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
Applicant’s election without traverse of Group II in the reply filed on March 12, 2026 is acknowledged.
Claims 2-7, 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 12, 2026.
While Applicant has marked claim 1 as withdrawn, claim 1 links the inventions and will be examined with claims 8-13. Claims 14-19 (duplicates of claims 8-13) are dependent upon withdrawn claim 2, where claim 2 is directed to the unelected test card/optotype.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement(s) filed on July 21, 2023 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 because:
Fig. 3 is objected to for failing to comply with 37 CFR 1.84(m, q) - the lead lines are not visible thorough the shaded portions.
Fig. 4 is objected to for failing to comply with 37 CFR 1.84(m, q) - the lead lines are not visible thorough the shaded portions.
Fig. 5 is objected to for failing to comply with 37 CFR 1.84(m, q) - the lead lines are not visible thorough the shaded portions.
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 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 8-13 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 8, the claim recites “determining…astigmatism based on a sharpness of contrast between an optotype and a black background of an astigmatism test card….determining whether the subject has myopia or hyperopia based on a sharpness of contrast between an optotype and a black background of a spherical dioptric power test card…” which, as per the claim, suggests the astigmatism test card and the spherical dioptric test card are different, yet as per Applicant’s specification, are the same (Fig. 3, Fig. 5). The metes and bounds of claim 8 are unclear since the claim uses different terms for the same element yet the steps appear to distinguish the cards by the determination as though the cards are different (MPEP 2173.05(b)).
For purposes of compact prosecution, Examiner will understand the claim such that so long as the astigmatism and spherical power determined, such limitations are met.
Claims 9-13 are rejected as dependent upon claim 8.
As to claim 10, the claim recites “obtaining a sharpest image distance d and a focal length f by moving the unilateral naked eye of the subject towards the spherical dioptric power test card: f = d” which is unclear regarding the correlation between d and f. Specifically, the human eye can accommodate1, thus which distance is regarded as “the sharpest image distance” is unclear (MPEP 2173.05(b)) because the accommodation provides a range of distances for a sharpest image. For purposes of compact prosecution, so long as the prior art teaches determining a spherical power from rotation of the test card, such features will be considered met.
As to claim 11, the claim recites “obtaining the sharpest image distance d and a focal length f by moving the unilateral naked eye of the subject towards the spherical dioptric power test card: f = d” which is unclear regarding the correlation between d and f. Specifically, the human eye can accommodate1, thus which distance is regarded as “the sharpest image distance” is unclear (MPEP 2173.05(b)) because the accommodation provides a range of distances for sharpest image. For purposes of compact prosecution, so long as the prior art teaches determining a spherical power from rotation of the test card, such features will be considered met.
As to claim 11, the claim recites “step e1, placing the spherical dioptric power test card in the sharpest axis of step b1…placing the spherical dioptric power test card in the astigmatic axis, and repeating steps e1-e3 to obtain a second spherical dioptric power D2…” which is unclear how to arrive at D2 given that its determination is identical to determining D1. Specifically, the first step of determining D1 is to place the spherical dioptric test card “in the sharpest axis of b1”, then in e4 the spherical dioptric test card is placed “in the astigmatic axis”, but then, as per the repetition of step e4 to go back to e1, the spherical dioptric test card is placed back “in the sharpest axis of b1”. Thus the steps to finding D2 are then the same as finding D1. In other words, both D1 and D2 are found by placing the spherical dioptric test card in the sharpest axis of b1, and then performing steps e2, e3. Therefore D2-D1 would always be zero (0).
For purposes of compact prosecution, Examiner will understand claim 11 such that so long as an astigmatic dioptric power is determined, such features will be met.
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.
Claim 1 is rejected under 35 U.S.C. 102(a1) as being anticipated by Neumueuller et al. (US 2,280,297 - Neumueller).
Examiner’s note: Claim 1 is directed to nonfunctional descriptive matter (MPEP 2111.05). Specifically, the claim is directed to a card (substrate) serving as support for printed matter - white stripe with black background.
As to claim 1, Neumueller teaches a refractive test card (Neumeuller Fig. 1 - 26, 18; page 1:right-column:lines25-35).
The claim language “optotype under black background…the optotype comprises a partition unit at a central position, and the partition unit visually separates the optotype” is directed to the printed matter on the card. Such printed matter does not have a functional relationship with the card and is directed to conveying meaning to the user - i.e. white bar on black background (MPEP 2111.05 - Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product; "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268.).
Claim 1 is rejected under 35 U.S.C. 102(a1) as being anticipated by DeZeng (US 1,698,013).
Examiner’s note: Claim 1 is directed to nonfunctional descriptive matter (MPEP 2111.05). Specifically, the claim is directed to a card (substrate) serving as support for printed matter - white stripe with black background.
As to claim 1, DeZeng teaches a refractive test card comprising an optotype under black background (DeZeng Fig. 2 - 41), wherein the optoptype comprises a partition unit at a central position (DeZeng Fig. 2 - 41), and the partition unit visually separates the optotype (DeZeng Fig. 2 - 41). (MPEP 2111.05 - Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product; "[O]nce it is determined that the limitation is directed to printed matter, [the examiner] must then determine if the matter is functionally or structurally related to the associated physical substrate, and only if the answer is ‘no’ is the printed matter owed no patentable weight." Id. at 850, 117 USPQ2d at 1268.).
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Sheard (US 1,564,495).
As to claim 1, Sheard teaches a refractive test card comprising an optotype (Sheard Fig. 4 - 25) under a background (Sheard Fig. 4 - 26) wherein the optotype comprises a partition unit at a central position (Sheard Fig. 4 - 27), and the partition unit visually separates the optotype (Sheard Fig. 4 - 27). While Sheard shows the optotype is black and the background is white (Sheard Fig. 4), Sheard also states the colors can be any necessary colors so as to contrast (Sheard page 1:lines:80-95). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide a black background since, as taught by Sheard, any contrasting coloring for the optotype and background suitable (Sheard lines:80-95). Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date to reverse the white and black, since it has been held that a mere reversal of working parts of a device involves only routine skill in the art. In re Gazda 104 USPQ 400 (CCPA 1955).
Claims 8-9, 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sheard as applied to claim 1 above, and further in view of Lee et al. (US 2014/0268060 - Lee).
As to claim 8, Sheard teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Sheard further teaches
step a) determining whether the subject has astigmatism based on a sharpness of contrast between an optotype and a black background of an astigmatism test card observed by the subject (Sheard Fig. 6; Fig. 7; page 2:lines 22-40);
step b) in response to determining that the subject has astigmatism, determining and astigmatic axis (Sheard Fig. 6; Fig. 7; page 2:lines 22-40);
step e) testing, measuring, and calculating an astigmatic dioptric power of the subject in a case that the subject has astigmatism (Sheard page 2:lines 34-40 - When this phenomenon is present the correct meridians of astigmatism have been found, after which the proper cylindrical lens may be selected which will give equality of appearance to the two lines of squares).
Sheard doesn’t specify in response to determining the subject doesn’t have astigmatism, then step d) testing, measuring, calculating a spherical dioptric power of the subject; step c) determining whether the subject has myopia or hyperopia based on a sharpness of contrast between an optotype and a black background of a spherical dioptric power test card observed by the subject.
In the same field of endeavor Lee teaches a method for measuring astigmatism and spherical refraction whereby, in response to determining the subject doesn’t have astigmatism, then testing, measuring, calculating a spherical dioptric power of the subject (Lee Fig. 1A - 112, 120, Fig. 1B) and determining whether the subject has myopia or hyperopia based on a sharpness of contrast between an optotype and a background of a spherical dioptric power test card observed by the subject (Lee Fig. 1B; Figs. 7A-7B; para. [0022]).
While Lee provides the sphere power test of black optotype on white background such coloring represents a reversal of the black background.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to determine the spherical power (myopia, hyperopia) since, as taught by Lee, such methods allow for determining the glasses prescription needs of a wearer (Lee para. [0002]) and to provide a black background since since it has been held that a mere reversal of working parts of a device involves only routine skill in the art. In re Gazda 104 USPQ 400 (CCPA 1955).
As to claim 9, Sheard in view of Lee teaches all the limitations of the instant invention as detailed above with respect to claim 8, and Sheard/Lee further teaches step b1) testing a unilateral naked eye of the subject by rotating the astigmatic test card to obtain a maximum sharpness axis of the astigmatism test card (Sheard Figs. 6, 7; page 2:lines 10-40; Lee Figs. 9A, 9B; para. [0126]-[0131]), step b) determining the maximum sharpness axis ±90o as the astigmatic axis (Sheard Figs. 6, 7; page 2:lines 10-40; Lee Figs. 9A, 9B; para. [0126]-[0131]).
While Lee teaches slowly rotating the card (Lee para. [0128]), but doesn’t specify the speed no higher than 12.5o/second.
It would have been obvious to one of ordinary skill in the art before the effective filing date to rotate no higher than 12.5o/second since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Antonie 195 USPQ 6 (CCPA 1977); In re Boesch 205 USPQ 215 (CCPA 1980). As taught by Lee, the rotations should be slow enough so the change is observable to the patient (Lee para. [0128]).
As to claims 12, 13, Sheard in view of Lee teaches all the limitations of the instant invention as detailed above with respect to claims 8, 9, and Sheard further taches in step a, rotating the astigmatism test card (Sheard page 2:lines 4-40), and in a case that the subject observes no change in the sharpness of contrast between the optotype and the black background, determining the subject does not have astigmatism (Sheard page 2:lines 10-21), and otherwise, determining that the subject has astigmatism (Sheard page 2:lines 16-40).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Sheard in view of Lee as applied to claim 9 above, and further in view of Limon (US 2016/0120402 - Limon).
As to claim 10, Sheard in view of Lee teaches all the limitations of the instant invention as detailed above with respect to claim 9, and Lee further teaches obtaining a sharpest image distance d and a focal length f by moving the unilateral naked eye of a subject towards the spherical dioptric power test card (Lee Fig. 1B - 122; para. [0071]; Fig. 7A - 706, 708; para. [0116]), obtaining a first spherical dioptric power according to D = 1/f (Lee Fig. 1B - 122; para. [0072]), and repeating the steps to obtain a second spherical dioptric power (Lee Fig. 1B - 126; para. [0074]) and calculating the spherical dioptric power of the eye D = (D1+D2)/2 (Lee Fig. 1B - 130; para. [0074] - averaging the spherical power values) repeating the steps to obtain a spherical dioptric power of a fellow eye (Lee para. [0075]).
Lee doesn’t specify rotating the spherical diopter card by 90o.
In the same field of endeavor Limon teaches an eye testing method for determining spherical/cylinder/axis (Limon Fig. 12 - 151-157) whereby the target is rotated by 90o (Limon Fig. 12 - rotate angle of target by 90 and repeat once more for strong axis; para. [0206]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide a 90o rotation since, as taught by Limon, such rotation allows for increase the accuracy of the strong axis of an astigmatism power measurement.
As to claim 11, Sheard in view of Lee and Limon teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Limon further teaches placing the spherical dioptric power test card in the sharpest axis (Limon Fig. 12 - 153), obtaining a sharpest image distance and the focal length by moving the unilateral naked eye of the subject towards the spherical dioptric power test card (Limon Fig. 12 - 154), obtaining a first spherical dioptric power D1 according to the spherical dioptric power (Limon Fig. 12 - 155), placing the spherical power test card in the astigmatic axis and repeating the steps to obtain a second spherical dioptric power D (Limon Fig. 12 - 156, 151), calculating astigmatic dioptric power of the eye of the subject as D’ = D2-D1 (Limon Fig. 12 -157; para. [0206]), and repeating steps to obtain the astigmatism power of the fellow eye (Limon para. [0103]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Leube et al. (US 12,042,224; 2023/0181029); Maddalena et al. (US 7,367,675; 2004/0105073); Gottlob et al. (US 4,415,243); Sato (US 3,067,647); Marano (US 2,968,212); Luckiesh et al. (US 2,343,783); Luckiesh et al. (US 2,171,881); Cohen (US 2,065,430); Nicholson (US 1,013,428); Ryer (US 789,387); Maddalena et al. (US 2016/0157711) are cited as additional examples of astigmatism test cards and refraction test methods.
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 April 7, 2026
1 Meister, Darryl, and James E Sheedy. Introduction to Ophthalmic Optics. Carl Zeiss Vision, 2008; page 37-41