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 .
Response to Amendment
This Office Action is in response to Applicant’s response of 6/4/2026. In that response, Applicant amended the drawings, amended claims 1, 5-7, 9-10 and cancelled claim 2.
DETAILED ACTION
The instant application having Application No. 18/294,413 filed on 2/1/2024 is presented for examination by the Examiner.
Examiner cites particular columns and line numbers in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Drawings
The objection to the drawings has been overcome.
Claim Objections
The objection to claim 1 has been overcome.
Claim Rejections - 35 USC § 112
The rejection of claims 1, 3-10 under 35 U.S.C. 112(b) has been overcome.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to mental steps comprising comparing and analyzing data without significantly more. The claim recites “comparing the first configuration with the second configuration; analyzing the two configurations and determining the differences; and indicating problems detected between the two configurations, providing indications on how to solve them”. This belongs to the enumerated grouping of a judicial exception of abstract ideas, e.g., mental processes (MPEP 2106.04(a)).
It is noted here that the courts have decided that “[c]laims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer")”, MPEP 2106.04(a)(2)(III)(c). The above cited functions of comparing, analyzing and determining differences between two configurations can be performed mentally without a computer (as it is claimed).
The added limitations require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984, and therefore they do not integrate the abstract idea into a practical application.
This judicial exception is also not integrated into a practical application because the scanning and saving steps are recited with a high degree of generality and are just extra-solution data gathering and do not integrate a judicial exception into a practical application. The indicating step is just a notification and is insignificant post-solution activity and thus not meaningful enough to render the claim eligible (See, e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010 (2010) ("Flook established that limiting an... abstract idea to one field of use or adding token post-solution components did not make the concept patentable") (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978)).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional steps are insignificant extra-solution data gathering and post-solution activity and do not amount to significantly more than the exception itself.
Claims 3-10 are rejected under 35 U.S.C. 101 for the same reasons give above. The additional steps (three-dimensional scanning, providing indications, checking the scanning, reporting the problems, measuring from data, processor, storage medium and interface implementing the actions), are insignificant extra-solution data gathering and post-solution activity and do not amount to significantly more than the exception itself.
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.
Claims 1, 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Hofmeister at al. (US 2015/0277154, hereinafter, “Hofmeister”) in view of Mason et al. (US 2016/0135925, hereinafter, “Mason”).
Regarding claim 1, Hofmeister discloses a method for maintaining a glasses frame (Abstract) the method including the following steps:
carrying out a scanning of said glasses frame (Fig. 6, [0133]), wherein the scanning measures at least one characteristic of the frame included in a list comprising a front curve-face form angle, a pantoscopic angle, a curling of an end bend of a rod (temple wrap), a maximum opening angle of the rod, a rod bending (emphasis added) (Fig. 38E, [0142]);
saving in a data file said at least one characteristic of the glasses frame ([0183]).
Hofmeister does not disclose saving in a data file said at least one characteristic of the glasses frame as a first configuration if it is an original configuration of the glasses frame, or as a second configuration if it is a modified configuration of the glasses frame;
comparing the first configuration with the second configuration;
analyzing the two configurations and determining the differences; and
indicating problems detected between the two configurations, providing indications on how to solve them.
Mason discloses a method for comparing and analyzing data representative of the state of a patient’s intraoral cavity (Abstract). In one embodiment, data 302, 304 representative of the state of the cavity at two different times is saved and compared to determine possible changes/problems and proving indications on how to solve them (Fig. 3, 9, 10A, [0084], [0152], [0162]).
Both Hofmeister and Mason disclose taking scan data of an object related to a patient (e.g., a glasses frame, an intraoral cavity) for future processing.
It would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the present application to modify Hofmeister so that two consecutive scans of the glasses frame (for example, one representing the original frame and one representing a modified frame) are compared and analyzed to determine a difference (S1016 in Fig. 10A of Mason) for further processing, i.e., indicate problems and provide solutions (930 in Fig. 9, S1028 in Fig. 10A of Mason), as taught by Mason, for providing cost savings and improve customer (i.e., the owner of the frame) satisfaction, [0015] in Hofmeister.
It is noted that in the above modified method of Hofmeister/Mason, the method is implemented in a non-transitory information carrier storing a computer program, the computer program comprising a computer code running on an electronic computer performing operations of the method, wherein said computer comprises at least one memory comprising the data file and a processor to implement the actions of the method ([0200] in Mason).
Regarding claim 3, Hofmeister/Mason discloses the method according to claim 1 whereby the scanning is carried out with a three-dimensional scanner, classifying the scanning as a three-dimensional scanning ([0020] in Hofmeister).
Regarding claim 4, Hofmeister/Mason discloses the method according to claim 1 whereby the scanning is carried out with an application scanning the glasses frame, wherein said application is a computer program loaded on a device electronic ([0166] in Hofmeister).
Regarding claim 5, Hofmeister/Mason discloses the method according to claim 1 wherein indications on how to solve the detected problems include at least one among making an appointment with a salesperson or an optician, an explanation on how solving the problems independently, a programming of a maintenance procedure, an indication of a need to change the glasses frame (emphasis added) ([0184] in Hofmeister).
Regarding claim 6, Hofmeister/Mason discloses the method according to claim 1 further including the step of checking to verify if the scanning data is a first scanning by asking the user or by verifying whether the characteristics of the glasses frame have already been saved in the data file (S1006 in Fig. 10A of Mason),
in case it is a first scanning, or in case it is a configuration of the glasses frame considered as original, then the method saves the characteristics of the glasses frame in the data file, listing the characteristics as the first configuration of the glasses frame ([0183] of Hofmeister),
otherwise, the method saves the characteristics of the glasses frame in the data file as the second configuration of the glasses frame (S1018 in Fig. 10A of Mason).
Regarding claim 7, Hofmeister/Mason discloses the method according to claim 1 further including a step of reporting the problems detected to the optician or to a manufacturer of the glasses frame ([0184] in Hofmeister).
Regarding claim 8, Hofmeister/Mason discloses the method according to claim 1 wherein the execution of the scanning includes a step of data scanning and measuring from said data of said at least one characteristic of the glasses frame ([0184] in Hofmeister).
Regarding claim 9, Hofmeister/Mason discloses a non-transitory information carrier storing a computer program, the computer program loadable into the memory of an electronic computer comprising instructions which, when the computer program is executed by the computer, carry out a method according to claim 1 ([0200] in Mason).
Regarding claim 10, Hofmeister/Mason discloses the non-transitory information carrier according to claim 9, further comprising a user interface for signaling further lens or frame defects ([0133], [0166] in Hofmeister).
Response to Applicant’s Arguments
Regarding the §101 rejection of claim 1-10 Applicant stated “Applicant respectfully disagrees that the claims are not patentable. Applicant herein amends claim 1 to overcome the Section 101 rejection. Accordingly, the amended claims invoke and involve more than mental processes”, see pp. 4-5 of the Remarks.
Applicant's above argument has been fully considered but it is not persuasive. As discussed above, the courts have decided that a claim can recite a mental process even if it is claimed as being performed on a computer. No amendments have been made to address the §101 issues discussed in the last Office action.
Moreover, Applicant stated “Turning to Mason, Applicant respectfully notes that the document relates to a method for predicting dental or orthodontic conditions based on processing data from digital data and determining a velocity of an intraoral object of the intraoral cavity over time. This is not analogous to Applicant's claimed invention and one of ordinary skill in the art, when faced with the Hofmeister deficiencies, would not turn to Mason for supplementing the same. MPEP 2143”, see p. 6 of the Remarks.
It is noted that it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Hofmeister and Mason disclose scanning for detecting and correcting medical problems of a patient, i.e., scanning of a glasses frame in the former, scanning of an ocular cavity in the latter, thus, they are analogous.
The Applicant also stated that “[t]here is no disclosure in Mason that teaches the ability to indicate problems detected between the two configurations” and “[s]pecifically, Mason does not teach or disclose any information on how to problem solve by comparing the differences between two configurations at two different times. As indicated in the foregoing, Mason is directed to predicting future states of a patient's dental health”, see pp. 6, 7 of the Remarks.
The Office refers to step S1016 in Fig. 10A of Mason for the former and step S1026, S1028 in Fig. 10A of Mason for the latter.
Finally, Applicant stated “the method compares the first and second configurations and determines the differences by indicating the problems detected and providing an explanation on how to solve them, i.e. whether it is necessary to make an appointment with the salesperson or optician, whether it is possible to solve the problem independently, or whether it is possible to set a maintenance schedule, or whether it is necessary to change the frame. This is certainly not provided by the proposed combination of Hofmeister and Mason. MPEP 2143”, see p. 7 of the Remarks.
Applicant's above argument has been fully considered but it is not persuasive. Paragraph [0184] in Hofmeister discloses providing data related to a glasses frame to a lab for appropriate action.
The rejection of claim 1 and its dependents is maintained.
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 LEONIDAS BOUTSIKARIS whose telephone number is (703)756-4529. The Examiner can normally be reached Mon. - Fr. 9.00-5.00.
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/L.B./
Patent Examiner, AU 2872
/STEPHONE B ALLEN/Supervisory Patent Examiner, Art Unit 2872
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