chen, Fig. 3, 3, translation, paragraph [0035], the end of the elastic foot plate 3 near the temple 2), such that starting from the first end face, the element has a first side of the element with a first curved portion with a first radius that provides a concave section to the element (Chen, Fig. 3, 32, translation, paragraphs [0034]-[0035], first inner groove 32 is a U-shaped groove), up to a second curved portion, of opposite curvature to the first curved portion that connects with a first flat portion that is perpendicular to the second end face (Chen, Fig. 3, translation, paragraphs [0034]-[0035], between the first inner groove 32 and second inner groove 33 is a second curved portion of opposite curvature to the first inner groove 32, and connects to the flat portion following the second inner groove 33, the flat portion is perpendicular to the second end face as shown in the annotated figure 3 below); and a second side of the element, opposite to the first side, has a third curved portion with a second radius that provides a concave section to the element (Chen, Fig. 3, 31, translation, paragraphs [0032]-[0033], the U-shaped groove 31 is on a second side of the element opposite to the first side), then a second flat portion that reaches the first end face perpendicularly (Chen, Fig. 3, 31, translation, paragraphs [0032]-[0033], as shown in the annotated figure below there is a second flat portion that reaches the first end face and is perpendicular to the first face).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the element of Tardif with the element such that starting from the first end face, the element has a first side of the element with a first curved portion with a first radius that provides a concave section to the element, up to a second curved portion, of opposite curvature to the first curved portion that connects with a first flat portion that is perpendicular to the second end face; and a second side of the element, opposite to the first side, has a third curved portion with a second radius that provides a concave section to the element, then a second flat portion that reaches the first end face perpendicularly of Chen, because doing so gives the elastic foot plate 3 a rapid rebound performance (Chen, translation, paragraph [0036]).
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As to claim 9, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 8. Tardif does not teach the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 8, wherein the first radius has a value between 0.5 mm and 1.8 mm.
However, in the same field of endeavor Chen teaches the element wherein the first radius has a value between 0.5 mm and 1.8 mm (Chen, Fig. 3, 32, translation, paragraph [0035], “the minimum lateral thickness of the elastic foot plate 3 at the first inner groove 32 is not less than 2.0 mm… the width of the elastic foot plate 3 is 6 mm,” this gives a range of the radius of the first inner groove 32 from 0.0 mm to 4.0 mm).
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph.
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 element such that the first radius has a value between 0.5 mm and 1.8 mm, which overlaps the disclosed range of 0.0 mm to 4.0 mm, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the first radius is an art recognized results effective variable in that it gives the elastic foot plate a rapid rebound performance as taught by Chen (translation, paragraph [0036]). Thus one would have been motivated to optimize the first radius because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.” Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because doing so gives the elastic foot plate a rapid rebound performance (Chen, translation, paragraph [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the element of Tardif with the element wherein the first radius has a value between 0.5 mm and 1.8 mm of Chen, because doing so gives the elastic foot plate 3 a rapid rebound performance (Chen, translation, paragraph [0036]).
As to claim 10, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 8. Tardif does not teach the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 8, wherein the second radius has a value between 1.5 mm and 3.2 mm.
However, in the same field of endeavor Chen teaches the element wherein the second radius has a value between 1.5 mm and 3.2 mm (Chen, Fig. 3, 31, translation, paragraphs [0033] and [0035], “the minimum lateral thickness of the elastic foot plate 3 at the U-shaped groove 31 should preferably be no less than 2.1 mm… the width of the elastic foot plate 3 is 6 mm,” this gives a range of the radius of the U-shaped groove 31 from 0.0 mm to 3.9 mm).
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph.
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 element such that the second radius has a value between 1.5 mm and 3.2 mm, which overlaps the disclosed range of 0.0 mm to 3.9 mm, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the first radius is an art recognized results effective variable in that it gives the elastic foot plate a rapid rebound performance as taught by Chen (translation, paragraph [0036]). Thus one would have been motivated to optimize the second radius because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.” Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because doing so gives the elastic foot plate a rapid rebound performance (Chen, translation, paragraph [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the element of Tardif with the element wherein the second radius has a value between 1.5 mm and 3.2 mm of Chen, because doing so gives the elastic foot plate 3 a rapid rebound performance (Chen, translation, paragraph [0036]).
As to claim 11, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 9. Tardif does not teach the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 9, wherein the second radius has a value between 1.5 mm and 3.2 mm.
However, in the same field of endeavor Chen teaches the element wherein the second radius has a value between 1.5 mm and 3.2 mm (Chen, Fig. 3, 31, translation, paragraphs [0033] and [0035], “the minimum lateral thickness of the elastic foot plate 3 at the U-shaped groove 31 should preferably be no less than 2.1 mm… the width of the elastic foot plate 3 is 6 mm,” this gives a range of the radius of the U-shaped groove 31 from 0.0 mm to 3.9 mm).
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph.
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 element such that the second radius has a value between 1.5 mm and 3.2 mm, which overlaps the disclosed range of 0.0 mm to 3.9 mm, since it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP §2144.05(I) first paragraph. In the current instance, the first radius is an art recognized results effective variable in that it gives the elastic foot plate a rapid rebound performance as taught by Chen (translation, paragraph [0036]). Thus one would have been motivated to optimize the second radius because it is an art-recognized result-effective variable and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See MPEP §2144.05(II)(B) “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a personal of ordinary skill in the art to experiment to reach another workable product or process.” Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because doing so gives the elastic foot plate a rapid rebound performance (Chen, translation, paragraph [0036]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the element of Tardif with the element wherein the second radius has a value between 1.5 mm and 3.2 mm of Chen, because doing so gives the elastic foot plate 3 a rapid rebound performance (Chen, translation, paragraph [0036]).
As to claim 12, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 8, wherein the first end face has a means of connection (Tardif, Fig. 2A, 13, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the chassis C, which is chassis flange 13).
As to claim 13, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 9, wherein the first end face has a means of connection (Tardif, Fig. 2A, 13, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the chassis C, which is chassis flange 13).
As to claim 14, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 10, wherein the first end face has a means of connection (Tardif, Fig. 2A, 13, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the chassis C, which is chassis flange 13).
As to claim 15, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 8, wherein the second end face has a means of connection (Tardif, Fig. 2A, 14, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the temple T, which is temple flange 14).
As to claim 16, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 9, wherein the second end face has a means of connection (Tardif, Fig. 2A, 14, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the temple T, which is temple flange 14).
As to claim 17, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 10, wherein the second end face has a means of connection (Tardif, Fig. 2A, 14, paragraph [0033], a protrusion on the side of hinge 10 may form a connection to the temple T, which is temple flange 14).
As to claim 18, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 12, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 12, wherein the means of connection is a projection with a T-shaped section (Tardif, Fig. 2A, 13, paragraph [0033], a T-shaped protrusion on the side of hinge 10 may form a connection to the chassis C, which is chassis flange 13).
As to claim 19, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 15, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 15, wherein the means of connection is a projection with a T-shaped section (Tardif, Fig. 2A, 14, paragraph [0033], a T-shaped protrusion on the side of hinge 10 may form a connection to the temple T, which is temple flange 14).
As to claim 20, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 12, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance claim 12, wherein the means of connection has a rectangular ring (Tardif, Fig. 9, 13, paragraph [0033], the perspective view of the chassis flange 13 in figure 9 shows the chassis flange 13 has a rectangular ring shape).
As to claim 21, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 15, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance with claim 15, wherein the means of connection has a rectangular ring (Tardif, Fig. 9, 14, paragraph [0033], the perspective view of the temple flange 14 in figure 9 shows the temple flange 14 has a rectangular ring shape).
As to claim 22, Tardif in view of Chen teaches all the limitations of the instant invention as detailed above with respect to claim 18, and Tardif further teaches the element for joining the front portion of spectacles to sidepieces for securing to the head of a user in accordance claim 18, wherein the means of connection has a rectangular ring (Tardif, Fig. 9, 13, paragraph [0033], the perspective view of the chassis flange 13 in figure 9 shows the chassis flange 13 has a rectangular ring shape).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER A JONES whose telephone number is (703)756-4574. The examiner can normally be reached Monday - Friday 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Pham can be reached at 571-272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JENNIFER A JONES
Examiner
Art Unit 2872
/JENNIFER A JONES/Examiner, Art Unit 2872
/THOMAS K PHAM/Supervisory Patent Examiner, Art Unit 2872