DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Responsive to the communication dated 04/06/2026
Claims 1, 3-4, 6-14, 16, and 19 are presented for examination
Information Disclosure Statement
The IDS dated 07/14/2022, 01/19/2024, 08/05/2024, and 01/16/2025 has been reviewed. See attached.
Drawings
The drawings dated 07/14/2022 have been reviewed. They are accepted.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Abstract
The abstract dated 07/14/2022 has been reviewed. It has 150 words, and contains no legal phraseology. It is accepted.
Finality
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 extension fee 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.
Response to Arguments – Claim Objections
Applicant’s arguments, see Page 14, filed 04/06/2026, with respect to the objections to claims 4 and 18-19 have been fully considered and are persuasive. The objections to claims 4 and 19 have been withdrawn (note that claim 18 was cancelled in amendment.)
Response to Arguments – 112
Applicant’s arguments, see Page 13, filed 04/06/2026, with respect to the rejection of claims 10-11 under 112 have been fully considered and are persuasive. The rejection of claims 10-11 under 112 has been withdrawn.
Response to Arguments – 101
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Applicant argues that because digital data is received, the claims are eligible.
Examiner responds by explaining that firstly, this type of generic data receival is clearly recognized by the courts as an example of a pure mental process. See the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence: A claim to “the collection of information from various sources (a Federal database, a State database, and a case worker) and understanding the meaning of that information (determining whether a person is receiving SSDI benefits and determining whether they are eligible for benefits under the law),” where “ `[t]hese steps can be performed by a human, using “observation, evaluation, judgment, [and] opinion,” because they involve making determinations and identifications, which are mental tasks humans routinely do,' ” and thus can practically be performed in the human mind, In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022). Collecting data from a federal or state database is clearly the collection of that data in a digital manner; with this in mind the type of generic digital data retrieval recited in the claims, such as ‘retrieving, in a database, a set of digital data forming initial information relating to an initial representation of said eyeglasses frame;’ is also clearly a mental process.
Further, should it be found that the use of digital data in such a manner is not possible as a purely mental process, the process of doing such retrieval digitally merely amounts to performing the mental process of such retrieval on a general purpose computer, and therefore amounts to no more than mere instructions to apply.
Additionally, should it be found that the generic retrieval of digital data is not a pure mental process nor mere instructions to apply a mental process on a general purpose computer, it is also an example of mere data gathering. Particularly, “obtaining” or “retrieving” these values in a generic manner without any specificity as to how this obtaining/retrieving is actually performed amounts to no more than mere data gathering.
Applicant argues that the claims are integrated into a practical application/ provide significantly more because they provide a constraint-compliant set of data relating to an eyeglass frame.
Examiner responds by explaining that, firstly, the generation of such a constraint-compliant eyeglass frame model is a mental process, and as such cannot be the basis of integration into a practical application nor provide significantly more.. (MPEP 2106.05(a)(I): An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016))
Altering the data relating to the 3D representation based on the determined constraint satisfaction is a mental process equivalent to observing the data, judging which elements of the data cause it to fail to satisfy the constraint (for example, if the constraint is that the hinge of the arms be at least 3cm from the face, observing that the hinge is only 2cm from the face) and modifying the data, for example by modifying the drawing of said data with a pencil and paper, then proceeding to check again if the modifications have caused the design to satisfy the criteria (i.e. if the new design places the hinge at least 3cm from the face.) This can be repeated over and over until it is judged that no more constraint violations exist. Alternatively, the constraint itself could be modified rather than the design (i.e. changing the requirement for hinge distance from 3cm to 2cm to allow the original design to satisfy the constraint.)
Further, the use of additional elements in the performance of this process, recited in such a generic manner, amount to no more than mere instructions to apply the judicial exception, and therefore are not sufficient to integrate the claims into a practical application nor provide significantly more.
Producing an actual 3D model “automatically” and using a processor amounts is merely the act of applying this abstract idea on a general purpose computer, and therefore amounts to no more than mere instructions to apply.
Similarly, the alleged improvements of being able to provide the customized design in a “fully automated manner” or being able to perform these steps faster than would be possible manually by hand is merely a claim to the speed and efficiency inherent to the use of a computer to perform an abstract idea; a computer can do long division or find certain text in a large document faster than a human could, but this does not mean that mathematic division or reading are impossible for the human mind.
(MPEP 2106.05(f)(2): Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015).)
Similarly, the steps such as “retrieving, in a database, a set of digital data forming…” or “obtaining at least one wearer parameter…” are recited at such a high level of generality that they amount to no more than mere data gathering, and therefore are not sufficient to integrate the claims into a practical application nor provide significantly more.
As to the newly added limitation of “wherein said evaluation criterion is related to a resemblance or a deviation between said 3D final representation and said initial representation of said eyeglasses frame,” evaluating the difference or similarity between two representations of something is a mental process equivalent to observing both representations and making a judgement as to how different they are (i.e. very different, similar, 90% the same, etc.)
Response to Arguments - 103
Applicant's arguments filed 04/06/2026 have been fully considered but they are not persuasive.
Applicant argues that no prior art teaches “applying at least one evaluation criterion to said set of digital data relating to the 3D representation of said eyeglasses frame..., said evaluation criterion is related to a resemblance or a deviation between said 3D final representation and said initial representation of said eyeglasses frame,”
Examiner responds by explaining that this feature is taught by the previously cited reference.
In particular, Nyong’o teaches applying at least one evaluation criterion to said set of digital data relating to the 3D representation of said eyeglasses frame..., ([Par 50- 51] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention. A rough alignment of the frame geometry template 502 is first made. Once the landmarks have been applied to the scanned mesh, rough alignment can be made by rotating the scan in 3D space so that the face is aligned along the along the X, Y and Z axis respectively. This is done by checking salient points on the left and right side of the face and rotating the scan such that each pair has the same translation values along the Z axis. Thereafter, translating and scaling the template is performed wherein the frame template is loaded in and translated into place using the `bridge of the nose` locator/contact point as the main landmark. The locators on the temples and pupils are then used to determine the height and width of the frames overall. Special attention is made to the placement of the pupils relative to each lens opening. The algorithm is set to align it such that the pupils line up to the upper third of each lens opening. Once those requirements are satisfied…”)
This passage of Nyong’o describes the modifying the geometry of the frames (i.e. the digital data relating to the 3D representation of the frames) by ensuring the alignment of the geometry with certain landmarks (i.e. by applying an “evaluation criterion” of determining whether the elements of the geometry are properly aligned.)
([Par 54] “ Therefore, custom-fit eye wear frame geometry may be generated by the embodiments of the invention as described above, and may be exported for printing and fabrication. The final custom-fit eye wear frame geometry may have the arms in a closed position to save space on the print bed, as well as introduce the necessary mechanical spring tension necessary to keep the frames on the face.”) and said initial representation of said eyeglasses frame, ([Par 38] “The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template.”)
Nyong’o also teaches separate final and initial versions of the eyeglasses frame, as can be seen in the above passages.
Further, it is clear that the final geometry described in Nyong’o is indeed a modified version of the original database-derived template model. ([Par 50-54] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention. A rough alignment of the frame geometry template 502 is first made. Once the landmarks have been applied to the scanned mesh, rough alignment can be made … Thereafter, translating and scaling the template is performed wherein the frame template is loaded in and translated into place using the `bridge of the nose` locator/contact point as the main landmark. The locators on the temples and pupils are then used to determine the height and width of the frames overall. … Further, arm length and angle adjustment of the frame geometry template is obtained once the lens holder has been properly aligned … Fine Alignment of the geometry template is obtained by using the landmarks on the bridge of the nose and the nose piece; morph targets are activated in step to change the shape of the nose piece to achieve a closer fit. … Therefore, custom-fit eye wear frame geometry may be generated by the embodiments of the invention as described above, and may be exported for printing and fabrication. The final custom-fit eye wear frame geometry may have the arms in a closed position to save space on the print bed, as well as introduce the necessary mechanical spring tension necessary to keep the frames on the face.”)
While Nyong’o does not explicitly teach applying evaluation criterion that is specifically related to a resemblance or a deviation between two representations of eyeglass frames, this feature is taught by Thomet which teaches checking the similarity between eyeglass representations and making modifications until the two representations are sufficiently similar, this similarity being the evaluation criterion. ([Abstract] “The invention relates to a method for automatically establishing parameters in order to centre and/or personalise corrective lenses for spectacles, comprising the following steps: —taking images of the frame from different viewing angles, —defining an initial model of the frame in a reference system based on a set of predefined initial parameters, projecting a region of interests in the images, —comparing the projections and evaluating a similarity between said projections, —modifying at least one of the parameters of the model and reiterating the steps until a maximum level of similarity between the projections is obtained, —deducing the at least one of the parameters from the model associated with the projections which have the maximum level of similarity.”) Further, it is clear that Thomet is also capable of comparing separate models rather than merely different projections on the same version of a model, as it describes comparing a model with another version of that model after certain transformations are applied ([Par 192] “FIG. 2b also represents the projection P1′ of this same region of interest 9 into the first image I1 and its mirror projection P2′ associated with the second image I2, after offsetting the model 6.431 mm along the axis X, such that the coordinates of the center of the region of interest 9 along the axes X, Y and Z are now equal to (0.418; −0.557; 5.878) mm. As can be seen from their comparison, which gives a difference of 0.175, these two projections P1′, P2′ are very similar.”) One of ordinary skill in the art would have recognized that this mechanism of Thomet would work identically when applied to the 3D final and initial eyeglass representations taught by Nyong’o.
The system of Nyong’o teaches final and initial representations of the eyeglasses frame models as well as applying certain evaluation criteria to such frame models, while Thomet teaches a method for computing similarity measures between representations of eyeglasses frame models. While neither individual reference teaches “applying at least one evaluation criterion to said set of digital data relating to the 3D representation of said eyeglasses frame..., said evaluation criterion is related to a resemblance or a deviation between said 3D final representation and said initial representation of said
eyeglasses frame,” on its own, the combination of these references clearly teaches these features.
Applicant argues that Nyong’o does not teach “checking that the final 3D representation remains sufficiently close to the initial representation.”
Examiner responds by explaining that, as explained above, such a comparison is taught by the combination of Nyong’o and Thomet. It should be noted, however, that such a particular comparison is not required by the claims and therefore this argument is moot. The closest claim language. i.e. “wherein said evaluation criterion is related to a resemblance or a deviation between said 3D final representation and said initial representation of said eyeglasses frame” merely requires some form of evaluation related to the similarity of two eyeglass frame representations; while this language may include checking that the two representations are within a threshold similarity, it also includes any other similarity metrics that may be checked.
Claim Objections
Claims 8-11 objected to because of the following informalities:
Claim 8 recites “wherein said comparing comprises obtaining differences between said compared 2D projections one of: (i) at at least one predetermined location … (ii) at at least one curvature ..., and (iii) based on a derivate of said at least one curvature...” The phrasing of “...differences between said compared 2D projections one of:” is somewhat confusing; it is recommended to amend this to instead read “obtaining differences between said compared 2D projections in one of the following ways:” to improve the readability and clarity of this limitation.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-4, 6-14, 16, and 19 are rejected under 35 U.S.C. 101 because they are directed to an abstract idea without significantly more.
Claim 1 (Statutory Category – Process)
Step 2A – Prong 1: Judicial Exception Recited?
Yes, the claim recites a mental process, specifically:
MPEP 2106.04(a)(2)(Ill): “Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, Judgments, and opinions.”
Further, the MPEP recites “The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.”
(a) retrieving, in a database, a set of digital data forming initial information relating to an initial representation of said eyeglasses frame;
Obtaining data from a database in such a generic manner is explicitly recognized by the courts as an example of a mental process. See the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence: ‘A claim to “the collection of information from various sources (a Federal database, a State database, and a case worker) and understanding the meaning of that information (determining whether a person is receiving SSDI benefits and determining whether they are eligible for benefits under the law),” where “ `[t]hese steps can be performed by a human, using “observation, evaluation, judgment, [and] opinion,” because they involve making determinations and identifications, which are mental tasks humans routinely do,' ” and thus can practically be performed in the human mind,In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022).’
Further, should it be found that the use of digital data in such a manner is not possible as a purely mental process, the process of doing such retrieval digitally merely amounts to performing the mental process of such retrieval on a general purpose computer, and therefore amounts to no more than mere instructions to apply.
Additionally, should it be found that the generic retrieval of digital data is not a pure mental process nor mere instructions to apply a mental process on a general purpose computer, it is also an example of mere data gathering.
(b) obtaining at least one wearer parameter, taken from a group comprising: morphological parameters related to a face of a predetermined wearer of said eyeglasses frame, and preferred parameters provided by said wearer; (c) obtaining at least one eyeglasses frame parameter, taken from a group comprising: parameters relating to geometry of said eyeglasses frame; parameters relating to material of said eyeglasses frame; and parameters relating to manufacturing techniques for manufacturing said eyeglasses frame;
Obtaining these parameters is a mental process equivalent to coming up with a judgment as to what the values of these parameters should be. For example,
The morphological parameters related to the face might be a judgement of the distance between a person’s pupils based on mental observation and/or use of a ruler as a simple aide.
The preferred parameters could be arbitrarily chosen preferences for color, style, etc.
Parameters relating to the geometry of the frames could be arbitrarily chosen measurements for the glasses based on the morphological parameters of the face; for example, if the face is 30cm wide, it might be mentally judged that glasses made to fit that face should be slightly wider than 30cm.
Parameters relating to the material of the frame can be obtained by arbitrarily making a judgement as to what material should be used.
Parameters relating to the manufacturing techniques could be obtained by arbitrarily judging certain features of the manufacturing, for example that the frame should be produced using an FDM 3D printer with a 0.2mm layer height.
Should it be found that this is not a mental process, it is also an example of mere data gathering.
(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, from at least said set of digital data forming the initial information relating to the initial representation of said eyeglasses frame, said obtained at least one wearer parameter or at least one automatically modified wearer parameter, said obtained at least one eyeglasses frame parameter or at least one automatically modified eyeglasses frame parameter, and at least one constraint or at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and automatically providing said 3D representation of said eyeglasses frame from said obtained set of data;
Obtaining data relating to a representation of a frame based on the parameters and constraints is a mental process equivalent to observing each parameter and constraint, and creating such data, such as by drawing it with a pencil and paper.
For example, based on the initial drawing of the frames, and certain parameters (e.g. face width, material, etc.) and constraints (e.g. certain points at which the frame should touch the face, points through which the geometry of the frame should pass, etc.) a person could draw a new design for frames that are expected to fit these parameters and constraints with a pencil and paper. This could be drawn in multiple perspectives to capture the full three-dimensional geometry of the design.
Finally, producing an actual 3D model “automatically” and using a processor amounts is merely the act of applying this abstract idea on a general purpose computer, and therefore amounts to no more than mere instructions to apply.
Should it be found that this is not a mental process, it is also an example of mere data gathering.
(e) applying at least one evaluation criterion to said set of digital data relating to the 3D representation of said eyeglasses frame, to determine whether said set of digital data relating to the 3D representation of said eyeglasses frame satisfies said at least one constraint;
This evaluation is a mental process equivalent to observing the representation and making certain judgements about it. For example, if the representation is viewed and the frames do not appear to conform to certain fitting constraints, such as that the frame should be a certain distance from the face at a certain location, it can be judged that the representation does not satisfy the constraint.
The use of a 3D representation in a computer amounts to no more than mere instructions to apply.
(f) as long as said set of digital representing the 3D representation of said eyeglasses frame does not satisfy at least one constraint among said at least one constraint and said at least one automatically modified constraint, iterating operations (d) and (e) with one or more of (i) said at least one automatically modified wearer parameter, (ii) said at least one automatically modified eyeglasses frame parameter, and said at least one automatically modified constraint, to automatically provide a constraint-compliant set of digital data relating to a 3D final representation of said eyeglasses,
Altering the data relating to the 3D representation based on the determined constraint satisfaction is a mental process equivalent to observing the data, judging which elements of the data cause it to fail to satisfy the constraint (for example, if the constraint is that the hinge of the arms be at least 3cm from the face, observing that the hinge is only 2cm from the face) and modifying the data, for example by modifying the drawing of said data with a pencil and paper, then proceeding to check again if the modifications have caused the design to satisfy the criteria (i.e. if the new design places the hinge at least 3cm from the face.) This can be repeated over and over until it is judged that no more constraint violations exist. Alternatively, the constraint itself could be modified rather than the design (i.e. changing the requirement for hinge distance from 3cm to 2cm to allow the original design to satisfy the constraint.)
Producing an actual 3D model “automatically” and using a processor amounts is merely the act of applying this abstract idea on a general purpose computer, and therefore amounts to no more than mere instructions to apply.
Should it be found that this is not a mental process, it is also an example of mere data gathering.
wherein said evaluation criterion is related to a resemblance or a deviation between said 3D final representation and said initial representation of said eyeglasses frame.
Evaluating the difference between two representations of something is a mental process equivalent to observing both representations and making a judgement as to how different they are (i.e. very different, similar, 90% the same, etc.)
Step 2A – Prong 2: Integrated into a Practical Solution?
Insignificant Extra-Solution Activity (MPEP 2106.05(g)) has found mere data gathering and
post solution activity to be insignificant extra-solution activity.
Data gathering:
(a) retrieving, in a database, a set of digital data forming initial information relating to an initial representation of said eyeglasses frame;
“Retrieving” this data in a generic manner, without any specificity as to how this retrieving is actually performed, amounts to no more than mere data gathering.
(b) obtaining at least one wearer parameter, taken from a group comprising: morphological parameters related to a face of a predetermined wearer of said eyeglasses frame, and preferred parameters provided by said wearer; (c) obtaining at least one eyeglasses frame parameter, taken from a group comprising: parameters relating to geometry of said eyeglasses frame; parameters relating to material of said eyeglasses frame; and parameters relating to manufacturing techniques for manufacturing said eyeglasses frame;
“Obtaining” these values in a generic manner without any specificity as to how this obtaining is actually performed amounts to no more than mere data gathering.
(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, from at least said set of digital data forming the initial information relating to the initial representation of said eyeglasses frame, said obtained at least one wearer parameter or at least one automatically modified wearer parameter, said obtained at least one eyeglasses frame parameter or at least one automatically modified eyeglasses frame parameter, and at least one constraint or at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and automatically providing said 3D representation of said eyeglasses frame from said obtained set of data;
“Obtaining” this data in a generic manner without any specificity as to how this obtaining is actually performed other than what data is used amounts to no more than mere data gathering.
(f) as long as said set of digital representing the 3D representation of said eyeglasses frame does not satisfy at least one constraint among said at least one constraint and said at least one automatically modified constraint, iterating operations (d) and (e) with one or more of (i) said at least one automatically modified wearer parameter, (ii) said at least one automatically modified eyeglasses frame parameter, and said at least one automatically modified constraint, to automatically provide a constraint-compliant set of digital data relating to a 3D final representation of said eyeglasses,
To “provide” this data in a generic manner without any specificity as to how this provision is actually performed, other than what data is used and under what conditions it should be provided, amounts to no more than mere data gathering.
Mere Instructions to Apply (MPEP 2106.05(f)) has found that merely applying a judicial exception such as an abstract idea, as by performing it on a computer, does not integrate the claim into a practical solution.
Mere Instructions to Apply:
(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, … at least one automatically modified wearer parameter, … at least one automatically modified eyeglasses frame parameter, and … at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and automatically providing said 3D representation of said eyeglasses frame from said obtained set of data;
As mentioned in the mental process analysis section, the generation and modification of the data relating to the 3D representation of the frame and constraint-compliant final frame is a mental process.
Applying a computer to generate a 3D representation based on this data at a high level of generality is simply the act of instructing a computer to perform generic functions to perform that generation, which is merely an instruction to apply a computer to the judicial exception. The claim only recites the idea of a solution or outcome, i.e. that the 3D representation “automatically provid{ed}” without reciting how this representation generation from the data is actually accomplished. Further, the computer elements claimed are cited as merely generic tools to perform the operations.
Moreover, Mere Instructions To Apply An Exception (MPEP 2106.05(f)) has found that simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. In light of this, the additional generic computer component elements of “A computer-implemented method for providing an eyeglasses frame, retrieving, in a database, a set of digital data, a set of digital data relating to a 3D representation of said eyeglasses frame, a 3D representation of said eyeglasses frame, a 3D final representation of said eyeglasses frame” are not sufficient to integrate a judicial exception into a practical application nor provide evidence of an inventive concept.
Step 2B: Claim provides an Inventive Concept?
No, as discussed with respect to Step 2A, the additional limitations are Insignificant Extra-Solution Activity or Mere Instructions to Apply and do not impose any meaningful limits on practicing the abstract idea and therefore the claim does not provide an inventive concept in Step 2B.
Insignificant Extra-Solution Activity (MPEP 2106.05(g)) has found mere data gathering and
post solution activity to be insignificant extra-solution activity.
Data gathering:
(a) retrieving, in a database, a set of digital data forming initial information relating to an initial representation of said eyeglasses frame;
“Retrieving” this data in a generic manner, without any specificity as to how this retrieving is actually performed, amounts to no more than mere data gathering.
A claim element that amounts to merely gathering data is not indicative of integration into a
practical solution nor evidence that the claim provides an inventive concept or significantly more, as exemplified by ((MPEP 2106.05)(g)(Mere Data Gathering) i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989); iv. Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
(b) obtaining at least one wearer parameter, taken from a group comprising: morphological parameters related to a face of a predetermined wearer of said eyeglasses frame, and preferred parameters provided by said wearer; (c) obtaining at least one eyeglasses frame parameter, taken from a group comprising: parameters relating to geometry of said eyeglasses frame; parameters relating to material of said eyeglasses frame; and parameters relating to manufacturing techniques for manufacturing said eyeglasses frame;
“Obtaining” these values in a generic manner without any specificity as to how this obtaining is actually performed amounts to no more than mere data gathering.
A claim element that amounts to merely gathering data is not indicative of integration into a
practical solution nor evidence that the claim provides an inventive concept or significantly more, as exemplified by ((MPEP 2106.05)(g)(Mere Data Gathering) i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989); iv. Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, from at least said set of digital data forming the initial information relating to the initial representation of said eyeglasses frame, said obtained at least one wearer parameter or at least one automatically modified wearer parameter, said obtained at least one eyeglasses frame parameter or at least one automatically modified eyeglasses frame parameter, and at least one constraint or at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and automatically providing said 3D representation of said eyeglasses frame from said obtained set of data;
“Obtaining” this data in a generic manner without any specificity as to how this obtaining is actually performed other than what data is used amounts to no more than mere data gathering.
A claim element that amounts to merely gathering data is not indicative of integration into a
practical solution nor evidence that the claim provides an inventive concept or significantly more, as exemplified by ((MPEP 2106.05)(g)(Mere Data Gathering) i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989); iv. Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
(f) as long as said set of digital representing the 3D representation of said eyeglasses frame does not satisfy at least one constraint among said at least one constraint and said at least one automatically modified constraint, iterating operations (d) and (e) with one or more of (i) said at least one automatically modified wearer parameter, (ii) said at least one automatically modified eyeglasses frame parameter, and said at least one automatically modified constraint, to automatically provide a constraint-compliant set of digital data relating to a 3D final representation of said eyeglasses,
To “provide” this data in a generic manner without any specificity as to how this provision is actually performed, other than what data is used and under what conditions it should be provided, amounts to no more than mere data gathering.
A claim element that amounts to merely gathering data is not indicative of integration into a
practical solution nor evidence that the claim provides an inventive concept or significantly more, as exemplified by ((MPEP 2106.05)(g)(Mere Data Gathering) i. Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989); iv. Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
Mere Instructions to Apply (MPEP 2106.05(f)) has found that merely applying a judicial exception such as an abstract idea, as by performing it on a computer, does not integrate the claim into a practical solution.
Mere Instructions to Apply:
(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, … at least one automatically modified wearer parameter, … at least one automatically modified eyeglasses frame parameter, and … at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and automatically providing said 3D representation of said eyeglasses frame from said obtained set of data;
As mentioned in the mental process analysis section, the generation and modification of the data relating to the 3D representation of the frame and constraint-compliant final frame is a mental process.
Applying a computer to generate a 3D representation based on this data at a high level of generality is simply the act of instructing a computer to perform generic functions to perform that generation, which is merely an instruction to apply a computer to the judicial exception. The claim only recites the idea of a solution or outcome, i.e. that the 3D representation “automatically provid{ed}” without reciting how this representation generation from the data is actually accomplished. Further, the computer elements claimed are cited as merely generic tools to perform the operations.
The courts have found that such mere instructions to apply are not indicative of integration into a practical application nor recitation of significantly more than the judicial exception (MPEP 2106.05(f) “Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983”)
Moreover, Mere Instructions To Apply An Exception (MPEP 2106.05(f)) has found that simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. In light of this, the additional generic computer component elements of “A computer-implemented method for providing an eyeglasses frame, retrieving, in a database, a set of digital data, a set of digital data relating to a 3D representation of said eyeglasses frame, a 3D representation of said eyeglasses frame, a 3D final representation of said eyeglasses frame” are not sufficient to integrate a judicial exception into a practical application nor provide evidence of an inventive concept.
In addition, the following are also considered as well-understood, routine, and conventional activities, as discussed in MPEP § 2106.05(d):
retrieving, in a database, a set of digital data is a well-understood, routine, and conventional activity. Particularly, the courts explicitly recognize receiving or transmitting data over a network, storing and retrieving information in memory, and electronic recordkeeping as examples of well-understood, routine, and conventional activities. (MPEP 2106.05(d)(II)) With each of these examples are analogous to the claimed generic retrieval of data from a database, it is clear that this limitation is also an example of well-understood, routine, and conventional activity.
The additional elements have been considered both individually and as an ordered combination in the consideration of whether they constitute significantly more, and have been determined not to constitute such.
The claim is ineligible.
Claim 14. The elements of claim 14 are substantially the same as those of claim 1. Therefore, the elements of claim 14 are rejected due to the same reasons as outlined above for claim 1.
Moreover, Mere Instructions To Apply An Exception (MPEP 2106.05(f)) has found that simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. In light of this, the additional generic computer component elements of “A system for providing an eyeglasses frame, the system comprising: at least one processor configured to:.. retrieve, in a database, a set of digital data, a set of digital data relating to a 3D representation of said eyeglasses frame, a 3D representation of said eyeglasses frame, a 3D final representation of said eyeglasses frame” are not sufficient to integrate a judicial exception into a practical application nor provide evidence of an inventive concept.
Claim 16. The elements of claim 14 are substantially the same as those of claim 1. Therefore, the elements of claim 16 are rejected due to the same reasons as outlined above for claim 1.
Moreover, Mere Instructions To Apply An Exception (MPEP 2106.05(f)) has found that simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. In light of this, the additional generic computer component elements of “non-transitory computer-readable information storage medium; on which is stored one or more sequences of instructions that are accessible to a processor and that, when executed by said processor, cause said processor to: ... retrieve, in a database, a set of digital data,, a set of digital data relating to a 3D representation of said eyeglasses frame, a 3D representation of said eyeglasses frame, a 3D final representation of said eyeglasses frame” are not sufficient to integrate a judicial exception into a practical application nor provide evidence of an inventive concept.
Claim 3 recites “further comprising: (g) manufacturing said eyeglasses frame from said constraint-compliant set of data.”
A final step of manufacturing the eyeglasses in such a manner is equivalent to merely acting on or presenting the result of the abstract idea, and therefore amounts to no more than insignificant post-solution activity.
A claim element that merely acts on a series of previous abstract steps is not indicative of integration into a practical solution nor evidence that the claim provides an inventive concept, as exemplified by ((MPEP 2106.05)(g)(Insignificant application) i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) and ii. Printing or downloading generated menus, Ameranth, 842 F.3d at 1241-42, 120 USPQ2d at 1854-55.)
Claim 4 recites “wherein, at operation (d), said obtaining said set of data further takes into account at least one constraint relating to manufacturing techniques.”
This merely clarifies the data considered in step (d) and is therefore merely an extension of the mental process, mere data gathering, and mere instructions to apply. For example, such constraints being taken into account when generating the data might consist of ensuring that the design is of a form that will be easy and reliable to 3D print, perhaps by mentally observing and judging whether the design has sharp overhangs for which support material would be needed to effectively 3D print, potentially making the printing process less reliable, take longer, and cost more.)
Claim 6 recites “wherein said preferred parameters provided by said wearer are taken from a group comprising parameters relating to a general look, a style, a shape, a material and a color of said eyeglasses frame.”
This merely clarifies the form of the preferred parameters, and is therefore merely an extension of the mental process, mere data gathering, and mere instructions to apply.
Claim 7 recites “wherein, at operation (e), said applying said evaluation criterion comprises comparing a 2D projection obtained from said initial information with a 2D projection of said 3D representation, to determine whether differences between both projections are below a predetermined threshold.”
Projecting data from one coordinate system to another is a mathematic process involving the use of mathematic formulas and calculations to transform the data from the first system to the second. See (MPEP 2106.04(a)(2)(C)(iii) using a formula to convert geospatial coordinates into natural numbers, Burnett v. Panasonic Corp., 741 Fed. Appx. 777, 780 (Fed. Cir. 2018)
Determining whether the differences between two 2D representations of the frames (i.e. two images) are below a certain threshold is a mental process equivalent to observing both 2D representations, judging their similarity, perhaps with numeric estimates (very different, similar, 90% the same, etc.) and judging whether that difference conclusion is below the threshold. For example, a person could determine if the difference between two representations is below the threshold of 100% by observing both and judging if any similarities exist.
Claim 8 recites “wherein said comparing comprises obtaining differences between said compared 2D projections one of: (i) at at least one predetermined location of said compared 2D projections, (ii) at at least one curvature in at least one predetermined region of interest of said compared 2D projections, and (iii) based on a derivate of said at least one curvature.”
Determining the difference between two 2D projections of the frames (i.e. two images) at certain locations or based on certain curves is a mental process equivalent to observing both projections at the particular location or region with a curvature and judge how different they are, perhaps with numeric estimates (very different, similar, 90% the same, etc.)
Claim 9 recites “wherein modifying said constraint relating to the geometry of said eyeglasses frame automatically modifies the comparing of said curvature depending on said predetermined regions of interest.”
The comparing being “automatically modif{ed}” is a merely a consequence of the mental process of changing the constraint; for example if an initial constraint required that the curvature be less than 10cm in length, the initial comparison would be between the length of the curvature and 10cm, if the constraint was changed to require less than 15cm in length, the new comparison would be between the length of the curvature and 15. As a consequence, this is merely an extension of the mental process, mere data gathering, and mere instructions to apply.
Claim 10 recites “wherein said eyeglasses frame has a front face which has an internal contour and an external contour, and wherein said predetermined location is on compared respective internal and/or external contours of said respective front faces of said compared 2D projections.”
This claim merely clarifies the form of the frame and the predetermined location, and is therefore merely an extension of the mental process, mere data gathering, and mere instructions to apply.
Claim 11 recites “wherein said eyeglasses frame has a front face which has an internal contour and an external contour, and a new intermediate contour results from operation (f), in which said predetermined location is on compared respective intermediate contours of said compared 2D projections.”
Specifying that the frame has a front face and contours, and that the predetermined location is on the intermediate contour is merely an extension of the mental process, mere data gathering, and mere instructions to apply.
Generating the intermediate contour is a mental process equivalent to observing the front face of the design, for example the drawing of the design, and drawing a new contour between the internal and external contours.
Claim 12 recites “wherein said comparing further comprises assigning respective predetermined weights to predetermined locations of interest, said predetermined weights depending on one of: (i) said at least one constraint, (ii) said at least one automatically modified constraint, and (iii) said preferred parameters provided by said wearer and taking account of said weights when determining whether differences between both projections are below said predetermined threshold.”
Assigning weights to the locations of interest is a mental process equivalent to arbitrarily judging which weights should be associated with each location based on preference or constraint data. For example, if the customer/user has indicated that they prefer the bridge of the frames to be blue, the bridge could be assigned a high weight if it is blue and a low weight if it is not. With this in mind, the comparison between the projections can involve a comparison of the weights of locations within those projections. For instance, taking the color blue example above in isolation to potential other weighting factors for the sake of simplicity, if a first projection has a weight of 0 on the bridge and the second has a 1, it can be judged that the second has a blue bridge and the first did not, highlighting a difference.
Claim 13 recites “wherein operation (f) further comprises further modifying said eyeglasses frame upon request from a user.”
Altering the data relating to the 3D representation based on user request is a mental process equivalent to modifying the data, for example by modifying the drawing of said data with a pencil and paper, to comply with a user’s request. For example, if a user requests that the frame be made taller, the drawing representing the data can be modified to depict a taller frame.
Claim 19 recites “wherein, at operation (d), said obtaining said set of data further takes into account at least one constraint relating to manufacturing techniques.”
This merely clarifies the data considered in step (d) and is therefore merely an extension of the mental process, mere data gathering, and mere instructions to apply. For example, such constraints being taken into account when generating the data might consist of ensuring that the design is of a form that will be easy and reliable to 3D print, perhaps by mentally observing and judging whether the design has sharp overhangs for which support material would be needed to effectively 3D print, potentially making the printing process less reliable, take longer, and cost more.)
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.
(1) Claims 1, 3, 6-10, 13-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nyong’o (US 20150127363 A1) in view of Thomet (US 20220050311 A1)
Claim 1. Nyong’o teaches A computer-implemented method for providing an eyeglasses frame, the method comprising: ([Par 27] “The present invention provides a novel and unique solution to provide a system and a method for generating custom-fit eyewear frame geometry that can be used for custom-fit eyewear frame modeling, fabrication and printing.”) (a) retrieving, in a database, a set of digital data forming initial information relating to an initial representation of said eyeglasses frame; ([Par 38] “The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template.” [Par 57] “According to the embodiments of the present invention a uniform polygon mesh is generated based on the scanned image. Thereafter the polygon mesh is processed by a processor to determine one or more landmarks on the scanned image. Eyewear frame geometry template is aligned with the polygon mesh. Predefined measurements of the frame geometry template are altered based on the landmarks to obtain the custom-fit eyewear frame geometry.”) (b) obtaining at least one wearer parameter, taken from a group comprising: morphological parameters related to a face of a predetermined wearer of said eyeglasses frame, ([Par 37] “The custom-fit eyewear frame geometry may be generated by using the scanner for capturing a multi-dimensional scanned image of head of a user.”) and preferred parameters provided by said wearer; ([Par 13] “The eye-care application module is further configured to provide various mathematical and processing algorithms to generate a plurality of options for the custom-fit eyewear, wherein the options include cost, color, design, lens type, and manufacturing materials of the custom-fit eyewear for selection and preferences of the user.” [Par 32-33] “The avatar creation module 104c may be used by the user or the child and parents and/or doctors to virtually see and fit/try on glasses. The avatar creation module 104c collects the trial and error sampling data and uses the same to develop the basic frame geometry for users. This provides a fun, stress free and personalized experience which harmonizes form and function of the custom eye wear. Once user data has been selected via the avatar creation module 104c, the data is processed ...”) (c) obtaining at least one eyeglasses frame parameter, taken from a group comprising: parameters relating to geometry of said eyeglasses frame; parameters relating to material of said eyeglasses frame; and parameters relating to manufacturing techniques for manufacturing said eyeglasses frame; ([Par 33] “Once user data has been selected via the avatar creation module 104c, the data is processed to generate the custom fit eyewear and may be further exported for 3D printing, modeling and fabrication upon user approval. The avatar creation module 104c sends information on the selected eyewear, such as dimension, color and material, to be used etcetera to an output device such as a 3D printer facility.” [Par 39] “The processing module 104b processes data from the scanned image along with other data including user data for example, vision power of the user, and other user data such as user id, name, age, user preferences, location and address of the user etcetera. Further, the processing module 104b may also process data including shapes, colors, size, and design of the frames or glasses. The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication. Various printing technologies and materials may be used for 3D printing to provide durability, flexibility, scratch or damage resistance, quality lenses for the custom-fit eyewear frame”)(d) obtaining, by at least one processor, a set of digital data relating to a 3D representation of said eyeglasses frame, from at least: ([Par 39] “The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication.”) said set of digital data forming the initial information relating to the initial representation of said eyeglasses frame, ([Par 37-38] “The processing module 104b also processes the polygon mesh to determine one or more landmarks on the scanned image, and align the eyewear frame geometry template {eyewear geometry template = initial information} with the polygon mesh. … The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template.” [Par 50- 51] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention.”) said obtained at least one wearer parameter or at least one automatically modified wearer parameter, said obtained at least one eyeglasses frame parameter or at least one automatically modified eyeglasses frame parameter, and ([Par 39] “The processing module 104b processes data from the scanned image along with other data including user data for example, vision power of the user, and other user data such as user id, name, age, user preferences, {user parameters} location and address of the user etcetera. Further, the processing module 104b may also process data including shapes, colors, size, and design of the frames or glasses. {user and eyeglass frame parameters}”) at least one constraint or at least one automatically modified constraint, both relating to geometry of said eyeglasses frame, and ([Par 37] “… The processing module 104b also processes the polygon mesh to determine one or more landmarks {constraint} on the scanned image, and align the eyewear frame geometry with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry.” [Examiner’s note: the constraints are interpreted as design goals and requirements, such as fitment of the frames to the face based on face geometry. With this in mind, the facial landmarks used to determine fitting measurements of the frames reads on this limitation]) automatically providing said 3D representation of said eyeglasses frame from said obtained set of data; ([Par 39] “The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication.”) (e) applying at least one evaluation criterion to said set of digital data relating to the 3D representation of said eyeglasses frame, to determine whether said set of digital data relating to the 3D representation of said eyeglasses frame satisfies said at least one constraint; and ([Par 50- 51] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention. A rough alignment of the frame geometry template 502 is first made. Once the landmarks have been applied to the scanned mesh, rough alignment can be made by rotating the scan in 3D space so that the face is aligned along the along the X, Y and Z axis respectively. This is done by checking salient points on the left and right side of the face and rotating the scan such that each pair has the same translation values along the Z axis. Thereafter, translating and scaling the template is performed wherein the frame template is loaded in and translated into place using the `bridge of the nose` locator/contact point as the main landmark. The locators on the temples and pupils are then used to determine the height and width of the frames overall. Special attention is made to the placement of the pupils relative to each lens opening. The algorithm is set to align it such that the pupils line up to the upper third of each lens opening. Once those requirements are satisfied…”) (f) ([Par 39] “The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication.”) least one constraint among said at least one constraint and said at least one automatically modified constraint, ([Par 37] “… The processing module 104b also processes the polygon mesh to determine one or more landmarks {constraint} on the scanned image, and align the eyewear frame geometry with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry.”) operations (d) ([Par 37-39] “The custom-fit eyewear frame geometry may be generated by using the scanner for capturing a multi-dimensional scanned image of head of a user. The processing module 104b is configured to generate a uniform polygon mesh based on the scanned image. The processing module 104b also processes the polygon mesh to determine one or more landmarks on the scanned image, and align the eyewear frame geometry template with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry. The custom-fit eye wear frame geometry can be displayed on an output display of the user devices 110. The outputted custom-fit eye wear frame geometry can be sent or exported to 3D printing/modeling module for 3D printing and fabrication. The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template. The eyewear frame geometry template has predefined or standard measurements as explained above. The standard measurements are predefined such that it roughly fits on the scanned image. The standard measurements or the predefined measurements may be sets of different measurements for adults and children. … The processing module 104b processes data from the scanned image along with other data including user data for example, vision power of the user, and other user data such as user id, name, age, user preferences, location and address of the user etcetera. Further, the processing module 104b may also process data including shapes, colors, size, and design of the frames or glasses. The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication. Various printing technologies and materials may be used for 3D printing to provide durability, flexibility, scratch or damage resistance, quality lenses for the custom-fit eyewear frames.”) and (e) with one or more of (i) said at least one automatically modified wearer parameter, (ii) said at least one automatically modified eyeglasses frame parameter, and said at least one automatically modified constraint, to automatically provide a constraint-compliant set of digital data relating to a 3D final representation of said eyeglasses, ([Par 45] “The method of fitting the frame geometry template relies on specific landmarks 300 on the scanned image preferably a 3D scan to determine the necessary measurements and manipulations to perform. These contact points include the center of the bridge of the nose, the pupils of each eye, the inner folds of each ear (point where the arms of the glasses would rest), the Temporal bones or Sphenoid, Zygomatic Arch, as well as other intermediary points which can aid in aligning the template geometry.” [Par 50-54] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention. A rough alignment of the frame geometry template 502 is first made. Once the landmarks have been applied to the scanned mesh, rough alignment can be made by rotating the scan in 3D space so that the face is aligned along the along the X, Y and Z axis respectively. This is done by checking salient points on the left and right side of the face and rotating the scan such that each pair has the same translation values along the Z axis. Thereafter, translating and scaling the template is performed wherein the frame template is loaded in and translated into place using the `bridge of the nose` locator/contact point as the main landmark. The locators on the temples and pupils are then used to determine the height and width of the frames overall. Special attention is made to the placement of the pupils relative to each lens opening. The algorithm is set to align it such that the pupils line up to the upper third of each lens opening. Once those requirements are satisfied, the template is moved on the Z axis to ensure that the proper pupil distance from the lens is achieved. Further, arm length and angle adjustment of the frame geometry template is obtained once the lens holder has been properly aligned. The arm length is adjusted and tilted if necessary to allow the ends to rest properly around the ears. Fine Alignment of the geometry template is obtained by using the landmarks on the bridge of the nose and the nose piece; morph targets are activated in step to change the shape of the nose piece to achieve a closer fit. A more accurate approach can be implemented using the contours of the nose on the scanned geometry as a cutting surface. This is done by treating the nose and lens holder as arguments in a `Boolean difference` operation. The resulting shape of the nose piece would theoretically be the same as the contours of the nose, providing a far superior fit compared to morph target manipulation alone. Any necessary adjustments of the frame geometry can be done using a number of sliders and controls. Another approach `collision deformer` may be used for fine alignment. This gives better and accurate results. In the collision deformer approach, wherever the scanned mesh and eyewear frame/glasses template intersect, the algorithm uses collision detection to "push out" vertices of the frame template geometry until it closely matches the nose profile of the scanned face. Therefore, custom-fit eye wear frame geometry may be generated by the embodiments of the invention as described above, and may be exported for printing and fabrication. The final custom-fit eye wear frame geometry may have the arms in a closed position to save space on the print bed, as well as introduce the necessary mechanical spring tension necessary to keep the frames on the face.” [Examiner’s note: the geometry of the frame is automatically modified to generate a final custom-fit eye wear frame that fits the landmarks; i.e. steps are performed to provide a constraint-compliant set of data relating to a 3D final representation of the eyeglasses frame using automatically modified eyeglasses frame parameters]) ([Par 54] “ Therefore, custom-fit eye wear frame geometry may be generated by the embodiments of the invention as described above, and may be exported for printing and fabrication. The final custom-fit eye wear frame geometry may have the arms in a closed position to save space on the print bed, as well as introduce the necessary mechanical spring tension necessary to keep the frames on the face.”) and said initial representation of said eyeglasses frame. ([Par 38] “The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template.”)
Nyong’o does not explicitly teach as long as said representation of the frame does not satisfy the at least one constraint, iterating steps of obtaining the representation and evaluating that constraints are satisfied; wherein said evaluation criterion is related to a resemblance or a deviation between two representations of eyeglass components.
Thomet makes obvious as long as said representation of the frame does not satisfy the at least one constraint, iterating steps of obtaining the representation and evaluating that constraints are satisfied; wherein said evaluation criterion is related to a resemblance or a deviation between two representations of eyeglass components. ([Abstract] “The invention relates to a method for automatically establishing parameters in order to centre and/or personalise corrective lenses for spectacles, comprising the following steps: —taking images of the frame from different viewing angles, —defining an initial model of the frame in a reference system based on a set of predefined initial parameters, projecting a region of interests in the images, —comparing the projections and evaluating a similarity between said projections, —modifying at least one of the parameters of the model and reiterating the steps until a maximum level of similarity between the projections is obtained, —deducing the at least one of the parameters from the model associated with the projections which have the maximum level of similarity.” [Par 192] “FIG. 2b also represents the projection P1′ of this same region of interest 9 into the first image I1 and its mirror projection P2′ associated with the second image I2, after offsetting the model 6.431 mm along the axis X, such that the coordinates of the center of the region of interest 9 along the axes X, Y and Z are now equal to (0.418; −0.557; 5.878) mm. As can be seen from their comparison, which gives a difference of 0.175, these two projections P1′, P2′ are very similar.”)
Thomet is analogous art because it is within the field of automated eyeglass design. It would have been obvious to one of ordinary skill in the art to combine it with Nyong’o before the effective filing date. One of ordinary skill in the art would have been motivated to make this combination in order to better fit frames and lenses while adhering to important industry standards. As noted by Thomet, ([Par 4] “The parameters of a frame are generally given in the “boxing” system as per the ISO 8624 standard which corresponds to the rectangle encasing (or boxing) the external cut-out of the corrective lenses (and therefore at the bottom of the groove of the frame when the frame is full-rimmed). The term “D dimension” refers to the distance between the two boxing rectangles of a given frame, “A dimension” the width of each boxing rectangle, “B dimension” their height and “wrap” the angle formed between one of the boxing rectangles and the plane comprising the nasal segments (substantially vertical segments and the closest to the nose) of the left and right boxing rectangles of the frame. The value of the camber of the frame, the so-called frame base and the value of the curvature of the glass, the so-called base of the glass, may also be used. … Usually, an optician directly measures the parameters related to the subject and the parameters defining the boxing rectangles on the frame using a ruler.”) Further, previous attempts to automatically produce frames that adhere to the ISO 8624 standard have had numerous disadvantages and setbacks ([Par 6- 7] “in document FR 2 719 463 it was proposed to acquire an image of the subject wearing the frame using a video camera than determine, on the image and automatically, the position of the horizontal and vertical lines tangent to the corrective lenses (aligned with the sides of the boxing rectangles) by analysis of the luminance gradient and extraction of the contours of the frame. To do this, this document proposes to define a window within the image and to determine, in this window, the points for which the norm of the luminance gradient is greater than a threshold value to obtain the internal and external contours of the frame. The shape of the frame then the tangent to the internal contour of the frame shall be further determined in this window on the basis of the contours. However, it transpires that the relevant contours for determining the parameters of the boxing rectangles are not necessarily sharp and/or continuous and/or visible and/or homogenous (particularly due to the reflections on the images, the color of the rims and especially the groove which can have contours that are complex and difficult to visualize on an image). The result is that on the image the desired contours are often partially invisible or weakly demarcated, and many interference contours are often present, being very close and sometimes more pronounced than the desired contours, which make it hard to detect these contours and therefore the determination of the parameters defining the boxing rectangles.”) It should be further noted that Nyong’o makes no mention of the ISO 8624 standard nor the use of the boxing system; while the system disclosed therein is extremely powerful, it may be hampered in certain situations by the lack of adherence to such standards, particularly when used in conjunction with existing workflows. To this end, Thomet presents a method for generating ideal fitment of frames and lenses while continuing to use the industry standard ISO 8624 boxing system ([Par 19] “One aim of the invention is to propose an alternative method making it possible to automatically provide a more repeatable, reliable, independent and more robust measurement of all or part of the necessary parameters with a view to the personalization and manufacturing of a pair of spectacles, such as in particular the parameters defining the boxing rectangles of the corrective lenses of the pair of spectacles, the shape of the rims, the frame base, the glass base, the centering parameters of the corrective lenses in the frame (half pupillary distances and ocular center heights), or of personalization of the corrective lens (vertex distance, position of the center of rotation of the eye with respect to the corrective lens, heading angle, pantoscopic tilt, shape of the glass etc.) which are more robust and more accurate than in the prior art and which does not necessarily require the shape of the lenses to be detected ahead of time.”) Overall, one of ordinary skill in the art would have recognized that combining Nyong’o with Thomet would allow the system to adhere to industry standards while leveraging the powerful functionality of both systems, enabling easy integration of the combined system with existing workflows already using known standards.
Claim 14. The elements of claim 14 are substantially the same as those of claim 1. Therefore, the elements of claim 14 are rejected due to the same reasons as outlined above for claim 1. Further, Nyong’o makes obvious the additional elements of “A system for providing an eyeglasses frame, the system comprising: at least one processor configured to: …” ([Par 27] “The present invention provides a novel and unique solution to provide a system and a method for generating custom-fit eyewear frame geometry that can be used for custom-fit eyewear frame modeling, fabrication and printing.” [Par 58] “FIG. 7 illustrates an example computing system that can be used to implement the custom eyewear system disclosed herein. A general purpose computer system 700 is capable of executing a computer program product to execute a computer process. Data and program files may be input to the computer system 700, which reads the files and executes the program therein. It should be understood that computing systems may also embody devices such as Personal Digital Assistants (PDAs), mobile phones, smart phones, set top boxes, tablets, laptops and other electronic devices. Some of the elements of a general-purpose computer system 700 include a processor 702 an input/output (I/O) section 704, a central processing unit (CPU) 706, and a memory section 708.”)
Claim 16. The elements of claim 16 are substantially the same as those of claim 1. Therefore, the elements of claim 16 are rejected due to the same reasons as outlined above for claim 1. Further, Nyong’o makes obvious the additional elements of “A non-transitory computer-readable information storage medium; on which is stored one or more sequences of instructions that are accessible to a processor and that, when executed by said processor, cause said processor to: …” ([Par 27] “The present invention provides a novel and unique solution to provide a system and a method for generating custom-fit eyewear frame geometry that can be used for custom-fit eyewear frame modeling, fabrication and printing.” [Par 58] “FIG. 7 illustrates an example computing system that can be used to implement the custom eyewear system disclosed herein. A general purpose computer system 700 is capable of executing a computer program product to execute a computer process. Data and program files may be input to the computer system 700, which reads the files and executes the program therein. It should be understood that computing systems may also embody devices such as Personal Digital Assistants (PDAs), mobile phones, smart phones, set top boxes, tablets, laptops and other electronic devices. Some of the elements of a general-purpose computer system 700 include a processor 702 an input/output (I/O) section 704, a central processing unit (CPU) 706, and a memory section 708.”)
Claim 3. Nyong’o teaches further comprising: (g) manufacturing said eyeglasses frame from said constraint-compliant set of data. ([Par 54] “Therefore, custom-fit eye wear frame geometry may be generated by the embodiments of the invention as described above, and may be exported for printing and fabrication. The final custom-fit eye wear frame geometry may have the arms in a closed position to save space on the print bed, as well as introduce the necessary mechanical spring tension necessary to keep the frames on the face. This is done using a bend deformer that has been rigged into the hinge structure of each arm. Each component is then joined into one mesh using nested `boolean union` operations, smoothed and tesselated to meet STL 3D printing standards.”)
Claim 6. Nyong’o teaches wherein said preferred parameters provided by said wearer are taken from a group comprising parameters relating to a general look, a style, a shape, a material and a color of said eyeglasses frame. ([Par 13] “The eye-care application module is further configured to provide various mathematical and processing algorithms to generate a plurality of options for the custom-fit eyewear, wherein the options include cost, color, design, lens type, and manufacturing materials of the custom-fit eyewear for selection and preferences of the user.” [Par 33] “Once user data has been selected via the avatar creation module 104c, the data is processed to generate the custom fit eyewear and may be further exported for 3D printing, modeling and fabrication upon user approval. The avatar creation module 104c sends information on the selected eyewear, such as dimension, color and material, to be used etcetera to an output device such as a 3D printer facility.”)
Claim 7. Nyong’o teaches wherein, at operation (e), said applying said evaluation criterion ([Par 50- 51] “FIGS. 5A and 5B illustrate alignment and alteration of frame geometry template based on the landmarks according to one embodiment of the invention. A rough alignment of the frame geometry template 502 is first made. Once the landmarks have been applied to the scanned mesh, rough alignment can be made by rotating the scan in 3D space so that the face is aligned along the along the X, Y and Z axis respectively. This is done by checking salient points on the left and right side of the face and rotating the scan such that each pair has the same translation values along the Z axis. Thereafter, translating and scaling the template is performed wherein the frame template is loaded in and translated into place using the `bridge of the nose` locator/contact point as the main landmark. The locators on the temples and pupils are then used to determine the height and width of the frames overall. Special attention is made to the placement of the pupils relative to each lens opening. The algorithm is set to align it such that the pupils line up to the upper third of each lens opening. Once those requirements are satisfied…”) ([Par 38] “The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template.”) with a 2D projection of said 3D representation, ([Par 39] “The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication.” [Examiner’s note: displaying 3D geometry on a screen involves projecting it to 2D])
Thomet makes obvious wherein the process comprises comparing a 2D projection obtained from data with another 2D projection to determine whether differences between both projections are below a predetermined threshold. ([Par 20-31] “the invention makes provision for a method of automatic determination of parameters for the purpose of centering and/or personalizing corrective lenses of spectacles, said spectacles comprising a frame and the method comprising the following steps: … S4: determination of an element of the frame, S5: definition of an initial model of the frame in the reference system on the basis of a set of predefined initial parameters, S6: definition of a region of interest boxing the element of the frame in the initial model, S7: projection, into the first image and into the second image, of the region of interest, S8: comparison of the projections of the region of interest into the first image and into the second image and evaluation of a similarity between said projections, S9: modification of at least one of the parameters of the model defined in step S5, S10: reiteration of steps S6 to S9 until the obtainment of a maximum of similarities between the projections of the region of interest into the first image and in the second image [Examiner’s note: having “maximum similarity” means that the difference between the projections is below a certain threshold])
Claim 8. Thomet teaches wherein said comparing comprises obtaining differences between said compared 2D projections one of: (i) at at least one predetermined location of said compared 2D projections, (ii) at at least one curvature in at least one predetermined region of interest of said compared 2D projections, and (iii) based on a derivate of said at least one curvature. ([Par 20-31] “the invention makes provision for a method of automatic determination of parameters for the purpose of centering and/or personalizing corrective lenses of spectacles, said spectacles comprising a frame and the method comprising the following steps: … S4: determination of an element of the frame, S5: definition of an initial model of the frame in the reference system on the basis of a set of predefined initial parameters, S6: definition of a region of interest boxing the element of the frame in the initial model, S7: projection, into the first image and into the second image, of the region of interest, S8: comparison of the projections of the region of interest into the first image and into the second image and evaluation of a similarity between said projections, S9: modification of at least one of the parameters of the model defined in step S5, S10: reiteration of steps S6 to S9 until the obtainment of a maximum of similarities between the projections of the region of interest into the first image and in the second image” [Par 33-34] “the comparison step S8 is carried out by comparison of the gradients in each of the projections. the gradients are compared using a Sobel filter so as to obtain two filtered images, then the two filtered images are compared by taking the sum of the squares of the pointwise differences or by computing a correlation by taking the pointwise product.”)
Claim 9. Nyong’o teaches, wherein modifying said constraint relating to the geometry of said eyeglasses frame ([Par 37] “… The processing module 104b also processes the polygon mesh to determine one or more landmarks {constraint} on the scanned image, and align the eyewear frame geometry with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry.” [Par 42] “The landmarks may be designated manually or automatically on the scanned mesh 204.” [Par 46] “The scanned image can be then loaded in as a morph target to an already landmark assigned geometry, to alter the polygon mesh accordingly. For a 3D scan coming from an active scanning process, the landmarks must be manually assigned to the geometry by selecting polygons or vectors. Eventually the processor of the system will be able to identify these points automatically using an algorithmic facial recognition approach.”)
Thomet makes obvious wherein the system automatically modifies the comparing of said curvature depending on said predetermined regions of interest. ([Par 20-31] “the invention makes provision for a method of automatic determination of parameters for the purpose of centering and/or personalizing corrective lenses of spectacles, said spectacles comprising a frame and the method comprising the following steps: … S4: determination of an element of the frame, S5: definition of an initial model of the frame in the reference system on the basis of a set of predefined initial parameters, S6: definition of a region of interest boxing the element of the frame in the initial model, S7: projection, into the first image and into the second image, of the region of interest, S8: comparison of the projections of the region of interest into the first image and into the second image and evaluation of a similarity between said projections, S9: modification of at least one of the parameters of the model defined in step S5, S10: reiteration of steps S6 to S9 until the obtainment of a maximum of similarities between the projections of the region of interest into the first image and in the second image” [Par 68-69] “the step of evaluation of a similarity comprises at least one of the following methods: establishment of a score for the first image and/or the second image indicating whether each point of the projection of the region of interest in the image corresponds to a contour in said image”[Par 170] “Other methods for evaluating the similarity of the images may be used such as computations of contour detections and distance maps on each image.”) [Examiner’s note: given its broadest reasonable interpretation, that the system “automatically modifies the comparing” is read on by modification of the elements being compared, such as in the iterative modification the data used in the comparison of the curvatures based on the regions of interest disclosed in Thomet])
Claim 10. Nyong’o teaches wherein said eyeglasses frame has a front face which has an internal contour and an external contour, and ([Fig. 5A and 5B] Show an eyeglass frame with a front face and various contours, including inner and outer contours.)
Thomet makes obvious wherein said predetermined location is on compared respective internal and/or external contours of said compared 2D projections. ([Par 44] “the method further comprises… a step of detection of a contour of the frame in the projections, into the first image and into the second image, of the region of interest, so as to determine the parameters of at least one boxing rectangle of the lenses.” [Par 45-47] “ the step of detection of a contour comprises a sub-step of detection of a right internal contour of the frame in the projection of the region of interest into the first image and a sub-step of detection of a left internal contour of the frame in the projection of the region of interest into the second image. the method further comprises, following the detection of the right internal contour and the left internal contour of the frame, a step of deduction of a position, in the reference system, of internal vertical segments of the boxing rectangles of the corrective lenses. …the step of detection of a contour comprises a sub-step of detection of a right external contour of the frame in the projection of the region of interest into the first image and a sub-step of detection of a left external contour of the frame in the projection of the region of interest into the second image.” [Par 48] “the method further comprises, following the detection of the external and internal contours of the lenses, a step of deduction of a position, in the reference system, of external and internal vertical segments of the boxing rectangles of the corrective lenses.”)
Claim 13. Nyong’o teaches wherein the operation (f) further comprises further modifying said eyeglasses frame upon a request from a user. ([Par 33] “The eye-care application module 104 may also be used to change the custom eyewear based on the additional information received from the eye doctor or physician and the patient via the user devices within the network 106.”)
(2) Claims 4 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nyong’o (US 20150127363 A1) in view of Thomet (US 20220050311 A1) in further view of Soatto (US 6944327 B1)
Claim 4. Nyong’o teaches wherein, at operation (d), said obtaining said set of data ([Par 37-39] “The custom-fit eyewear frame geometry may be generated by using the scanner for capturing a multi-dimensional scanned image of head of a user. The processing module 104b is configured to generate a uniform polygon mesh based on the scanned image. The processing module 104b also processes the polygon mesh to determine one or more landmarks on the scanned image, and align the eyewear frame geometry template with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry. The custom-fit eye wear frame geometry can be displayed on an output display of the user devices 110. The outputted custom-fit eye wear frame geometry can be sent or exported to 3D printing/modeling module for 3D printing and fabrication. The database 108 is also configured to store a library of one or more eyewear frame measurements including the eyewear frame geometry template. The eyewear frame geometry template has predefined or standard measurements as explained above. The standard measurements are predefined such that it roughly fits on the scanned image. The standard measurements or the predefined measurements may be sets of different measurements for adults and children. … The processing module 104b processes data from the scanned image along with other data including user data for example, vision power of the user, and other user data such as user id, name, age, user preferences, location and address of the user etcetera. Further, the processing module 104b may also process data including shapes, colors, size, and design of the frames or glasses. The display 108 facilitates a technician to visualize the geometry and scanned images of the user. The frame geometry is displayed on the display unit of the user devices 110 and landmarks on the scanned image is identified and marked. The outputted custom-fit eye wear frame geometry can be sent or exported to the 3D printing/modeling module for 3D printing and fabrication. Various printing technologies and materials may be used for 3D printing to provide durability, flexibility, scratch or damage resistance, quality lenses for the custom-fit eyewear frames.”)
The combination of Nyong’o and Thomet does not explicitly teach that the system further takes into account at least one additional constraint relating to manufacturing techniques.
Soatto makes obvious the system further takes into account at least one constraint relating to manufacturing techniques. ([Col 2 line 38-41] “In addition, the method includes interactively modifying the selected style and shape of the eyeglass frame while satisfying constraints due to manufacturing process and inventory.” [Col 3 line 1-7] “… the system is given (e.g. by the manufacturer, based upon the material chosen) the constraints that a particular eyeglass frame must satisfy, e.g., the maximum curvature, tangent at the hinges and bridge, maximum size of the lenses, and others. The system verifies that the constraints of the selected eyeglass frames are met during the interactive modification procedure.)
Soatto is analogous art because it is within the field of custom eyeglass design. It would have been obvious to one of ordinary skill in the art to combine it with Nyong’o and Thomet before the effective filing date. One of ordinary skill in the art would have been motivated to make this combination in order to make selection of eyewear styles easier for consumers. As noted by Soatto, the wide variety of available styles of eyeglasses and the even broader spectrum of individual style preferences, navigating the selection of designs that (a) a customer wants and (b) are available to produce/manufacture can be an incredibly complex procedure ([Col 1 line 16-58] “Eyeglass frames typically have a particular style (the combination of material, color, texture, feature decorations, and overall appearance) and a particular shape (the geometric description of the contour of the front rims of the eyeglass frame). For each style there may be several different shapes (e.g. round, square etc.), and for each shape there may be several different styles (metal, plastic, translucent, engraved, etc.). Eyeglasses, the combination of eyeglass lenses (hereinafter referred to as "lenses") and eyeglass frames, typically include lenses having a certain shape, eyeglass frames having a matching shape, a certain style, and a particular combination of functional elements (legs, nose pads and other functional elements). In the eyeglass industry there is a conflict between a customer's desire for personalized design and the mass production employed by the industry. On one hand, it is believed that eyeglasses greatly influence the looks and perceived character of a customer, who often wears the glasses daily for long periods of time. This influence drives a desire to obtain a personalized design that fits a variety of criteria (e.g. facial features and style preferences of the customer, current fashion guidelines, social constraints etc.). On the other hand, the manufacturing industry operates on a large scale production in which eyeglasses are distributed to consumers via retailers.… In today's optical stores, it is typically the responsibility of the retailer to translate a customer's personality, style, and social preferences into shapes and styles of eyeglass frames, leading to a lengthy and frustrating process for the customer. The process becomes even more lengthy and frustrating for the customer when the retailer is not experienced or esthetically sensitive, does not properly communicate with the customer, or is just trying to serve more than one customer at a time.”) To this end, Soatto presents a system for customer eyeglass design and selection that not only allows customization and virtual try-ons, but takes special care to ensure that designs are reasonable to manufacture. ([Col 1 line 62- Col 2 line 7] “In one embodiment, a user utilizes a method and system to design, select, and purchase eyeglasses. The user accesses the system and visualizes an inventory of eyeglass styles and shapes previously stored in a database and displayed by the system. The user selects a particular eyeglass style and "virtually tries on" the selected eyeglasses in a size that matches the user's facial features. In addition, the method and system allow the user to interactively modify the choice by changing the shape, style, and color of the eyeglass frames. The system reviews the choices made by the user and provides a notification to the user if a selected modification is not allowed for the particular eyeglass frame chosen by the user.” [Col 2 line 38-41] “In addition, the method includes interactively modifying the selected style and shape of the eyeglass frame while satisfying constraints due to manufacturing process and inventory.” [Col 3 line 1-7] “… the system is given (e.g. by the manufacturer, based upon the material chosen) the constraints that a particular eyeglass frame must satisfy, e.g., the maximum curvature, tangent at the hinges and bridge, maximum size of the lenses, and others. The system verifies that the constraints of the selected eyeglass frames are met during the interactive modification procedure.” [Col 11 line 44-50] “Corresponding to each eyeglass frame, system 10 is equipped with a database of constraints on the maximum curvature, tangents at the hinges, and other shape constraints determined by the material. Eyeglass frames can be divided into three different categories depending upon the material properties of the eyeglass frame and an appropriate database of constraints identified 218”) Overall, one of ordinary skill in the art would have recognized that combining Nyong’o and Thomet with Soatto would result in a system that enabled easier customer selection of designs while simultaneously taking special care to ensure that each custom design can be manufactured effectively, reliably, and durably.
Claim 19. The elements of claim 19 are substantially the same as those of claim 4. Therefore, the elements of claim 19 are rejected due to the same reasons as outlined above for claim 4.
(3) Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Nyong’o (US 20150127363 A1) in view of Thomet (US 20220050311 A1) in further view of Fonte (US 20150055086 A1)
Claim 11. Nyong’o teaches wherein said eyeglasses frame has a front face which has an internal contour and an external contour, and ([Fig. 5A and 5B] Show an eyeglass frame with a front face and various contours, including inner and outer contours.) ([Par 37-39] [Par 45] [Par 50-54])
Thomet makes obvious ([Abstract] “The invention relates to a method for automatically establishing parameters in order to centre and/or personalise corrective lenses for spectacles, comprising the following steps: —taking images of the frame from different viewing angles, —defining an initial model of the frame in a reference system based on a set of predefined initial parameters, projecting a region of interests in the images, —comparing the projections and evaluating a similarity between said projections, —modifying at least one of the parameters of the model and reiterating the steps until a maximum level of similarity between the projections is obtained, —deducing the at least one of the parameters from the model associated with the projections which have the maximum level of similarity.”) in which said predetermined location is on compared respective ([Par 117] “the step of detection of a contour comprises a sub-step of detection of an upper horizontal contour and a lower horizontal contour in the projection of the region of interest in at least one from among the first and the second image and the method further comprises, following the detection of said horizontal contours, a step of deduction of a position, in the reference system, of horizontal segments of the rectangle boxing the lens and the dimension corresponding to the height of said boxing rectangle.”)
The combination of Nyong’o and Thomet does not explicitly teach a new intermediate contour results from processing steps with locations on the intermediate contours
Fonte makes obvious a new intermediate contour results from processing steps with locations on the intermediate contours ([Par 266] “d) If the adjustment creates a gap or interference between the eyewear model and user's nose in the face model, then the nosepiece of the eyewear model is adapted by the computer system (adjust thickness, position of pads, width, etc) to create a contact with the user's nose. e) If the adjustment creates a gap or interference between the temples and the user's ears of face, then the temples is adapted by the computer system (adjust length, angle, etc), f) If the adjustment creates a gap or interference that is outside the solvable domain of the custom eyewear model constraints or if large portions of the eyewear cause interference (eg entire frame moves into the face), the computer system does not allow adjustment to the unacceptable position,” [Par 285] “For example, the computer system enables the user to grab and adjust any part of the eyewear, giving controls to adjust length, height, width, and thickness of any portion of the eyewear, as well as the curvature of various members such as the rims and temples.” [Fig. 13])
Fonte is analogous art because it is within the field of custom eyewear generation. It would have been obvious to one of ordinary skill in the art to combine it with Nyong’o and Thomet before the effective filing date. One of ordinary skill in the art would have been motivated to make this combination in order to simpler and easier customer/patient interaction and customization. As noted by Nyong’o, previous methods for virtual try-ons and eyewear customization can be extremely limited and difficult to operate for untrained users ([Par 17-18] “The prior art describes technologies that are designed mostly for the aesthetic preview of the eyewear on a user. A need for a more quantitative analysis exists to enable a better experience, custom fit, custom style, automated adjustment and recommendations, and the overall ability to make an eyewear design fit with each user's unique anatomy and taste. Often pupillary distance is the only measurement taken to ensure the proper fit of eyewear, and that measurement alone is not sufficient to ensure a proper physical fitting of custom eyewear. More information is especially needed for advanced optics, such as progressive or digitally-compensated or freeform lenses. But regardless of the type and quantity of facial measurements needed to craft custom eyewear, the user should not be required to manually measure them. Most target users are not technologically savvy beyond following easy prompts in a web browser. A consumer needs an experience that is easier than picking and choosing parts and pieces or custom drawing every detail, especially when using only 2-D images, as the prior art has described. The method and system must enable easy customization, including automation of sizing and styles if the user desires automated recommendations. An average user should be able to obtain any eyewear design they desire and an excellent fit by having a design custom-fitted to his face, seeing a preview in a "what you see is what you get" display, and being able to make changes and see the effect on his face and fit.”) It should be noted that in Nyong’o the virtual try-on is done using an avatar rather than the customer/patient’s actual face, which can lead to discrepancies with reality and confusion ([Nyong’o Par 32] “The avatar creation module 104c may be used by the user or the child and parents and/or doctors to virtually see and fit/try on glasses. The avatar creation module 104c collects the trial and error sampling data and uses the same to develop the basic frame geometry for users.”) Further, customers themselves frequently are unsure of what they want out of a new pair of glasses ([Par 4] “ Purchasing eyewear, while a necessity for many people, presents many challenges for consumers. For traditional in-store purchases, consumers are faced with limited in-store selection, which often requires visiting multiple stores. Yet users must explore an unmanageable array of options to find a compromise between fit, style, color, shape, price, etc. Eyewear is most commonly mass-produced, with a particular style available in one or two generic colors and sizes. Users faces are unique enough that a face can be used as a primary form of identification, yet they must choose between products made for a generic faces that are not their own. It is very difficult for users to find the one perfect pair of glasses for their unique taste, facial anatomy, and needs. They also often have difficulty visualizing what they try on because they need an optical prescription in the first place.”) To this end, Fonte presents a method for easier, deeper customization that incorporates automatic suggestions based on the learned taste of customers ([Par 21-23] “The subject invention has a number of important parts. The first part is the understanding that what is desired is a from-scratch, one-up customized product that is not manufactured exclusively from off-the-shelf, previously designed, mass-produced, or stock components. As mentioned above, there are many systems which involve picking a number of components that are premade or pre-manufactured and putting them together in a customized object. However, if there are a lot of mass-produced items, the user does not have the feeling that he or she is presented with a truly unique one-off product centered on the particular profile of the user. Nor will a product made from mass-produced parts be customized to the desired degree needed to fit the user's unique anatomy and preferences. One must create at least some part of the custom product completely from scratch to fit the user, for example making some form of the product into a unique, non-mass-produced shape or size. The ability to automatically design and alter the fundamental shape and form of a custom product, with or without user guidance, is an important advantage over systems that simply let users browse and assembly mass-produced components. … The third part is to be able to ascertain a user's profile, his habitual buying habits, his likes and dislikes, derived over a period of time and to be able to use all of these likes and dislikes and profiles to provide for the user a suggested unique product.” [Par 216] “In yet another embodiment, an augmented reality approach is used. A live video feed of the user's face is shown using a computer system configured with a video camera. The quantitative anatomic model tracks with the user's face in real time, allowing the 3D eyewear model to be displayed and superimposed on the user's face in real time as the user moves his face in front of the computer system. This would create the illusion of looking in a mirror while trying on the glasses, as one would in a retail store”) Overall, one of ordinary skill in the art would have recognized that combining Nyong’o and Thomet with Fonte would result in a system that is significantly more user-friendly.
Claim 12. Nyong’o teaches ([Par 37] “… The processing module 104b also processes the polygon mesh to determine one or more landmarks {constraint} on the scanned image, and align the eyewear frame geometry with the polygon mesh. Further, based on the landmarks, the predefined measurements of the frame geometry template are altered to obtain the custom-fit eye wear frame geometry.”) (iii) said preferred parameters provided by said wearer ([Par 13] “The eye-care application module is further configured to provide various mathematical and processing algorithms to generate a plurality of options for the custom-fit eyewear, wherein the options include cost, color, design, lens type, and manufacturing materials of the custom-fit eyewear for selection and preferences of the user.” [Par 32-33] “The avatar creation module 104c may be used by the user or the child and parents and/or doctors to virtually see and fit/try on glasses. The avatar creation module 104c collects the trial and error sampling data and uses the same to develop the basic frame geometry for users. This provides a fun, stress free and personalized experience which harmonizes form and function of the custom eye wear. Once user data has been selected via the avatar creation module 104c, the data is processed ...”)
Thomet makes obvious([Par 20-31] “the invention makes provision for a method of automatic determination of parameters for the purpose of centering and/or personalizing corrective lenses of spectacles, said spectacles comprising a frame and the method comprising the following steps: … S4: determination of an element of the frame, S5: definition of an initial model of the frame in the reference system on the basis of a set of predefined initial parameters, S6: definition of a region of interest boxing the element of the frame in the initial model, S7: projection, into the first image and into the second image, of the region of interest, S8: comparison of the projections of the region of interest into the first image and into the second image and evaluation of a similarity between said projections, S9: modification of at least one of the parameters of the model defined in step S5, S10: reiteration of steps S6 to S9 until the obtainment of a maximum of similarities between the projections of the region of interest into the first image and in the second image [Examiner’s note: having “maximum similarity” means that the difference between the projections is below a certain threshold])
The combination of Nyong’o and Thomet does not explicitly teach wherein the process further comprises assigning respective predetermined weights to predetermined locations of interest, said predetermined weights depending on user preferences and taking account of said weights when processing
Fonte makes obvious wherein the process further comprises assigning respective predetermined weights to predetermined locations of interest, said predetermined weights depending on user preferences and taking account of said weights when processing ([Par 192-195] “In an exemplary embodiment, the user is asked to provide some information as well to enhance or supplement data that is analyzed from his image data. Users provide information including but not limited to: Age; Gender; Location; Occupation; Style preferences such as `trendy` or `traditional`; the type of outfits they would like to wear glasses with (formal, casual, etc); Color preferences; Their favorite clothing; Preferential rating of different eyewear styles or shapes; and Words that describe themselves or their tastes. Each feature may also carry a corresponding weight that signifies to the algorithm the importance of said feature. Alternatively, a user may link a social network website, personal profile, advertising database information about the user, or other such source of personal information to the computer system. This enables the computer system to import a variety of information about the user beyond what is practical to ask them, such as lists of their favorite music, celebrities, places they have visited, restaurants they like, or a language analysis of words and descriptors they use publicly. For example, if a user's posts on a blog or social website are analyzed, it may become apparent that `red` is a color they mention far more frequently than other colors or that they wear dark formal clothing most frequently in their images, which could be used to inform the computer system about the user's color or style preference. In an exemplary embodiment, the computer system would have a training database of preferences associated with the various features. These preferences include but are not limited to: Eyewear style, Eyewear material, Eyewear shape, Eyewear color, Eyewear finish, Eyewear size including local size adjustments, including overall size and custom local adjustments such as width, thickness, etc., Eyewear position on face, and Lens size. … For example, if a user repeatedly tries on, likes, and alters eyewear to have blue colors, then the color blue would be associated as a preference for that user.” [Par 266] “If the adjustment creates a gap or interference that is outside the solvable domain of the custom eyewear model constraints or if large portions of the eyewear cause interference (eg entire frame moves into the face), the computer system does not allow adjustment to the unacceptable position”)
Fonte is analogous art because it is within the field of custom eyewear generation. It would have been obvious to one of ordinary skill in the art to combine it with Nyong’o and Thomet before the effective filing date. One of ordinary skill in the art would have been motivated to make this combination in order to simpler and easier customer/patient interaction and customization. As noted by Nyong’o, previous methods for virtual try-ons and eyewear customization can be extremely limited and difficult to operate for untrained users ([Par 17-18] “The prior art describes technologies that are designed mostly for the aesthetic preview of the eyewear on a user. A need for a more quantitative analysis exists to enable a better experience, custom fit, custom style, automated adjustment and recommendations, and the overall ability to make an eyewear design fit with each user's unique anatomy and taste. Often pupillary distance is the only measurement taken to ensure the proper fit of eyewear, and that measurement alone is not sufficient to ensure a proper physical fitting of custom eyewear. More information is especially needed for advanced optics, such as progressive or digitally-compensated or freeform lenses. But regardless of the type and quantity of facial measurements needed to craft custom eyewear, the user should not be required to manually measure them. Most target users are not technologically savvy beyond following easy prompts in a web browser. A consumer needs an experience that is easier than picking and choosing parts and pieces or custom drawing every detail, especially when using only 2-D images, as the prior art has described. The method and system must enable easy customization, including automation of sizing and styles if the user desires automated recommendations. An average user should be able to obtain any eyewear design they desire and an excellent fit by having a design custom-fitted to his face, seeing a preview in a "what you see is what you get" display, and being able to make changes and see the effect on his face and fit.”) It should be noted that in Nyong’o the virtual try-on is done using an avatar rather than the customer/patient’s actual face, which can lead to discrepancies with reality and confusion ([Nyong’o Par 32] “The avatar creation module 104c may be used by the user or the child and parents and/or doctors to virtually see and fit/try on glasses. The avatar creation module 104c collects the trial and error sampling data and uses the same to develop the basic frame geometry for users.”) Further, customers themselves frequently are unsure of what they want out of a new pair of glasses ([Par 4] “ Purchasing eyewear, while a necessity for many people, presents many challenges for consumers. For traditional in-store purchases, consumers are faced with limited in-store selection, which often requires visiting multiple stores. Yet users must explore an unmanageable array of options to find a compromise between fit, style, color, shape, price, etc. Eyewear is most commonly mass-produced, with a particular style available in one or two generic colors and sizes. Users faces are unique enough that a face can be used as a primary form of identification, yet they must choose between products made for a generic faces that are not their own. It is very difficult for users to find the one perfect pair of glasses for their unique taste, facial anatomy, and needs. They also often have difficulty visualizing what they try on because they need an optical prescription in the first place.”) To this end, Fonte presents a method for easier, deeper customization that incorporates automatic suggestions based on the learned taste of customers ([Par 21-23] “The subject invention has a number of important parts. The first part is the understanding that what is desired is a from-scratch, one-up customized product that is not manufactured exclusively from off-the-shelf, previously designed, mass-produced, or stock components. As mentioned above, there are many systems which involve picking a number of components that are premade or pre-manufactured and putting them together in a customized object. However, if there are a lot of mass-produced items, the user does not have the feeling that he or she is presented with a truly unique one-off product centered on the particular profile of the user. Nor will a product made from mass-produced parts be customized to the desired degree needed to fit the user's unique anatomy and preferences. One must create at least some part of the custom product completely from scratch to fit the user, for example making some form of the product into a unique, non-mass-produced shape or size. The ability to automatically design and alter the fundamental shape and form of a custom product, with or without user guidance, is an important advantage over systems that simply let users browse and assembly mass-produced components. … The third part is to be able to ascertain a user's profile, his habitual buying habits, his likes and dislikes, derived over a period of time and to be able to use all of these likes and dislikes and profiles to provide for the user a suggested unique product.” [Par 216] “In yet another embodiment, an augmented reality approach is used. A live video feed of the user's face is shown using a computer system configured with a video camera. The quantitative anatomic model tracks with the user's face in real time, allowing the 3D eyewear model to be displayed and superimposed on the user's face in real time as the user moves his face in front of the computer system. This would create the illusion of looking in a mirror while trying on the glasses, as one would in a retail store”) Overall, one of ordinary skill in the art would have recognized that combining Nyong’o and Thomet with Fonte would result in a system that is significantly more user-friendly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Mirabito whose telephone number is (703)756-1494. The examiner can normally be reached M-F 10:30 am - 6:30 pm.
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, Emerson Puente can be reached at (571) 272-3652. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.P.M./ Examiner, Art Unit 2187
/EMERSON C PUENTE/ Supervisory Patent Examiner, Art Unit 2187
Prosecution Insights