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 election without traverse of Group I in the reply filed on December 6, 2024 is acknowledged.
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 6, 2025.
Newly submitted claims 21-28 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the claims are directed to a distinct invention that is focused on image data processing not disclosed within Group I.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-28 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statement dated 5/26/2023 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Claim Rejections - 35 USC § 112
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 1-5 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.
As to claim 1, the claim recites “the OD eye; the OS eye” which is a relative/subjective term that renders the claim indefinite (MPEP 2173.05(b)). The term “OD or OS” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
While the Specification describes each element of an OS eye and an OD eye, Applicant description of each type is lacking and there is no specific detail as to the structure corresponding to the function of the different eyes described. Applicant implies structure via only naming the term and does not disclose the physical property effectuating the difference between the two types of eyes disclosed. One of ordinary skill in the art would not understand the difference between “OS” and “OD” when examined or viewed. In summary, the disclosure lacks disclosure of structures corresponding to the function of each eye listed.
Claims 2-5 are rejected for depending on claim 1.
As to claims 2 and 3, the claims recite “bowtie measurement” which is a relative/subjective term that renders the claim indefinite (MPEP 2173.05(b)). The term “bowtie measurement” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Specifically, what constitutes “bowtie” appears entirely subjective to a practitioner of the invention. Applicant’s specification provides no objective way to determine such features. The metes and bounds are unclear since those of ordinary skill in the art would fail to understand what is observed or examined within the eye.
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 2-5 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.
As to claim 2, the claim recites “configured to determine the pupillary distance based on a bowtie measurement” which is a computer implemented function but fails to provide the necessary algorithm to perform the function (MPEP 2161.01). Specifically, Applicant’s specification fails to provide any discussion how the processor determines a bowtie measurement and provides no algorithm, or sufficient algorithm, as is required for computer implemented functions to ensure adequate written description (MPEP 2161.01 - Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed).
As to claim 3, the claim recites “wherein the bowtie measurement includes ten or more iterations” which is a computer implemented function but fails to provide the necessary algorithm to perform the function (MPEP 2161.01). Specifically, Applicant’s specification fails to provide any discussion/algorithm, or sufficient algorithm, how the camera and processor function to control the aperture, as is required for computer implemented functions to ensure adequate written description (MPEP 2161.01 - Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed).
As to claim 4, the claim recites “configured to remove outlier data” which is a computer implemented function but fails to provide the necessary algorithm to perform the function (MPEP 2161.01). Specifically, Applicant’s specification fails to provide any discussion how outlier data is managed or is controlled by a processor and provides no algorithm, or sufficient algorithm, as is required for computer implemented functions to ensure adequate written description (MPEP 2161.01 - Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed).
As to claim 5, the claim recites “wherein the pupillary distance is determined based on the formula: d=
a
R
-
b
R
2
” which is a computer implemented function but fails to provide the necessary algorithm to perform the function (MPEP 2161.01). Specifically, Applicant’s specification fails to provide any discussion/algorithm, or sufficient algorithm, how the measuring device and processor function to control the distance, as is required for computer implemented functions to ensure adequate written description (MPEP 2161.01 - Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed).
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]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ohno (20220301204) and Lebrun (11324399) are examples of a system used for determining a pupillary distance of an individual.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Sharrief I. Broome
Primary Examiner
Art Unit 2872
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872