DETAILED ACTION
In response to the Amendment filed April 6, 2026
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 26, 2026 and April 21, 2026 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed October 5, 2023 are accepted.
Abstract
The Abstract filed October 5, 2023 is accepted.
Specification
The amendment to the specification filed December 28, 2023 has been entered.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 7 – 9, 11, 13 and 15 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 20 of U.S. Patent No. 11,805,861 in view of Kirk et al. (US Pub. No. 2013/0100256). Although the claims at issue are not identical, they are not patentably distinct from each other because the more specific plurality of reference dots in place of the broader horizontal reference object is not a distinct feature. Kirk et al. teaches using a plurality of reference dots (See Abstract) to determine the size and depth of a workpiece. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a plurality of reference dots as the horizontal reference object in 11,805,861 as taught by Kirk et al. as a specific reference that can be used in the device and method of 11,805,861.
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 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kolesov et al. (US 2019/0028637 A1).
With respect to claim 1, the method for measuring a portion of a user body part (i.e. foot or hand, for example), comprising the steps of displaying, by a mobile computing device (110), at least one image of the portion of the user body part (see Figures 1 and 15, for example), and a plurality of reference dots (1510) from a point of view, wherein one or more camera guides (Paragraph [0058]) are overlaid on the display of the at least one image; and determining, using a depth sensor of the mobile computing device (Paragraph [0060]), a measurement of the portion of the user body part based on the at least one image and the plurality of reference dots from the point of view (See Figure 15) will be achieved by the regular operation of Kolesov et al.
Referring to claim 11, Kolesov et al. discloses a mobile computing device (Figure 15), comprising a processor (Paragraph [0042]); a camera (Paragraph [0058]); a memory (Paragraph [0038]) storing instructions that, when executed by the processor, cause the mobile computing device to display at least one image comprising a user body part (See Figure 15) and a plurality of reference dots (1510) from a point of view (Figure 15), wherein one or more camera guides are overlaid on the display of the at least one image; and determine, using the camera, a measurement of the user body part based on the at least one image and the plurality of reference dots from the point of view (See paragraphs [0051] and [0076]).
Allowable Subject Matter
Claims 2 – 10 and 12 – 20 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 an examiner’s statement of reasons for allowance:
Claims 2 - 10 are allowable because the prior art fails to teach or suggest the method further comprising the steps of generating a custom article of footwear based on the measurement of the foot; generating, by the mobile computing device, a squared reference frame based on the at least one image; performing, by the mobile computing device, edge detection on the squared reference frame to establish edges of the portion of the user body part; delineating, by the mobile computing device, between the portion of the user body part and at least one shadow associated with the portion of the user body part using a successively varying gradient threshold; wherein determining a measurement of the portion of the user body part further comprises performing, by the mobile computing device, edge detection on the at least one image to detect a body part object; generating, by the mobile computing device, an object frame based on detecting the body part object; and performing, by the mobile computing device, a size analysis based on a size of the object frame to obtain at least one measurement; and wherein determining the measurement of the portion of the user body part includes determining, by the mobile computing device, a depth of contours of the portion of the user body part in the at least one image based on a time-of-flight measurement determined based on at least a portion of the plurality of reference dots; calculating, by the mobile computing device, at least one absolute depth value based on the depth of contours of the portion of the user body part; and calculating, by the mobile computing device, a size and a shape of the portion of the user body part based on the absolute depth value in combination with the remaining limitations of the claims.
Claims 12 - 20 are allowable because the prior art fails to teach or suggest a mobile computing device, wherein the user body part comprises a foot wherein the instructions, when executed by the processor, further cause the mobile computing device to: generate an electronic model of a custom article of footwear based on the measurement of the foot; wherein the instructions, when executed by the processor, further cause the mobile computing device to generate a squared reference frame based on the at least one image; and perform edge detection on the squared reference frame to establish edges of the user body part; wherein the instructions, when executed by the processor, further cause the mobile computing device to delineate between the user body part and at least one shadow associated with the user body part using a successively varying gradient threshold; wherein the user body part is disposed against a vertical reference object, and wherein the at least one image of the user body part is displayed with the vertical reference object; wherein the instructions, when executed by the processor, further cause the mobile computing device to align the one or more camera guides with the user body part prior to determining the measurement of the portion of the user body part; and wherein the instructions, when executed by the processor, further cause the mobile computing device to determine the measurement of the user body part by determining a depth of contours of the user body part in the image of the user body part based on a time-of-flight measurement determined based on the plurality of reference dots; calculating at least one absolute depth value based on the depth of contours of the user body part; and calculating a size and a shape of the user body part based on the absolute depth value in combination with the remaining limitations of the claims.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3, 7 – 9, 11, 13 and 15 - 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s amendment to claim 1, now requires the measuring of a portion of a user’s body. The amendment to positively claim a user’s body portion, instead of an object, requires the new grounds of rejection in view of Kolesov et al.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Atwood et al. (US 2024/0037769 A1) discloses a system and method for predicting body part measurements of a user from depth images but fails to teach creating a plurality of reference dots as claimed.
Chuang et al. (US 9,594,967) discloses a method that includes capturing a pixelated depth image of a person with a depth camera and identifying body parts from the image but fails to teach creating a plurality of reference dots as claimed.
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 YARITZA GUADALUPE-MCCALL whose telephone number is (571)272-2244. The examiner can normally be reached Mon -Thu, 8:00am - 6:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached on 571-272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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YARITZA GUADALUPE-MCCALL
Primary Examiner
Art Unit 2855
April 27, 2026
/YARITZA GUADALUPE-MCCALL/Primary Examiner, Art Unit 2855
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