DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Examiner acknowledges that the instant application is a National Stage Application under 35 U.S.C. 371 with relation to PCT Application No. EP2021/065338, filed 06/08/2021, which claims foreign priority under 35 U.S.C. 119 (a)-(d) to Application No. FR2006159, filed 06/12/2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/01/2022 is being considered by the examiner.
Status of Claims
Applicant’s communications filed on 10/24/2025 have been considered.
Claims 11 and 16 are currently amended.
Claims 1-10, 14-15 and 17 have been canceled.
Claims 18-19 are newly added.
Claims 11-13, 16 and 18-19 are currently pending and have been examined.
Response to Arguments
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 103 have been fully considered and are persuasive.
Applicant’s amendments to claim 11, along with Applicant’s arguments regarding the previously filed 103 rejection of claims 11-14 and 16 (see Remarks Pages 6-7) have been considered and are persuasive. Independent claim 11 has been indicated as reciting subject matter free of the cited prior art, and would be allowable if amended to overcome the 112 rejection set forth in this Office Action, further discussed below. Accordingly, the previously filed 103 rejection has been withdrawn.
Note: This action is made as a second non-final rejection, as a new grounds of rejection not previously made under 35 USC 112(b) have been deemed necessary.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “adjustment means” in claim 11. The structural modifier of “adjustment” does not denote sufficient structure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-13, 16 and 18-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 11, the claim recites “wherein the openings include adjustment means… wherein the adjustment means include at least two U-shaped covers”. The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one or ordinary skill in the art would have recognized such a method as being that which Applicant’ adequately described as the invention or what the Applicant actually had possession of at the time of the invention. A review of the disclosure does not reveal the manner in which the U-shaped covers of the adjustment means are disposed/positioned in order to limit the surfaces of the openings, as claimed (i.e., how the actions are performed). It is noted that this is not an enablement rejection. Applicant’s failure to disclose any meaningful structure as to how the U-shaped covers of the adjustment means are disposed/positioned in order to limit the surface of the openings raises questions whether Applicant truly had possession of this feature at the time of filing.
Claims 12-13, 16 and 18-19 inherit the deficiencies noted in claim 11 and are therefore rejected on the same basis.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-13, 16 and 18-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 11, the claim recites “and in the centre”. There is no antecedent basis for “a centre” in claim 11 prior to this limitation. Furthermore, it is unclear if the centre is referring to a centre of the previously recited flat surface, or a centre of the previously recited black frame on the periphery of the flat surface. Accordingly, these claims are rendered indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 11 further recites “wherein the adjustment means include at least two U-shaped covers, the width of the opening of which may vary…”. While the claim previously recites ”said acquisition area comprising at least two openings”, it appears that the openings of the cited limitation are referring to openings of the U-shaped covers themselves (according to the claim reciting “the width of the opening of which”), rather than openings of the acquisition area. Accordingly, it is unclear which openings the cited limitation are referring to, due to a lack of antecedent basis regarding the U-shaped covers comprising openings, and the claim is rendered indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim 11 further recites “and in that they are intended to be disposed at the front of the openings in order to limit their surfaces”. As discussed above, “adjustment means”, as recited in claim 11, invokes 35 U.S.C. 112 (f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function. A review of the disclosure does not reveal the manner in which the U-shaped covers of the adjustment means are disposed/positioned. Applicant’s failure to disclose any meaningful structure as to how the U-shaped covers of the adjustment means are disposed/positioned raises questions as to whether applicant truly had possession of this feature at the time of filing. Furthermore, this language amounts to functional language, as it is unclear whether disposing the adjustment means at the front of the openings is required in the claim. Accordingly, the claim is rendered indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 12-13, 16 and 18-19 inherit the deficiencies noted in claim 11 and are therefore rejected on the same basis.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding Claim 16, the claim recites a list of phases in order, including “a) a phase of Identification on a professional terminal”, “b) an acquisition Phase”, “c) an image processing phase”, and “d) a fitting phase”. Each of the claimed phases comprises steps (a1-a3, b1-b3, c1-c3, d1-d3). Claim 16 further recites “wherein if the pair of spectacles is not present in the catalogue in step a3, after step c3 there is a step c3': saving the 3D model of the pair of spectacles in the catalogue on the server, and if the pair of spectacles is present in the catalogue in step a3, the image acquisition and processing phases are not carried out and the fitting phase is carried out from the 3D model of spectacles in the catalogue”. The subsequent limitations introduce conditions that modify the order of the earlier claimed phases and steps, as well as whether certain phases/steps are performed or not, such that it is unclear which phases/steps are required. For example, the claim recites an identification phase, an acquisition phase, an image processing phase, and a fitting phase, as well as the required steps of each phase. Subsequently, the claim further recites limitations that introduce a condition in which there is an additional step c3’ added within the image processing phase, as well as a condition in which the steps of the image acquisition and processing phases are not required. The nature of the claims makes it unclear as to the required order of the claimed limitations, as the claim both requires and negates positively claimed steps. Accordingly, the claim is rendered indefinite and rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 18 and 19 inherit the deficiencies noted in claim 16 and are therefore rejected on the same basis.
Eligibility Considerations
As was discussed in the Office Action filed 8/12/2025, the claims recite eligible subject matter. Specifically, the claims do not recite an abstract idea, law of nature, or natural phenomenon, and thus the claim is eligible without further analysis with regards to Prong Two. Under Step 1 of the Subject Matter Eligibility Test, it was determined that claims 11-13 are directed towards a machine, and claims 16 and 18-19 are directed towards a process, and therefore claims 11-13, 16 and 18-19 are directed to one of the four statutory categories. Furthermore, Claim 11 recites a device for acquiring images of a pair of spectacles, comprising: a flat surface defined by an outline having a known shape and dimensions, said flat surface comprises, at least, on the periphery thereof: a black frame marking said outline having known dimensions, and in the centre: an acquisition area having a homogenous, non-reflective colour, said acquisition area comprising at least two openings intended to support the legs of said pair, and at least one position marker representing the pupils of a wearer, so as to facilitate the height positioning of the spectacle lenses in said acquisition area. The identified limitations of the claim do not fall within any of the groupings of abstract ideas (Mathematical Concepts, Certain Methods of Organizing Human Activities, or Mental Processes). Thus, claim 11 is not directed to a judicial exception, and Subject Matter Eligibility analysis stops at this step. Accordingly, the claim qualifies as eligible subject matter under 35 U.S.C. 101.
Subject Matter Free of Prior Art
Claim 11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112, set forth in this Office Action. Claims 12-13, 16, and 18-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Upon review of the evidence at hand, it is concluded that the totality of the evidence in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the Applicant’s invention as the noted features amount to more than a predictable user of elements in the prior art. The allowable features are as follows:
wherein the adjustment means include at least two U-shaped covers, the width of the opening of which may vary depending on the width of the legs of the spectacles, a cover in the shape of a rectangle and in that they are intended to be disposed at the front of the openings in order to limit their surfaces.
The most appropriate prior art of record includes Rollett (US 20140043332 A1), hereinafter Rollett, Tiemann et al. (US 20170269384 A1), hereinafter Tiemann, Szalavari et al. (US 20180341831 A1), hereinafter Szalavari, David (US 5,423,505 A), hereinafter David, and Marelli, D., et al., “Faithful Fit, 3D Eyeglasses Virtual Try-On” February 2021, International Conference on Pattern Recognition, 2-2- Workshops, LNCS, hereinafter NPL Reference U.
Rollett teaches a system for generating three-dimensional representations through imaging of real objects, such as spectacles, in order to assist potential purchasers to choose a specific pair of spectacles according to its shape and color ([0003][0048]). Rollett further discloses that the physical support for holding the pair of spectacles consists of a surface with a predetermined shape, such as open or closed ([0040-0042][Fig. 1][Fig. 2A]). Rollett further discloses that the support comprises two openings for receiving the ends of spectacle side pieces, as well as a protrusion for receiving the two bridge supports fixed on the part of the frame between the lenses ([0052]). Rollett further discloses that the positioning of a pair of spectacles on the support is standardized, since the support has three reference points corresponding to the three natural points on which a pair of spectacles rests when worn, such as the ears and nose ([0053]). Rollett further discloses that a textured representation of the spectacles may be generated after obtaining images of the spectacles via an acquisition device, and that the support 105 is configured to receive and hold the pair of spectacles from which the textured representation can be generated ([0045][0048]). The image acquisition device of Rollett is connected to a data processing device of a personal computer, such as through a USP connection ([0045][0061]). Rollett further discloses that the acquired images of the spectacles may be received by a computer and processed by the computer ([0068][0071-0080]). Rollett further discloses that the textured representation of the spectacles is obtained by combining images 410 and 415 of the spectacles ([0083][Fig. 4]). Rollett further discloses that the image of the spectacles can be clipped in order to fit the pair of spectacles onto an identity photograph of a user, as well as processing lighting and transparency values ([0087-0088][0061-0062][0095-0096]). Rollett further discloses that the textured representation, which may be a three-dimensional model, can be used for static fitting onto a photograph via clipping ([0046][0083][0088]). The support on which the spectacles are placed may additionally be the face of a user, according to the disclosure of Rollett ([0056]). The generated textured representation may also be superimposed on an image of the user’s face in order to simulate spectacle-wearing ([0084]). Yet Rollett does not explicitly disclose wherein the adjustment means include at least two U-shaped covers, the width of the opening of which may vary depending on the width of the legs of the spectacles, a cover in the shape of a rectangle and in that they are intended to be disposed at the front of the openings in order to limit their surfaces.
Tiemann teaches a method and apparatus for image acquisition of spectacle frames ([0143][Fig. 4]). Tiemann further discloses the apparatus comprising a flat surface ([Fig. 4]), as well as an image background surface of a homogeneous color contrasting to that of the spectacle frame, wherein the spectacles are placed over the center of the image background surface via openings ([0045][0137][Fig. 4]). The image background surface comprises a rectangular shape ([Fig. 4]). Tiemann further discloses that the location of the user’s pupils is determined from obtained user image data in order to form a pupil data set ([0097]). Tiemann further discloses that the spectacle frame image data acquisition apparatus obtains images of a spectacle frame via a camera, wherein an optician operates the image acquisition apparatus. Yet Tiemann does not explicitly disclose the limitations regarding wherein the adjustment means comprises at least two U-shaped covers, as well as a cover in the shape of a rectangle.
Szalavari teaches a system for a user to generate and design machine-readable code that can be detected and tracked with a mobile device and camera ([0003]). Szalavari further discloses a detection contour 104 of the code 100, defined by a user, separating the border 105 and the clear space 106 of the code ([0079][Fig. 1A-1B]), wherein the border and the safety area are designed to have colors that are sufficiently in contrast for image analysis purposes, for example one may be black, while the other is white. Szalavari ([Figs. 1A-1B]) further depicts the safety area around the borer of the user-designed code, forming a frame. Szalavari further discloses that a detection application 540 may be used to scan data from the user-designed codes ([0099-0100]). Yet Szalavari does not explicitly disclose the limitations regarding wherein the adjustment means comprises at least two U-shaped covers, as well as a cover in the shape of a rectangle.
David teaches a support and display apparatus which is adapted to allow selective access to merchandise, such as eyeglasses, and permitting a customer to try on the eyeglasses without removing the support and display apparatus ([Col 2 Ln 12-32]). David further discloses that eyeglasses may be mounted on the apparatus 100, the apparatus containing apertures 21 and 22 ([Col 3 Ln 40-64]). Since the ends of eyeglass temples vary in size, the apertures may have a plurality of linear openings 24, such that the apertures are able to maintain frictional engagement with varying sizes of eyeglass temples ([Col 3 Ln 40-64]). does not explicitly disclose the limitations regarding wherein the adjustment means comprises at least two U-shaped covers, as well as a cover in the shape of a rectangle.
NPL Reference U teaches a method for virtual try-on of eyeglasses on a 3D face reconstructed from an input image from a user ([Page 1, Abstract]). U further discloses that the method provides realistic fit estimations through 3D facial reconstruction, even for products that may be unavailable in stores ([Page 1, Paragraphs 1-2]). As part of the 3D reconstruction process, a user’s face size and fitting parameters are estimated for a database of eyeglasses models, such that markers for size estimation are not a requirement ([Page 4, Paragraphs 1-2]). U further disclose an eyeglasses fitting procedure in which meshes of eyeglasses are retrieved from the database and processed with face keypoints of the user ([Page 5, Paragraph 3-Page 6, Paragraph 4][Figs. 3A-C]). U further discloses superimposing a 3D image of eyeglasses on the user’s face during the virtual fitting process ([Page 8, Figs 5-6]). U further discloses a database of available glasses frames, including glasses meshes and additional parameters (Page 5, Paragraph 3]). Yet U does not explicitly disclose the limitations regarding wherein the adjustment means comprises at least two U-shaped covers, as well as a cover in the shape of a rectangle, nor the limitations regarding searching for the 3D model of the pair of spectacles in a catalogue on the server.
Neither Rollett, nor Tiemann, nor Szalavari, nor David, nor Tang, nor NPL Reference U teaches:
wherein the adjustment means include at least two U-shaped covers, the width of the opening of which may vary depending on the width of the legs of the spectacles, a cover in the shape of a rectangle and in that they are intended to be disposed at the front of the openings in order to limit their surfaces.
Additionally, the Examiner further emphasizes the claims as a whole and herby asserts the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasized the claims as a whole and hereby asserts that the totality of evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
It is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY R DONAHUE whose telephone number is (571)272-5850. The examiner can normally be reached M-F 8a-5p.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3688
/VICTORIA E. FRUNZI/Primary Examiner, Art Unit 3689 2/17/2026