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 .
Election/Restrictions
Applicant’s arguments, see Remarks, filed 4/27/2026, with respect to claims 21-28 have been fully considered and are persuasive. The restriction of Group I-III, claims 1-20, has been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Foley (6535223) in view of Gardner (20170168323).
Regarding claim 1, Foley discloses a device for measuring a pupillary distance (Col 1, lines 7-10, a method and system for determining pupillary distance and multi-focal element height for prescription eyeglasses via images received through a computer network), comprising: a processor for processing an image (Col 5, lines 56-59, method 200 used to calculate the PD 100 and seg height 108 for user 150 shown in Fig 6. First step 202 to receive facial image 180 of user 150), wherein the image is an electronic image comprising an OS eye and an OD eye (Fig 1, Col 3, lines 35-38, 100 is the measurement in millimeters from center of pupil 102 or eye 104 to center of pupil 102 of other eye 104; Fig 4, Col 4, lines 30-32, user 150 is able to create images 180 of their face 182 using digital camera or 156); the processor being configured to: determine the pupillary distance between the OS eye and the OD eye based on the iris width (Fig 1, Col 3, lines 39-41, possible to take PD measurement 100 by measuring the two irises 106; Fig 6, Col 6, lines 55-58, to calculate the PD 100, technician 170 would click once in center of each pupil 102 in image 180 (or on left side of each iris 106)) but does not teach determine an iris width of the OS eye or the OD eye. However, in a similar endeavor, Gardner teaches determine an iris width of the OS eye or the OD eye (Fig 6, [0024], source image is further analyzed with the image recognition software in order to identify an iris width (
I
W
) of the iris as the feature width measurement). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley with the measuring techniques of Gardner for the purpose of improving the accuracy of measurements within an ophthalmic device (Gardner, [0004]).
Regarding claim 5, Foley in view of Gardner discloses the invention as described within claim 1 but does not teach wherein the pupillary distance is determined based on the formula: d=
a
R
-
b
R
2
where d is the iris width, a and b are coefficients, and R is the ratio of the pupillary distance to the iris width.
However, Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136(Fed. Cir. 1986). See also MPEP § 2112.02.
Furthermore, Examiner notes that when the structure of a claimed system is the same as that claimed, it must inherently perform the same function. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011).
When analyzing the claimed system as a whole, the PTAB determined that “the broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur.” Schulhauser at 14. Therefore "the Examiner did not need to present evidence of the obviousness of the technique or properties of claim 5 that are not required to be performed under a broadest reasonable interpretation of the claim…however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14.” See MPEP § 2111.04 (II).
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Foley (6535223) in view of Gardner (20170168323) and in further view of Lemos (20070066916).
Regarding claim 4, Foley in view of Gardner discloses the invention as described within claim 1 but does not teach wherein the processor is further configured to remove outlier data. However, Lemos teaches wherein the processor is further configured to remove outlier data (Fig 5, [0141], error correction comprises outlier detection and removal 510). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley and Gardner with the calibration technique of Lemos for the purpose of improving the accuracy of analysis within an eye examining device (Lemos, [0006]).
Claim(s) 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Foley (6535223) in view of Gardner (20170168323) and in further view of Kusaka (20090218966).
Regarding claim 21, Foley in view of Gardner discloses the invention as described within claim 1 but does not teach wherein the processor is configured to align the pupils of the OS eye and the OD eye along a row of pixels. However, Kusaka teaches wherein the processor is configured to align the pupils of the OS eye and the OD eye along a row of pixels (Fig 11, [0077], directions along which images are projected via the individual pixels are determined so that the projected shapes (range-finding pupils 92 and 93) of the photoelectric conversion units at the various focus detection pixels are aligned on the exit pupil 90 located over the projection distance do). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley and Gardner with the detection technique of Kusaka for the purpose of improving focus detection performance within an imaging device (Kusaka, [0113]).
Regarding claim 22, Foley in view of Gardner and in further view of Kusaka discloses the invention as described within claim 21 and Kusaka further teaches wherein the processor is configured to determine the pupillary distance based on the iteratively measured diagonal pixel widths ([0069], interpolation executed by using the image data at imaging pixels present near the focus detection pixels; interpolation by averaging the image data at the four green pixels 310 present next to the focus detection pixel 320 along the 45° diagonal directions, assuming the upper right position, the lower right position, the upper left position and the lower left position relative to the focus detection pixel 320). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley and Gardner with the detection technique of Kusaka for the purpose of improving focus detection performance within an imaging device (Kusaka, [0113]).
Regarding claim 23, Foley in view of Gardner and in further view of Kusaka discloses the invention as described within claim 22 and Kusaka further teaches wherein the processor is configured to determine the pupillary distance based on the iteratively measured diagonal pixel widths ([0069], interpolation executed by using the image data at imaging pixels present near the focus detection pixels; interpolation by averaging the image data at the four green pixels 310 present next to the focus detection pixel 320 along the 45° diagonal directions, assuming the upper right position, the lower right position, the upper left position and the lower left position relative to the focus detection pixel 320). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley and Gardner with the detection technique of Kusaka for the purpose of improving focus detection performance within an imaging device (Kusaka, [0113]).
Regarding claim 24, Foley in view of Gardner and in further view of Kusaka discloses the invention as described within claim 23 and Kusaka further teaches wherein the processor is further configured to average the iteratively measured diagonal pixel widths ([0069], interpolation executed by using the image data at imaging pixels present near the focus detection pixels; interpolation by averaging the image data at the four green pixels 310 present next to the focus detection pixel 320 along the 45° diagonal directions, assuming the upper right position, the lower right position, the upper left position and the lower left position relative to the focus detection pixel 320). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to combine the measuring device of Foley and Gardner with the detection technique of Kusaka for the purpose of improving focus detection performance within an imaging device (Kusaka, [0113]).
Allowable Subject Matter
Claims 2-3 and 25-29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to dependent claim 2, the prior art of Foley taken either singly or in combination with any other prior art fails to suggest such a device for measuring a pupillary distance comprising: “determine the pupillary distance based on a bowtie measurement”. Claims 3 is allowable due to dependency on dependent claim 2.
Specifically, with respect to dependent claim 25, the prior art of Foley taken either singly or in combination with any other prior art fails to suggest such a device for measuring a pupillary distance comprising: “wherein the processor is further configured to remove outlier data associated with the diagonal pixel widths”.
Specifically, with respect to dependent claim 26, the prior art of Foley taken either singly or in combination with any other prior art fails to suggest such a device for measuring a pupillary distance comprising: “wherein the processor is configured to determine the diagonal pixel width based on a change in brightness”.
Specifically, with respect to dependent claim 27, the prior art of Foley taken either singly or in combination with any other prior art fails to suggest such a device for measuring a pupillary distance comprising: “wherein the processor is further configured to overlay a black-out ellipse over at least a portion of one of the pupils”.
Specifically, with respect to dependent claim 28, the prior art of Foley taken either singly or in combination with any other prior art fails to suggest such a device for measuring a pupillary distance comprising: “further comprising a memory storing a prescription associated with a customer ID, wherein the processor is configured to preprocess and extract text from the prescription, parse the text to populate an array, and determine the prescription through a logic puzzle”.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive.
Applicant argues the measurements performed are not determining the pupillary distance between the OS eye and the OD eye based on the iris width. It is noted that "[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))." MPEP §2123. The current prior art is cited to disclose the PD measurement or pupillary distance as disclosed with Col 3, line 35. The recitation "PD or pupillary distance" of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. MPEP §2106.
Additionally, the limitations of the claims were identified and correlated with the references as indicated above and in the first office action on the merits. Applicant has merely made the allegation that the limitations are not met, and thus has not provided any evidence or argument directed to how the identified elements in the first action fail to meet the claimed limitations or to how the identified elements are otherwise distinguishable from the claimed limitations as is required by 37 CFR §1.111(b).
Applicant’s arguments of the unworkability of the combination, due to a system that measures PD and iris width separately, appear to be based on a literal application of the actual structure of Foley to the actual structure of Gardner. However, that is not the proper standard for the analysis required under 35 USC 103(a). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Keller at 881, goes on to revisit the long history of the U.S. Court of Customs and Patent Appeals (CCPA) regarding the nature of suggestion established by the combined teachings of the references rather than the actual results of a physical, bodily incorporation:
To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. In re Griver, 53 CCPA 815, 354, F.2d 377, 148 USPQ 197 (1966); In re Billingsley, 47 CCPA 1108, 279 F.2d 689, 126 USPQ 370 (1960). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re Passal, 57 CCPA 1151, 426 F.2d 828, 165 USPQ 720 (1970); In re Richman, 57 CCPA 1060, 424 F.2d 1388, 165 USPQ 509 (1970); In re Rosselet, 52 CCPA 1533, 347 F.2d 847, 146 USPQ 183 (1965).
The structure taught in the combined teachings of the references, as set forth above, is a device that measures pupillary distance of an eye or iris. Because the structure of the combined system is the same as that claimed, it must inherently perform the same function of measuring the width of an iris. See MPEP § 2112.01.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sharrief I Broome whose telephone number is (571)272-3454. The examiner can normally be reached Monday-Friday 8am-5pm, EST.
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Sharrief I. Broome
Primary Examiner
Art Unit 2872
/SHARRIEF I BROOME/ Primary Examiner, Art Unit 2872
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