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 .
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.
Election/Restrictions
Claims 1-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 24, 2025.
Applicant’s election without traverse of Group III, claims 16-23 in the reply filed on November 24, 2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) filed on March 17, 2023; May 14, 2024; November 5, 2024; December 12, 2024; February 7, 2025; July 17, 2025 have/has been acknowledged and considered by the examiner. Initialed copies of supplied IDS(s) forms are included in this correspondence.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
a) displaying one more test stimuli (claim 16)
b) swimming goggles, motorcycle helmet (claim 20)
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 limitation(s) is/are:
a) adjustable components…include components adjustable to set one or more… in claim 17.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 16-18, 21-23 are rejected under 35 U.S.C. 102(a1) as being anticipated by Katzman et al. (US 2005/0041209 - Katzman).
As to claim 16, Katzman teaches A method for capturing anthropometric data of a person using an adjustable eyeglasses frame (Katzman Fig. 1A - 10, 12), the adjustable eyeglasses frame holding a pair of lenses (Katzman Fig. 1A - 24; para. [0028]; Fig. 2A - 24), at least one of the lenses associated with a virtual display (Katzman Fig. 1A - 24; para. [0028], [0032], [0034] - A person versed in the art will appreciate that the image may be a reality image or a virtual image), the method comprising
assembling a test adjustable eyeglasses frame in a respective geometric configuration using adjustable components from a kit (Katzman Fig. 2A - 12, 20, 24, 36, 38, 40, 52; para. [0031]);
in an iterative fitting procedure, placing the test adjustable eyeglasses frame on the person to hold the at least one of the lenses associated with a virtual display in front of the person's eyes (Katzman Figs. 1A, 2A - 24, 76; para. [0041], [0042]);
displaying one or more test stimuli on the virtual display (Katzman Figs. 3A-3C; para. [0040]);
when the person's perceptions of the displayed one or more test stimuli match target perceptions of the one or more test stimuli, determining the geometric configuration of the test adjustable frame as being a best-fit geometric configuration of the test adjustable eyeglasses frame (Katzman Fig. 1B; Fig. 2A; para. [0041]-[0044] - At the end of the measurement process, processor 30 generates the coordinates of the pupils 76 with respect to the true position of the eyeglass frame 12, based on the processed data registered by the processor 30);
when the person's perceptions of the displayed one or more test stimuli do not match the target perceptions of the one or more test stimuli, readjusting the respective geometric configuration of the adjustable test eyeglasses frame, and repeating the iterative fitting procedure (Katzman Fig. 2A; para. [0040]-[0044] - The graphic image displayed on the display modules 24 is displaceable about the display module and is controllable by means of a controlling assembly (e.g. in FIG. 1A comprising processor 30 ad controller 32) which in the present embodiment is by wireless means and for that purpose a receiver/transmitter unit 64 is mounted on the frame 46…The process may repeat several times (using the same graphic images or different ones at each time and optionally changing the size and distance of the target mark) and each time the graphic image intercepts with the individual's line of vision a point of interception is registered into the processor 30, e.g. by use of the control unit 32);
recording results of the iterative fitting procedure (Katzman para. [0044]);
building an eyewear device having a fixed geometry for the person based on anthropometric data extracted from the results of the iterative fitting procedure (Katzman para. [0046]).
As to claim 17, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Katzman further teaches the adjustable components from the kit include components adjustable to set one or more of interpupillary distance, nose-to-eye pupil distance, face wrap, head width, and ear position of the test adjustable eyeglasses frame (Katzman Fig. 2A - 36, 40, 24; para. [0008], [0015], [0031] - setting and determining pupil position (PP)).
As to claim 18, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Katzman further teaches the adjustable components from the kit include nose bridges adjustable to set one or more of interpupillary distance, wrap angles, and cyclo-rotations of the test adjustable eyeglasses frame (Katzman Fig. 2A - 36, 40, 24; para. [0008], [0015], [0031] - setting and determining pupil position (PP)).
As to claim 21, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Katzman further teaches displaying one or more test stimuli on the virtual display includes displaying one or more of:
optometric test images and test patterns including one or more of color patterns to assess color uniformity, line patterns to assess distortion, and dot patterns to assess focus (Katzman Figs. 3A-C).
As to claim 22, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Katzman further teaches the target perceptions of the one or more test stimuli include one or more of:
seeing a full size the virtual display; uniform brightness, color, sharpness, contrast across the virtual display; uniformity of focus across the virtual display; vertical and horizontal alignment, absence of image distortions; and keystone defect-free image (Katzman Figs. 3A-C; para. [0033]).
As to claim 23, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, and Katzman further teaches building an eyewear device with a fixed geometry for the person based on anthropometric data extracted from the results of the iterative fitting procedure includes building a fixed- geometry eyeglasses frame that matches the best-fit geometric configuration of the test adjustable eyeglasses frame, building swimming goggles, or building a motorcycle helmet (Katzman para. [0016]).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Katzman as applied to claim 16 above, and further in view of Castaneda et al. (US 11,113,889 - Castaneda).
As to claim 19, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, but doesn’t specify the adjustable components from the kit include nose pads adjustable to set to set a height of the test adjustable eyeglasses frame when worn by the person.
In the same field of endeavor Castaneda teaches a kit for adjustable eyewear with nose pads adjustable to set a height of the test adjustable eyeglasses frame when worn by a person (Castaneda Figs. 8-9 - 280, 294; col. 5:21-40).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide adjustable nose pads since, as taught by Castaneda, adjustable nose pads are well known in the art for the purpose of setting the height of the eyewear lenses/displays (Castaneda Figs. 8-9 - 280, 294; col. 5:21-40).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Katzman as applied to claim 16 above, and further in view of Allione (US 2018/0129068; cited by Applicant).
As to claim 20, Katzman teaches all the limitations of the instant invention as detailed above with respect to claim 16, but doesn’t specify the adjustable components from the kit include replaceable fixed-geometry nose bridges, each replaceable fixed-geometry nose bridge corresponding to a fixed inter-frame separation distance and a fixed wrap angle of the test adjustable eyeglasses frame.
In the same field of endeavor Allione teaches kits of eyewear with replaceable fixed-geometry nose bridges, each replaceable fixed-geometry nose bridge corresponding to a fixed inter-frame separation distance and a fixed wrap angle of the test adjustable eyeglasses frame (Allione Fig. 1 - 131, 132, 133, 134, 120, 110; para. [0071], [0076], [0077]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide relaceable nose bridges since, as taught by Allione, such elements allow for specially adapting the nose bridge to wearer (Allione para. [0077]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Castaneda et al. (US 2021/0366198); Hayashi et al. (US 6,257,721); Gauvreau (US 6,132,045) are cited as additional examples of method of fitting eyewear with adjustable glasses.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
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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/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 December 19, 2025