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 Arguments
Applicant's arguments filed 08/13/2026 have been fully considered but they are not persuasive. Regarding the prior art rejections, applicant's arguments have been fully considered and are appreciated, however the examiner respectfully disagrees.
Applicant argues that the combination of Moscatelli with Birnkrant to incorporate the sensor being arranged on the outer periphery of the body is improper hindsight and goes against the principle of operation for Moscatelli. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Regarding applicant’s argument that the combination goes against the principle operation for Moscatelli, applicant specifically points to the statement of Moscatelli that the “monocles and, therefore, the camera are positioned exactly in the optical axis of the system and along the line of vision, elimination any parallax errors at source” and states that the elimination of the parallax errors is a key objective of the reference. Examiner notes that the parallax issue that Moscatelli’s device resolves is that of the optical path from the object to the eye being completely different than the optical path from the object to the camera, see the references Moscatelli cites in ¶0006-¶0007. This angular difference between the two non-overlapping optical paths is what causes parallax issues. The layout of Birnkrant does not go against this principle of operation. Rather than having two entirely different optical paths, Birnkrant discloses a single optical path originating from the object and utilizes a beam splitter to simultaneously direct the light to a camera and an eye by splitting a single optical path into two. Birnkrant achieves this by placing the beam splitter at 45 degrees relative to the incident light. This specific placement does not cause parallax issues to arise. Therefore, this configuration does not go against Moscatelli’s principle of operation of eliminating parallax errors.
Applicant additionally argues in order to modify Moscatelli with Birnkrant and replace components that already perform the same function, the examiner must show that the references identify some problem or shortcoming with the element in the primary reference. However, this is not true. Applicant relies on Ex parte Tessier et al., October 2, 2014 to support this claim. However, Ex parte Tessier is not a precedential case. There are multiple reasons to combine references, not just whether one reference has a shortcoming. It has been held that a claim would have been obvious if all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, at 416, 82 USPQ2d at 1395. In this case, the prior art included each element claimed, Moscatelli teaches all of the claimed elements except for the capture device including 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, which is taught by Birnkrant. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the capture device and sensor on the outer periphery of the body for the purpose of transmitting light to both the user’s eye and a sensor simultaneously (¶0026 of Birnkrant) since has been held that combining prior art elements according to known methods to yield predictable results would have been obvious. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, at 416, 82 USPQ2d at 1395. See MPEP §2143(I)(A). For the purpose of clarity, this is additionally stated in the rationale to combine in the rejection below, however the prior rejection is still maintained.
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 § 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, 3-4, 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, and further in view of Birnkrant et al. (US 20140146153 A1), hereinafter Birnkrant.
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) which is 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),
characterized in that the capture device (4) includes a sensor (¶0035).
Moscatelli does not disclose the portable system includes: an adjustment element arranged to position the optical device relative to the user's eye, and/or a fastening assembly arranged to enable the optical device to be removed from the user's eye, and the sensor is 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.
However, Greene teaches a similar portable system comprising an optical device (130; Fig. 1; ¶0039) which includes an adjustment element arranged 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 to enable the optical device to be removed from the user's eye (Figs. 1-3; ¶0039).
Further, 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 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) and 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 light to both the user’s eye and a sensor simultaneously (¶0026 of Birnkrant) since has been held that combining prior art elements according to known methods to yield predictable results would have been obvious.
Regarding claim 3, Moscatelli in view of Greene and further in view of Birnkrant 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 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) 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 simultaneously (¶0026 of Birnkrant) since has been held that combining prior art elements according to known methods to yield predictable results would have been obvious.
Regarding claim 4, Moscatelli in view of Greene and further in view of Birnkrant discloses the device as claimed in claim 1, 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 light to both the user’s eye and a sensor simultaneously (¶0026 of Birnkrant) since has been held that combining prior art elements according to known methods to yield predictable results would have been obvious.
Regarding claim 7, Moscatelli in view of Greene and further in view of Birnkrant 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 and further in view of Birnkrant 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) which comprises 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 and further in view of Birnkrant 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, or the retaining means is arranged 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 and further in view of Birnkrant 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 and further in view of Birnkrant 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).
Conclusion
THIS ACTION IS MADE FINAL. 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 9-4.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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 1st, 2026
/George G. King/Primary Examiner, Art Unit 2872
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