DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 17, 2025, has been entered.
Response to Arguments
Applicant’s arguments, filed in the October 17, 2025, Reply, have been considered. Applicant’s arguments regarding the newly recited features are moot in view of the correspondingly necessitated update/new grounds of rejection set forth below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 5–14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2017/0000330 to Samec et al. and U.S. Patent Application Publication No. 2018/0367065 to Svortdal.
Regarding Claim 1, Samec discloses (e.g., Figs. 14–15 and their corresponding description, including at least paragraphs [1681]–[1721]), a method for determining an optimal value of an optical property for a visual aid for a person (paragraph [1697], “method 1500 for determining an optical prescription of a wearer of an augmented (or virtual) reality device configured for use as a virtual phoropter”), the method comprising the steps of:
a) providing a virtual reality and/or augmented reality headset comprising a tunable lens (e.g., paragraph [1697], “an augmented (or virtual) reality device configured for use as a virtual phoropter”; paragraph [1684], the device includes adaptive optics or a variable focus element VFE; paragraph [1494], the VFE may include, for example, a liquid crystal lens, or a mechanical-deformation-based lens),
b) observation of a test pattern by the person through the tunable lens (e.g., block 1504 of Fig. 15 and paragraph [1699], “the ophthalmic system projects an image to the wearer's eyes,” where the image “can include elements configured to aid in determining visual acuity of the wearer, wherein the visual acuity elements comprise, for example and without limitation, icons, symbols, letters, shapes, or the like,” reasonably suggesting that the person observes the image that is projected, and that the image is a “test pattern” because it is used to determine, or test, the visual acuity of the wearer, see also paragraphs [1683] and [1692], standard eye chart 1420 in Fig. 14), and
c) adjusting an optical property of the tunable lens to an optimal value (e.g., step 1510, including the iterative process of steps 1506–1510), wherein an image of the test pattern perceived by the person is changed by adjusting said optical property (paragraphs [1708]–[1710], the perceived test pattern is changed by adjusting the optical correction, e.g., focus, axis, or cylinder correction),
wherein adjusting the optical property comprises deforming a shaping element for changing a shape of a surface of the tunable lens (e.g., paragraph [1494], “the VFE or adaptable optics may be a refractive element, such as a liquid crystal lens, an electro-active lens, a conventional refractive lens with moving elements, a mechanical-deformation-based lens (such as a fluid-filled membrane lens, or a lens akin to the human crystalline lens wherein a flexible element is flexed and relaxed by actuators), an electrowetting lens, or a plurality of fluids with different refractive indices” (emphasis added); where paragraph [1697] suggests that components “disclosed herein or other similar devices can be used to perform any step, combination of steps, or portions of a step in the method 1500,” reasonably suggesting that the VFE or adaptable optics taught in paragraph [1494] are suitable and can be used equivalently in the method 1500, see also MPEP §§ 2144.06–07; and where Svortdal also teaches an actuator system configured to deform a lens as a suitable configuration for an adaptable optic with a deforming shaping element for adjusting optical power and other properties (e.g., paragraph [0066] of Svortdal), further suggesting that the use of adaptable optics from alternative embodiments of Samec would have been reasonable),
wherein the optical property of the tunable lens is one of: sphere power, cylinder power, cylinder angle, prism power, prism angle (e.g., paragraphs [1564], [1984], [0202], and [1708] of Samec, suggesting these optical properties, and also where adjusting the shape of the lens to achieve known and desired shapes would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results), and wherein each of these optical properties can be adjusted individually by deforming the shaping element using an actuator (where Samec teaches that the shape of the adaptable optic may be controlled based on voltages applied to electrodes, and it would have been obvious to design the electrodes to achieve individually each of the enumerated shape variations, absent evidence of criticality or otherwise unobvious results).
Regarding Claim 2, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein step c) further comprises that the person adjusts the optical property to an optimal value, or a sensor device detects an optimal value of the optical property (e.g., paragraphs [1708]–[1710], “by receiving input from the user through the user interface or by assessing the user's accommodation and/or vergence”, “the ophthalmic system can be configured to conduct the eye examination using subjective and objective tests to determine an optical prescription for the wearer”).
Regarding Claim 5, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein the optical property of the tunable lens is sphere power (e.g., paragraphs [1708]–[1710], diopter), and step c) further comprises adjusting, as a further optical property, the cylinder angle of the tunable lens with the tunable lens comprising a predefined cylinder power until the optimal value of the cylinder angle is selected or detected (e.g., paragraph [1708], “can also test for astigmatism and thus incrementally change the axis and cylinder”).
Regarding Claim 6, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein step c) further comprises adjusting, as a further optical property, the cylinder power of the tunable lens until the optimal value of the cylinder power is selected or detected, wherein the cylinder angle is at the selected or detected optimal value (e.g., paragraphs [1708]–[1710] and iterative process of blocks 1506–1510).
Regarding Claim 7, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein step c) further comprises adjusting, as a further optical property, the prism angle of the tunable lens with the tunable lens comprising a predefined prism power until the optimal value of the prism angle is selected or detected (e.g., paragraphs [1586], “the wearer, clinician, doctor, or other user can use the interface features to control aspects of the vision testing and/or therapy. . . to change the amount of prism correction applied, the amount of lateral shift of the images, to modify characteristics of enhanced images, or to otherwise configure testing or treatment of convergence deficiencies”; [1708]–[1710] and iterative process of blocks 1506–1510).
Regarding Claim 8, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein step c) further comprises adjusting, as a further optical property, the prism power of the tunable lens with the prism angle being set to the optimal value of the prism angle (e.g., paragraphs [1586], “the wearer, clinician, doctor, or other user can use the interface features to control aspects of the vision testing and/or therapy. . . to change the amount of prism correction applied, the amount of lateral shift of the images, to modify characteristics of enhanced images, or to otherwise configure testing or treatment of convergence deficiencies”; [1708]–[1710] and iterative process of blocks 1506–1510).
Regarding Claim 9, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein the method further comprises the step of d) fabricating the visual aid, the visual aid comprising the optimal value of the respective optical property (e.g., paragraph [1681], “[t]he results of this test can be used, for example, to determine a wearer's or patient's optical prescription . . . for corrective lenses in glasses or contact lenses,” reasonably suggesting fabricating glasses or contact lenses with said prescription).
Regarding Claim 10, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) the method further comprising the step of: d1) transmitting the optimal value of the respective optical property to a manufacturing device for optical elements, and d2) fabricating optical elements having the optimal value of the respective optical property, and particularly integrating the optical elements in a visual aid (e.g., paragraph [1689] teaches that the test may be administered remotely, reasonably suggesting transmitting the results from the remote location; and paragraph [1681], “[t]he results of this test can be used, for example, to determine a wearer's or patient's optical prescription . . . for corrective lenses in glasses or contact lenses,” reasonably suggesting fabricating glasses or contact lenses with said prescription).
Regarding Claim 11, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein step d) comprises transmitting the optimal value of the respective optical property via a computer network (e.g., paragraph [1689] teaches that the test may be administered remotely, reasonably suggesting transmitting the results from the remote location, where using a generic computer network to transmit the information would have been obvious at least because that is what computer networks are generally understood to be used for).
Regarding Claim 12, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) a computer program comprising instructions which, when the computer program is executed on a computer cause the computer to conduct the method according to claim 1 (e.g., paragraph [1694], either run locally on the wearable augmented reality device 1400, or wired/wirelessly through an external device).
Regarding Claim 13, Samec discloses (e.g., Figs. 14–15 and their corresponding description, including at least paragraphs [1681]–[1721]) a system 1400 for determining at least one optical property of a visual aid for a person (paragraph [1697], “method 1500 for determining an optical prescription of a wearer of an augmented (or virtual) reality device configured for use as a virtual phoropter”), the system comprising a VR and/or AR headset configured to be worn by the person, the VR and/or AR headset comprising a tunable lens configured to be positioned in front of an eye of the person when the VR and/or AR headset is worn by the person, wherein the tunable lens is adjustable to adjust at least one optical property of the tunable lens (e.g., paragraph [1697], “an augmented (or virtual) reality device configured for use as a virtual phoropter”; paragraph [1684], the device includes adaptive optics or a variable focus element VFE; paragraph [1494], the VFE may include, for example, a liquid crystal lens, or a mechanical-deformation-based lens), and the system comprises an input device configured to be operated by the person to adjust the tunable lens and therewith the at least one optical property (e.g., step 1510, including the iterative process of steps 1506–1510; paragraphs [1708]–[1710], the perceived test pattern is changed by adjusting the optical correction, e.g., focus, axis, or cylinder correction; paragraph [1700], “[a]t block 1506, the ophthalmic system receives user input regarding the image,” reasonably suggesting “an input device”), and/or wherein the system comprises a sensor device, wherein the sensor device is configured to detect accommodation of said eye and to provide data based on the detected accommodation (e.g., paragraph [1702], “the user input received in block 1506 is automatically determined through analysis of physical and/or optical characteristics of the wearer”; paragraph [1703], “the ophthalmic system can include eye detection and/or tracking components configured monitor the eye,” reasonably suggesting “a sensor device”), wherein the system is configured to control adjusting of the tunable lens and therewith of the property based on said data (e.g., paragraph [1703], “the ophthalmic system can be configured to monitor these fluctuations and move the projected image” by adjusting the depth plane), wherein the system comprises an actuator configured to deform a shaping element for changing a shape of a surface of the tunable lens to adjust said at least one optical property (e.g., paragraph [1494], “the VFE or adaptable optics may be a refractive element, such as a liquid crystal lens, an electro-active lens, a conventional refractive lens with moving elements, a mechanical-deformation-based lens (such as a fluid-filled membrane lens, or a lens akin to the human crystalline lens wherein a flexible element is flexed and relaxed by actuators), an electrowetting lens, or a plurality of fluids with different refractive indices” (emphasis added); where paragraph [1697] suggests that components “disclosed herein or other similar devices can be used to perform any step, combination of steps, or portions of a step in the method 1500,” reasonably suggesting that the VFE or adaptable optics taught in paragraph [1494], including the actuator, are suitable and can be used equivalently in the method 1500, see also MPEP §§ 2144.06–07; and where Svortdal also teaches an actuator system configured to deform a lens as a suitable configuration for an adaptable optic with a deforming shaping element for adjusting optical power and other properties (e.g., paragraph [0066] of Svortdal), further suggesting that the use of adaptable optics from alternative embodiments of Samec would have been reasonable), wherein the optical property of the tunable lens is one of: sphere power, cylinder power, cylinder angle, prism power, prism angle (e.g., paragraphs [1564], [1984], [0202], and [1708] of Samec, suggesting these optical properties, and also where adjusting the shape of the lens to achieve known and desired shapes would have been obvious as a matter of design choice, yielding predictable results, absent evidence of criticality or otherwise unobvious results), and wherein each of these optical properties can be adjusted individually by deforming the shaping element using the actuator (where Samec teaches that the shape of the adaptable optic may be controlled based on voltages applied to electrodes, and it would have been obvious to design the electrodes to achieve individually each of the enumerated shape variations, absent evidence of criticality or otherwise unobvious results).
Regarding Claim 14, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein the system comprises at least one display, the display configured to display the test pattern, wherein particularly the at least one display is comprised by the VR and/or AR headset (e.g., Fig. 14, “wearable augmented reality device 1400”; paragraph [1697], “an augmented (or virtual) reality device configured for use as a virtual phoropter”).
Regarding Claim 16, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein said at least one optical property is one of: sphere power, cylinder power, cylinder angle, prism power, prism angle (e.g., paragraph [1708]).
Regarding Claim 17, the combination of Samec and Svortdal would have rendered obvious (citing to Samec) wherein the system comprises a computer configured to transmit the at least one optical property to a remote server via a computer network (e.g., paragraph [1694], the test may be run either locally on the wearable augmented reality device 1400, or wired/wirelessly through an external device such as a smartphone, reasonably suggesting a computer; also paragraph [1689] teaches that the test may be administered remotely, reasonably suggesting transmitting the results from the remote location, where using a generic computer network to transmit the information would have been obvious at least because that is what computer networks are generally understood to be used for).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN CROCKETT whose telephone number is (571)270-3183. The examiner can normally be reached M-F 8am to 5pm.
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/RYAN CROCKETT/Primary Examiner, Art Unit 2871