DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-7 are currently pending.
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 right side of the left contact portion and the left side of the right contact portion are integrally connected” of claim 5 must be shown or the feature(s) canceled from the claim(s). The reason this is not considered shown in the drawings is because claim 5 depends from claim 1 (through claim 2), and claim 1 recites “one side of the eye contact layer is flat, the other side is concave, and the side edge is a convex periocular contact surface” and “the periocular contact surface comprises a left contact portion and a right contact portion that are symmetrically arranged.” Therefore, the claim 1 embodiment is considered shown in figs. 1 and 3. However, there is no drawing to show these elements of claim 1 combined with the structure recited claimed in claim 5 because they are diverging subject matter. Appropriate correction is required. No new matter should be entered. Also see the related rejection under 35 USC § 112(b) below.
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
Claims 1-7 are objected to because of the following informalities:
Claim 1, line 5, recites “the length.” It is suggested the claim is rephrased to recite “a length” for establishing antecedent basis for the term.
Claim 1, lines 5-6 recites “one side of the eye contact layer is flat.” It is suggested the claim is rephrased to recite “a flat side of the eye contact layer” since “the flat side of the eye contact layer” is later provided and more clearly describes the element.
Claim 1, line 6, recites “the other side.” It is suggested the claim is rephrased to recite “an other side” for establishing antecedent basis for the term.
Claim 1, line 7, recites “the side edge.” It is suggested the claim is rephrased to recite “a side edge” for establishing antecedent basis for the term.
Claim 1, line 8, recites “the back of the surface protective layer.” It is suggested the claim is rephrased to recite “a back of the surface protective layer” for establishing antecedent basis for the term.
Claim 1, line 9, recites “the periocular contact surface.” It is suggested the claim is rephrased to recite “the convex periocular contact surface” for consistency with “a convex periocular contact surface” already recited.
Claim 1, line 11, recites “the left end side edge.” It is suggested the claim is rephrased to recite “a left end side edge” for establishing antecedent basis for the term.
Claim 1, line 12, recites “the right end side edge.” It is suggested the claim is rephrased to recite “a right end side edge” for establishing antecedent basis for the term.
Claim 2, line 3, recites “the surface.” It is suggested the claim is rephrased to recite “a surface” for establishing antecedent basis for the term.
Claim 2, line 4, recites “the interior.” It is suggested the claim is rephrased to recite “an interior” for establishing antecedent basis for the term.
Claim 3, line 3, recite “designed as.” It is suggested this recitation is removed since the apparatus claim should be what invention is rather than what the components are designed for, and removing the phrase still maintains that the left and right contact portions are independent individual elements.
Claim 4, line 2, recites “the right end side of the left contact portion.” It is suggested the claim is rephrased to recite “a right end side of the left contact portion” for establishing antecedent basis for the term.
Claim 4, line 3, recites “the left end side of the right contact portion.” It is suggested the claim is rephrased to recite “a left end side of the right contact portion” for establishing antecedent basis for the term.
Claim 5, lines 4-5 recites “the recessed parts.” It is suggested the claim is rephrased to recite “recessed parts” for establishing antecedent basis for the term.
Claim 6, line 6, recites “the other end.” It is suggested the claim is rephrased to recite “an other end” for establishing antecedent basis for the term.
Claim 6, line 8, recites “the other end.” It is suggested the claim is rephrased to recite “an other end” for establishing antecedent basis for the term.
Claim 7, line 3, recites “the lower side.” It is suggested the claim is rephrased to recite “a lower side” for establishing antecedent basis for the term.
Claim 7, line 4, recites “a concave arc that avoids the dorsum of the nose.” It is suggested the claim is rephrased to recite “a concave arc that is configured to avoid the dorsum of the nose” for purposes of clearly establishing the function of the arc.
Claims depending from claims objected to under this section are similarly objected to for their dependence on a claim objected to under this section.
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.
Claim 2-5 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.
Claims 2 and 3 contains the trademark/trade name “Velcro.” Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is presumingly used to identify/describe hook and loop fasteners and, accordingly, the identification/description is indefinite.
Claim 2 contains the trademark/trade name Lycra. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is presumingly used to identify/describe an elastic or spandex fabric and, accordingly, the identification/description is indefinite.
The term “highly” in claim 2 is a relative term which renders the claim indefinite. The term “highly” 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. The specification does not provide any quantitative metrics, standards, or testing to evaluate what qualifies “highly” elastic and what is not considered “highly elastic.” Without guidance or a definition, a person of ordinary skill in the art would be unable to determine the scope of the claim with reasonably certainty, and whether a competing sponge infringes or doesn’t infringe.
Claim 5 recites “the right side of the left contact portion and the left side of the right contact portion are integrally connected.” However, claim 1, from which claim 5 depend from, through claim 2, recites “one side of the eye contact layer is flat, the other side is concave, and the side edge is a convex periocular contact surface” and “the periocular contact surface comprises a left contact portion and a right contact portion that are symmetrically arranged.” Therefore, the claim 1 embodiment cannot also comprise integrally connected “the right side of the left contact portion and the left side of the right contact portion” because the concave and convex nature of “the other side” and “the side edge” described in claim 1 mean these curving and symmetrical inner surfaces cannot reasonably be considered integrally connected. Therefore, a person of ordinary skill in the art would be unable to determine the scope of the these competing, and possibly conflicting, claims with reasonable certainty, and therefore the claim is considered indefinite. Appropriate clarification is required. Also see the related drawing objection discussion above.
Claims depending from claims rejected to under this section are similarly rejected to for their dependence on a claim rejected to under this section.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0277379 A1 to Shokr in view of US 6,024,446 A to Hall.
For claim 1, Shokr discloses a light-shielding eye mask (100), comprising a surface protective layer (surface layer material of the illustrated “front facing body portion,” see annotated fig. 1 below),
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an eye contact layer (104), and a fixing strap (see annotated fig. 1 above), wherein left and right sides of the surface protective layer are respectively connected to the fixing strap (see annotate fig. 1 wherein the illustrated surface layer is connected to the illustrated left and right “fixing strap(s)” by an integral connection); one side of the eye contact layer is flat, the other side is concave, and the side edge is a convex periocular contact surface (see annotated fig. 1 below);
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the flat side of the eye contact layer is provided on the back of the surface protective layer (see fig. 1 wherein flat sides of 104 are provided on the surface side configured to face the wearer (interpreted as the “back” side of the surface)); the periocular contact surface comprises a left contact portion and a right contact portion that are symmetrically arranged and both the left end side edge of the left contact portion and the right end side edge of the right contact portion are arranged in a vertical I-shape (See annotated fig. 1 below wherein the portions are considered parts of a whole),
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Shokr does not specifically disclose the fixing strap is provided with an adjustment buckle for adjusting the length of the fixing strap.
However, attention is directed to Hall teaching an analogous strap for attaching an article of headwear around a head of a wearer (abstract and col. 5, lines 3-16 of Hall). Specifically, Hall teaches one section of the strap (40) comprises a buckle assembly (42) having a tightening fastener (52) for adjusting the strap size to a desired positioned and length and for securing mounting the eyewear on a person’s head to assure a snug and comfortable fit (col. 5, lines 3-16 of Hall). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein Shokr would be modified wherein the fixing strap is provided with matching adjustment buckle for adjusting the strap size to a desired positioned and length and for securing mounting the eyewear on a person’s head, or to another article, to insure a snug and comfortable fit, as taught by Hall (col. 5, lines 3-16 of Hall).
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Shokr in view of Hall, as applied to claim 1 above, and further in view of US 2016/0120253 A1 to Schenk.
For claim 2, the modified Shokr teaches the improved light-shielding eye mask according to claim 1, but does not specifically disclose wherein the eye contact layer is detachably fixed to the surface protective layer by means of Velcro, and the surface of the eye contact layer is made of Lycra fabric with the interior filled with highly elastic sponge.
However, in a separate embodiment, Shokr teaches said eye-surrounding assembly can comprise a hook and loop assembly 300 for detaching the upper portion of the of the eye surrounding assembly from a lower part allowing the lower part to be used without the upper portion, or for cleaning purposes (paras 0032-0035). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Shokr would be further modified wherein the eye contact layer is detachably fixed to the surface protective layer by hook and loop means for purposes of allowing a lower part of the eye surrounding assembly to be used without an upper portion or for cleaning the components separately, as taught by Shokr (paras 0032-0035 of Shokr).
As modified, Shokr does not specifically disclose the surface of the eye contact layer is made of Lycra fabric with the interior filled with highly elastic sponge.
However, attention is directed to Schenk teaching an analogous type of head and eye covering (Abstract of Schenk). Specifically, Schenk teaches the covering comprises a stuffing made from foam or polyfiber fill (paras 0019 and 0039 of Schenk) and that the exterior of the covering can be made of a material including spandex or nylon for providing a material that is sufficiently strong and soft for purposes of not irritating the skin of the wearer (para 0077 of Schenk). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein to modified the materials of Shokr’s cover to comprise an eye contact layer made of spandex or nylon, and wherein an interior portion comprises foam or polyfiber fill stuffing for providing a material that is sufficiently strong and soft for purposes of not irritating the skin of the wearer, as taught by Schenk (paras 0019, 0039, and 0077 of Schenk). It is noted that the claimed “Lycra” is a proprietary name for spandex or synthetic elastic fabrics and, therefore, the spandex or nylon of the modified Shokr is interpreted as reading on the Lycra fabric. It is further noted that elastic sponge is describing a material property (such as a compressible or resilient structure) rather than a specific type of material and, therefore, the foam or polyfiber fill stuffing of the modified Shokr is interpreted as reading on a material capable of functioning as a compressible or resilient structure. As explained, the modification would yield the predictable result of offering the wearer increased comfort and suitability for contact with the face of a wearer.
For claim 5, the modified Shokr teaches the improved light-shielding eye mask according to claim 2, wherein the left contact portion and the right contact portion are integrally designed, the right side of the left contact portion and the left side of the right contact portion are integrally connected, and the recessed parts are connected (see annotated fig. 1A above in the discussion for claim 1 wherein the left contact portion and the right contact portion are integrally designed (singular unit), the right side of the left contact portion and the left side of the right contact portion are integrally connected (singular unit), and the recessed parts are connected (connection at the “recessed” nose notch part).
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Shokr in view of Hall and Schenk, as applied to claims 1 and 2 above, and further in view of US 2025/0228709 A1 to Mendelson.
For claim 3, the modified Shokr teaches the improved light-shielding eye mask according to claim 2, wherein the left contact portion and the right contact portion are detachably fixed to the surface protective layer by means of Velcro, respectively (see discussion for claim 1 above and paras 0032-0035 of Shokr).
The modified Shokr does not specifically disclose wherein the left contact portion and the right contact portion are designed as independent individuals.
However, attention is directed to Mendelson teaching an analogous type of head and eye cover (Abstract of Mendelson). Specifically, Mendelson teaches the eye cover can be arranged as a pair of separate eye covers (204, 206) also detachable to the body portion (202) (para 0087 of Mendelson) by hook and loop fasteners for purposes of removing and adjusting each eye cover independently, in the lateral and longitudinal directions, to finely position the eye covers over differently sized and shaped faces (para 0088 of Mendelson). Mendelson also teaches the inner parts of each eye cover comprise arc-like shaped portions for effectively matching the shape and contour of a wearers eye (see fig. 18 of Mendelson). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Shokr would be further modified wherein the left contact portion and the right contact portion are designed as independent individuals with arc-like inward portions for purposes of removing and adjusting each eye cover as individual components, in the lateral and longitudinal directions, to finely match and position the eye covers over differently sized and shaped faces and eyes, as taught by Mendelson (paras 0087-0088 of Mendelson).
For claim 4, the modified Shokr teaches the improved light-shielding eye mask according to claim 3, wherein both the right end side edge of the left contact portion and the left end side edge of the right contact portion are arc-shaped (see discussion for claim 3 above wherein the inward portions of each individual eye cover are configured as arc-like shapes for purposes matching the eye covers over the wearer’s eyes).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shokr in view of Hall, as applied to claim 1 above, and further in view of US 2019/0231595 A1 to Holtz.
For claim 6, the modified Shokr teaches the improved light-shielding eye mask according to claim 1, but does not specifically disclose wherein the fixing strap is an elastic fixing strap, both ends of the surface protective layer are sewn with connecting straps which are provided with connecting rings, one end of the fixing strap is fixed to the connecting ring at one end of the surface protective layer, and the other end of the fixing strap is fixed to the adjustment buckle after passing through the adjustment buckle and the connecting ring at the other end of the surface protective layer in turn.
However, attention is directed to Holtz teaching an analogous type of head and eye cover (abstract of Holtz). Specifically, Holtz teaches the covering (mask 8) is secured to the wearers head: first, by a securing band (21) that is stitched to the left and right edges of the mask (8); next, a securing band slider (22) (in the form of a ring, fig. 6 of Holtz) receives a looping part of the securing band (21) on one end, and an elastic securing band (20) is attached to another end of the securing band slider (22) in a looping and separable forming two separate bands, also having adjustment buckles (see paras 0060-0061 and fig. 4 of Holtz). Holtz provides the V-shaped configuration allows for a more even distribution of tension to lessen the amount of pressure on the face of the wearer (para 0062 of Holtz). It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Shokr would be further modified such that the attachment of the fixing straps to the body portion would be modified to comprise securing bands that are stitched to the left and right edges of the body portion with securing band sliders receiving a looping part of the securing band on one end of the securing band sliders, and an elastic securing band attached to the other end of the securing band slider in a looping fashion creating two separate bands with adjustment buckles, for creating a V-shaped tensioning configuration that allows for a more even distribution of tension to lessen the amount of pressure on the face of the wearer, as taught by Holtz (paras 0060-0062 and fig. 4 of Holtz). The resulting structure would also therefor provide the other end of the fixing strap is fixed to the adjustment buckle after passing through the adjustment buckle and the connecting ring at the other end of the surface protective layer in turn. Even further, the modification would amount to a simple substitution of known fasteners for eye covering components for a predictable result. In this case, the substitution would yield the predictable result of securing and evenly distributing the tension of the mask across the face of the wearer without requiring more than ordinary skill in the art (see MPEP 2143(I)(B)).
For claim 7, the modified Shokr teaches the improved light-shielding eye mask according to claim 1, wherein the lower side of the surface protective layer is provided with a concave arc that avoids the dorsum of the nose (nose notch of 104, see fig. 1A of Shokr).
The modified Shokr does not specifically disclose wherein the side edges of the surface protective layer are hemmed and seamed.
However, attention is directed to Holtz teaching an analogous type of head and eye cover (abstract of Holtz). Specifically, Holtz teaches the covering (mask 8) comprises a periphery that is stitched by stitching (36) and hemmed (see para 0051 and fig. 3 of Holtz) demonstrating a standard textile construction for hiding the stitching, preventing frying, and creating a more desirable aesthetic. It would have been obvious to one of ordinary skill in the art before the effective filing date wherein the modified Shokr would be further modified such that the body portion would comprise a layered construction with perimeter hemming and seaming, as taught by Holtz (para 0051 and fig. 3 of Holtz) for purposes of improving the structural integrity, simplifying construction, creating an aesthetic finishing edge, and since the modification involves only routine and known textile construction techniques for a predictable result of providing a fabric for use with eye-covers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICK I LOPEZ whose telephone number is (571)272-3262. The examiner can normally be reached Monday - Friday: 9:00am - 5:30pm EST.
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/ERICK I LOPEZ/Examiner, Art Unit 3732