DETAILED ACTION
In Reply filed on 05/07/2026, claims 1-25 are pending. Claims 1-12 are withdrawn based on the restriction requirement. Claims 13-25 are considered in the current Office 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 .
Election/Restrictions
Applicant's election with traverse of claims 13-25 in the reply filed on 05/07/2026 is acknowledged. The traversal is on the ground(s) that there is no search and/or examination burden for examining all of the presented claims. This is not found persuasive because Group I (claims 1-12) and Group II (claims 13-25) lack unity of invention because the shared technical features are not special as evidenced by the Restriction Office Action dated 02/10/2026. In addition, 35 USC 103 rejection below further showed the technical features of claim 13 is not novel over prior art. Furthermore, since the restriction is a 371 lack of unity restriction, search burden is not a factor in determining the validity of the restriction requirement and the rejection is maintained. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/07/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/01/2024 and 09/18/2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 13, 21-22, and 24 are objected to because of the following informalities:
Claim 13 introduces “at least one portion (of an electronic device)” and “at least a portion (of said at least one element)”. The claims then repeatedly swap between “said at least one portion” and “said at least a portion” for both “said electronic device” and “said at least one element”. For the purpose of consistency, the language used should be consistent.
Claim 13 recites the limitation “at least one portion of electronic device” in the last clause should read “at least one portion of the electronic device”
Claim 21 recites the limitation “…has a sheet-form is flattened” should read as “has a sheet-form and is flattened”.
Claim 22 recites the limitation “the encapsulated electronic device” should read “the encapsulated at least one portion of said electronic device”
Claim 24 recites the limitation “of glasses frame” should read “of the glasses frame”.
Appropriate correction is required.
Claim Interpretation
Claim 13 recites the limitation “negligible quantity” has been interpreted as “a percentage of less than 2% by weight” which is consistent with page 5, lines 1-7 of the instant specification.
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 13-25 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.
Claim 13 recites the limitation “the composition of the mixture” in the last clause which render the claim indefinite. In other words, claim 13 recites a first composition and a second composition. It is unclear if “the composition” is referring to the first composition or the second composition or a different composition.
Claim 19 recites the limitation "said first mixture" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation “…said sheet had been deformed” is unclear as to which of the “two separate sheets” is being referenced (or if it is referring to the “sheet-form”).
Claims 14-25 are rejected by virtue of depended upon a rejected independent claim 13.
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(s) 13, 16-19, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over US2017/0176776 (“Lore et al” hereinafter Lore) and US2014/0259271 (“Cox et al” hereinafter Cox).
Regarding Claim 13, Lore teaches a method for encapsulating at least one portion of an electronic device inside at least one element of a glasses frame(abstract and [0001]),
wherein said at least one element of said glasses frame is comprised of a mixture of plasticized cellulose acetate suitable for passing from a first composition to a second composition ([0007]-[0008], the first composition is referring to the composition of the substrate when the solvent is introduced into the substrate and the second composition is referring to the composition of the substrate after the solvent evaporated),
wherein said first composition of said plasticized cellulose acetate mixture comprising at least one solvent dissolved in the mixture ([0007], the first substrate and the second substrate of cellulose acetate providing with a solvent of cellulose acetate in-between the first substrate and the second substrate),
wherein said first composition has a softening point lower than a softening point of the plasticized cellulose acetate ([0008], the introduction of solvent, which is acetate [0012] is the same solvent used by the instant application as supported by page 4, lines 24-26, enables to solvate partially the first and the second substrate. Thus, the first composition is implied to have a softening point lower than a softening point of the plasticized cellulose acetate. See MPEP 2112.01),
wherein said second composition of said mixture provides that at least a portion of said at least one element within which said at least a portion of said electronic device is incorporated comprises a negligible quantity of said at least one solvent ([0007]-[0008], the first substrate and the second substrate in contact together, wherein the electronic device is maintained between the first substrate and the second substrate and by maintaining the substrates together, the solvent is allowed to evaporate, allowing the mixed material of the first substrate and second substrate to become once again fully solid, fixing the two surfaces together),
wherein the method includes the following steps ([0007]):
a first step providing that said at least one element of the glasses frame comprises two separate sheets comprised of said first composition of said mixture ([0007], providing a first substrate of cellulose acetate and a second substrate of cellulose acetate and providing solvent of cellulous acetate in between the first and the second substrate),
a second step providing the insertion of said at least one portion of said electronic device between said two separate sheets ([0007], maintaining the first substrate and the second substrate in contact together, wherein the electronic device is maintained between the first substrate and the second substrate),
a third step applying a contact pressure between said two separate sheets ([0009], the step of maintaining the first substrate and second substrate in contact together can be done by pressing the second substrate onto the first substrate or vice-versa),
a fourth step providing waiting for a period of time sufficient to allow the two separate and partially softened sheets to encapsulate between them said at least a portion of said electronic device ([0007]-[0009], the step of maintaining the first substrate and second substrate in contact together is preferably done for a determined duration, for example until enough of the solvent has evaporated and encapsulate the electronic device), and
a fifth step providing evaporating said at least one solvent by passing the composition of the mixture of said at least one portion of said at least one element from the first to the second composition by carrying out a sintering between the two sheets and encapsulating said at least one portion of electronic device inside said at least one portion of said at least one element ([0007]-[0009] and [0069], the two substrates are allowed to dry, by heat, while being maintained in contact to remove solvent from the interface).
Lore teaches the solvent of cellulose acetate enables to solvate partially the material, enabling a surface portion of the first substrate and of the second substrate to mix together in a semi-liquid phase ([0008]) but fails to explicitly teach a third step providing increasing a temperature up to the softening point of said first composition present in said at least one portion of said at least one element.
However, Cox teaches a third step providing increasing a temperature up to the softening point of said first composition present in said at least one portion of said at least one element ([0008], heating the substrate into a melted state which is a temperature above the softening point of the composition to form melted substrate).
Lore and Cox are considered to be analogous to the claimed invention because both are in the same field of embedding electronic device within substrate for wearable glasses frame. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method as taught by Lore such that it teaches all of the above discussed limitations as taught by Cox to melt together the two substrates in order to embed the electronic device within the two substrates ([0008]). Furthermore, the combination of the known elements provides a predictable result, namely, another know way to facilitate the melting of the substrates into a semi-liquid phrase . See MPEP 2143.
Regarding Claim 16, the modified Lore teaches the method according to claim 13, wherein the percentage of said at least one solvent in the second composition of the acetate mixture is lower than 2% by weight (Lore, [0008] and [0069], solvent evaporated and disappeared; thus, the second composition does not contain any solvent).
Regarding Claim 17, the modified Lore teaches the method according to claim 13, wherein said at least one solvent is included in a list comprising at least one of acetone (Lore, [0012], the solvent is acetone), ethanol, ethyl acetate, ethyl lactate.
Regarding Claim 18, the modified Lore teaches the method according to claim 13, wherein the softening point of said first composition is lower than 90°C (Lore discloses the first composition is referring to the composition of the substrate when the solvent is introduced into the substrate which comprises of a cellulose acetate substrate [0008] with acetone solvent [0012] which is equivalent to the composition of the first composition of the instant application as supported by page 4, lines 21-23. Thus, the first composition disclosed by Lore will have the same characteristic of softening point as the instant application ).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. See MPEP 2112.01. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claim 19, the modified Lore teaches the method according to claim 13, wherein the softening point of said first mixture is comprised between 30°C and 50°C (Lore discloses the first composition is referring to the composition of the substrate when the solvent is introduced into the substrate which comprises of a cellulose acetate substrate [0008] with acetone solvent [0012] which is equivalent to the composition of the first composition of the instant application as supported by page 4, lines 21-23. Thus, the first composition disclosed by Lore will have the same characteristic of softening point as the instant application ).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. See MPEP 2112.01. The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claim 23, the modified Lore teaches the method according to claim 13, wherein said fifth step provides that said at least one portion of said at least one element is dried at low temperatures, by low temperatures being meant temperatures lower than the softening temperature of the first composition of the mixture (Lore, [0008], the solvent is allowed to evaporate, allowing the mixed material of the first substrate and second substrate to become once again fully solid, fixing the two surfaces together. As the substrate fully solidify, the drying temperature must be lower than softening temperature for the solidification to occur).
Regarding Claim 24, the modified Lore teaches the method according to claim 13, wherein said at least one element of glasses frame is included in a list which providing a nose piece, a bridge, an arm of the glasses frame (Lore, Figure 7D and [0097]-[0100]).
Claim(s) 14-15 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over US2017/0176776 (“Lore et al” hereinafter Lore) and US2014/0259271 (“Cox et al” hereinafter Cox) as applied to claim 13 above, and further in view of EP2,896,987 (Zanetto).
Regarding Claim 14, the modified Lore teaches he method according to claim 13, but fails to explicitly teach wherein said at least one solvent is present in the first composition of the mixture in a percentage comprised between 5% and 25% by mass.
While the modified Lore does not explicitly disclose changing the percentage of solvent within the first composition, the change in the percentage of solvent within the first composition is not considered to confer patentability to the claims. Zanetto teaches that it was known in the art at the time of the invention that increasing the percentage of solvent within the first composition will increase dissolution of the cellulose acetate substrate ([0049] and [0053]) and increases size of the substrates ([0060]-[0061]). Therefore the dissolution rate of the cellulose acetate and the size of the substrates are variables that can be modified, among others, by varying percentage of solvent within the first composition. For that reason, the percentage of solvent within the first composition would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the percentage of solvent within the first composition cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the percentage of solvent within the first composition in the method of the modified Lore to achieve the desire dissolution rate of the cellulose acetate substrate and the desire substrate size (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 15, the modified Lore teaches the method according to claim 13, but fails to explicitly teach wherein the percentage of said at least one solvent in the first composition of the acetate mixture is comprised between 10% and 15% by mass.
While the modified Lore does not explicitly disclose changing the percentage of solvent within the first composition, the change in the percentage of solvent within the first composition is not considered to confer patentability to the claims. Zanetto teaches that it was known in the art at the time of the invention that increasing the percentage of solvent within the first composition will increase dissolution of the cellulose acetate substrate ([0049] and [0053]) and increases size of the substrates ([0060]-[0061]). Therefore the dissolution rate of the cellulose acetate and the size of the substrates are variables that can be modified, among others, by varying percentage of solvent within the first composition. For that reason, the percentage of solvent within the first composition would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the percentage of solvent within the first composition cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the percentage of solvent within the first composition in the method of the modified Lore to achieve the desire dissolution rate of the cellulose acetate substrate and the desire substrate size (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 20, the modified Lore teaches the method according to claim 13, Lore teaches the step of maintaining the first substrate and second substrate in contact together can be done by pressing the second substrate onto the first substrate or vice-versa ([0009]) but fails to teach wherein the third step of the method provides for compressing the two sheets to a pressure of less than 3 bar.
However, in the same field of manufacturing frame for glasses using cellulose acetate material with embedded structure (abstract), Zanetto teaches compressing the two sheets to a pressure of less than 3 bar ([0049], the compression step is carried out by applying, on the piece fabric 90 rested on the fixing surface 30', a pressure of at least 2.5 kPa (0.025 bar) and preferably of about 2.8 kPa (0.028 bar)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method as taught by the modified Lore such that it discloses all of the above mentioned limitations as taught by Zanetto to ensure an optimal penetration of sheets and an optimal fixing of the sheets ([0049]). Since the claimed range overlaps or lies inside ranges disclosed by the prior art, a prima facie case of obviousness exists. Please see MPEP 2144.05(I) and In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976) for further details.
Regarding Claim 21, the modified Lore teaches the method according to claim 13, but fails to teach wherein the method further includes a post-production step providing that said at least one portion of said at least one element has a sheet-form is flattened during drying of the fifth step after said sheet had been deformed by the third and fourth step of the method.
However, in the same field of manufacturing frame for glasses using cellulose acetate material with embedded structure (abstract), Zanetto teaches a post-production step providing that said at least one portion of said at least one element has a sheet-form is flattened during drying of the fifth step after said sheet had been deformed by the third and fourth step of the method ([0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method as taught by the modified Lore such that it discloses all of the above mentioned limitations as taught by Zanetto to achieve desired final product for suitable proposes ([0057]).
Regarding Claim 22, the modified Lore teaches the method according to claim 21, wherein said post- production step provides that said at least one portion of said at least one element, once dry, is processed around the encapsulated electronic device to realise the element of the frame (Lore, [0008]-[0009] and [0011]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over US2017/0176776 (“Lore et al” hereinafter Lore) and US2014/0259271 (“Cox et al” hereinafter Cox) as applied to claim 13 above, and further in view of US2024/0031713 (“Taniguchi et al” hereinafter Taniguchi).
Regarding Claim 25, the modified Lore teaches the method according to claim 13, but fails to teach wherein said electronic device is covered with a protective material, before the second step of the method.
However, in the analogous field of embedding electronic device between two sheets of materials, Taniguchi teaches electronic device is covered with a protective material (Figure 6, the speaker 33, which is an electronic device, is covered with an impact absorbing layer 40), before the second step of the method ([0056] and [0065]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modified the method as taught by the modified Lore such that it discloses all of the above mentioned limitations as taught by Taniguchi to protect the electronic device from bending during the compression process ([0070]).
Conclusion
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XINWEN (CINDY) YE
Examiner
Art Unit 1754
/SUSAN D LEONG/Supervisory Patent Examiner, Art Unit 1754
Prosecution Insights