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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/19/2026 has been entered.
Response to Amendment
The Amendment filed 03/11/2026 has been entered. Claim 2 has been canceled. Applicant’s amendments have overcome each and every claim objection and 112(b) rejection previously set forth in the Final Office Action mailed 09/19/2025. Examiner notes that previously applicant withdrew claims 5-6 and 10-14 from consideration, however in the amendments of 03/11/2026, applicant indicated that claims 6-7 and 10-14 are withdrawn from consideration. For the purposes of examination, the examiner assumes this was a typographical error and that claims 5-6 and 10-14 are withdrawn from consideration. Claims 1, 3-4, 7-9, and 17-18 are considered.
Response to Arguments
Applicant's arguments filed 03/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the currently applied art, Moscatelli in view of Greene and further in view of Birnkrant, does not disclose or suggest the limitation of independent claim 1, “characterized in that the capture device includes 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.” Specifically, applicant argues that to apply the sensor of Birnkrant, a complete rebuild of Moscatelli including adding half mirrors would be required, therefore one of ordinary skill in the art would not add Birnkrant to Moscatelli. However, the examiner respectfully disagrees.
Moscatelli and Birnkrant are both directed towards head-mounted magnifying loupes. The use of half mirrors to split a light signal towards two orthogonal directions is well known in the art, as can be seen by the configuration of Birnkrant. Also see Wikipedia article “Beam Splitter.”1 If one wanted to transmit the same signal both to a sensor and to a user’s eye, it would have been obvious to incorporate a half mirror in the loupe to split the signal. Further, the simplest configuration of this would also incorporate the sensor being arranged orthogonal to the light path going to the user’s eye – for example, the sensor would be arranged on the outer periphery of the body and above the body as shown in Birnkrant. Therefore, it would have been obvious to incorporate the sensor arranged on the outer periphery of the body and above the body as taught by Birnkrant for the purpose of transmitting light to both the user’s eye and a sensor simultaneously (¶0026 of Birnkrant).
Further, examiner notes the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). 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 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).
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).
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).
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
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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/NATASHA NIGAM/Examiner, Art Unit 2872 April 9th, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 Wikipedia Contributors. “Beam Splitter.” Wikipedia, Wikimedia Foundation, 23 Feb. 2021.
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