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 .
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.
Information Disclosure Statement
The information disclosure statement(s) filed on February 25, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/627,012, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, prior application 18/627,012 does not provide support for claim 19. The prior filed application does not provide support for the first channel and the second channel are reflectionally symmetric about the point. While this may be an attempt to describe what is in Figure 8, the associated description does not specify whether first channel (156a) and second channel (156b) are in a symmetrical point reflection with point (C).
Claim 19 has been accorded a filing date of February 25, 2025.
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.
Claims 1-20 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.
As to claims 1, 20, the claims recite “forming a substantially gapless and substantially light-tight seal configured to retard light from passing therethrough” which is a relative/subjective term (MPEP 2173.05(b)). What is “substantially gapless”? There’s either a gap or there isn’t. What is “substantially light-tight seal”? What objective amount/quantity of light can, or cannot, pass to qualify as a substantially light-tight seal? Seal relative to where? Seal between the nose pad and cup? Seal between cup/nose pad to the face? The metes and bounds, and thus infringement, are unclear because those of ordinary skill in the art would fail to understand what structure infringes such function, what constitutes a substantially gapless seal, what constitutes a substantially light-tight seal, or where the seal is formed.
For purposes of compact prosecution, Examiner will understand the claim such that so long as the nose pad is integral with the eye cup, such function is presumed implicit when worn by the user.
Claims 2-19 are rejected as dependent upon claim 1.
As to claim 17, the claim recites “the at least one eye cup comprises two layers consisting of the inner layer and the outer layers” which is unclear how many layers since the language uses both open-ended (comprising) and closed-ended (consisting) language (MPEP 2111.03). For purposes of compact prosecution, Examiner will understand the claim as open-ended and comprising the inner and outer layers.
As to claim 19, the claim recites “the first channel and the second channel are reflectionally symmetrical about the point” which is unclear in light of Applicant’s specification. As discussed above, such features appear to be directed to Figure 8, however for symmetrical reflection about a point in 2D1 this would be a 180-degree rotation. Applicant’s specification and Figure 8 do not appear to support first channel (156a) and second channel (156b) are in 180-degree rotation. Examiner suggests canceling the claim.
As to claim 20, the claim recites “the at least one eye cup comprises two layers consisting of the inner layer and the outer layers” which is unclear how many layers since the language uses both open-ended (comprising) and closed-ended (consisting) language (MPEP 2111.03). For purposes of compact prosecution, Examiner will understand the claim as open-ended and comprising the inner and outer layers.
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.
(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, 9-12, 16-17 are rejected under 35 U.S.C. 102(a1) as being anticipated by Baker (US 1,838,649; cited by Applicant).
As to claim 1, Baker teaches Baker teaches an ophthalmic device (Baker Figs. 1-6) comprising
a frame (Baker Fig. 1 - 11)
at least one eye cup detachably mounted to the frame (Baker Fig. 1 - 1, 18; Fig. 2 - 8, 5; page 2:lines 30-33 - eyecup (1) threaded into frame (11)), the at least one eye cup comprising an inner layer formed from a first material (Baker Fig. 5 - 19; Fig. 2 - 5; page 2:lines 40-45, 105-115) and an outer layer formed from a second material (Baker Fig. 5 - 19; page 2:lines 105-115) different from the first material (Baker page 2:lines 40-45, 105-115 - inner being convex, the outer being concave; inner material including snug fitting wall (5)), wherein the outer layer is at least partially wrapped around the inner layer (Baker Fig. 5);
PNG
media_image1.png
228
591
media_image1.png
Greyscale
a nose pad integrally formed within the at least one eye cup (Baker Fig. 2 - 5), the nose pad and the at least one eye cup collectively forming a substantially gapless and substantially light-tight seal configured to retard light from passthing therethrough (Baker Fig. 1 - 1; Fig. 2 - 5; page 2:lines 40-45);
PNG
media_image2.png
225
323
media_image2.png
Greyscale
a plurality of air vents formed through both the outer layer and the inner layer of the at least one eye cup (Baker Fig. 6 - 20; page 2:lines 107-111, 120-125), each of the plurality of air vents defined by a first channel extending through the outer layer (Baker Fig. 6 - 19, 20) and second channel extending through the inner layer (Baker Fig. 6 - 19, 20);
wherein a centerline of the first channel through the outer layer of the eye cup is angularly offset from a centerline of the second channel through the inner layer of the eye cup (Baker Fig. 6 - centerline of inner (left) louvres (20) offset from centerline of outer (right) louvres (20); see below);
wherein the first channel extends from an environment external to the eye cup to a point where the centerline of the first channel intersects the centerline of the second channel (Baker Fig. 6 - centerline of first (left) channel intersecting centerline of second (right) channel; see below) and the second channel extends from the point where the centerline of the first channel intersects the centerline of the second channel to an environment internal to the eye cup (Baker Fig. 6 - centerline of second (right) channel extends from the intersection of to an environment internal to the eye cup; see below).
PNG
media_image3.png
487
471
media_image3.png
Greyscale
As to claim 9, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Baker further teaches the centerline of the first channel is angularly offset from a direction normal to an inner surface of the outer layer at the point where the centerline of the first channel intersects the centerline of the second channel (Baker Fig. 6 - see above; first centerline being angularly offset from normal of inner surface of outer layer (19)) and the centerline of the second channel is angularly offset from a direction normal to an inner surface of the inner layer at the point where the centerline of the first channel intersects the centerline of the second channel (Baker Fig. 6 - see above; second centerline being angularly offset from normal of inner surface of inner layer (19)).
As to claim 10, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Baker further teaches the frame includes a frame front (Baker Fig. 1 - 11) and at least one temple arm extending rearwardly away from the frame (Baker Fig. 1 - 24) including a hinge configured to permit a portion of the at least one temple arm to be folded inwardly without contacting the at least one eye cup (Baker Fig. 1 - 23, 24).
As to claim 11, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Baker further teaches the hinge is disposed between a first portion of the at least one temple arm and a second portion of the at least one temple arm (Baker Fig. 2 - 23; Fig. 1 - 23, 24), such that the second portion is configured to be folded inwardly with respect to the first portion without contacting the at least one eye cup (Baker Fig. 2 - 23; Fig. 1 - 23, 24).
As to claim 12, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Baker further teaches at least one filter fixedly secured within or protruding into the at least one eyecup (Baker Fig. 2 - 10; Fig. 3; page 2:lines 30-36).
As to claim 16, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Baker further teaches the nose pad is formed from the first material (Baker Fig. 2 - 5; page 2: lines 40-45) and the outer layer is not wrapped about the nose pad (Baker Fig. 2 - 5).
As to claim 17, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Baker further teaches the at least one eye cup comprises two layers consisting of the inner layer and the outer layers (Baker Fig. 1 - 1, 18; Fig. 5 - 19).
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 2-8, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Baker (cited above).
As to claims 2-5, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and while Baker further teaches the centerline of the first channel is angularly offset from the centerline of the second channel, Baker doesn’t specify the specific angle or angular range. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the angle at from 5-175o; 45-135o; 80-100o; 90o since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980). As discussed by Baker, such offset angle/channel provides for airflow while blocking light (Baker page 2:lines 97-106; page 2:lines 119-124; page 3:lines 9-20).
As to claims 6-8, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and while Baker further teaches the centerline of the first channel is angularly offset from the direction normal to the inner surface of the outer layer at a point where the centerline of the first channel intersects the centerline of the second channel; or the second channel is angularly offset from a direction normal to the inner surface of the inner layer at the point where the centerline of the first channel intersects the centerline of the second channel, Baker doesn’t specify the particular angle or angular ranges.
It would have been obvious to one of ordinary skill in the art at the time of invention to provide the angle at from 5-85o; 35-65o; 45o since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980). As discussed by Baker, such offset angle/channel provides for airflow while blocking light (Baker page 2:lines 97-106; page 2:lines 119-124; page 3:lines 9-20).
As to claim 13, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and while Baker further teaches the first material is any suitable rigid material (Baker page 2:lines 105-110), Baker only specifies metal and thus not plastic. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the material as plastic, since it has been held to be within the ordinary skill in the art to select a known material on the basis of its suitability for the intended use. Sinclair and Carroll Co. v. Interchemical Corp. 65 USPQ 297 (1945).
As to claim 14, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 13, and while Baker further teaches the first material is configured to black at least 95% of light incident thereon from passing therethrough (Baker page 1:lines 15-20; page 2:lines 120-125).
As to claim 15, Baker teaches all the limitations of the instant invention as detailed above with respect to claim 1, and while Baker further teaches the second material is any suitable material (Baker page 2:lines 105-110) but doesn’t specify flexible rubber or silicone. It would have been obvious to one of ordinary skill in the art at the time of invention to provide the material as flexible rubber or silicone, since it has been held to be within the ordinary skill in the art to select a known material on the basis of its suitability for the intended use. Sinclair and Carroll Co. v. Interchemical Corp. 65 USPQ 297 (1945).
Allowable Subject Matter
Claims 18-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 18, although the prior art of Baker teaches the ophthalmic device as detailed above in claim 1, Baker provides for the channels to be misaligned at the point of mating the first layer and the second layer by an amount “a”. This is unlike the subject matter of claim 18.
Claim 19 depends on claim 18 and thus inherits the allowability.
Claim 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 20, although the prior art of Baker teaches the ophthalmic device as detailed above in claim 1, Baker provides for the channels to be misaligned at the point of mating the first layer and the second layer by an amount “a”. This is unlike the subject matter of claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Patent Documents: The following documents are in addition to the multitude of citations by Applicant showing similar features to Applicant’s claimed and disclosed invention including eye cups, ventilation holes, materials, nose pads, and temples.
Tully (US 1,660,587); Watkins (US 2,823,385); Bohner (3,299,439); Moritz (US 730,192); Bayless (US 893,972); Fox (US 1,064,468); Malcom Jr (US 2,537,275); Shyer (US 2,169,075); Wrighton (US 1,720,811); Cozzens (US 1,441,786); MacLean (GB 651,467).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 October 8, 2026
1 https://en.wikipedia.org/wiki/Point_reflection
