DETAILED ACTION
This office action is in response to the amendment filed February 24, 2026 in which claims 8, 10-11, and 15-17 are presented for examination, claims 1-7 are withdrawn, and claims 12-14 are canceled.
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 .
Response to Arguments
Applicant’s First Argument: The claim objections for informalities detailed in the prior office action should be withdrawn at least in view of current amendments to the claims.
Examiner’s Response: Agreed. The claim objections for informalities are withdrawn.
Applicant’s Second Argument: Rejection of claim 8 under 35 USC 112(b) for the recitation “dark shades” should be withdrawn at least in view of current amendments to claim 8 to further recite that “the dark shades specifically include black.”
Examiner’s Response: Examiner respectfully disagrees. It is respectfully maintained that it is impossible to determine the metes and bounds of the subjective term “dark,” and although claim 8 has been amended to recite that the dark shades “specifically include black,” it is nevertheless impossible to determine the metes and bounds of the limitation at issue at least because it is not clear which other color(s) besides black are included and/or excluded from the limitation “dark shades, the dark shades specifically include black.” The rejection is maintained.
Applicant’s Third Argument: The bases of rejection under 35 USC 112(b) to claims 15 and 16 detailed in the prior office action have been obviated at least due to current amendments to claims 15 and 16.
Examiner’s Response: Agreed. However, claims 15 and 16 remain rejected under 35 USC 112(b) for depending from rejected claim 8.
Applicant’s Fourth Argument: Rejection of claim 8 under 35 USC 102 over USPN 2,305,080 Hemphill should be withdrawn at least in view of current amendments to claim 8.
Examiner’s Response: In view of Applicant’s amendment, the search has been updated. Applicant’s arguments, which appear drawn only to the newly amended limitations and previously presented rejections have been considered but are moot in view of the new grounds of rejection.
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 8, 10-11, and 15-17 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.
Claim 8 recites the limitation “the colors of the outer and inner light-blocking layers are dark shades, the dark shades specifically include black.” This limitation renders the claim indefinite at least because it is impossible to determine the metes and bounds of the subjective phrase “dark shades.” The limitation additionally renders the claim indefinite because although it recites that “the dark shades specifically include black,” this limitation does not further indicate which other color(s) besides black are included and/or excluded from the phrase “dark shades.” It is respectfully noted that the specification indicates that the “dark shades specifically include black, dark blue, or dark brown” (see specification at paragraphs 0022 and 0064). However, this disclosure does not render the limitation in claim 8 definite at least because although the disclosure specifies that the dark shades “specifically include” black, dark blue, or dark brown, the disclosure does not specify, for example, that the phrase “dark shades” only includes black, dark blue, or dark brown and/or whether the phrase “dark shades” specifically excludes any color(s). It is further respectfully noted that it is impossible to determine the metes and bounds of the subjective term “dark,” and it is therefore impossible to determine which color(s) are or are not considered to be “dark blue” and “dark brown.”
Dependent claims are rejected at least for depending from a rejected claim.
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 8, 10, 15, and 17 are rejected, insofar as definite, under 35 U.S.C. 103 as being unpatentable over USPN 6,745,397 Magidson in view of USPN 2,305,080 Hemphill.
To claim 8, Magidson discloses an eye mask body specifically a light-blocking (col. 1, lines 11-25; claim 1) eye mask body comprising an outer light-blocking layer (140) and an inner light-blocking layer (240) stacked together (see Figures 1A-2; col. 2, line 26 – col. 3, line 25),
further comprising at least one filling layer (190) located between the outer light-blocking layer and the inner light-blocking layer (see Figures 1A-2; col. 2, line 60 – col. 3, line 5); or, the at least one filling layer is located on an outer side of the outer light-blocking layer (see Figures 1A-2; col. 2, line 60 – col. 3, line 5); or, the at least one filling layer is located on an outer side of the inner light-blocking layer (see Figures 1A-2; col. 2, line 60 – col. 3, line 5), wherein the at least one filling layer is made of hot-air cotton or sponge (col. 2, line 60 – col. 3, line 5; sponge).
Magidson does not explicitly disclose the colors of the outer and inner light-blocking layers as being dark shades, the dark shades specifically including black.
However, Hemphill discloses an eye mask body (see Figures 1-5; pg. 1, col. 2, line 17 – pg. 2, col. 2, line 45), specifically a light-blocking eye mask body (pg. 1, col. 2, lines 17-36) comprising an outer light-blocking layer (12) and an inner light-blocking layer (11) stacked together (see Figures 1-5; pg. 1, col. 2, lines 17-36), and the colors of the outer and inner light-blocking layers are dark shades, the dark shades specifically including black (pg. 1, col. 2, lines 17-36; black).
Magidson and Hemphill teach analogous inventions in the field of eye masks. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the outer and inner light-blocking layers of the eye mask body of Magidson to be dark shades, the dark shades specifically including black as taught by Hemphill because Hemphill teaches that this configuration is known in the art and beneficial for excluding light rays from the eyes of a wearer so that the wearer may rest undisturbed even in daylight and because black suggests darkness (pg. 1, col. 1, lines 1-3; pg. 1, col. 2, lines 24-22).
To claim 10, the modified invention of Magidson (i.e., Magidson in view of Hemphill, as detailed above) further teaches an eye mask body wherein each layer of the light-blocking eye mask body is connected together in an edge area by a non-sewing method, and the non-sewing method specifically includes a hot pressing method, an ultrasonic bonding method or an adhesive bonding method (see especially Figure 1A and col. 2, line 60 – col. 3, line 5 of Magidson, hot pressing method; pg. 1, col. 2, lines 17-36 and pg. 2, col. 1, lines 26-47 of Hemphill, adhesive bonding method).
To claim 15, the modified invention of Magidson (i.e., Magidson in view of Hemphill, as detailed above) further teaches an eye mask body wherein it is a three-layer structure comprising the outer light-blocking layer, one filling layer of the at least one filling layer, and the inner light-blocking layer, wherein the one filling layer is located between the outer light-blocking layer and the inner light-blocking layer, and the layers are pressed together in an edge region through heat pressing (see especially Figure 1A and col. 2, line 60 – col. 3, line 5 of Magidson, heat pressing).
To claim 17, the modified invention of Magidson (i.e., Magidson in view of Hemphill, as detailed above) further teaches an eye mask body specifically a light-blocking eye mask, comprising the eye mask body according to claim 8 (see above) and ear straps (27 of Hemphill) fixed to the eye mask body (see Figures 1-4 and pg. 2, col. 1, line 50 – pg. 2, col. 2, line 36 of Hemphill; col. 3, lines 6-19 of Magidson).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Magidson in view of Hemphill (as applied to claim 8, above) in further view of USPN 10,406,035 Scott.
To claim 11, the modified invention of Magidson (i.e., Magidson in view of Hemphill, as detailed above) further teaches an eye mask body wherein the outer light-blocking layer and the inner light-blocking layer may comprise a number of suitable materials (col. 2, line 60 – col. 3, line 5 of Magidson; pg. 1, col. 2, lines 17-36 of Hemphill).
The modified invention of Magidson does not expressly teach an eye mask body wherein the outer light-blocking layer and the inner light-blocking layer are non-woven fabrics without warp and weft threads.
However, Scott teaches an eye mask body (see Figures 1-7; col. 5, line 32 – col. 8, line 12) comprising non-woven fabrics without warp and weft threads (col. 2, lines 30-34; col. 5, lines 58-67).
The modified invention of Magidson and Scott teach analogous inventions in the field of eye masks. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the eye mask body of the modified invention of Magidson in nonwoven fabrics as taught by Scott because Scott teaches that nonwoven fabrics are suitable materials for eye mask bodies. It would further have been obvious to one of ordinary skill in the art that nonwoven fabrics are relatively inexpensive to produce. It is further respectfully noted that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Magidson in view of Hemphill (as applied to claim 8, above) in further view of US Pub No. 2010/0122398 Luciano.
To claim 16, the modified invention of Magidson (i.e., Magidson in view of Hemphill, as detailed above) teaches an eye mask body as recited in claim 8, above.
The modified invention of Magidson does not expressly teach an eye mask body wherein the outer surface of the outer-light blocking layer has decorative patterns; or an additional decorative layer with patterns is provided outside the outer-light blocking layer, making the decorative layer an outermost layer; an additional comfort layer, including a cooling layer, or a warming layer, or a skin friendly soft layer, is provided outside the inner light-blocking layer.
However, Luciano teaches an eye mask body (see Figures 1-7; paras. 0032-0044) comprising an outer decorative layer (see Figures 1 and 3) and an inner comfort layer (40) (see Figures 1-3; para. 0033).
The modified invention of Magidson and Luciano teach analogous inventions in the field of eye masks. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the eye mask body of the modified invention of Magidson to include an outer decorative layer and an inner comfort layer as taught by Luciano because Luciano teaches that this configuration is known in the art and that the decorative layer provides aesthetic adornment and the inner comfort layer provides comfort (see Figures 1 and 3; para. 0033).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRIFFIN HALL whose telephone number is (571)270-0546. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00 pm.
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/F Griffin Hall/Primary Examiner, Art Unit 3732
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