U.S. Application No. 17/484,554
`
`Attorney Dockct No. EVSO-027US21
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`1.
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`Status of the Claims and Summary of Amendments
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`REMARKS
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`Upon entry of this response, claims 1—14 and 21—29 will be pending in this application,
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`of which claims 1 and 24 are independentclaims.
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`Claim 1 is being amended to recite that the frame front comprises “rims to hold lenses”;
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`the front conductive element is “embedded in the frame front, routed through the nms around the
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`lenses, and provid[es] at least part of a conductive pathway to electrically couple the first
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`electronic module and the second electronic module”; and “the first electronic module is
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`configured to communicate with the second electronic module via the conductive pathway.”
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`Support for these amendments appears at least in paragraphs [0042] and [0105]—[0107] of the
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`specification as filed and in FIGS. 10, 13, and 16—19 asfiled.
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`Claim 24 is being amended to specify that the conductive link is a first conductive link
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`and to recite “a battery disposed in the second temple” and “a second conductive link electrically
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`isolated from the first conductive link and connecting the first electronic module to the battery.”
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`Support for this amendmentappearsat least in paragraphs [0044], [0061], [0079], and [0082] of
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`the specification as filed and in FIGS. 10, 13, and 16-19 as filed.
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`Claims 26—29 are being added. Support for this claim appears at least in paragraphs
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`[0014], [0042], and [0081 ]-[0084] of the specification as filed and in FIGS. 10, 13, and 16-19 as
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`filed.
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`2.
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`Rejections of Claim 1 Under 35 U.S.C. 8 103
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`Claim 1 stands rejected as obvious over U.S. Pre-Grant Publication No. 2010/0110368
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`Al
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`to Chaum, which discloses an eyeglass appliance platform,
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`in view of U.S. Pre-Grant
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`Publication No. 2002/0163486 Al to Ronzani et al., which discloses a head-mounted display.
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`According to the Non-Final Office Action, Chaum discloses an electronic eyewear frame with a
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`first temple having a first cavity formed therein, a first electronic module disposed in the first
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`cavity, a second temple having a second cavity formed therein, a second electronic module
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`disposed in the second cavity, and a frame front operably coupled to the first temple via a first
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`hinge and operably coupled to the second temple via a second hinge wherein the frame front
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`includes a front conductive element providing at
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`least part of a conductive pathway to
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`electrically couple the first electronic module and the second electronic module.!
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`The Office acknowledges that Chaum does not disclose that the conductive pathway
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`includesat least one flexible cable bypassing the first hinge and the second hinge as in claim 1.”
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`The Office relies on Ronzani to cure Chaum’s deficiency with respect to the at least one
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`flexible cable. The Non-Final Office Action dated March 29, 2024 states that since Ronzani is in
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`the same field of invention of a head-mounted display system glasses and further teaches flexible
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`ribbon cables bypassing the hinges of the glasses, one skilled in the art would have been
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`motivated to “adapt and modify the electrical connections between electrical components (30) in
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`temples (14,14’) and frame (12, 16, 17) of Chaum to include flexible ribbon cables that are
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`routed around the joints according to teachings of Ronzani in order to provide connectivity and
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`permit folding of the stems into a compact unit for storage.”?
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`The Office’s rejection of claim 1 is improper for several reasons. First, Chaum does not
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`explicitly disclose a conductive pathway that couples electronic modules in different temples.
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`Second, Chaum does not
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`inherently disclose a conductive pathway that couples electronic
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`modules in different temples. Finally, Ronzani fails to cure Chaum’s deficiencies with respect to
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`a conductive pathway that couples electronic modules in different temples. Thus, the proposed
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`modification of Chaum in view of Ronzani does not provide a conductive pathway that couples
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`electronic modules in different temples as in claim 1.
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`2.4
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`Chaum Does Not Explicitly Disclose a Conductive Pathway that Couples Electronic
`Modulesin Different Temples
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`The Non-Final Office Action asserts that Chaum discloses a conductive pathway that
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`couples electronic modules in different temples as recited claim 1. In particular, page 6 of the
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`Non-Final Office Action states:
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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 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-
`
`
`' Non-Final Office Action dated March 29, 2024, pages 5-6.
`? Id. at page 6.
`3 Td.
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`d, 9a-c, e.g. paragraphs [67-69,80-86, 124-128, 140-142], and equivalents in
`Figs. 1-10).*
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`This assertion is improperat least because it is based on the Office’s mischaracterization
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`of Chaum as providing a conductive pathway that couples electronic modules in different
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`temples as in claim 1. However, none of the sections of Chaum cited by the Office in the Non-
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`Final Office Action disclose a conductive pathway in the frame front that couples electronic
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`modules in different temples. Indeed, the Office has not identified any element or section of
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`Chaum that explicitly discloses a frame front with a conductive pathway that couples electronic
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`modules in different temples. Instead, the Non-Final Office Action improperly states that this
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`conductor is necessarily present based on an unsupported assumption that conductors 27 connect
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`componentsin different temples via the frame front.
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`Chaum describes “an eyeglass frame having a plurality of interactive electrical/optical
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`components.”° Chaum mentions that “necessary conductors 27 such as wires or circuit board
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`traces are integrated into the frame 12 to connect and power the various electrical/optical
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`components 30 at their various locations on the frame.” However, this sentence combined with
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`Chaum’s Figure 1A (reproduced below with annotations) are Chaum’s only disclosure of these
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`“necessary conductors 27.” Additionally, Chaum’s Figure 1A only shows this conductor 27
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`connecting two of the three components (30b and 30c) in the first temple (e.g., side arm 14).
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`However, as illustrated in Figure 1A, the conductor 27 does not extend to connect to the third
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`component (30a) or extend towards and/orinto the optic frame 16.
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`Side
`arm
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`Frame
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`Fiectronic device
`iO
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`aFigure 4A
`conductor
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`hinge
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`
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`4 Td.
`> Chaum abstract.
`© Chaum, paragraph [0068] (emphasisin original); see also Chaum FIG. 1A.
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`3
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`Furthermore, Chaum does notillustrate or disclose that its conductor 27 extends into the
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`frame front to connect to any components contained in the frame front (e.g., components 30g,
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`30h, and/or 301). Specifically, Chaum’s Figure 1C (reproduced below with annotations) does not
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`show any connections to components 30g, 30h, and/or 30i, which are in or on the front face 17
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`(e.g., frame front) of Chaum’s eyewear:
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`Frant Face
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`Upper Rim Portion
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`Bridge
`&.
`Component
`Ze
`
`
`ROM os
`
`jf
`[fens Optic Frame
`
`isie
`
`Figere
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`Lower Rim Portion
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`Chaum also fails to disclose that any of the components 30g—30i on the optic frame 15 are
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`connected to any of the components 30a—30cin the first temple or side arm 14.
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`Finally, Chaum also does notillustrate or disclose that its conductor 27 extends into the
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`frame front to connect to components in the second temple or side arm 14’. Chaum’s Figure 1B
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`(reproduced below with annotations) shows three additional components (e.g., components 30d,
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`30e, 30f) in a second temple (e.g., side arm 14’) none of which are connected to each other with
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`a conductor. Moreover, Chaum also does not show or suggest that any of the components (30d,
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`30e, 30f) in the second side arm are connected to any component in the first side arm (e.g.,
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`components 30a, 30b, and/or 30c) or to any component the frame front (e.g., components 30g,
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`30h, and/or 301).
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`Component
`Bod.
`all
`
`ae
`fc Component
`
`
`
`
`
`Component
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`There is no discussion in Chaum of wires or circuit board traces (e.g., conductor 27)
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`connecting electronic modules in different temples or forming a conductive pathway in the frame
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`front. Specifically, Chaum does not disclose that its conductor 27 extends into the frame front 17
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`to connect to components 30g, 30h, and/or 301 in the frame front nor does Chaum disclose that
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`its conductor 27 forms a conductive pathway in the frame front to couple the components
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`contained in each side arm (e.g., components 30a—30c and components 30d—30f). Indeed, Chaum
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`is silent on a conductive pathway in the frame front that couples electronic modules in different
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`temples as in claim 1. Accordingly, Chaum does not explicitly disclose a conductive pathway in
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`the frame front that couples electronic modules in different temples as asserted by the Office.
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`Moreover, Chaum fails to disclose or suggest a conductive element that is “embedded in
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`the frame front” and “routed through the rims around the lenses” and forms part of a conductive
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`pathway between electronic modules in different temples as in amended claim 1. Chaum is also
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`silent on a “first electronic module [that]
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`is configured to communicate with the second
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`electronic module via [such a] conductive pathway” as in amendedclaim 1.
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`2.2
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`Chaum does not Inherently Disclose a Conductive Pathway that Couples Electronic
`Modules in Different Temples
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`The Non-Final Office Action asserts that Chaum discloses a frame front with a front
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`conductive element because “17/16 has cavity(ies)
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`for necessary conductors/wires 27 for
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`electronics e.g. 30a-i, for power and operation.”’ Additionally,
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`the Non-Final Office Action
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`asserts that Chaum discloses at least part of a conductive pathwayto electrically couple the first
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`electronic module and the second electronic module since “part of 27 wires connect frame 12,
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`? Non-Final Office Action dated March 29, 2024, page 6.
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`5
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`16, 17 with components 30a-f and 30g-i in temples 14, 14’”% As best understood, the Office
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`appears to be making an inherency rejection based on Chaum. An inherency rejection would be
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`improperat least because Chaum also does not necessarily disclose a conductive pathway in the
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`frame front that couples electronic modulesin different temples.
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`To support an inherency rejection,
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`the Office must “provide a basis in fact and/or
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`technical
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`reasoning to reasonably support
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`the determination that
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`the allegedly inherent
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`characteristic necessarily flows from the teachings of the applied prior art.”? However, “[t]he fact
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`that a certain result or characteristic may occur or be present in the prior art is not sufficient to
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`establish the inherency of that result or characteristic.”!° In this case, component 30h is not
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`necessarily connected to a front conductive element that couples electronic modules in different
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`temples. Moreover, components 30a—c in the first temple 14 and components 30d-—f in the
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`second temple 14’ are not necessarily connected via a conductive pathway in the frame front.
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`Thereare at least three other possibilities, none of which provide the electronic eyewear frame of
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`claim 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 powered by a battery in the left
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`temple, the component(s) in the frame front could be powered by a battery in the frame front,
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`and the component(s) in the right temple could be powered by a battery in the right temple.
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`Second, a conductor could be connected to the edge of component 30h without forming a
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`conductive pathway in the frame front that couples electronic modules in different temples. In
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`other words, component 30h may be connected via a conductor to only one temple (e.g., the left
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`temple). Third, component 30h could be wirelessly connected to other components 30 or a power
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`supply via coils as disclosed in Chaum’s paragraphs [0129]-[0135] and Figures 8A—8F.
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`Alternatively, component 30h could be wirelessly connected to other components 30 using
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`optical link(s) or wireless radio frequency or magnetic field communication as described in
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`paragraph [0041] of Appellant’s application asfiled.
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`Given these alternatives, Applicant respectfully submits that Chaum does not inherently
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`disclose an electronic spectacles frame with “a front conductive element embeddedin the frame
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`8 Td.
`° Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis original); see
`also MPEP 2112.
`'O MPEP 2112(IV)(citing In 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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`

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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`front, routed through the rims around the lenses, and providing at least part of a conductive
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`pathwayto electrically couple the first electronic module and the second electronic module” or a
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`“first electronic module [that] is configured to communicate with the second electronic module
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`via the conductive pathway” as in amended claim 1.
`
`2.3
`
`Ronzani Fails to Cure Chaum’s Deficiencies with Respect to a Conductive Pathway that
`Couples Electronic Modules in Different Temples
`
`The Office relies on Ronzani to cure Chaum’s deficiency with respect to the at least one
`
`flexible cable. The Non-Final Office Action states that Ronzani discloses “ribbon cables 310,
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`320 that are routed around joints 31, 33 and are connecting electronic modules/circuits and
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`optical assembly e.g. 220, 240, 100, as depicted in Figs. 3-1, paragraphs [99-105, 92-96], and
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`permitting folding of the stems 30 into a compact unit for storage).”'' However,
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`the cited
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`sections of Ronzani fail to cure Chaum’s deficiencies with respect to “a front conductive element
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`embedded in the frame front, routed through the rims around the lenses, and providing at least
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`part of a conductive pathway to electrically couple the first electronic module and the second
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`electronic module” and a “first electronic module [that] is configured to communicate with the
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`second electronic module via the conductive pathway” as in amended claim |. As a result, the
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`proposed modification of Chaum in vicw of Ronzani docs not result in the clectronic cyewear
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`frame of amended claim 1.
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`3.
`
`Rejections of Claims 2-14 and 21—23 Under35 U.S.C. § 103
`
`Claims 2—14 and 21-23, all of which depend from claim 1, have also been rejected as
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`obvious over Chaum in view of Ronzani.'? And claim 22 has been rejected as obvious over
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`Chaumin view of Ronzani and further in view of U.S. Pre-Grant Publication No. 2009/025 1660
`
`Al to Figler, which discloses an electro-optic eyewear assembly.'? Claims 2—14 and 21-23
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`depend from amended claim 1 and are nonobvious for at least the same reasons as amended
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`claim 1. Furthermore, the cited sections of Figler fail to cure the deficiencies of Chaum and
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`Ronzani with respect to amended claim 1 and thus claim 22 is nonobvious over the combination
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`of Chaum, Ronzani, and Figler.
`
`
`
`'! Non-Final Office Action dated March 29, 2024, page6.
`'2 Non-Final Office Action dated March 29, 2024, pages 5-10.
`'3 Id. at pages 10-11.
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`4,
`
`Rejections of Claims 24 and 25 Under 35 U.S.C. § 103
`
`Claims 24 and 25 stand rejected as unpatentable over Figler in view of Ronzani
`
`According to the Office Action, Figler discloses electronic eyewear including a frame front, a
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`first temple coupled to the frame front via a first hinge and having a first cavity formed therein, a
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`second temple coupled to the frame front via a second hinge, a first electro-active lens disposed
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`in the frame front, a first electronic module disposedin the first cavity and configured to control
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`a tint and/or a focusof the first electro-active lens, and a first conductive pathway bypassing the
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`first hinge and connecting thefirst electronic module to the first electro-active lens.!*
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`The Office acknowledges that Figler does not disclose that the first conductive pathway
`
`is a flexible cable as in claim 24.'°
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`The Office relies on Ronzani to cure Figler’s deficiency with respect to the flexible cable.
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`The Non-Final Office Action states that it would have been obvious to “adapt and modify the
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`interconnections and conduits that bypass the hinges in electro-optic eyewear of Figler to include
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`flexible ribbon cable routed around the joint according to teachings of Ronzani in order to
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`provide connectivity and permit folding of the stems into a compact unit for storage.” !© This
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`rejection is improper at least because the proposed modification would render the hinges of
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`Figler’s electro-optic eyewear unsuitable for their intended purpose of acting as on/off 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 where electrical connection to the eyewear assembly is controlled by
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`“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
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`another.”!8 Specifically Figler’s FIG. 14 (reproduced below with annotations) shows contact
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`pads 206A and 206B onthe edgeof the temple of an electro-optic eyewear assembly and contact
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`pads 202A and 202B on the edge of the frame front of the electro-optic eyewear assembly. A
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`hinge connects the frame front to the temple. Figler describes how these contact pins and
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`corresponding contact pads in the hinges control power to 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
`
`'4 Td. at pages 4-5.
`1S Td. at page 4.
`'6 Td. at page 5.
`'” Figler abstract.
`'8 Figler paragraph [0060].
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`user, the pins 206 makeelectrical contact with the respective pads 202.”!° Thus, this causes the
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`hinge to act as a switch for turning the electro-active lens 26’R on andoff.
`
`Temple-irame
`interconnection
`200
`Magnet Temple=|
`405 contacts
`i
`408+
`
`
`
`
`Teriple
`
`Tam,Scontacts
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`B04-—" Pm
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`Canduilt
`
`Whenthe hingeis in a “storing” position, as shown in FIG. 14, the contact pads don’t
`
`touch. When the hinge is in a “wearing” position, the contact pads 206A and 206B touch contact
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`pads 202A and 202B, respectively, forming a conductive path from a control circuit 152R in the
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`temple to an electro-active lens 26’R in the frame front. Figler further describes how the hinge
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`switch shown abovein FIG. 14 functions as an on/off switch for its assembly:
`
`In other words, opening of the temples with respect to the frame, such that a user
`can wear the eyewear will switch the power switch 302 to an on condition, and
`closing of the temples with respect to the frame into a storage position, which
`removes contact between the temple surface 205 and the front frame
`side
`edge 201 will open the powerswitch.”°
`
`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 into a
`
`compact unit for storage.”?? As best understood, the modified version of Figler would include
`
`Ronzani’s ribbon cable connecting circuit 152R in temple 115 to the electrode tabs 62A and 62B
`
`for the lens 26’ R. However, connecting circuit 152R in temple 115 directly to the electrode tabs
`
`62A and 62B with Ronzani’s ribbon cable would result in continuous power bcing provided to
`
`'9 Figler paragraph [0059] (emphasis in original).
`20 Figler paragraph [0061] (emphasis in original).
`2! Ronzani paragraph [0099].
`22 Ronzani paragraph [0105].
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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`the lens 26’ R. In other words, Figler’s hinge switch would no longer control powerto the lens
`
`26’ R or operate to turn the lens 26’ R on oroff. Instead, the lens 26’ R would be continuously
`
`on resulting in an “unwanted power drain””? and decreasingthe battery life of Figler’s electronic
`
`eyewear. Thus, modifying Figler’s hinges to include Ronzani’s ribbon cables would render
`
`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 eyewear is 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.
`
`Nevertheless, solely in an effort to advance prosecution, Applicant is amending claim 24
`
`is being amended to specify that the conductive link is a first conductive link and to recite “a
`
`battery disposed in the second temple” and “a second conductive link electrically isolated from
`
`the first conductive link and connecting the first electronic module to the battery.” The asserted
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`combination of Figler and Ronzani does notyield the electronic eyewear of amended claim 24.
`
`As a result, amended claim 24 is patentable over the combination of Figler and Ronzani, as is
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`claim 25.
`
`CONCLUSION
`
`It is respectfully believed thatall of the rejections set forth in the Office Action have been
`
`addressed. However, the absence of a reply to a specific rejection, objection, or commentset
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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.
`
`The Examiner is invited to contact the undersigned by telephone if it is felt that a
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`telephone interview would advancethe 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
`
`Account No. 60-1876. If an extension of time is required to make this reply timely, please charge
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`3 Figler paragraph [0065].
`
`10
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`U.S. Application No. 17/484,554
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`Attorney Dockct No. EVSO-027US21
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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.
`
`Dated: September 30, 2024
`
`Respectfully submitted,
`
`Smith Baluch LLP
`376 Boylston St, Suite 401
`Boston MA 02116
`
`Phone: (617) 947-7280
`
`By /Christophecr Max Colice/
`Christopher Max Colice
`Registration No. 65634
`
`11
`
`