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. 18/703,573 filed on April 22, 2024 is presented for examination by the examiner. The amended claims submitted July 1, 2024 are under consideration. Claims 1-15 are pending.
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 submitted on April 22, 2024 are acceptable for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statement dated April 22, 2024 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending, except where lined through. The entry to Enghofer US 44,479,703 is incorrect and should be Enghofer US 4,479,703. This listing to Enghofer has been included in the attached 892. Also, no copies were provided for the foreign reference Fukushima JP 3213498 and the date of 2027-09-14 should have been 2017-09-14. The examiner has attached the original and a machine translation of this reference and included them on the 892.
Claim Objections
Claim 10 is objected to because of the following informalities: lines 18-19 “of left flexible” should be “of the left flexible” and lines 36-37 “of right flexible” should be “of the right flexible”. Appropriate correction is required.
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 1-15 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 claims 1 and 10, the following choices of wordings are either vague or misleading:
claim: line
phrase
explanation
1: 7-8, 22-23
10: 7-8, 24-25
selectively removably solely, and directly fastened to the intermediate left end
selectively removably solely, and directly fastened to the intermediate right end
It is unclear what “solely” is modifying or means in this limitation. In the specification as filed the distal left/right portion is directly and removably fastened to the intermediate left/right end when in a retracted configuration, where choosing that configuration is selective. However, it is unclear what “solely” is referring to in this context, especially since the distal left/right portion is also coupled to the end of the flexible metallic cable.
1: 9, 24
10: 9, 26
defining an intermediate left opening
defining an intermediate right opening
As currently written this attribute appears as if it belongs to the distal left/right portions, whereas the openings are actually part of the body of the left and right temples. Thus this limitation mischaracterizes the invention.
1: 12-14, 28-30
a left flexible and corrosion resistant metallic cable … the left flexible metallic cable
a right flexible and corrosion resistant metallic cable … the right flexible metallic cable
With the addition of “corrosion resistant” the proper term that would need to be referred to throughout the rest of the claims would be the full terms “left flexible and corrosion resistant metallic cable” and “right flexible and corrosion resistant metallic cable”. The examiner recommends shortening the terms to “left flexible metallic cable” and “right flexible metallic cable” and separately reciting “wherein the left flexible metallic cable is corrosion resistant” and “wherein the right flexible metallic cable is corrosion resistant”. Such a change would also rectify the antecedent basis issues of claims 2 and 3 below.
10: 12-14
a left substantially rigid, flexible, and cylindrical cable freely disposed and movable within the left temple channel in a coaxial configuration, the left flexible corrosion resistant cylindrical cable having the distal left portion coupled to an end thereon, of a substantially rigid material
These limitations raise at least the following issues. First, the term “substantially rigid” in claim 10 is a relative terms which renders the claim indefinite. The term “substantially rigid” 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. In particular, one of ordinary skill in the art can reasonably interpret “flexible” as being flexible enough to wrap around the back of the wearer’s head or neck. However, there is no similar standard to ascertain the requisite degree of stiffness or rigidity to also qualify as “substantially rigid”.
Second, as written it is unclear how many of the modifiers “rigid”, “flexible” and “cylindrical” it is to which “substantially” applies, just “rigid” or all of them.
Third it is unclear what the second instance of “substantially rigid” is modifying, the end of the cable or the distal left portion.
Fourth, the choice of “the left flexible corrosion resistant cylindrical cable” lacks proper antecedent basis, because it omits the modifier “substantially rigid” and adds the modifier “corrosion resistant”.
To overcome all of the above indefiniteness issues the examiner recommends amending this portion of the claim to recite: “a left being corrosion resistant and having the distal left portion coupled to an end of the left flexible cylindrical cable”
10: 30-33
a right flexible corrosion resistant cylindrical cable freely disposed and movable within the right temple channel in a coaxial configuration, the right flexible cylindrical cable having the distal right portion coupled to an end thereon, of a substantially rigid material,
These limitations raise at least the following issues. First, the choice of “the right flexible cylindrical cable” lacks proper antecedent basis, because it omits the modifier “corrosion resistant”.
Second, the term “substantially rigid” in claim 10 is a relative terms which renders the claim indefinite. The term “substantially rigid” 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. In particular, one of ordinary skill in the art can reasonably interpret “flexible” as being flexible enough to wrap around the back of the wearer’s head or neck. However, there is no similar standard to ascertain the requisite degree of stiffness or rigidity to also qualify as “substantially rigid”.
Third it is unclear what “substantially rigid” is modifying, the end of the cable, the entirety of the cable or the distal left portion.
To overcome all of the above indefiniteness issues the examiner recommends amending this portion of the claim as follows: “a right flexible being corrosion resistant, having the distal right portion coupled to an end thereon, of a substantially rigid material,”
Claims 2-9 depend from claim 1 and inherit and do not mitigate the above indefiniteness issues from claim 1.
Claims 11-15 depend from claim 10 and inherit and do not mitigate the above indefiniteness issues from claim 10.
Regarding claims 2 and 3, claims 2 and 3 recite the limitations "the left flexible metallic cable" and “the right flexible metallic cable”. There is insufficient antecedent basis for this limitation in the claim. In particular, claim 1 introduces “left flexible and corrosion resistant cable” and “a right flexible and corrosion resistant cable”. If the applicant adopts the suggested changes to claim 11 above, this will overcome the antecedent basis issue of claims 2 and 3, by making claim 1 consistent therewith.
Regarding claim 11, claim 11 recites the limitations "the left and right flexible cylindrical cables". There is insufficient antecedent basis for this limitation in the claim. In particular, claim 10 introduces “left flexible corrosion resistant cylindrical cable” and “a right flexible corrosion resistant cylindrical cable”. If the applicant adopts the suggested changes to claim 10 above, this will overcome the antecedent basis issue of claim 11, by making claim 10 consistent therewith.
Regarding claim 12, Claim 12 recites the limitations "the left flexible metallic cable" and “the right flexible metallic cable”. There is insufficient antecedent basis for this limitation in the claim. In particular, claim 10 introduces “left flexible corrosion resistant cylindrical cable” and “a right flexible corrosion resistant cylindrical cable” and claim 11 introduces that they are made of a metallic material, but that does not change the term by which the cables are referred to that should be kept consistent. If the applicant adopts the suggested changes to claim 10 above, claim 12 should be amended accordingly to refer to the left flexible cylindrical cable and the right flexible cylindrical cable.
Claim 13 depends from claim 11 and inherits and does not mitigate the above indefiniteness issue from claim 11.
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 1-3, 6-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fulks US 2018/0335640 A1 (cited in an IDS, hereafter Fulks) in view of Yost US 10,268,049 B1 (hereafter Yost).
Regarding claim 1, Fulks teaches “A self-tethering eyeglasses (eyeglass retainer system 100) comprising:
a left rim retaining a lens and a right rim retaining a lens (frame front 102. This frame front either consists of one rim surrounding and supporting a single continuous lens, or comprises left and right rims retaining left and right lenses. This is a genus with only two species. Thus an ordinary skilled artisan would at once envisage the eyeglass retainer system of Fulks being incorporated into either standard option for eyeglasses. Thus Fulks anticipates “a left rim retaining a lens and a right rim retaining a lens”1);
a left temple (left temple 110 of the pair of temples 110):
having a monolithic body (see Fig. 1A, the body of 110 is monolithic with an magnetic holding piece 112 attached thereto) coupled to the left rim (see Fig. 1A and paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and having an intermediate left end (the magnetic holding piece 112 or 112 and end 113);
having a left terminal free end (left magnetic connector 114 is a terminal free end of the arm/cord assembly);
having a distal left portion (left 114) including the left terminal free end (the distal left portion is the left terminal free end), selectively removably solely, and directly fastened to the intermediate left end when in a retracted configuration (compare Figs. 2B and 2C, 114 is selectively removably, solely and directly fastened to 112/113 in the retracted configuration) and defining an intermediate left opening (hole 118), and having a left magnet coupled thereto (one of magnetic connectors 114a or 114b, which are both magnets because they have opposite polarity see paragraph [0024], as opposed to a magnet and a metal); and
defining a left temple channel (channel 120) spanning within the left temple (see Fig. 2B) until terminating at the intermediate left opening (channel 120 terminates at hole 118) and having a left flexible … metallic cable (cord 116 paragraph [0022]: “a retractable cord 116 (which could include: … a metal cable,” which is flexible enough to be received in the channel and to connect behind the wearer’s head, see Fig. 4A) freely disposed and movable within the left temple channel (see Figs. 2B-2C and paragraph [0024]: “in using the retainer system, the cords 116 are pulled out from the channels”), the left flexible metallic cable having the distal left portion coupled to an end thereon (114 is coupled to the distal end of the cord 116, see e.g. Fig. 1A) and having a flange member (stopper 122, which is a flange member in that it is wider than cord 116) coupled thereto (e.g. Fig. 2C and paragraph [0023]: “The distal end 117 of the cord 116… terminates in a stopper 122”) with a flange diameter less than a diameter of the left temple channel (see Fig. 2C 122 fits within 120 and is movable therein and thus has a diameter smaller than the diameter of the channel 120) and greater than a diameter of the intermediate left opening (see Fig. 2C and paragraph [0023]: “a hole 118 that has a smaller diameter than that of the stopper 122”); and
a right temple (right temple 110 of the pair of temples 110):
having a monolithic body (see Fig. 1A, the body of 110 is monolithic with an magnetic holding piece 112 attached thereto) coupled to the right rim (see Fig. 1A and paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and having an intermediate right end (the magnetic holding piece 112 or 112 and end 113);
having a right terminal free end (right magnetic connector 114 is a terminal free end of the arm/cord assembly);
having a distal right portion (right 114) including the right terminal free end (the distal right portion is the left terminal free end), selectively removably, solely, and directly fastened to the intermediate right end when in the retracted configuration (compare Figs. 2B and 2C, 114 is selectively removably, solely and directly fastened to 112/113 in the retracted configuration) and defining an intermediate right opening (hole 118), and having a right magnet coupled thereto (one of magnetic connectors 114a or 114b, which are both magnets because they have opposite polarity see paragraph [0024], as opposed to a magnet and a metal); and operably configured magnetically coupled to the left magnet (see Fig. 3B and paragraph [0024]: “The polarity of magnetic connector 114a is opposite that of magnetic connector 114b to cause them to be held together.”); and
defining a right temple channel (channel 120) spanning within the right temple (see Fig. 2B) until terminating at the intermediate right opening (channel 120 terminates at hole 118) and having a right flexible… metallic cable (cord 116 paragraph [0022]: “a retractable cord 116 (which could include: … a metal cable,” which is flexible enough to be received in the channel and to connect behind the wearer’s head, see Fig. 4A) freely disposed and movable within the right temple channel (see Figs. 2B-2C and paragraph [0024]: “in using the retainer system, the cords 116 are pulled out from the channels”), the right flexible metallic cable having the distal right portion coupled to an end thereon (114 is coupled to the distal end of the cord 116, see e.g. Fig. 1A) and having a flange member (stopper 122, which is a flange member in that it is wider than cord 116) coupled thereto (e.g. Fig. 2C and paragraph [0023]: “The distal end 117 of the cord 116… terminates in a stopper 122”) with a flange diameter less than a diameter of the right temple channel (see Fig. 2C 122 fits within 120 and is movable therein and thus has a diameter smaller than the diameter of the channel 120) and greater than a diameter of the intermediate right opening (see Fig. 2C and paragraph [0023]: “a hole 118 that has a smaller diameter than that of the stopper 122”).”
However, Fulks fails to explicitly teach “a left… corrosion resistant metallic cable” and “a right… corrosion resistant metallic cable”.
Yost teaches a tethering system for eyeglasses.
Yost teaches “a corrosion resistant metallic cable (col. 2 lines 51-54: “In the preferred embodiment the cable 12 is made of stainless steel cable. This makes the cable 12 long-lasting and resistant to corrosion.”).”
Yost further teaches (col. 2 lines 51-62): “In the preferred embodiment the cable 12 is made of stainless steel cable. This makes the cable 12 long-lasting and resistant to corrosion… the cable 12 are made out of materials that will not be affected by weather conditions or an individual's sweat.”
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 stainless steel as taught by Yost as the metal of the metal cable of Fulks so that the cable is long-lasting, resistant to corrosion and will not be affected by weather conditions or an individual's sweat as taught by Yost (col. 2 lines 51-62).
Regarding claim 10, Fulks teaches “A self-tethering eyeglasses (eyeglass retainer system 100) comprising:
a left rim retaining a lens and a right rim retaining a lens (frame front 102. This frame front either consists of one rim surrounding and supporting a single continuous lens, or comprises left and right rims retaining left and right lenses. This is a genus with only two species. Thus an ordinary skilled artisan would at once envisage the eyeglass retainer system of Fulks being incorporated into either standard option for eyeglasses. Thus Fulks anticipates “a left rim retaining a lens and a right rim retaining a lens”2);
a left temple (left temple 110 of the pair of temples 110):
having a monolithic body (see Fig. 1A, the body of 110 is monolithic with an magnetic holding piece 112 attached thereto) coupled to the left rim (see Fig. 1A and paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and having an intermediate left end (the magnetic holding piece 112 or 112 and end 113);
having a left terminal free end (left magnetic connector 114 is a terminal free end of the arm/cord assembly);
having a distal left portion (left 114) including the left terminal free end (the distal left portion is the left terminal free end), selectively removably solely, and directly fastened to the intermediate left end when in a retracted configuration (compare Figs. 2B and 2C, 114 is selectively removably, solely and directly fastened to 112/113 in the retracted configuration) and defining an intermediate left opening (hole 118), and having a left magnet coupled thereto (one of magnetic connectors 114a or 114b, which are both magnets because they have opposite polarity see paragraph [0024], as opposed to a magnet and a metal); and
defining a left temple channel (channel 120) spanning within the left temple (see Fig. 2B) until terminating at the intermediate left opening (channel 120 terminates at hole 118) and having a left… flexible… and cylindrical cable (cord 116 which is flexible enough to be received in the channel and to connect behind the wearer’s head, see Fig. 4A and is cylindrical at least in the sense that it is a cord and thus generally cylindrical in shape. Note that the claim does not require any particular cross-sectional shape, and thus “cylindrical” would reasonably be interpreted as including cross-sectional shapes that are not strictly circular, such as elliptical, rectangular or a spiralling cable.) freely disposed and movable within the left temple channel (see Figs. 2B-2C and paragraph [0024]: “in using the retainer system, the cords 116 are pulled out from the channels”) in a coaxial configuration (see Figs. 2B-2C), the left flexible… cylindrical cable having the distal left portion coupled to an end thereon (114 is coupled to the distal end of the cord 116, see e.g. Fig. 1A) of a substantially rigid material (114 is a magnet and thus substantially rigid) and having a flange member (stopper 122, which is a flange member in that it is wider than cord 116) coupled thereto (e.g. Fig. 2C and paragraph [0023]: “The distal end 117 of the cord 116… terminates in a stopper 122”) with a flange diameter less than a diameter of the left temple channel (see Fig. 2C 122 fits within 120 and is movable therein and thus has a diameter smaller than the diameter of the channel 120) and greater than a diameter of the intermediate left opening (see Fig. 2C and paragraph [0023]: “a hole 118 that has a smaller diameter than that of the stopper 122”), and operably configured to restrict longitudinal movement of left flexible cylindrical cable when reaching the intermediate left end (paragraph [0023]: “so that the cord 116 is prevented from fully exiting the channel 120”); and
a right temple (right temple 110 of the pair of temples 110):
having a monolithic body (see Fig. 1A, the body of 110 is monolithic with an magnetic holding piece 112 attached thereto) coupled to the right rim (see Fig. 1A and paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and having an intermediate right end (the magnetic holding piece 112 or 112 and end 113);
having a right terminal free end (right magnetic connector 114 is a terminal free end of the arm/cord assembly);
having a distal right portion (right 114) including the right terminal free end (the distal right portion is the left terminal free end), selectively removably, solely, and directly fastened to the intermediate right end when in the retracted configuration (compare Figs. 2B and 2C, 114 is selectively removably, solely and directly fastened to 112/113 in the retracted configuration) and defining an intermediate right opening (hole 118), and having a right magnet coupled thereto (one of magnetic connectors 114a or 114b, which are both magnets because they have opposite polarity see paragraph [0024], as opposed to a magnet and a metal); and operably configured magnetically coupled to the left magnet (see Fig. 3B and paragraph [0024]: “The polarity of magnetic connector 114a is opposite that of magnetic connector 114b to cause them to be held together.”); and
defining a right temple channel (channel 120) spanning within the right temple (see Fig. 2B) until terminating at the intermediate right opening (channel 120 terminates at hole 118) and having a right flexible… and cylindrical cable (cord 116 which is flexible enough to be received in the channel and to connect behind the wearer’s head, see Fig. 4A and is cylindrical at least in the sense that it is a cord and thus generally cylindrical in shape. Note that the claim does not require any particular cross-sectional shape, and thus “cylindrical” would reasonably be interpreted as including cross-sectional shapes that are not strictly circular, such as elliptical, rectangular or a spiralling cable.) freely disposed and movable within the right temple channel (see Figs. 2B-2C and paragraph [0024]: “in using the retainer system, the cords 116 are pulled out from the channels”) in a coaxial configuration (see Figs. 2B-2C), the right flexible metallic cable having the distal right portion coupled to an end thereon (114 is coupled to the distal end of the cord 116, see e.g. Fig. 1A) of a substantially rigid material (114 is a magnet and thus substantially rigid) and having a flange member (stopper 122, which is a flange member in that it is wider than cord 116) coupled thereto (e.g. Fig. 2C and paragraph [0023]: “The distal end 117 of the cord 116… terminates in a stopper 122”) with a flange diameter less than a diameter of the right temple channel (see Fig. 2C 122 fits within 120 and is movable therein and thus has a diameter smaller than the diameter of the channel 120) and greater than a diameter of the intermediate right opening (see Fig. 2C and paragraph [0023]: “a hole 118 that has a smaller diameter than that of the stopper 122”), and operably configured to restrict longitudinal movement of left flexible cylindrical cable when reaching the intermediate left end (paragraph [0023]: “so that the cord 116 is prevented from fully exiting the channel 120”).”
However, Fulks fails to explicitly teach “a left substantially rigid… cable”, “the left… corrosion resistant… cable” and “a right… corrosion resistant… cable”.
Yost teaches a tethering system for eyeglasses.
Yost teaches a substantially rigid, corrosion resistant cable (col. 2 lines 51-54: “In the preferred embodiment the cable 12 is made of stainless steel cable. This makes the cable 12 long-lasting and resistant to corrosion. It also produces a cable 12 of sufficient stiffness that when bent will return to its original configuration.”).”
Yost further teaches (col. 2 lines 51-62): “In the preferred embodiment the cable 12 is made of stainless steel cable. This makes the cable 12 long-lasting and resistant to corrosion… the cable 12 are made out of materials that will not be affected by weather conditions or an individual's sweat.”
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 stainless steel as taught by Yost as the metal of the metal cable of Fulks so that the cable is long-lasting, resistant to corrosion and will not be affected by weather conditions or an individual's sweat as taught by Yost (col. 2 lines 51-62).
Yost further teaches (col. 1 lines 40-45): “An individual who is participating in physical activity will need a retainer that will not get tangled in one's collar, shirt, or buttons. To achieve this goal applicant has used a stainless steel cable that is able to retain its shape. Thus, since the cable resist deflection it will not get tangled in clothing.”
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the stainless steel cable of the Fulks-Yost combination substantially rigid as taught by Yost so that the cable will not get tangled in clothing as taught by Yost (col. 1 lines 40-45).
Regarding claim 2, the Fulks – Yost combination teaches “The self-tethering eyeglasses according to claim 1,” and Fulks further teaches “wherein:
the left flexible metallic cable is coaxially disposed within the left temple channel (see Figs. 2B and 2C) and the right flexible metallic cable is coaxially disposed within the right temple channel (see Figs. 2B and 2C).”
Regarding claim 11, the Fulks – Yost combination teaches “The self-tethering eyeglasses according to claim 10, wherein: the left and right flexible cylindrical cables are of a metallic material (the modification introduced for claim 10 above selected stainless steel as taught by Yost as the metal of the metal cord of Fulks.).”
Regarding claims 3, 8 and 12, the Fulks – Yost combination teaches the self-tethering eyeglasses according to claims 1, 2 and 11, and Fulks further teaches “wherein:
the left flexible metallic cable having the flange member (stopper 122) coupled thereto disposed at a proximal terminal end (end 117 which is the proximal terminal end in that it is the terminal end closest to the front frame 102) that is opposite the end with the distal left portion coupled thereto (end 117 is opposite the end with connector 114) and with the right flexible metallic cable having the flange member (stopper 122) coupled thereto disposed at a proximal terminal end (end 117 which is the proximal terminal end in that it is the terminal end closest to the front frame 102) that is opposite the end with the distal right portion coupled thereto (end 117 is opposite the end with connector 114).”
Regarding claims 6 and 14, the Fulks – Yost combination teaches the self-tethering eyeglasses according to claims 1 and 10, and Fulks further teaches “wherein:
the intermediate left opening (hole 118) is enclosed by the intermediate left end (see Fig. 2C hole 118 is enclosed by piece 112) and the intermediate right opening (hole 118) is enclosed by the intermediate right end (see Fig. 2C hole 118 is enclosed by piece 112).”
Regarding claims 7 and 15, the Fulks – Yost combination teaches the self-tethering eyeglasses according to claims 1 and 10, and Fulks further teaches “wherein:
the distal left portion includes a planar surface with the left magnet disposed thereon (see planar contacting surfaces of 114a and 114b in Fig. 3B. The magnet element of 114a and b is disposed on the planar contacting surface in that these planar surfaces are attracted to one another) and the distal right portion includes a planar surface with the right magnet disposed thereon (see planar contacting surfaces of 114a and 114b in Fig. 3B. The magnet element of 114a and b is disposed on the planar contacting surface in that these planar surfaces are attracted to one another).”
Regarding claim 9, the Fulks – Yost combination teaches “The self-tethering eyeglasses according to claim 1,” and Fulks further teaches “wherein:
the distal left and right portions are each operably configured to be selectively and independently extended from the respective left and right temples (paragraph [0024]: “in using the retainer system, the cords 116 are pulled out from the channels defined by each temple member”. This extendibility is both selective, because the user does not have to perform it, and is independent because there is no connection between the left and right tethers until they are magnetically attached) on a tether translation path (the path which the tether follows when extending from the position in Fig. 2B to the position in Fig. 2C) until the flange member of the flexible metallic cable reaches the respective intermediate left and right openings (see stopper 122 reaching the opening 118 in Fig. 2C).”
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fulks US 2018/0335640 A1 (cited in an IDS, hereafter Fulks) in view of Yost US 10,268,049 B1 (hereafter Yost) as applied to claim 1 above, and further in view of Levy et al. FR 2953106 A1 (hereafter Levy where reference will be made to the attached machine translation).
Regarding claim 4, the Fulks – Yost combination teaches “The self-tethering eyeglasses according to claim 1,” however, Fulks and Yost fail to explicitly teach “wherein:
the left and right flexible metallic cables are of a braided material.”
Levy teaches a necklace for anchoring spectacles wherein the flexible metallic cable is of a braided material (page 5, fourth paragraph: “the chain may be of continuous homogeneous appearance, especially in the case of a textile material link of leather or fabric, or a braided or woven metal.”).”
It is a well-established proposition that aesthetic design changes are within ordinary skill, see MPEP §2144.04(I): In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose to braid the flexible metallic corrosion-resistant cable of the Fulks-Yost combination as taught by Levy because Levy teaches that a braided metal chain provides a continuous homogeneous appearance if desired (Levy page 5, fourth paragraph) and since it has been held that aesthetic design changes are within ordinary skill, see MPEP §2144.04(I): In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (Claim was directed to an advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up which was adapted to fit over and cover the neck of the bottle, wherein the hollow member and the bottle together give the impression of a human body. Appellant argued that certain limitations in the upper part of the body, including the arrangement of the arms, were not taught by the prior art. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.).
Claims 5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Fulks US 2018/0335640 A1 (cited in an IDS, hereafter Fulks) in view of Yost US 10,268,049 B1 (hereafter Yost) as applied to claims 1 and 11 above, and further in view of Skuro US 2007/0236654 A1 (hereafter Skuro).
Regarding claims 5 and 13, the Fulks – Yost combination teaches the self-tethering eyeglasses according to claims 1 and 11, and Fulks further teaches “further comprising:
a proximal end of the left temple hingedly coupled to the left rim (paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and a left temple length separating the proximal end of the left temple and the intermediate left end (111 and 113 are separated by the length of the temple),… and
a proximal end of the right temple hingedly coupled to the right rim (paragraph [0022]: “Each temple 110 has a first end 111 hingedly secured to the frame front 102”) and a right temple length separating the proximal end of the right temple and the intermediate left end (111 and 113 are separated by the length of the temple).”
However, Fulks fails to explicitly teach “wherein the left temple channel is at least 95% of the left temple length… wherein the right temple channel is at least 95% of the right temple length.”
However, Fulks does teach (paragraph [0028]): “The cords can be offered in multiple sizes to accommodate the preferences of different users. For example, some users might prefer a 10″ cord length, others might prefer a 12″ cord length, while others might prefer a 14″ cord length.”
Additionally, Fulks schematically depicts the temple channel length as over 90% of the temple length, see annotated version of Fig. 2A below, where the temple length is (0.65+1.66+0.17) and the channel length is (0.65+1.66), i.e. 93% of the temple length.
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Skuro teaches self-tethering eyeglasses (eyewear of Fig. 9 with tether design of Figs. 5-7), “wherein the left temple channel is at least 95% of the left temple length… wherein the right temple channel is at least 95% of the right temple length (In Figs. 5-7 the passageway extends the entire length of the temple, see also claim 1 “said passageway extending substantially the length of said temple”).”
It is a well-established proposition that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV).
The instant claims and the prior art differ by the recitation of a relative dimension, the channel length being at least 95% of the temple length. The prior art and the instant claim do not perform differently from one another.
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the relative dimension of the channel length to the temple length to be at least 95% as taught by Skuro who teaches that they should be substantially the same length, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), see MPEP 2114.04(IV). Furthermore, one of ordinary skill in the art would have a reasonable expectation of success when making this modification because Fulks already shows this relative dimension being as much as 93% which is so close that one of ordinary skill in the art would have expected them to have the same properties.
Additionally, one of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make such a choice in order to contain a tether of a desirable length as taught by Fulks (paragraph [0028]) while retaining a homogeneous appearance of the cord.
Conclusion
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/CARA E RAKOWSKI/ Primary Examiner, Art Unit 2872
1 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).
2 See MPEP § 2131.02(III). A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)).