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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/2/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12228801 hereafter Okoli. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of Okoli read on or make obvious claims 1-20 of the instant application.
Regarding claim 1, Okoli discloses a hinge assembly for connecting a temple to a frame of eyewear, the hinge assembly comprising: a hinge element comprising a body that includes a first hinge element section for attachment to the frame, a second hinge element section for attachment to the temple, and a grounding system; the hinge element pre-bent along a hinge section to assume a bent configuration in a relaxed state, the hinge section separating the first hinge element section from the second hinge element section; and the hinge element deformable from the relaxed state to a pre-loaded state when the first hinge element section is attached to the frame and the second hinge element section is attached to the temple, such that the hinge element connects the temple to the frame under a stored energy that biases the temple inwardly toward a user's head when worn (see claims 1 and 5).
Regarding claim 9, Okoli discloses Eyewear comprising: a frame having a first end and a second end; a first temple; a second temple; a first hinge assembly that pivotably connects the first temple to the first end of the frame; and a second hinge assembly that pivotably connects the second temple to the second end of the frame, each of the first hinge assembly and the second hinge assembly comprising: a hinge element comprising a body that includes a first hinge element section attached to the frame, a second hinge element section attached to one of the first and second temples, and a grounding system, the hinge element pre-bent along a hinge section that separates the first hinge element section from the second hinge element section, the hinge element attached to the frame and said one of the first and second temples in a pre-loaded state in which the second hinge element section is extended relative to the first hinge element section along the hinge section and stores energy in the hinge element, and the energy stored in the hinge element operable to bias said one of the first and second temples toward a user's head when the eyewear is worn (see claims 1, 5, and 9).
Regarding claims 2-8 and 10-20, Okoli discloses the limitations therein (claims 2-8 and 10-20).
Allowable Subject Matter
Claims 1-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Regarding independent claim 1 (and its dependents), the prior art does not disclose the claimed hinge assembly specifically including as the distinguishing features in combination with the other limitations the claimed “a grounding system; the hinge element pre-bent along a hinge section to assume a bent configuration in a relaxed state, the hinge section separating the first hinge element section from the second hinge element section; and the hinge element deformable from the relaxed state to a pre-loaded state when the first hinge element section is attached to the frame and the second hinge element section is attached to the temple, such that the hinge element connects the temple to the frame under a stored energy that biases the temple inwardly toward a user's head when worn.”
Regarding independent claim 9 (and its dependents), the prior art does not disclose the claimed hinge assembly specifically including as the distinguishing features in combination with the other limitations the claimed “a grounding system, the hinge element pre-bent along a hinge section that separates the first hinge element section from the second hinge element section, the hinge element attached to the frame and said one of the first and second temples in a pre-loaded state in which the second hinge element section is extended relative to the first hinge element section along the hinge section and stores energy in the hinge element, and the energy stored in the hinge element operable to bias said one of the first and second temples toward a user's head when the eyewear is worn.”
Conclusion
Gottchschling (20080278677) is being cited herein to show a reference that discloses some similar features to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES JONES whose telephone number is (571)270-1278. The examiner can normally be reached 7:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pinping Sun can be reached at (571) 270-1284. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C. JONES/Primary Examiner, Art Unit 2872
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