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 .
Status of Claims
This Office Action is in response to the amendment filed 11/24/25. As directed by the amendment, claims 1, 5, 7, 9, 10, 14, 15 have been amended. Claims 1-20 are pending in this application.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 11 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 11, the reference to “…users head…” renders the claim unpatentable.
Any claim language drawn to encompass the human body or parts thereof are considered non-statutory subject matter. This rejection may be obviated by utilizing the phrases “adapted to” or “configured to”, for example, prior to claiming the use of the device on a human or utilizing the phrase “when worn” after claiming the use of the device on a human. Appropriate correction is required.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke § 112(f) except as otherwise indicated in an Office action.
In the instant case there does not appear to be any means for language in the claims and/or language to be considered under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 102 AIA
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 1-4, 6-14, 16 - 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davison US 20060157064 A1 (herein after Davison).
Regarding claim 1, Davison discloses an eye cover (18), comprising: an outer silicone layer (paragraphs 0011, 0065 and 0068), having an interior cavity (33) for retaining moisture of a user's eye (Abstract); an inner object (31) configured to match and be received in the interior cavity (33, as seen in annotated Figure 11) of the outer silicone layer (paragraphs 0011, 0065 and 0068); and a mechanical fastener (22, 24) secured to the inner object for attaching the eye cover to an eye mask (12); and wherein the eye cover (18) is configured to cover the user's eye (Abstract); and contours of an orbital bone (as seen in annotated Figure 6) of a user creating a seal around the user's eye (paragraph 0014), and to create a complete seal around the eye (paragraph 0014) for maintaining a humid microenvironment, wherein the eye cover (18) is adjustable on the eye mask in both latitudinal and longitudinal directions (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable) relative to the eye mask to enable fine positioning for varying facial features (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable).
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[AltContent: arrow][AltContent: arrow][AltContent: textbox (Mechanical fastener)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Eye mask)][AltContent: textbox (Eye cover)]
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Regarding claim 1, the applicant has written the claim to include functional language recitations and terminology. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The applicant has used functional terminology to define structural elements, for example “…to enable fine positioning for varying facial features and to create a complete seal around the eye for maintaining a humid microenvironment…”. . These terms can be interpreted as functional language. If the prior art structure is capable of performing the function, then it meets the claim. Functional language recitations such as "... to enable fine positioning for varying facial features and to create a complete seal around the eye for maintaining a humid microenvironment..." carry little patentable weight as the application is examined as an apparatus with its structural limitations, not its function or intended use.
Regarding claim 2, Davison discloses wherein a portion of the eye cover (12, 14 of Davison) is made from a silicone material (paragraph 0065, 0068 and 0069 of Davison).
Regarding claim 3, Davison discloses wherein the eye cover (18 of Davison) is made of a malleable material (paragraph 0072 of Davison) and the inner object is a foam layer (paragraph 0065, 0068, 0069 and 0072 of Davison).
Regarding claim 4, Davison discloses wherein the mechanical fastener is a hook and loop fastener (paragraph 0060 and 0071 of Davison).
Regarding claim 6, Davison discloses an outer rim (18 of Davison) defining a perimeter of the eye cover (as seen in annotated Figures 11, 12 and 13 of Davison); a cavity (33 of Davison) located within the outer rim (18 of Davison); and one or more relief vents (paragraph 0069 and 0100 of Davison) located within an interior section of the outer rim (as seen in annotated Figure 0010 of Davison).
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Regarding claim 7, Davison discloses an eye cover (18), comprising: a flat surface (as seen in annotated Figure 2) for affixing a mechanical fastener (22, 24) for detachably securing the eye cover (paragraph 0069) to an eye mask (12), an outer rim (18 of Davison) defining a perimeter of the eye cover (as seen in annotated Figure 11, 12 and 13 of Davison); a cavity (33 of Davison), located within the outer rim (18 of Davison), and wherein the eye cover is configured to cover the user's eye (Abstract, as seen in Figure 1 and 2 of Davison) and contours of an orbital bone of a user (as seen in Figure 1 and 2 of Davison), for retaining moisture of a user's eyes (Abstract, paragraphs 0015 and 0016 of Davison); a seal around the user's eye (paragraph 0014 of Davison) while creating a complete seal around the eye (paragraph 0014 of Davison) for maintaining a humid microenvironment, the eye cover (18) is adjustable on the eye mask in both latitudinal and longitudinal directions relative to the eye mask (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable) to accommodate varying face sizes and shapes (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable).
[AltContent: arrow][AltContent: textbox (A flat surface for affixing a mechanical fastener.)][AltContent: arrow][AltContent: textbox (The outer rim includes a plurality of ribs.)]
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Regarding claim 7, the applicant has written the claim to include functional language recitations and terminology. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The applicant has used functional terminology to define structural elements, for example “…to accommodate varying face sizes and shapes while creating a complete seal around the eye for maintaining a humid microenvironment.…”. . These terms can be interpreted as functional language. If the prior art structure is capable of performing the function, then it meets the claim. Functional language recitations such as “…to accommodate varying face sizes and shapes while creating a complete seal around the eye for maintaining a humid microenvironment..." carry little patentable weight as the application is examined as an apparatus with its structural limitations, not its function or intended use.
Regarding claim 8, Davison discloses wherein the outer rim includes a plurality of ribs (as seen in annotated Figure 2 of Davison).
Regarding claim 9, Davison discloses wherein the mechanical fastener (12, 14 of Davison) is a hook and loop fastener (paragraph 0060 and 0071 of Davison); and wherein the eye cover (12 and 14 of Davison) is made from a silicone material (paragraphs 0068 and 0070 of Davison); and wherein the flat surface (as seen in annotated Figure 6 of Davidson) is specifically configured to enable independent detachment of the eye cover from the eye mask (as seen in annotated Figure 6 of Davidson) for individual cleaning and therapeutic customization.
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Regarding claim 9, the applicant has written the claim to include functional language recitations and terminology. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The applicant has used functional terminology to define structural elements, for example “…to enable independent detachment of the eye cover from the eye mask for individual cleaning and therapeutic customization.…”. These terms can be interpreted as functional language. If the prior art structure is capable of performing the function, then it meets the claim. Functional language recitations such as “…to enable independent detachment of the eye cover from the eye mask for individual cleaning and therapeutic customization..." carry little patentable weight as the application is examined as an apparatus with its structural limitations, not its function or intended use.
Regarding claim 10, Davison discloses an eye mask (12), comprising: a body portion (as seen in annotated Figure 6) configured to cover a user's eyes (as seen in annotated Figure 6), the body portion (as seen in annotated Figure 6) having an interior surface (as seen in annotated Figure 6) and an opposing exterior surface (as seen in annotated Figure 6); a first eye cover (18L, as seen in annotated Figure 6), configured to cover a user's eyes (as seen in annotated Figures 2, 11, 12 and 13), detachably secured to the interior surface of the body portion (as seen in annotated Figure 6) by a first mechanical fastener (22,24); and a second eye cover (18R), configured to cover a user's eyes (Abstract), detachably secured (paragraph 0069, 0070 and 0071) to the interior surface of the body portion (paragraph 0069, as seen in annotated Figure 6) by a second mechanical fastener (22, 24); and wherein the first eye cover (18L) and the second eye cover (18R) are each configured to cover the user's eye (as seen in annotated Figure 6) and contours of an orbital bone of a user creating a seal (paragraph 0014) around the user's eyes (paragraph 0014) and to create a complete seal around each eye for maintaining a humid microenvironment (paragraph 0014), each of the first eye cover (18L) and the second eye cover (18R) is independently adjustable in both latitudinal and longitudinal directions relative to the body portion (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable) to enable fine positioning for varying facial features and orientations (paragraph 0060 and 0071, the adhering surfaces of the hook and loop material allows the eye mask the ability to be positioned as desired and as most comfortable).
Regarding claim 10, the applicant has written the claim to include functional language recitations and terminology. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The applicant has used functional terminology to define structural elements, for example “…to enable fine positioning for varying facial features and orientations and to create a complete seal around each eye for maintaining a humid microenvironment …”. . These terms can be interpreted as functional language. If the prior art structure is capable of performing the function, then it meets the claim. Functional language recitations such as "... to enable fine positioning for varying facial features and orientations and to create a complete seal around each eye for maintaining a humid microenvironment..." carry little patentable weight as the application is examined as an apparatus with its structural limitations, not its function or intended use.
Regarding claim 11, Davison discloses wherein the body portion comprises: a first side strap located at a first end of the body portion (as seen in annotated Figure 2 of Davison); and a second side strap located at a second end of the body portion (as seen in annotated Figure 2 of Davison); and wherein the first and second side straps are secured with a mechanical fastener around a user's head (as seen in annotated Figure 2 of Davison).
[AltContent: textbox (The first and second side straps are secured with a mechanical fastener around a user's head.)]
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A first side strap located at a first end of the body portion.)][AltContent: textbox (A second side strap located at a second end of the body portion.)]
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Regarding claim 12, Davison discloses wherein each of the first and second mechanical fasteners (22 of Davison) is a hook and loop fastener (paragraphs 0060, 0071, 0081 of Davison).
Regarding claim 13, Davison discloses wherein a portion of the first and second eye covers (18 of Davison) are made from a silicone material (paragraphs 0068 and 0070 of Davison).
Regarding claim 14, Davison discloses wherein the body portion (as seen annotated Figure 6 of Davison) is made of a malleable material (paragraph 0072 of Davison) and wherein the first and second eye covers are made of a malleable material (paragraph 0076 and 0090 of Davison).
Regarding claim 16, Davison discloses wherein each of the first and second eye covers (18 of Davison) comprise: an outer silicone layer (paragraphs 0068 and 0070 of Davison) having an interior cavity (33 of Davison) for retaining moisture of the user's eyes (Abstract, paragraphs 0015 and 0016 of Davison); and an inner object configured to match (31 of Davison) and be received in the interior cavity (33, as seen in annotated Figures 11 and 12 of Davison) of the outer silicone layer (paragraphs 0068 and 0070 of Davison).
Regarding claim 17, Davison discloses wherein the inner object is a foam layer (paragraph 0072 of Davison); and wherein each of the first and second eye covers (18 of Davison) comprise an outer silicone layer (paragraphs 0068 and 0070 of Davison).
Regarding claim 18, Davison discloses wherein each of the first and second eye covers (18 of Davison) further comprise a flat surface (as seen in annotated Figure 2 of Davison) for affixing a third mechanical fastener (22, 24 of Davison) for detachably securing the first and second eye covers (18 of Davison) to the interior surface of the body portion (as seen in annotated Figure 6 of Davison); and wherein the third mechanical fastener is a hook and loop fastener (paragraphs 0060, 0071, 0081 of Davison).
Regarding claim 19, Davison discloses wherein each of the first and second eye covers (18 of Davison) comprise: an outer rim (18 of Davison) defining a perimeter of the eye cover (as seen in annotated Figures 11,12 and Davison); and a cavity (33 of Davison) located within the outer rim (18 of Davison).
Regarding claim 20, Davison discloses wherein the outer rim (18 of Davison) has a varying thickness (as seen in annotated Figure 11 of Davison); and wherein a varying thickness gradually decreases from a first side (as seen in annotated Figure 11 of Davison) of the outer rim (18 of Davison) to a second opposing side (as seen in annotated Figure 11 of Davison) of the outer rim (18 of Davison).
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Claim Rejections - 35 USC § 103 AIA
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Davison US 20060157064 A1 (herein after Davison) in view of Schwarz US 20230062643 A1 (herein after Schwarz).
Regarding claim 5, the modified eye mask of the combined references discloses all the limitations of claim 5 and further discloses wherein the eye cover (12 of Davison) is detachable from the eye mask (paragraph 0069 of Davison).
However, Davison is silent to the eye covers being configured for independent detachment and replacement from the eye mask to enable individual cleaning and customized treatment for dry eye conditions.
Schwarz discloses the eye covers being configured for independent detachment and replacement from the eye mask (as seen in annotated Figures 3 and 9, paragraphs 0007 and 0022 of Schwarz) to enable individual cleaning and customized treatment for dry eye conditions.
Davison and Schwarz are analogous art to the claimed invention in that they relate to protective eye masks.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified the eye cover of Davison by constructing the eye covers being configured for independent detachment and replacement from the eye mask to enable individual cleaning and customized treatment for dry eye conditions as taught by Schwarz in order to allow the user easy care and customization of the device. The modification would be a simple modification to obtain predictable results, allow the user the ability to modify the device and clean it easily as needed or required.
Regarding claim 5, the applicant has written the claim to include functional language recitations and terminology. A recitation of the function of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. The applicant has used functional terminology to define structural elements, for example “…to enable individual cleaning and customized treatment for dry eye conditions.…”. . These terms can be interpreted as functional language. If the prior art structure is capable of performing the function, then it meets the claim. Functional language recitations such as to enable individual cleaning and customized treatment for dry eye conditions...." carry little patentable weight as the application is examined as an apparatus with its structural limitations, not its function or intended use.
Regarding claim 15, the modified eye mask of the combined references discloses wherein the first and second eye covers (18 of Davison) are made of a malleable material (paragraph 0072 of Davison)
Davison is silent to each cover being independently detachable from the body portion.
Schwarz discloses each cover being independently detachable from the body portion (as seen in annotated Figures 3 and 9 of Schwarz).
Davison and Schwarz are analogous art to the claimed invention in that they relate to protective eye masks.
It would have been obvious to one having ordinary skill in the art before the effective filing date
of the invention to have modified each cover of Davison by being independently detachable from the body portion as taught by Schwarz in order to allow the user easy care and customization of the device. The modification would be a simple modification to obtain predictable results, allow the user the ability to modify the device and clean it easily as needed or required.
Arguments
Applicant’s arguments have been fully considered but are not convincing. Applicant’s arguments are directed towards structural elements included in the amended claims and thus do not apply to the manner in which prior art has been applied in the current rejection. In view of Applicant's amendments, the search has been updated, and a rejection on the amended claims is applied above.
In response to applicant’s arguments that Davison does not teach bidirectional adjustability, the examiner respectfully disagrees. Davison (paragraph 0071) teaches hook and loop fasteners on surface (18) by nature of how hook and loop fasteners work, Davison’s hook and loop fasteners would be capable of bidirectional adjustability and fine positioning.
In response to applicant’s arguments that Davison’s adjustability relates only to the bridge connecting the two eyecups, not to the positioning of individual eye covers in both latitudinal and longitudinal directions relative to a body portion, the examiner respectfully disagrees. Davison (paragraph 0071) teaches hook and loop fasteners on surface (18) by nature of how hook and loop fasteners work, Davison’s hook and loop fasteners would be capable of bidirectional adjustability and fine positioning of the individual eye covers in both latitudinal and longitudinal directions relative to a body portion.
In response to applicant’s arguments that there is no motivation to modify Davison to include bidirectional adjustability, the examiner respectfully disagrees. Davison (paragraph 0071) teaches hook and loop fasteners on surface (18) by nature of how hook and loop fasteners work, Davison’s hook and loop fasteners would be capable of bidirectional adjustability and fine positioning.
In response to applicant’s arguments that Davison does not teach individual cleanability, individual replaceability, customizable treatment, and eyecups independently detached and handled separately, the examiner respectfully disagrees. Davison, (paragraph 0012, 0094, 0098) teach the components of the eye covers being removable and customizable, which allows for individual cleanability, individual replaceability, customizable treatments, and the eyecups being independently detached and handled separately.
In response to applicant’s arguments that Davison provides no motivation for making the eye covers independently detachable, the examiner respectfully disagrees. Davison, (paragraph 0012, 0094, 0098) teach the components of the eye covers being removable and customizable, which allows for individual cleanability, individual replaceability, customizable treatments, and the eyecups being independently detached and handled separately.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE M FERREIRA whose telephone number is (571)270-5916, fax number (571) 270-6916. The examiner can normally be reached on Monday - Thursday 9:00 am- 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, ALISSA J. TOMPKINS, at (571) 272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Catherine M. Ferreira/
Examiner, Art Unit 3732
/ALISSA J TOMPKINS/Supervisory Patent Examiner, Art Unit 3732
Prosecution Insights