U.S. Application No. 17/484,554
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`Attomcy Docket No. EVSO-027US821
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`REMARKS
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`In response to the Office Action dated September 15, 2023,
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`in the above-identified
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`application, Applicant respectfully requests reconsideration. All of the issues raised in the Office
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`Action have been carefully considered and are addressed in this response. The application as
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`now presented is believed to be in allowable condition.
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`1.
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`Status of the Claims and Summary of Amendments
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`Upon entry of this response, claims 1-14 and 21—25 will be pending in this application,
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`of which claims | and 24 are independent claims.
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`Claim 1 is being amendedto recite that “the conductive pathway includ[es] at least one
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`flexible cable bypassing the first hinge and the second hinge.” Support for the amendment to
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`claim 1 appearsat least in paragraph [0095] of the specification as filed and in FIG. 15 asfiled.
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`Claims 10 and 23 are being amended to conform to claim 1 as amended.
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`Claim 24 is being amendedto recite “a first fexible cable bypassing the first hinge and
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`connecting the first electronic module to the first electro-active lens.”
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`Claim 25 is being amended to recite “‘a second flexible cable bypassing the second hinge
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`and connecting the second electronic module to the second electro-active lens.”
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`Support for the amendments to claims 24 and 25 also appearsat least in paragraph [0095 |
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`of the specification as filed and in FIG. 15 asfiled.
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`2.
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`Non-Statutory Double Patenting
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`Claims 1, 3, 4, 6, 7, 9, 10, and 12—15 stand provisionally rejected on the ground of non-
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`statutory double patenting as unpatentable over claim 1-3, 8, 9, 13, 14, 16, and 17 of co-pending
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`U.S. Application No. 17/484,550. Applicant respectfully requests that this rejection be held in
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`abeyance until U.S. Application No. 17/484,550 has been allowed and this application is
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`otherwise in condition for allowance.
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`3.
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`Rejections Under 35 U.S.C. § 102
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`Claims 24 and 25 stand rejected as anticipated by US 2009/0251660 AI to Figler ef a/.,
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`which discloses an electro-optic eyewear assembly. In particular, page 6 of the Office Action
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`indicates that Figler’s FIG. 14 (reproduced below) shows“a first conductive pathway bypassing
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`the first hinge and connecting the first electronic module to the first electro-active lens” as in
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`claim 24.
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`U.S. Application No. 17/484,554
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`Attomcy Docket No. EVSO-027US821
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`Figler’s FIG. 14 shows contact pads 206A and 206B on the edge of the temple of an
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`electro-optic eyewear assembly and contact pads 202A and 202B onthe edge of the framefront
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`of the electro-optic eyewear assembly. A hinge connects the frame front to the temple. When the
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`hinge is in a “storing” position, as shown in FIG. 14, the contact pads don’t touch. When the
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`hinge is in a “wearing” position, the contact pads 206A and 206B touch contact pads 202A and
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`202B, respectively, forming a conductive path from a control circuit 152R in the temple to an
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`electro-active lens 26’R in the frame front. This causes the hinge to act as a switch for tuming
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`the electro-active lens 26’R on andoff:
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`.
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`204--""
`a
`_—
`iSeR--*
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`FIG-14
`ao /
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`Claim 24 is being amendedto recite “a first flexible cable bypassing the first hinge and
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`connecting the first electronic module to the first electro-active lens” instead of a first conductive
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`path. Figler does not disclose a flexible cable like the one recited in amended claim 24.
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`Therefore, Figler does not anticipate amended claim 24. Amended claim 25 depends from
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`amended claim 24 and recites a second flexible cable and so is patentable over Figler too.
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`4,
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`Rejections Under 35 U.S.C. § 103
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`Claims 1-14 and 21-23 stand rejected as unpatentable by US 2010/0110368 Al
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`to
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`Chaum in view of Figler. According to pages 7 and 8 ofthe office action, Chaum discloses an
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`eyeglass appliance platform every element of claim 1 except a conductive pathway that bypasses
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`U.S. Application No. 17/484,554
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`Attomcy Docket No. EVSO-027US821
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`first and second hinges of claim 1. According to page 8 of the office action, Figler’s FIG. 14
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`showssuch a conductive pathway, and it would have been obvious to modify Chaum’s eyeglass
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`appliance platform to include Figler’s conductive pathway.
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`Claim 1 is being amendedto recite that “the conductive pathway include[es] at least one
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`flexible cable bypassing the first hinge and the second hinge.” The asserted combination of
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`Chaum and Figler does include such “a flexible cable.” Therefore, amended claim | is patentable
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`over the asserted combination of Chaum and Figler. Claims 2-14 and 21—23 depend from
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`amended claim | and are therefore patentable over the asserted combination of Chaum and
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`Figler for at least the same reason.
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`Claims 10 and 23 recite first and second flexible cables, respectively, and were rejected
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`in view of Chaum’s alleged disclosure of “flexible wires and cables and connections connecting
`one side arm 14 (714) andit's electrical components with optical frame 16 (716).”' But the cited
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`sections of Chaum don’t say anything about flexible cables or wires, nor do they showa flexible
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`cable that bypasses a hinge. In fact, Chaum is silent on flexible cables. Therefore, Chaum does
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`not provide flexible cables as in the amendedclaims.
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`1 Office Action, page 10.
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`U.S. Application No. 17/484,554
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`Attomcy Docket No. EVSO-027US821
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`CONCLUSION
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`It is respectfully believed thatall of the rejections set forth in the Office Action have been
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`addressed. However, the absence of a reply to a specific rejection, objection, or comment set
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`forth in the Office Action does not signify agreement with or concession of that rejection,
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`objection, or comment. In addition, there may be reasons for patentability of any or all pending
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`claims (or other claims) that have not been expressed. Furthermore, nothing in this paper should
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`be construed as an intent to concede any issue with regard to any claim.
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`Applicant believes that
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`the present application is now in condition for allowance.
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`Favorable reconsideration of the application as amended is respectfully requested.
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`The Examiner is invited to contact the undersigned by telephone if it is felt that a
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`telephone interview would advance the prosecution of the present application.
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`The Director is hereby authorized to charge any appropriate fees under 37 C.F.R. §§1.16,
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`1.17, and 1.21 that may be required by this paper and to credit any overpayment, to Deposit
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`Account No. 60-1876. If an extension of time is required to makethis reply timely, please charge
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`the appropriate extension of time fee under 37 C.F.R. § 1.17 to Deposit Account No. 60-1876 if
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`not already paid via EFS.
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`Dated: October 6, 2023
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`Respectfully submitted,
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`Smith Baluch LLP
`376 Boylston St, Suite 401
`Boston MA 02116
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`Phone: (617) 947-7280
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`By /Christopher Max Colice/
`Christopher Max Colice
`Registration No. 65634
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