DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 30 July 2026 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made below.
Specification
The disclosure is objected to because of the following informalities: In Paragraph 0030 the applicant states:
In an embodiment, the housing 108 may be detachably coupled to the rigid structure. An attachment mechanism may be coupled to the housing 108 or to the rigid stricture of the user device for allowing the magnifying apparatus 100 to be attached and detached from the rigid stricture as desired.”
The term structure is misspelled. Appropriate correction is required. The specification should be revised carefully to correct all other deficiencies similar to the ones noted above.
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 “barrier at least partially encased by the housing that is configured to reduce glare on the lens” must be shown or the feature(s) canceled from the claim(s). 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 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 11 is 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.
Claim 11 recites the limitation: “a barrier at least partially encased by the housing that is configured to reduce glare on the lens.” It is unclear what such a barrier would be. The applicant discloses that a lens barrier may be included to reduce glare but never states how such a barrier would be realized.
Claim 20 recites the limitation “a red dot sight coupled to the magnifying apparatus”. It is unclear if the red dot is the rigid structure, or an additional element of the user device. The applicant fails to disclose an apparatus that has rigid structure coupled to the housing of the lens for allowing a user of the user device to view through the lens and a red dot sight also coupled to the magnifying apparatus. Fig. 3C clearly shows where in the red dot is coupled to the housin. For this office action the claim is best understood as “wherein the rigid structure is a red dot sight”.
Due the amount of speculation required by the examiner when interpreting the claims, no art rejections are being presented in this action for claim 11. See MPEP 2173.06(II). As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. §103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ebbesen (US 3,753,611).
Regarding claim 1, Ebbesen discloses a magnifying apparatus (abstract; title), comprising: a lens 3, 4 (Fig. 1 and 2; see also 23. 24 in Fig. 3 and 4) including: a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region (Col. 2 lines 1-8: “When using the magnifying glass shown, the smallest magnification will be achieved in the region above the lens 4, FIG. 2. The largest magnification will be achieved by looking through the two lenses 3 and 4.”); and a housing 1 that at least partially encases the lens and that is configured for attachment to a user device (Fig. 1 and 2; see also embodiment in Fig. 3 and 4).
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Applicant should note that a recitation of the intended use 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. If the prior art structure is capable of performing the intended use, then it meets the claim. In Paragraph 0030 of Applicant’s disclosure the applicants states that:
“In an embodiment, the housing 108 may be detachably coupled to the rigid structure. An attachment mechanism may be coupled to the housing 108 or to the rigid stricture of the user device for allowing the magnifying apparatus 100 to be attached and detached from the rigid stricture as desired.”
The body of Ebbesen is capable of attachment to an attachment mechanism a user device.
Regarding claim 2, Ebbesen further discloses wherein the lens is circular (See Fig. 1-4).
Regarding claim 4, Ebbesen further discloses wherein the lens is comprised of an ocular lens portion 4 and an objective lens portion 5 (Fig. 1-2).
Regarding claim 5, Ebbesen further disclose wherein the ocular lens portion aligns with the objective lens portion to enable light to pass therethrough (Fig. 1-2).
Regarding claim 6, Ebbesen further discloses wherein the first region and the second region cover a same size area of the lens (as seen in Fig. 1).
Regarding claim 7, Ebbesen further discloses wherein the first region and the second region cover different size areas of the lens (as seen in embodiment shown in Fig. 3-4).
Regarding claim 8, Ebbesen further discloses wherein the lens is configured to provide focus on an object at a range between 5 feet and 5000 feet from the lens. Applicant should note that a recitation of the intended use 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, Ebbesen further wherein the housing is sealed (Fig. 1-4).
Claims 1-2, 4-6, 8, 10, 12-14, 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D.T. O’Shea (US 3,533,686) [hereinafter O’Shea].
Regarding claim 1, O’Shea discloses a magnifying apparatus 30, comprising: a lens 15, 27 including: a first region providing a first level of magnification (upper portion with only lens 15; lens 15 is a non magnifying glass, having a level 1 or zero power), and a second region (lower region or region provided with magnification lens 27) providing a second level of magnification that is different from the first level of magnification provided by the first region (“A feature of the invention is the magnification lens 27 which, in one preferred form, is a half circular lens having plus magnification power and adapted for placement in goggles. Such magnification lens may be disposed in either the upper portion of the sight opening 13 or, preferably, in the lower portion thereof, as shown. When disposed in the lower portion of the opening, for example, the viewer may selectively look through the lower portions of such opening for securing a magnified view for viewing closeup objects, or look through the (clear) top portion of the opening for viewing distant objects”); and a housing 30 that at least partially encases the lens and that is configured for attachment to a user device (Fig. 3-6).
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Regarding claim 2, O’Shea further discloses wherein the lens is circular (Fig. 3-6)
Regarding claim 4, O’Shea further discloses wherein the lens is comprised of an ocular lens portion and an objective lens portion (Fig. 5-6).
Regarding claim 5, O’Shea further wherein the ocular lens portion aligns with the objective lens portion to enable light to pass therethrough (Fig. 2-6).
Regarding claim 6, O’Shea further discloses wherein the first region and the second region cover a same size area of the lens (Fig. 4-6).
Regarding claim 8, O’Shea further discloses wherein the lens is configured to provide focus on an object at a range between 5 feet and 5000 feet from the lens. Applicant should note that a recitation of the intended use 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 10, O’Shea further discloses wherein the housing is open (Fig. 5-6; open on backside to attach to eye cup flange 40).
Regarding claim 12, O’Shea further discloses a Magnifying apparatus 30, comprising: a lens 27 providing a first level of magnification that is greater than lx magnification; and a housing that is configured for attachment to a user device, wherein the housing at least partially encases the lens and provides an open throughview (view “feature of the invention is the magnification lens 27 which, in one preferred form, is a half circular lens having plus magnification power and adapted for placement in goggles. Such magnification lens may be disposed in either the upper portion of the sight opening 13 or, preferably, in the lower portion thereof, as shown. When disposed in the lower portion of the opening, for ex- ample, the viewer may selectively look through the lower portions of such opening for securing a magnified view for viewing closeup objects, or look through the (clear) top portion of the opening for viewing distant objects”).
Regarding claim 13, O’Shea discloses a user device (title) comprising:
a magnifying apparatus 30 comprised of: a lens 15, 27 including: a first region providing a first level of magnification (upper portion with only lens 15; lens 15 is a non magnifying glass, having a level 1 or zero power), and a second region (lower region or region provided with magnification lens 27) providing a second level of magnification that is different from the first level of magnification provided by the first region (“A feature of the invention is the magnification lens 27 which, in one preferred form, is a half circular lens having plus magnification power and adapted for placement in goggles. Such magnification lens may be disposed in either the upper portion of the sight opening 13 or, preferably, in the lower portion thereof, as shown. When disposed in the lower portion of the opening, for example, the viewer may selectively look through the lower portions of such opening for securing a magnified view for viewing closeup objects, or look through the (clear) top portion of the opening for viewing distant objects”) and a housing 30 that at least partially encases the lens (Fig. 4-6); and a rigid structure 40 coupled to the housing of the lens for allowing a user of the user device to view through the lens (“The snap ring 30 contains spaced outer flanges 34 and 36 at the respective ends thereof. 1he flange 34 is adapted to fit over the eyecup housing flange 40 in coaction therewith to snugly retain the snap ring 30 on the eyecup housing. In practice, the snap ring 30 is adapted to be flexed or stretched to fit over the flange 40 of the eyecup housing, said snap ring having a gripping tab 42 for ease in thus applying the ring to the eyecup.”)
Regarding claim 14, O’Shea further discloses wherein the rigid structure is a sporting glasses frame (Goggles; Fig. 1-2).
Regarding claim 18, O’Shea further discloses wherein the housing is detachably coupled to the rigid structure (Fig. 3-6; “The snap ring is detachably disposed on the eyecup with a fit permitting such ring to be selectively rotated on the eyecup whereby the magnification lens may be disposed in either an upper or lower position on the eyecup as desired”).
Regarding claim 19, O’Shea further discloses wherein the housing is rotatably coupled to the rigid structure (“The snap ring is detachably disposed on the eyecup with a fit permitting such ring to be selectively rotated on the eyecup whereby the magnification lens may be disposed in either an upper or lower position on the eyecup as desired”).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over O’Shea in view of Parikumar et al (US 2007/0171360) [hereinafter Parikumar].
Regarding claim 3, O’Shea fails to expressly discloses wherein the lens is rectangular.
Parikumar teaches that it is known in the art of eye wear lenses to have lenses that are rectangular (Fig. 1).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Baugher such that the lens was rectangular, in view of Parikumar, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. V. Levous et al., 3 USPQ 23.
Claims 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Geraci (US 9,945,639) in view of Ebbesen.
Regarding claim 13, Geraci discloses a user device 100, comprising: a magnifying apparatus (Col. 3, lines 28-30: “In some embodiments, the corrective lens 250 may be shaped to provide magnification instead of prescriptive vision correction” see also claim 3) comprised of: a lens 250 having a first region providing a first level of magnification (inherent with provided magnification) and a housing 200 that at least partially encases the lens (Fig. 4); and a rigid structure 910 coupled to the housing of the lens for allowing a user of the user device to view through the lens (Fig. 5).
Geraci fails to disclose wherein the lens includes both a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region.
Ebbesen teaches that it is known in the art to provide a magnifying apparatus (abstract; title), with a lens 3, 4 (Fig. 1 and 2; see also 23. 24 in Fig. 3 and 4) including: a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region (Col. 2 lines 1-8: “When using the magnifying glass shown, the smallest magnification will be achieved in the region above the lens 4, FIG. 2. The largest magnification will be achieved by looking through the two lenses 3 and 4.”).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified Geraci such that the lens the lens includes both a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region, in view of Ebbesen, to obtain the desired result of providing two levels of magnification.
Regarding claim 17, Geraci further discloses wherein the rigid structure is a rifle scope (Fig. 5).
Claims 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over DeAngelis (US 2021/0055536) in view of Ebbesen.
Regarding claim 13, DeAngelis discloses a magnifying apparatus comprised of: a lens including: a first region providing a first level of magnification (Par. 0038: “the optional magnifier 185 may be used to magnify the image of far-away targets”), and a housing that at least partially encases the lens (Fig. 2F); and a rigid structure coupled to the housing of the lens for allowing a user of the user device to view through the lens (clearly seen in Fig. 2F; coupled to the reflex sight support plate 100b).
DeAngelis fails to disclose wherein the lens includes both a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region.
Ebbesen teaches that it is known in the art to provide a magnifying apparatus (abstract; title), with a lens 3, 4 (Fig. 1 and 2; see also 23. 24 in Fig. 3 and 4) including: a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region (Col. 2 lines 1-8: “When using the magnifying glass shown, the smallest magnification will be achieved in the region above the lens 4, FIG. 2. The largest magnification will be achieved by looking through the two lenses 3 and 4.”).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified DeAngelis such that the lens the lens includes both a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region, in view of Ebbesen, to obtain the desired result of providing two levels of magnification.
Regarding claim 20, DeAngelis further discloses where in the rigid structure is a red dot sight (Fig. 2F; Par. 0042: “The optical magnifier 185 may be rotatably coupled to the support plate 100b”).
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Castaneda et al (US 2023/0228525) in view of Ebbesen.
Regarding claim 13, Castaneda discloses a user device 200, comprising: a magnifying apparatus comprised of: a lens 220 including: a first region providing a first level of magnification (Par. 0022: “The magnifier 200 includes optics 220, which may be one or more lenses to magnify the target” and a housing (clearly seen in Fig. 2) that at least partially encases the lens; and a rigid structure 90 coupled to the housing of the lens for allowing a user of the user device to view through the lens (Fig. 2 and 3a; Par. 0018: “FIG. 2 is a perspective view of an example magnifier 200 that includes a mount 210 by which it can be firmly attach to the rail 90 (not illustrated in FIG. 2). The mount 210 may be a locking mount, as illustrated in FIG. 2, or the mount may attach to the rail 90 through other means”).
Ebbesen teaches that it is known in the art to provide a magnifying apparatus (abstract; title), with a lens 3, 4 (Fig. 1 and 2; see also 23. 24 in Fig. 3 and 4) including: a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region (Col. 2 lines 1-8: “When using the magnifying glass shown, the smallest magnification will be achieved in the region above the lens 4, FIG. 2. The largest magnification will be achieved by looking through the two lenses 3 and 4.”).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified DeAngelis such that the lens the lens includes both a first region providing a first level of magnification, and a second region providing a second level of magnification that is different from the first level of magnification provided by the first region, in view of Ebbesen, to obtain the desired result of providing two levels of magnification.
Regarding claim 16, Castaneda further discloses wherein the rigid structure is a handgun (Par. 0017: “firearm rail 90 according to embodiments of the invention. The firearm, to which the firearm rail 90 is attached, is not illustrated in FIG. 1. Example firearms may include pistols or long rifles, among other types. The target sight 100 may be used in conjunction with an accessory, such as a magnifier, illustrated in FIG. 2”).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Castaneda and Ebbesen, as applied to claim 13 and 16 above, and further in view of Botach (US 2025/0271236).
The combination of Castaneda and Ebbesen fails to teach wherein the rigid structure is a handgun rest that supports at least a portion of a grip of a handgun.
Botach teaches that it is known in the art for handgun stock adapters (handgun rest) that support at least a portion of a handgrip (Par. 0025: “Grip saddle 110 forms part of pistol end 102 of adaptor 100 and is configured to receive and mate against pistol grip 14 and beaver tail 18 of pistol 10 (FIGS. 8-10)”) to have rail interfaces 140 to attach firearm accessories (Fig. 9).
Applicant should note that "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield predictable results." KSR at 1395 (citing United States v. Adams 383 US 39, 50-51 (1966)).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the combination of Castaneda and Ebbesen such that the rigid structure was a handgun rest that supports at least a portion of a grip of a handgun, as taught by Botach, because the substitution of one known rigid structure (firearm rail) for another (hand gun rest rail) would have yielded predictable results to one of ordinary skill in the art at the time of invention. The replacement would be expected to yield a magnifying apparatus attached to a weapon system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA E FREEMAN whose telephone number is (303)297-4269. The examiner can normally be reached 9AM - 5PM MST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641
