`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
` FILING DATE
`
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
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`CONFIRMATIONNO.
`
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`12/054,299
`
`03/24/2008
`
`William Kokonaski
`
`027497-004103US
`
`5877
`
`Townsend and Townsend and Crew LLP |
`
`EXAMINER
`
`DANG, HUNG XUAN
`Two Embarcadero Center
`ART UNIT
`Eighth Floor
`PAPER NUMBER
`San Francisco, CA 94111-3834|ARTUNT
`2873
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`MAIL DATE
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`05/12/2010
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`DELIVERY MODE
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`PAPER
`
`PTOL-90A (Rev. 04/07)
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`

`

`
`
`Office Action Summary
`
`Application No.
`
`12/054,299
`Examiner
`
`HUNG X. DANG
`
`Applicant(s)
`
`KOKONASKI ET AL.
`Art Unit
`
`2873 So
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 7 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`In no event, however, may a reply be timelyfiled
`after SIX (6) MONTHSfrom the mailing date of this communication.
`If NO period forreply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for replywill, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three monthsafter the mailing date of this communication, even if timely filed, may reduce any
`eamed patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)L] Responsive to communication(s) filed on
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims
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`4)X] Claim(s) 1-31 is/are pending in the application.
`4a) Of the above claim(s)
`is/are withdrawn from consideration.
`5)L] Claim(s)_____ is/are allowed.
`6)L] Claim(s)___is/are rejected.
`7)L] Claim(s)
`is/are objected to.
`8)X] Claim(s) 1-37 are subjectto restriction and/or election requirement.
`
`Application Papers
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`6) C] Other: U.S. Patent and Trademark Office
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`9)L] The specification is objected to by the Examiner.
`10)L] The drawing(s) filed on
`is/are: a)[_] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`11)] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)L] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f).
`a)LJAll b)L_] Some*c)L] Noneof:
`
`1.L] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies ofthe certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action foralist of the certified copies not received.
`
`Attachment(s)
`1) C] Notice of References Cited (PTO-892)
`2) [1] Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [J Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date
`.
`
`4) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date. _
`5) L] Noticeof Informal Patent Application
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`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20100510
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`

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`Application/Control Number: 12/054 ,299
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`Page 2
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`Art Unit: 2873
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`Restriction/Election
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`This application contains claims directed to the following patentably distinct
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`speciesof the claimed invention:
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`I)
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`Claims 1-3, 5, 7, 9, 11-17, 19, 21, 23 and 25-31 drawn to eyeglasses
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`frame including an electronic module is located within a spatial void of the eyeglass
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`frame.
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`I)
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`Claim 4, 6, 8, 10, 18, 20, 22 and 24 drawn to a method for controlling an
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`electro-active lens wherein the lens activated when the wear’s head moves.
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`The species are independent or distinct because one species is patentable over
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`the other (though they may each be unpatentable over the prior art).
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`If elected Specie I, Applicant is require to select one of the species from species
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`IA, IB, and IC. Applicant is required under 35 U.S.C. 121 to elect a single disclosed
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`species for prosecution on the merits to which the claims shall be restricted if no generic
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`claim is finally held to be allowable. Species A further contains claims directed to the
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`following patentably distinct species.
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`Specie IA) Claim 7 drawn to moisture resistant.
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`Specie IB) Claims 23, 26, 29 drawntotilt switch.
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`Specie IC) Claims 27, 30 drawn to a range finder.
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`

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`Application/Control Number: 12/054 ,299
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`Page 3
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`Art Unit: 2873
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`If elected Specie Il, Applicant is require to select one of the species from species
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`IIA and IIB. Applicant is required under 35 U.S.C. 121 to elect a single disclosed
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`species for prosecution on the merits to which the claims shall be restricted if no generic
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`claim is finally held to be allowable. Species A further contains claims directed to the
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`following patentably distinct species.
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`Specie IIA) Claim 6 drawn to moisture resistant.
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`Specie IIB) Claims 10, 18, 20, 22 and 24 drawnto switch.
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`The inventions are distinct, from each other becauseof the following reasons: All
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`species are functionally and materially unique.
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`Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
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`prosecution on the merits to which the claims shall be restricted if no generic claim is
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`finally held to be allowable. Currently, no claim is generic.
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`Applicant is advised that a responseto this requirement must include an
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`identification of the species that is elected consonant with this requirement, and a listing
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`of all claims readable thereon, including any claims subsequently added. An argument
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`that a claim is allowable or thatall claims are generic is considered nonresponsive
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`unless accompanied by an election.
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`Upon the allowance of a generic claim, applicant will be entitled to consideration
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`of claims to additional species which are written in dependent form or otherwise include
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`

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`Application/Control Number: 12/054 ,299
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`Page 4
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`Art Unit: 2873
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`all the limitations of an allowed generic claim as provided by 37 CFR 1.141.
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`If claims
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`are addedafter the election, applicant must indicate which are readable upon the
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`elected species. MPEP. 809.02(a).
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`Should applicant traverse on the ground that the species are not patentably
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`distinct, applicant should submit evidenceoridentify such evidence now of record
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`showing the species to be obvious variants or clearly admit on the record thatthis is the
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`case.
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`In either instance, if the examiner finds one of the inventions unpatentable over
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`the prior art, the evidence or admission may be used in a rejection under 35
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`U.S.C. 103(a) of the other invention.
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`Applicant is advised that the responseto this requirement to be complete must
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`include an election of the invention to be examined even though the requirement be
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`traversed (37 CFR 1.143).
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be amendedin compliance with 37 CFR 1.48(b) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. Any amendment of inventorship must be accompanied by
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`a petition under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to HUNG X. DANG whosetelephone number is (571)272-
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`2326. The examiner can normally be reached on Mondayto Friday from 8:30 to 5:00.
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`

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`Application/Control Number: 12/054 ,299
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`Page 5
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`Art Unit: 2873
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Ricky Mack, can be reached on 571-272-2333. The fax phone numberfor
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`the organization wherethis application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on accessto the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197(toll-free).
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`5/10
`
`/Hung X Dang/
`
`Primary Examiner, Art Unit 2873
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`