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 .
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.
Information Disclosure Statement
The information disclosure statement(s) filed on March 5, 2024; December 19, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9); Species B (Figs. 2A, B) in the reply filed on June 11, 2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 11, 2206.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “sensor configured to detect an amount of force” (claim 9) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claim Interpretation
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a) adjustment mechanism…configured to change a thickness…in claim 1
b) first/second adjustment mechanism…configured to change a thickness…in claim 2
c) mechanical actuator (means for mechanical actuation)…in claim 5
d) electrical actuator (means for electrical actuation)…in claim 6
e) sensor configured to detect an amount of force…in claim 9
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 3, 9 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.
As to claim 3, the claim recites “first adjustment mechanism…second adjustment mechanism each have a first state and a second state…a distance between the first adjustment mechanism and the second adjustment mechanism is greater in the second state than in the first state” which is unclear in light of Applicant’s elected species of Figures 2A,B. Specifically such distance appears to be a relative term (MPEP 2173.05(b)) as an arbitrarily designated distance between any two locations/points during the operation of the adjustment mechanisms (210). Neither the claims nor specification contain any spatial orientation of the first and second adjustment mechanisms (210) and their associated states so as to determine when one distance is greater than another.
For the purposes of compact prosecution, Examiner will understand the claim such that so long as there are first and second adjustment mechanisms with first and second states, such distance limitation is necessarily met.
As to claim 9, the claim limitation “sensor configured to detect an amount of force exerted on an object by the adjustment mechanism” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Applicant’s specification does not provide any sensor configured to determine the force exerted by adjustment mechanism (210) on an object.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-8 are rejected under 35 U.S.C. 102(a1) as being anticipated by Lee (US 2019/0056601; cited by Applicant).
As to claim 1, Lee teaches a wearable electronic device comprising
a display (Lee Fig. 1 - 1; para. [0056]);
a support arm (Lee Fig. 1 - 2, 3) connected to the display (Lee Fig. 1), the support arm comprising
a static portion connected to the display (Lee Fig. 1 - 2, 34, 35)
a dynamic portion connected to the static portion (Lee Fig. 1 - 5; para. [0056]; Figs. 4, 5 - 5; Figs. 7-12 - 5)
and an adjustment mechanism positioned on the dynamic portion and configured to change a thickness of the dynamic portion (Lee Figs. 4, 5 - T1, T2; Figs. 7-12- T1, T2).
As to claim 2, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches the support arm comprises a first support arm, the static portion comprises a first static portion, the dynamic portion comprises a first dynamic portion (Lee Fig. 1 - 2, 3A, 3B, 34, 35, 5; Fig. 2 - 3A, 3B, 35, 35, 5), and the adjustment mechanism comprises a first adjustment mechanism (Lee Fig. 1 - 5);
the wearable electronic device further comprises a second support arm connected to the display (Lee Fig. 1 - 3A, 3B; Fig. 2 - 3A, 3B), the second support arm comprising:
a second static portion connected to the display (Lee Fig. 1 - 2, 34, 35; Fig. 2 - 34, 35), the second static portion housing an electronic component (Lee Fig. 1 - 2; Fig. 6; para. [0104]-[0106]);
a second dynamic portion positioned opposite the display at an end of the second support arm (Lee Fig. 2 - 5); and
a second adjustment mechanism positioned in the second dynamic portion and configured to change a thickness of the second dynamic portion (Lee Figs. 4, 5 - T1, T2; Figs. 7-12- T1, T2).
As to claim 3, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches the first adjustment mechanism and the second adjustment mechanism each have a first state and a second state (Lee Figs. 4-5, 7-12) and a distance between the first adjustment mechanism and the second adjustment mechanism is greater in the second state than in the first state (Lee Fig. 2 - 5; Figs. 4-5, 7-12).
As to claim 5, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches the adjustment mechanism further comprises a mechanical actuator (Lee Figs. 4, 5 - 61; para. [0094]).
As to claim 6, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches the adjustment mechanism further comprises an electrical actuator (Lee Figs. 4, 5 - 62; para. [0094]).
As to claim 7, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches a proximal end of the support arm is connected to the display (Lee Fig. 1 - 1, 3A, 3B) and the adjustment mechanism is located at a distal end of the support arm (Lee Fig. 1 - 5).
As to claim 8, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches the adjustment mechanism is bi-stable (Lee Fig. 9; Fig. 10).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Yu et al. (CN 110221434; cited by Applicant; text references made to associated machine translation).
As to claim 4, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Lee further teaches a moveable member (Lee Fig. 4 - 52, 61; Fig. 9 - 64’, 52; Fig. 12 - 74, 52) but doesn’t specify a first magnet engageable with the movable member in a first state and a second magnet engageable with the moveable member in a second state.
In the same field of endeavor Yu teaches wearable devices (glasses) with support arms with a first magnet engageable with the movable member in a first state and a second magnet engageable with the moveable member in a second state (Yu Figs. 5-7 - 131, 32, 132; para. [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide first and second magnets since, as taught by Yu, magnets are well known in the art for effecting movement for adjust glasses temples pieces (Yu Figs. 5-7; para. [0046]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Heinrich et al. (US 9,128,283 - Heinrich).
As to claim 9, Lee teaches all the limitations of the instant invention as detailed above with respect to claim 1, but doesn’t specify a sensor configured to detect an amount of force exerted on an object by the adjustment mechanism.
In the same field of endeavor Heinrich teaches a wearable electronic device having a sensor configured to detect an amount of force exerted on an object by the adjustment mechanism (Heinrich Fig. 1A; Figs. 8A,B - 816; col. 13:35-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide such sensor since, as taught by Heinrich, such pressure sensors allow for determining the pressure applied to and to be adjusted computing devices worn on the head (Heinrich Fig. 1A; Figs. 8A,B - 816; col. 13:35-45).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Poore et al. (US 11,914,158; 2021/0271093); Godeau et al. (US 11,656,481; 2021/0109371); Mou et al. (US 10,415,561; 2018/0291887); Lee (US 10,754,175); Kinno et al. (US 9,274,341; 2015/0102982); Yaguchi (US 6,491,389); Hirschman et al. (US 5,623,322); Lee (US 4,848,891); Anger (US 4,755,042); Hong et al. (US 2024/0151987); Park et al. (US 2014/0375947); Meng (CN 108319037); Kobayashi (JP 2010-169742); Saito (JP H08-304744).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 June 26, 2026
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