DETAILED ACTION
This office action is in response to the RCE filed December 23, 2025 in which claims 1-17 and 19-21 are presented for examination and claim 18 is canceled.
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 .
Response to Arguments
Applicant’s First Argument: Current amendments to claims 1 and 11 are fully supported by the specification and drawings as originally filed.
Examiner’s Response: Examine respectfully disagrees. Current amendments to claims 1 and 11 have resulted in a rejection under 35 USC 112(a) for new matter (see below).
Applicant’s Second Argument: Rejection of claims 1-20 under 35 USC 112(b) should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: Agreed. The rejection is withdrawn.
Applicant’s Third Argument: Rejection of independent claim 1 under 35 USC 102 over USPN 10,576,333 Chiang should be withdrawn at least because Chiang does not teach, suggest, or disclose “a first edge and a second edge disposed opposite the first edge, wherein the first edge is adjacent to the first eyepiece..., a plurality of recesses disposed in the outer radial surface and extending from the first edge of the gasket to the second edge of the gasket” as recited by currently amended claim 1.
Examiner’s Response: Examiner respectfully disagrees. As depicted in annotated Figure 5 of Chiang (see annotated Figure 5 of Chiang, below), it is respectfully asserted that the plurality of recesses (701) of Chiang extend from a first edge of the gasket (annotated Figure 5) to a second edge of the gasket (annotated Figure 5). It is respectfully noted that claim 1 does not recite, for example, that the second edge of the gasket is a distalmost edge of the gasket. The rejection is maintained albeit on an updated basis in view of current amendments to claim 1.
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Applicant’s Fourth Argument: Rejection of independent claim 1 under 35 USC 103 over USPN D885,473 Johnson et al. in view of Chiang should be withdrawn at least because Chiang in view of Johnson fails to teach, suggest, or disclose “a first edge and a second edge disposed opposite the first edge, wherein the first edge is adjacent to the first eyepiece..., a plurality of recesses disposed in the outer radial surface and extending from the first edge of the gasket to the second edge of the gasket” as recited by currently amended claim 1.
Examiner’s Response: Applicant’s arguments are moot because claim 1 is not rejected under 35 USC 103 over Johnson in view of Chiang in the instant office action.
Applicant’s Fifth Argument: Rejection of independent claim 11 under 35 USC 102 over Chiang should be withdrawn at least because Chiang does not teach, suggest, or disclose “a plurality of recesses disposed in the outer radial surface, the plurality of recesses extending circumferentially around the gasket and extending entirely along a posterior-anterior length of the gasket from the first end to the second end” as recited by currently amended claim 11.
Examiner’s Response: Applicant’s arguments are moot because claim 11 is not rejected under 35 USC 102 over Chiang in the instant office action.
Applicant’s Sixth Argument: Rejection of independent claim 11 under 35 USC 103 over Johnson in view of Chiang should be withdrawn at least because Chiang in view of Johnson fails to teach, suggest, or disclose “a plurality of recesses disposed in the outer radial surface, the plurality of recesses extending circumferentially around the gasket and extending entirely along a posterior-anterior length of the gasket from the first end to the second end” as recited by currently amended claim 11.
Examiner’s Response: Applicant’s arguments are moot because claim 11 is not rejected under 35 USC 103 over Johnson in view of Chiang in the instant office action.
Specification
The disclosure is objected to because of the following minor informalities: Line 3 of paragraph 0033 of the specification recites “second edge 186b,” which upon information and belief should be amended to recite “second edge 18b.”
Appropriate correction is required.
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 “plurality of recesses … extending from the first edge of the gasket to the second edge of the gasket” as recited by currently amended claim 1 must be shown or the feature(s) canceled from the claim(s). It is respectfully asserted that Figure 5 of the instant application as filed September 24, 2025 depicts the plurality of recesses (604) extending between the first edge (18a) and the second edge (18b) but not from the first edge (18a) to the second edge (18b) (see Figure 5 depicting first and second edges 18a,18b not including any recesses 604 and at least paragraph 0031 of the specification which recites in relevant part that the “plurality of recesses 604 are disposed between the first edge 18a and the second edge 186b”). No new matter should be entered.
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 “plurality of recesses … extending entirely along a posterior-anterior length of the gasket from the first end to the second end” as recited by currently amended claim 11 must be shown or the feature(s) canceled from the claim(s). It is respectfully asserted that Figure 5 of the instant application as filed September 24, 2025 depicts the plurality of recesses (604) extending along the posterior-anterior length of the gasket between the first end and the second end but not extending entirely along the posterior-anterior length of the gasket from the first end to the second end (see Figure 5 depicting recesses extending for less than an entirety of the posterior-anterior length of the gasket and at least paragraph 0063 of the specification which recites that “the plurality of recesses extend along 30-90% of a posterior-anterior length of the gasket”). 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 Objections
Claim 21 objected to because of the following informalities: Line 3 of claim 21 recites "bewteen," which should be amended to recite "between."
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-17 and 19-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “a plurality of recesses disposed in the outer radial surface and extending from the first edge of the gasket to the second edge of the gasket.” This limitation constitutes new matter because it was not present in the disclosure as originally filed. It is respectfully asserted that the disclosure as originally filed would provide support for a limitation that recited, for example, “a plurality of recesses disposed in the outer radial surface and extending between the first edge of the gasket and the second edge of the gasket” but not the limitation as recited by currently amended claim 1 that the plurality of recesses extends from the first edge of the gasket to the second edge. See for example Figure 5 of the instant application depicting first and second edges 18a,18b not including any recesses 604. See additionally paragraph 0031 of the specification which recites in relevant part that the “plurality of recesses 604 are disposed between the first edge 18a and the second edge 186b” and paragraph 0036 of the specification which recites in relevant part that “the plurality of recesses 604 are arranged in six rows between the first edge 18a and the second edge 18b.”
Claim 11 recites the limitation that the plurality of recesses extend “entirely along a posterior-anterior length of the gasket from the first end to the second end.” This limitation constitutes new matter because it was not present in the disclosure as originally filed. It is respectfully asserted that the disclosure as originally filed would provide support for a limitation that recited, for example, “the plurality of recesses extending along 30-90% of a posterior-anterior length of the gasket from the first end to the second end” but not the limitation as recited by currently amended claim 11 that the plurality of recesses extend entirely along a posterior-anterior length of the gasket from the first end to the second end. See for example paragraph 0063 of the specification which recites that “the plurality of recesses extend along 30-90% of a posterior-anterior length of the gasket.”
Dependent claims are rejected at least for depending from a rejected claim.
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.
Claims 1-2, 5-6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPN 10,576,333 Chiang.
To claim 1, Chiang discloses swim goggles (1) (see Figures 1-8C; col. 4, line 7 – col. 7, line 53) comprising:
a first eyepiece (30) (see Figures 1-4; col. 4, lines 7-32); and
a gasket (7,41) coupled to the first eyepiece (see Figures 1-5 and 8A-8C; col. 4, lines 7-32), the gasket including:
a first edge and a second edge disposed opposite the first edge, wherein the first edge is adjacent to the first eyepiece (annotated Figure 5, see below; col. 5, lines 9-43);
an outer radial surface extending along a periphery of the first eyepiece (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43; the outer radial surface of gasket 7,41 is the outermost surface of circular body 411 in areas of gasket 7,41 where portion 7 of gasket 7,41 is absent or the outermost surface of portion 7 of gasket 7,41 where portion 7 of gasket 7,41 is present); and
a plurality of recesses (701) disposed in the outer radial surface and extending from the first edge to the second edge of the gasket (annotated Figure 5; col. 5, lines 9-43), the plurality of recesses extending circumferentially around the gasket (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43), wherein the plurality of recesses are recessed relative to the outer radial surface such that the outer radial surface has a first thickness and each recess has a second thickness different from the first thickness (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43; recesses 701 are recessed into the outer radial surface of portion 7 of gasket 7,41 resulting in a decreased second thickness at least relative to portions of gasket 7,41 that include portion 7 but do not include recesses 701; it is respectfully noted that the second thickness would nevertheless be a non-zero value, i.e., recesses that are blind-holes rather than thru-holes, because goggles 1 of Chiang are disclosed as “swimming” goggles, and a gasket with recesses that were thru-holes would frustrate the functioning of the “swimming” goggles by allowing the ingress of water into the goggles and the eyes of a wearer);
wherein the plurality of recesses are substantially diamond shaped (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43; it is respectfully noted that the term “substantially” is very broad, Chiang discloses that recesses 701 can include a variety of different shapes, and the instant specification indicates that “recesses 604 may include any shape…” indicating a lack of criticality for the substantially diamond shape).
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To claim 2, Chiang further discloses goggles wherein each recess includes a width and a length, wherein the length is larger than the width, and the length extends in the circumferential direction of the gasket (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43).
To claim 5, Chiang further discloses goggles wherein the plurality of recesses are arranged in adjacent circumferential rows (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43).
To claim 6, Chiang further discloses goggles wherein a width of a given recess is offset from any width of a recess in a directly adjacent circumferential row (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43).
To claim 10, Chiang further discloses goggles wherein the plurality of circumferential rows includes two to six rows (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43).
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.
Claims 3-4 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over 10,576,333 Chiang.
To claim 3, Chiang further discloses goggles wherein the width appears to be similar to the width as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
Chiang does not explicitly disclose goggles wherein the width is between .01 mm and 15 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the goggles of Chiang such that the width is between .01 mm and 15 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 4, Chiang further discloses goggles wherein the width appears to be similar to the width as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
Chiang does not explicitly disclose goggles wherein the width is between 1 mm and 3 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the goggles of Chiang such that the width is between 1 mm and 3 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 7, Chiang further discloses goggles wherein a space between circumferentially adjacent recesses of the plurality of recesses appears to be similar to the space as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
Chiang does not explicitly disclose goggles wherein a space between circumferentially adjacent recesses of the plurality of recesses is between .001 mm and 3 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the goggles of Chiang such that a space between circumferentially adjacent recesses of the plurality of recesses is between .001 mm and 3 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 8, Chiang further discloses goggles wherein the plurality of recesses appears to extend along 30-90% of a posterior-anterior length of the gasket (see especially Figures 1, 2, 4-5, 8A-8C).
Chiang does not explicitly disclose goggles wherein the plurality of recesses extends along 30-90% of a posterior-anterior length of the gasket.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the goggles of Chiang such that the plurality of recesses extends along 30-90% of a posterior-anterior length of the gasket as a matter of routine optimization. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over 10,576,333 Chiang in view of USPN 9,770,628 Shuie.
To claim 9, Chiang discloses goggles as recited in claim 1, above.
Chiang is silent as to the material of the gasket.
However, Shiue teaches swim goggles (1) (see Figures 1-5; col. 2, line 22 – col. 4, line 11) comprising a gasket (30) (see Figures 1-5), wherein the gasket includes a thermoplastic rubber (col. 2, lines 54-61).
Chiang and Shiue teach analogous inventions in the field of swim goggles. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gasket of Chiang to include a thermoplastic rubber as taught by Shiue because Shiue teaches that this configuration is known in the art and serves as an appropriate material for the gasket of swim goggles (col. 2, lines 54-61). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
Claims 11-17 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over 10,576,333 Chiang in view of D885,473 Johnson et al.
To claim 11, Chiang discloses a gasket (7,41) (see Figures 1-5 and 8A-8C; col. 4, lines 7-32) for swim goggles (1) (see Figures 1-8C; col. 4, line 7 – col. 7, line 53), the gasket comprising:
a first end configured to be positioned adjacent a nose of a wearer of the swim goggles (annotated Figure 5, see above; col. 5, lines 9-43);
a second end disposed opposite the first end and configured to be positioned adjacent a temple of the wearer of the swim goggles (annotated Figure 5; col. 5, lines 9-43);
an outer radial surface extending along a periphery of the gasket between the first end and the second end (annotated Figure 5; col. 5, lines 9-43; the outer radial surface of gasket 7,41 is the outermost surface of circular body 411 in areas of gasket 7,41 where portion 7 of gasket 7,41 is absent or the outermost surface of portion 7 of gasket 7,41 where portion 7 of gasket 7,41 is present); and
a plurality of recesses (701) disposed in the outer radial surface, the plurality of recesses extending circumferentially around the gasket (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43) and extending along a posterior-anterior length of the gasket between from first end toward the second end (annotated Figure 5; col. 5, lines 9-43), wherein widths of a first group of the plurality of recesses at the first end of the gasket are less than widths of a second group of the plurality of recesses at the second end of the gasket (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43; the geometric shape of recesses 701 is disclosed as subject to “structural deformation” under external impact; as such, inasmuch as currently claimed, gasket 7,41 of swim goggles 1 is capable of being manipulated/stretched into a configuration wherein widths of a first group of the recesses are less than widths of a second group of the recesses; it is respectfully noted that claim 11 does not recite, for example, that the relative widths are present when the gasket is in an “at rest” or “unloaded condition”);
wherein the recesses of the plurality of recesses are substantially diamond shaped (see especially Figures 1, 2, 4-5, 8A-8C; col. 5, lines 9-43; it is respectfully noted that the term “substantially” is very broad, Chiang discloses that recesses 701 can include a variety of different shapes, and the instant specification indicates that “recesses 604 may include any shape…” indicating a lack of criticality for the substantially diamond shape).
Chiang does not expressly disclose a gasket wherein the plurality of recesses extend along the posterior-anterior length to the second end.
However, Johnson teaches a gasket (see Figures 1-5) for swim goggles (see Figures 1-5; claim), the gasket comprising: a first end configured to be positioned adjacent a nose of a wearer of the swim goggles (see especially Figures 1 and 5); a second end disposed opposite the first end and configured to be positioned adjacent a temple of the wearer of the swim goggles (see especially Figures 1 and 5); an outer radial surface extending along a periphery of the gasket between the first end and the second end (see especially Figures 1 and 5); and a plurality of recesses disposed in the outer radial surface, the plurality of recesses extending circumferentially around the gasket and extending along a posterior-anterior length of the gasket to the second end (see especially Figures 1 and 5).
Chiang and Johnson teach analogous inventions in the field of swim goggles. Therefore, 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 gasket of Chiang such that the plurality of recesses extend along a posterior-anterior length of the gasket to the second end as taught by Johnson because Johnson teaches that this configuration is known in the art and provides an ornamental design. It would further have been obvious to one of ordinary skill that recesses extending to the second end of the gasket would increase the flexibility and reduce the stiffness of the second end of the gasket, which would provide a softer surface against the face of a wearer.
To claim 12, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein each recess includes a width and a length, wherein the length is larger than the width, and the length extends in the circumferential direction of the gasket (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang).
To claim 13, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein the width appears to be similar to the width as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
The modified invention of Chiang does not explicitly teach a gasket wherein the width is between .01 mm and 15 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gasket of the modified invention of Chiang such that the width is between .01 mm and 15 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 14, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein the width appears to be similar to the width as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
The modified invention of Chiang does not explicitly teach a gasket wherein the width is between 1 mm and 3 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gasket of the modified invention of Chiang such that the width is between 1 mm and 3 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 15, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein the plurality of recesses are arranged in adjacent circumferential rows (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang).
To claim 16, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein a width of a given recess is offset from any width of a recess in a directly adjacent circumferential row (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang).
To claim 17, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein a space between circumferentially adjacent recesses of the plurality of recesses appears to be similar to the space as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application).
The modified invention of Chiang does not explicitly teach a gasket wherein a space between circumferentially adjacent recesses of the plurality of recesses is between .001 mm and 3 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gasket of the modified invention of Chiang such that a space between circumferentially adjacent recesses of the plurality of recesses is between .001 mm and 3 mm as a matter of routine optimization in view of the size of a typical swim goggle gasket. It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
To claim 20, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein the plurality of circumferential rows includes two to six rows (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang).
To claim 21, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) further teaches a gasket wherein the width of the recesses appears to be similar to the width as depicted in the drawings of the instant application (see especially Figures 1, 2, 4-5, 8A-8C and col. 5, lines 9-43 of Chiang and Figures 5-6 of the instant application) and wherein the geometric shape of the recesses is subject to “structural deformation” under external impact (col. 5, lines 9-43 of Chiang; as such, inasmuch as currently claimed, gasket 7,41 of Chiang is capable of being manipulated/stretched into a configuration wherein widths of a first group of the recesses are less than widths of a second group of the recesses; it is respectfully noted that claim 21 does not recite, for example, that the relative widths are present when the gasket is in an “at rest” or “unloaded condition”).
The modified invention of Chiang does not expressly teach a gasket wherein the first group of the plurality of recesses have a width between 1 and 1.5 mm and the second group of the plurality of recesses have a width between 1.5 and 2 mm.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the recesses of the modified invention of Chiang to have a width of between 1 and 1.5 mm and/or between 1.5 and 2 mm as a matter of routine optimization and further that the recesses of the modified invention of Chiang would be capable of being manipulated/stretched into a configuration wherein widths of a first group of the recesses are less than widths of a second group of the recesses because claim 21 does not recite, for example, that the relative widths are present when the gasket is in an “at rest” or “unloaded condition.” It is further respectfully noted that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art (see MPEP 2144.05).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over 10,576,333 Chiang in view of D885,473 Johnson et al., and in further view of USPN 9,770,628 Shuie.
To claim 19, the modified invention of Chiang (i.e., Chiang in view of Johnson, as detailed above) teaches a gasket as recited in claim 11, above.
The modified invention of Chiang is silent as to the material of the gasket.
However, Shiue teaches a gasket (30) (see Figures 1-5), wherein the gasket includes a thermoplastic rubber (col. 2, lines 54-61).
The modified invention of Chiang and Shiue teach analogous inventions in the field of swim goggles. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the gasket of the modified invention of Chiang to include a thermoplastic rubber as taught by Shiue because Shiue teaches that this configuration is known in the art and serves as an appropriate material for the gasket of swim goggles (col. 2, lines 54-61). It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa Tompkins can be reached at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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