Pre-Appeal Brief Request for Review
`U.S. Application No. 17/484,554
`
`Attorney Docket No. EVSO-027US821
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`REMARKSIN SUPPORT OF PRE-APPEAL BRIEF REQUEST FOR REVIEW
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`I. The Rejections of Claims 24 and 25 Are Improper Because They Are Based on
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`Modifications of Figler’s Hinges That Would Render Figler’s Hinges Unsatisfactory for
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`Their Intended Purpose
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`Independent claim 24 relates to electronic eyewear including a framefront, “a first
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`temple coupled to the frame front via a first hinge and havinga first cavity formedtherein,” a
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`second temple,a first electro-active lens, a first electronic module disposedin thefirst cavity,
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`and “a first flexible cable bypassing the first hinge and connectingthefirst electronic module to
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`the first electro-active lens.” Claim 25 dependsdirectly from claim 24 andfurtherrecites a
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`second electro-active lens, “a second electronic module disposed in a second cavity formed in
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`the second temple,” and “a second flexible cable bypassing the second hinge and connecting the
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`second electronic module to the second electro-active lens.”
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`The Office rejects claims 24 and 25 as obvious over U.S. 2009/0251660 to Figler in view
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`of U.S. 2002/0163486 to Ronzani. The Office alleges that it would have been obviousto “adapt
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`and modify the interconnections and conduits that bypass the hinges in electro-optic eyewear of
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`Figler to include flexible ribbon cable routed around the joint according to teachings of Ronzani
`in orderto provide connectivity and permit folding of the stems into a compactunit for storage.”!
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`These rejections are improperat least because the proposed modification would render the
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`hinges of Figler’s electro-optic eyewear unsuitable for their intended purpose of acting as on/off
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`switches.
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`Figler discloses “[a]n electro-optic eyewear assembly” that includes temples connected
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`by hinges to a frame front whereelectrical connection to the eyewear assembly is controlled by
`“moving one of the temples into physical contact with the frame.”” Figler describes how “the
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`temple and the frame function as a switch controlled by their position with respect to one
`another.”* As shownin Figler’s FIG. 14 (reproduced below with annotations), contact pins and
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`corresponding contact pads in the hinges control powerto the assembly: “The pins 206 are
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`aligned with the pads 202 such that when the temple 115 is extended to a wearing position by the
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`user, the pins 206 makeelectrical contact with the respective pads 202.”*
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`' Non-Final Office Action dated March 29, 2024, p.5.
`? Figler abstract.
`3 Figler paragraph [0060].
`4 Figler paragraph [0059] (emphasis in original).
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`

`

`Pre-Appeal Brief Request for Review
`U.S. Application No. 17/484,554
`
`Attorney Docket No. EVSO-027US821
`
`Temple-frame
`interconnection
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`
`Figler further describes how the hinge switch shown abovein FIG. 14 functions as an
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`on/off switch for its assembly:
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`In other words, opening of the temples with respect to the frame, such that a user can
`wearthe eyewearwill switch the power switch 302 to an on condition, and closing of the
`temples with respect to the frame into a storage position, which removescontact between
`the temple surface 205 andthe front frame side edge 201 will open the power switch.°
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`The Office proposes modifying Figler’s hinges based on Ronzani’s “ribbon cable”
`conductors,° which “are routed around the joints 31, 33 to permit folding of the stems 30
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`into a compactunitfor storage.”
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`However, modifying Figler’s hinges to include Ronzani’s ribbon cables would render
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`Figler’s hinges unsatisfactory for their intended purpose of acting as switches that turn the
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`eyewear assembly on and off when the eyewearis folded and unfolded. Indeed, modifying Figler
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`to include ribbon cables that bypass the hinges would effectively remove Figler’s hinge switches
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`entirely. Thus, it would not have been obvious to modify Figler’s electro-optic eyewear assembly
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`to include Ronzani’s ribbon cables as asserted in the Office.
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`5 Figler paragraph [0061] (emphasisin original).
`® Ronzani paragraph [0099].
`7 Ronzani paragraph [0105].
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`

`

`Pre-Appeal Brief Request for Review
`U.S. Application No. 17/484,554
`
`Attorney Docket No. EVSO-027US821
`
`II. The Rejection of Claim 1 is Improper Because the Office Has Not Identified a
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`Conductive Pathway that Couples Electronic Modules in Different Temples Anywhere in
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`the Prior Art
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`Independent claim 1 relates to an electronic eyewear frameincludinga first temple with a
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`first cavity therein, a first electronic module disposedin thefirst cavity, a second temple with a
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`second cavity therein, a second electronic module disposed in the second cavity, and a frame
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`front coupled to the first and second temples with a hinge and including “a front conductive
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`element providing at least part of a conductive pathwayto electrically couple the first electronic
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`module and the second electronic module, the conductive pathway includingat least one flexible
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`cable bypassing the first hinge and the second hinge.”
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`The Office rejects claim 1 as obvious over U.S. 2010/0110368 to Chaum in view of
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`Ronzani. The Office alleges that it would have been obviousto “adapt and modify the electrical
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`connections between electrical components (30) in temples (14,14’) and frame (12, 16,17) of
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`Chaumto include flexible ribbon cables that are routed aroundthe joints according to teachings
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`of Ronzani in order to provide connectivity and permit folding of the stems into a compact unit
`for storage.”® The Office’s rejection of claim 1 is improperat least becauseit is based on the
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`Office’s mischaracterization of Chaum as providing a conductive pathway that couples
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`electronic modules in different temples of claim 1.
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`Chaum describes “an eyeglass frame having a plurality of interactive electrical/optical
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`components.”? While Chaum discloses that “necessary conductors 27 such as wires orcircuit
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`board traces are integrated into the frame 12 to connect and powerthe variouselectrical/optical
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`components 30 at their various locations on the frame,
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`10 there is no discussion in Chaum of
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`these wires or circuit board traces connecting electronic modulesin different temples. Nor does
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`Chaum explicitly disclose a conductive pathway in the frame front. In fact, the Office has not
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`identified any element of Chaum that provides a conductive pathway in the frame front that
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`connects electronic modules in different temples. Instead, page 6 of Office Actionstates:
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`[T]he frame front comprising a front conductive element (i.e. as 17/16 has
`cavity(ies) for necessary conductors/wires 27 for electronics e.g. 30a-i, for power
`and operation, e.g. paragraphs [67-69], and equivalents in Figs. 1-10) providing at
`least part of a conductive pathwayto electrically couple the first electronic
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`8 Non-Final Office Action dated March 29, 2024,p. 6.
`° Chaum abstract.
`1° Chaum, paragraph [0068] (emphasisin original); see also Chaum FIG.1A.
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`3
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`

`

`Pre-Appeal Brief Request for Review
`U.S. Application No. 17/484,554
`
`Attorney Docket No. EVSO-027US821
`
`module and the second electronic module (i.e. as part of 27 wires connect frame
`12, 16, 17 with components 30a-f and 30g-i in temples 14, 14’, via switch e.g.
`758 and hinge e.g. 29 connections see especially Figs. 1, 3-5, 7a-d, 9a-c,e.g.
`paragraphs[67-69,80-86, 124-128, 140-142], and equivalents in Figs. 1-10)."!
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`However, none of these sections of Chaum disclose a conductive pathway in the frame
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`front that couples electronic modules in different temples. Indeed, Chaum is silent on a
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`conductive pathway in the frame front that couples electronic modules in different temples as in
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`claim 1. Instead, the Non-Final Office Action states that this conductor is necessarily present
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`based on an assumption that conductors 27 connect componentsin different temples via the
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`frame front. But Chaum does not even disclose connections to component30g and/or 30h, which
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`Chaum’s Figure 1C (reproduced below with annotations) showsis in or on the front face 17 of
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`the eyewear:
`
`Front Face
`
`.
`
`ss mY
`
`Upper Rim Portion
`‘
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`Bricge Component
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`we BAK
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`Furthermore, Chaum’s Figure 1A (reproduced below with annotations) only shows a
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`Lower Rim Porton
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`conductor 27 connecting two of the three components (30b and 30c) in one temple. However, as
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`shown in Chaum’s Figure 1A, this conductor 27 does not even extend to connect to the third
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`component (30a) or extend towards and/or into the optic frame 16.
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`Hectronic device
`
`1D
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`conductor
`27
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`Optical components antenna
`
`io 7
`
`'! Non-Final Office Action dated March 29, 2024,p.6.
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`

`

`Pre-Appeal Brief Request for Review
`U.S. Application No. 17/484,554
`
`Attorney Docket No. EVSO-027US821
`
`The Office appears to be making an inherency rejection based on Chaum.’ However,
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`“t]he fact that a certain result or characteristic may occur or be present in the priorart is not
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`sufficient to establish the inherency ofthat result or characteristic.” !’ In this case, component 30h
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`is not necessarily connected to a front conductive element that couples electronic modules in
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`different temples. There are at least three other possibilities, none of which provide the electronic
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`eyewear frameofclaim 1.
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`First, there could be no electrical connections between the frame front and the temples. In
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`this possibility, the component(s) in the left temple could be poweredbya battery in the left
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`temple, the component(s) in the frame front could be poweredby a battery in the framefront,
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`and so on. Second, a conductor could be connected to the edge of component 30h without
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`forming a conductive pathway in the frame front that couples electronic modulesin different
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`temples. In other words, component 30h may be connected via a conductor to only one temple
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`(e.g., the left temple). Third, component 30h could be wirelessly connected to other components
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`30 or a powersupply via coils as disclosed in Chaum’s paragraphs [0129]—[0135] and Figures
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`8A-—8F. Given these alternatives, Applicant respectfully submits that Chaum does not inherently
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`disclose an electronic spectacles frame with a “frame front comprising afront conductive
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`element providing at least part ofa conductive pathway to electrically couple the first electronic
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`module and the second electronic module” as recited in claim 1.
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`The cited sections of Ronzani fail to cure Chaum’s deficiencies with respect to claim 1.
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`Thus, the proposed modification of Chaum in view of Ronzani doesnotresult in the electronic
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`eyewearframe of claim 1 and claim 1 is patentable over the combination of Chaum and Ronzani.
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`III. Conclusion
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`Because the rejections of claims 1, 24 and 25 are improperfor at least the reasons
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`outlined above, reconsideration and a notice of allowance1s respectfully requested.
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`12 See Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasisoriginal) (“In relying upon
`the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support
`the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior
`art.”); see also MPEP 2112.
`13 MPEP 2112(IV) (citing Jn re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) and In re
`Oelrich, 666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981)) (emphasis original).
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`5
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