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 Amendment
The Amendment filed 08/11/2025 has been entered. Claims 1-4, 7-9, and 17-18 are pending in the application. Claims 5-6 and 10-14 were previously withdrawn. Claims 15-16 have been canceled and claims 17-18 have been added.
Response to Arguments
Applicant's arguments filed 08/11/2025 have been fully considered but they are not persuasive.
Regarding the 112(b) for claim 8 with respect to the retaining means, applicant’s arguments have been fully considered and are appreciated. The 112(b) rejection relating to the scope of the retaining means of claim 8 has been withdrawn.
Regarding the prior art rejections, applicant’s arguments have been fully considered and are appreciated, however examiner respectfully disagrees. Applicant argues that the features of Frankel are unusable with the features of Moscatelli due to the capture device increasing the dimensions and weight of the optical device. However, this argument is considered but are moot because the new ground of rejection, necessitated by amendment, does not rely on any Frankel to teach the adjusting element or fastening assembly as required by newly amended independent claim 1.
It is further noted that “[a] person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” and in addition it has been further held that "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" and taking into account "the inferences and creative steps that a person of ordinary skill in the art would employ." KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007), see MPEP 2141.
Claim Objections
Claim 1 is objected to because of the following apparent inadvertent typographical error: Examiner suggests "a fastening assembly (arranged such as" should read "a fastening assembly arranged such as". Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-4, 7-9, and 17-18 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.
Regarding independent claim 1, the limitation “an optical device body, a substantially cylindrical body” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether the optical device body is a substantially cylindrical body or if there is a substantially cylindrical body in addition to the optical device body.
For the purposes of examination, examiner assumes “an optical device body, a substantially cylindrical body” as “an optical device bodywhich is a substantially cylindrical body.”
Additionally, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner suggests “an adjustment element arranged
Claims 2-4, 7-9, and 17-18 are dependent on claim 1 and therefore inherit the same issues.
Regarding claim 2, the limitation “a sensor arranged on the outer periphery of the body, above the body when the optical device is positioned in front of the user’s eye for use” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether the placement of the sensor needs to meet both the limitations “arranged on the outer periphery of the body” and “above the body when the optical device is positioned in front of the user’s eye for use” or if it only needs to meet one of these limitations.
For the purposes of examination, examiner assumes “a sensor arranged on the outer periphery of the body, above the body when the optical device is positioned in front of the user’s eye for use” as “a sensor arranged on the outer periphery of the body[[,]] and above the body when the optical device is positioned in front of the user’s eye for use.”
Claim 4 is dependent on claim 2 and therefore inherits the same issues.
Regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner suggests “a semi-transparent mirror arranged inside the body
Regarding claim 8, the limitation “the optical device includes an optical system, at least one lens” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether the optical system comprises at least one lens or if there is at least one lens in addition to the optical system.
For the purposes of examination, examiner assumes “the optical device includes an optical system, at least one lens” as “the optical device includes an optical system, which comprises at least one lens.”
Claim 9 is dependent on claim 8 and therefore inherits the same issues.
Regarding claim 9, the limitation “the retaining means are friction, snap-fit or obstacle retaining means, retaining means arranged such as to enable an optical system to be positioned and/or mounted without using tools” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear whether the retaining means must be one of friction, snap-fit, or obstacle retaining means, or if the retaining means can be any retaining means arranged such as to enable an optical system to be positioned and/or mounted without using tools. This is further exacerbated by the lack of an antecedent issue in the second occurrence of “retaining means” – making it unclear if it is referring to the retaining means already introduced (assumed) or if it is a new/different element. Additionally, “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
For the purposes of examination, examiner assumes “the retaining means are friction, snap-fit or obstacle retaining means, retaining means arranged such as to enable an optical system to be positioned and/or mounted without using tools” as “the retaining means are friction, snap-fit or obstacle retaining means, or the retaining means is arranged to enable an optical system to be positioned and/or mounted without using tools.”
Applicant should clarify the claim limitations as appropriate. Care should be taken during revision of the description and of any statements of problem or advantage, not to add subject-matter which extends beyond the content of the application (specification) as originally filed.
If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection of the claims under 35 U.S.C. 112, second paragraph, is appropriate. See MPEP 2173.05(a), MPEP 2143.03(I), and MPEP 2173.06.
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.
Claim(s) 1, 7-9, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Moscatelli et al. (US 20220179190 A1), hereinafter Moscatelli, in view of Greene et al. (US 20120224261 A1), hereinafter Greene.
Regarding independent claim 1, Moscatelli discloses a portable system (200; Fig. 2; ¶0043) including an optical device (100; Fig. 1; ¶0030) and a support (Fig. 2) on which the body of the optical device is mounted (magnifier eyewear to which at least one monocle is attached; ¶0043),
wherein the optical device (100) is a monocular (“magnifier eyewear to which at least one monocle is attached” in ¶0043); watchmaker's loupe (100; Fig. 1; ¶0030) that can be positioned or worn in front of or close to a user's eye (Fig. 1), and
wherein the optical device (100) comprises:
a first optical axis (Fig. 1),
an optical device body (Fig. 1), a substantially cylindrical body (Fig. 1), and
a capture device (4; Fig. 1; ¶0030) for capturing at least a portion of the images seen by the user through the optical device (100) (Fig. 1; ¶0030)
Moscatelli does not disclose the portable system includes: an adjustment element arranged such as to position the optical device relative to the user's eye, and/or a fastening assembly (arranged such as to enable the optical device to be removed from the user's eye.
However, Greene teaches a similar portable system comprising an optical device (130; Fig. 1; ¶0039) which includes an adjustment element arranged such as to position the optical device (130) relative to the user's eye (Figs. 1-3; ¶0042, ¶0046), and/or a fastening assembly (160; Figs. 1-3; ¶0039) arranged such as to enable the optical device to be removed from the user's eye (Figs. 1-3; ¶0039).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli to incorporate the adjustment element and fastening assembly of Greene for the purpose of mounting and being able to adjust an optical device to spectacles in a less expensive and less time-consuming manner (¶0004-¶0006 of Greene).
Regarding claim 7, Moscatelli in view of Greene discloses the portable system as claimed in claim 1, as set forth above, Moscatelli further discloses that the optical device includes a communication element (5; ¶0030; Fig. 1) that is designed to send data generated by the capture device (4) (¶0030) and/or to send data to the capture device.
Regarding claim 8, Moscatelli in view of Greene discloses the portable system as claimed in claim 1, as set forth above. Moscatelli further discloses that the optical device (100) includes an optical system (2; ¶0030; Fig. 2) notably at least one lens (2; ¶0030), held on the body by retaining means (S-type mounting system; ¶0041).
Regarding claim 9, Moscatelli in view of Greene discloses the portable system as claimed in claim 8, as set forth above. Moscatelli further discloses the retaining means are friction, snap-fit or obstacle retaining means, retaining means arranged such as to enable an optical system to be positioned and/or mounted without using tools (S-type mounting system; ¶0041).
Regarding claim 17, Moscatelli in view of Greene discloses the portable system as claimed in claim 1, as set forth above. Moscatelli does not disclose the fastening assembly includes second fastening means that are designed to fasten first fastening means using a pivot link.
However, Greene teaches the fastening assembly (160) includes second fastening means (164; Fig. 1; ¶0040) that are designed to fasten first fastening means (163; Fig. 1; ¶0040) using a pivot link (Figs. 1-2; ¶0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli to incorporate the fastening assembly of Greene for the purpose of mounting an optical device to spectacles in a less expensive and less time-consuming manner (¶0004-¶0006 of Greene).
Regarding claim 18, Moscatelli in view of Greene discloses the portable system as claimed in claim 17, as set forth above. Moscatelli does not disclose the pivot link is formed by a shaft passing through the fastening assembly and fastened in the first or second fastening means to enable the first fastening means to pivot in relation to the second fastening means.
However, Greene teaches the pivot link is formed by a shaft (165; Fig. 1; ¶0040) passing through the fastening assembly (160) and fastened in the first (163) or second fastening means (164) to enable the first fastening means (163) to pivot in relation to the second fastening means (164) (Figs. 1-2; ¶0040).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli to incorporate the fastening assembly of Greene for the purpose of mounting an optical device to spectacles in a less expensive and less time-consuming manner (¶0004-¶0006 of Greene).
Claim(s) 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Moscatelli (US 20220179190 A1) in view of Greene (US 20120224261 A1) and further in view of Birnkrant et al. (US 20140146153 A1), hereinafter Birnkrant.
Regarding claim 2, Moscatelli in view of Greene discloses the portable system as claimed in claim 1, as set forth above. Moscatelli further discloses that the capture device (4) includes a sensor (¶0035). Neither Moscatelli nor Greene disclose the capture device including the sensor is arranged on the outer periphery of the body, above the body when the optical device is positioned in front of the user's eye for use.
However, Birnkrant teaches a similar device with a capture device (406; ¶0025; Fig. 6) including a sensor (406; Fig. 6) arranged on the outer periphery of the body (Fig. 6), above the body when the optical device (100; ¶0025; Figs. 5-6) is positioned in front of the user's eye for use (Fig. 6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli and Greene to incorporate the teachings of Birnkrant to arrange the capture device and sensor on the outer periphery of the body for the purpose of transmitting the majority of the light directly to the user’s eye.
Regarding claim 3, Moscatelli in view of Greene discloses the portable system as claimed in claim 1, as set forth above. Neither Moscatelli nor Greene disclose the optical device includes a semi-transparent mirror arranged inside the body such as to: divert a first portion of the light rays entering the optical device towards the sensor, and allow a second portion of the light rays entering the optical device to pass through said mirror to the user's eye.
However, Birnkrant teaches the optical device (100) includes a semi-transparent mirror (408; ¶0026; Fig. 6) arranged inside the body (Fig. 6) such as to: divert a first portion of the light rays entering the optical device towards the sensor (406) (¶0026; Fig. 6), and allow a second portion of the light rays entering the optical device to pass through said mirror (408) to the user's eye (¶0026; Figs. 5-6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli and Greene to incorporate the teachings of Birnkrant to include a semi-transparent mirror for the purpose of diverting a portion of light to the sensor and for allowing a portion of light to pass through to the user’s eye.
Regarding claim 4, Moscatelli in view of Greene and further in view of Birnkrant discloses the device as claimed in claim 2, as set forth above. Neither Moscatelli nor Greene disclose the sensor has a second optical axis perpendicular to the first optical axis.
However, Birnkrant discloses the sensor (406) has a second optical axis (Fig. 6) perpendicular to the first optical axis (Fig. 6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Moscatelli and Greene to incorporate the teachings of Birnkrant to arrange the capture device and sensor on the outer periphery of the body for the purpose of transmitting the majority of the light directly to the user’s eye.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Caplan et al. (US 20030142263 A1) discloses a similar loupe comprising a fastening assembly that forms a pivot link.
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at (571)272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATASHA NIGAM/Examiner, Art Unit 2872 September 12th, 2025
/George G. King/Primary Examiner, Art Unit 2872