DETAILED ACTION
Information Disclosure Statement
The Examiner notes that an information disclosure statement has not yet been filed.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/381,790 (filed on 11/01/2022), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application, namely the features directed to the plurality of settings, tint control logic and/or threshold(s) stored in the memory as recited in Claims 1-4 and 9, and the limitations directed to the processor as recited in claims 1, 9 and 17.
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 first through fifth inputs of the mobile application must be shown or the feature(s) canceled from the claim(s) 17-19;
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 Rejections - 35 USC § 112
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.
Claims 17-20 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.
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is what is presently claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the present case, Claims 17-19 recite a system for executing a mobile application, specifically, the claims recite: “the mobile application operably connected to the glasses and executable to: receive a first input indicative of a transition setting corresponding to a light level measured by the light sensor; receive a second input indicative of a first tint level of the at least one electronically tint controlled lens; receive a third input indicative of a second tint level of the at least one electronically tint controlled lens; and transmit the first input, the second input and the third input to the pair of glasses…receive a fourth input to control a tint transition time delay between the first tint level and the second tint level… a fifth input to control a tint transition rate between the first tint level and the second tint level”. The claims define the invention by functional language specifying inputs received by said application to achieve a plurality of tint control features in the lenses of the glasses. However, the disclosure fails to explain how such a result is achieved, i.e., the disclosure fails to describe any procedure or algorithm performed by the claimed computing device that results in said tint adjustments as claimed. The as-filed specification (11/01/2023) states the generic claim language in ipsis verbis (see ¶0008, 0048 of disclosure) with no further elucidation. Thus, the algorithm or steps/procedure for performing the functions of the mobile application are not explained at all. The disclosure fails to provide any evidence or explanation of such an algorithm configured to result in the plurality of tint adjustments as claimed in claims 17-19. As stated in MPEP 2161.01 Section I, “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”. In the present case, the mere restatements of the inputs (as recited in the claim) within the as-filed specification is not sufficient. It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). Since the specification does not provide a disclosure of the algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention, claims 17-19 must be rejected under 35 U.S.C. 112(a) for lack of written description.
Claim 20 is rejected as being dependent upon claim 17 and fails to cure the deficiencies of the rejected base claims.
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.
Claims 2, 7 and 12 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.
1. Claim 2 recites the limitation: “wherein the transition setting is a sensitivity setting stored in the memory”. It is unclear what is meant by “a sensitivity setting”, i.e., a sensitivity to what? Furthermore, claim 1 (from which claim 2 depends upon) fails to provide any specificity regarding such a setting stored in the memory, thereby rendering the scope of claim 2 unclear and indefinite. For the purposes of examination, the limitation will be treated as: “wherein the transition setting is stored in the memory”.
2. Claim 7 recites the limitation: “further comprising a receiver in the frame”. It is unclear what is meant by “a receiver” since such a term may refer to a large multiplicity of possible structures and/or devices, e.g., a mechanical structure that receives another element, a receiver for various electromagnetic signals or, a radio receiver, etc. Furthermore, the as-filed specification (of 11/01/2023) fails to elucidate or specify what the receiver refers to beyond an ipsis verbis of the generic claim language. For the purposes of examination, the limitation will be treated as: “further comprising electronics in the frame”.
3. Claim 12 recites the limitation: “wherein the tint control logic automatically adjusts the tint of the at least one lens from the second tint setting to the first tint setting based on the light measurement from the light sensor and a second light intensity threshold”. It is unclear what is meant by “a second light intensity threshold”, since the present claim (and claim 9 which claim 12 depends upon) does appears to be silent with regard to any “first light intensity threshold”, thereby rendering the scope of the claim unclear and indefinite. For the purposes of examination, the limitation will be treated as: “…a light intensity threshold”.
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 1-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barnes (US 5,841,507 A).
Regarding Claim 1, Barnes discloses: A pair of glasses comprising: a frame having a first side arm and a second side arm (FIG. 1: 1; c. 3: sunglasses; c. 4: frame with temples 2 and 3), and at least one electronically tint controlled lens in the frame (c. 3-4: sunglasses 1 consists of two Liquid Crystal Device (LCD) lenses, 4 and 5, mounted in a bridge 30 of the frame…having light transmission characteristics that can be changed over a wide range of light intensities); at least one light sensor on the frame (c. 4: The left LCD lens 4 contains a sensor array 6, and the right LCD lens 5 contains a sensor array 7); a voltage source in the frame (c. 4: Power supplies 18 and 19 and user controls 20 and 21 are also located in the temples 2 and 3); and control circuitry in the frame, the control circuitry including a processor and memory storing tint control logic (see FIGS. 1-2 showing control circuitry 16-17 in frame; c. 5: control electronics 16 and 17 may include microprocessors and memory device), the tint control logic being executable by the processor to automatically adjust a tint of the at least one electronically tint controlled lens based on a light measurement from the light sensor and a transition setting stored in the memory (c. 4-5: left LCD lens 4 contains an associated shutter matrix 8, and the right LCD lens 5 contains a shutter matrix 9…the logical OR of the processed output of both sensor arrays 6 and 7 can be used to darken elements of both shutter matrices 8 and 9).
Regarding Claim 2, as best understood, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: wherein the transition setting is a sensitivity setting stored in the memory (c. 5: Each sensor array 6 and 7 of the active sunglasses of FIG. 1 has associated with it a light sensing photodetector 10 or 11; c. 7: control electronics map the sensor array information most effectively into the elements of the shutter matrix…this Z constant is then stored in the control electronics and loaded at time of power up).
Regarding Claim 3, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: wherein the transition setting is at least one threshold stored in the memory (c. 8: Based upon user information stored earlier, and any preset threshold values, a decision is made by the control electronics and a signal is sent to the LCD driver 54 to block or reduce light from one or more places in the visual field by proportionally darkening a selected element or elements of the shutter matrix 8 if the level stored per element from the data obtained from the sensor array 6 exceeds some threshold value V.sub.n.).
Regarding Claim 4, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: wherein the memory stores a setting for at least one or more of a tint rate change, a tint change time delay, a dark tint setting, a light tint setting, and a sensitivity setting (c. 7-8; see FIG. 4).
Regarding Claim 5, Barnes discloses the glasses according to Claim 4, as above. Barnes further discloses: wherein the tint control logic automatically adjusts the tint of the at least one electronically tint controlled lens between the dark tint setting and the light tint setting (c. 11-12: A user could select between two or more modes to control how light levels that exceed a pre-determined threshold are presented. For example, Mode 1 could provide maximum attenuation to reduce the transmissivity of the LCD elements to a minimum for the location of a bright source in the field of view, thus making any very bright area quite dark…A Mode 3 could be configured such that any light source that exceeds the average of the field of view by some constant Ny is attenuated by controlling the LCD elements of the shutter matrix so that light levels passing through these elements are less than the average light level in the field of view, but no less bright than that from the minimum element in the viewing field).
Regarding Claim 6, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: comprising two electronically tint controlled lenses in the frame (c. 4-5: left LCD lens and the right LCD lens 5).
Regarding Claim 7, as best understood, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: further comprising a receiver in the frame (c. 4: control electronics 16 and 17 are housed in each of the temples 2 and 3).
Regarding Claim 8, Barnes discloses the glasses according to Claim 1, as above. Barnes further discloses: further comprising a manual switch on the frame (c. 11: a set up mode of operation is entered which might consist of depressing the 2nd switch of the user control 20 on the left temple 2 three times, waiting until the shutter matrix 8 of left lens 4 darkens momentarily, and then depressing the first switch 21 on the right temple 3 twice).
Regarding Claim 9, Barnes discloses: a frame having at least one lens in the frame having adjustable tint and at least one light sensor on the frame; and control circuitry in the frame, the control circuitry including a processor and memory storing tint control logic (see rejection of claim 1 supra), the tint control logic being executable by the processor to automatically adjust a tint of the at least one lens from a first tint setting to a second tint setting based on a light measurement from the light sensor and a transition setting (c. 4-5: left LCD lens 4 contains an associated shutter matrix 8, and the right LCD lens 5 contains a shutter matrix 9…the logical OR of the processed output of both sensor arrays 6 and 7 can be used to darken elements of both shutter matrices 8 and 9; c. 11-12: A user could select between two or more modes to control how light levels that exceed a pre-determined threshold are presented. For example, Mode 1 could provide maximum attenuation to reduce the transmissivity of the LCD elements to a minimum for the location of a bright source in the field of view, thus making any very bright area quite dark…A Mode 3 could be configured such that any light source that exceeds the average of the field of view by some constant Ny is attenuated by controlling the LCD elements of the shutter matrix so that light levels passing through these elements are less than the average light level in the field of view, but no less bright than that from the minimum element in the viewing field).
Regarding Claim 10, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: comprising two adjustable tint lenses in the frame (see rejection of claim 6 supra).
Regarding Claim 11, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: wherein the at least one lens having adjustable tint is an electrochromic lens, and the glasses further comprising a voltage source in the frame (c. 4: Power supplies 18 and 19 and user controls 20 and 21 are also located in the temples 2 and 3; c. 3-4: two Liquid Crystal Device (LCD) lenses, 4 and 5, mounted in a bridge 30 of the frame…one skilled in the art would understand that alternative materials such as ferroelectrics, liquid crystal materials in general, or other materials having light transmission characteristics that can be changed over a wide range of light intensities, could be used to functionally replace the LCD materials in the shutter matrices or sensor arrays).
Regarding Claim 12, as best understood, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: wherein the tint control logic automatically adjusts the tint of the at least one lens from the second tint setting to the first tint setting based on the light measurement from the light sensor and a second light intensity threshold (c. 4-5: during operation, each sensor array is scanned so that its associated photodetector can sample or infer the light level from a given region in the visual field of the user. In this manner, the control electronics 16 and 17 determine the vector associated with each element of the field of view of the sensor array. Information gained from the sensor arrays is then used to darken appropriate elements of the LCD shutter matrices 8 and 9, to reduce the level of the light intensity in the visual field of the user to tolerable limits; c. 8: Based upon user information stored earlier, and any preset threshold values, a decision is made by the control electronics and a signal is sent to the LCD driver 54 to block or reduce light from one or more places in the visual field by proportionally darkening a selected element or elements of the shutter matrix 8 if the level stored per element from the data obtained from the sensor array 6 exceeds some threshold value V.sub.n.).
Regarding Claim 13, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: wherein the tint control logic includes a setting for at least one or more of a tint rate change, a tint change delay, the first tint setting, the second tint setting, and a sensitivity setting (c. 5: Each sensor array 6 and 7 of the active sunglasses of FIG. 1 has associated with it a light sensing photodetector 10 or 11; c. 7: control electronics map the sensor array information most effectively into the elements of the shutter matrix…this Z constant is then stored in the control electronics and loaded at time of power up).
Regarding Claim 14, Barnes discloses the glasses according to Claim 13, as above. Barnes further discloses: wherein the first tint setting is a lightest tint setting and the second tint setting is a darkest tint setting (c. 11-12: A user could select between two or more modes to control how light levels that exceed a pre-determined threshold are presented. For example, Mode 1 could provide maximum attenuation to reduce the transmissivity of the LCD elements to a minimum for the location of a bright source in the field of view, thus making any very bright area quite dark…A Mode 3 could be configured such that any light source that exceeds the average of the field of view by some constant Ny is attenuated by controlling the LCD elements of the shutter matrix so that light levels passing through these elements are less than the average light level in the field of view, but no less bright than that from the minimum element in the viewing field).
Regarding Claim 15, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: wherein the at least one lens is a prescription lens (c. 9: corrective lenses for persons who are nearsighted or farsighted, or who suffer from an astigmatism).
Regarding Claim 16, Barnes discloses the glasses according to Claim 9, as above. Barnes further discloses: further comprising a manual switch on the frame (see rejection of claim 8 supra).
Claims 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peloux (US 2021/0033891 A1).
Regarding Claim 17, Peloux discloses: A system comprising: a pair of glasses comprising at least one electronically tint controlled lens and a light sensor in a frame (FIG. 1: 1, 4a-b, 8; ¶0074-75: eyewear 1 comprising a variable transmission device 2 and a frame 3 with two variable transmission optics 4a, 4b…an ambient light sensor 8, for example placed on the frame 3 between the two ophthalmic lenses), the glasses further comprising a voltage source and control circuitry in the frame, the control circuitry including a processor and memory storing tint control logic (¶0092: voltage driver 7 generates a corresponding voltage signal that is applied to the command electrodes of the electrochromic or liquid crystal lenses 4a, 4b; ¶0086: configuring unit may update or load instructions to be executed by the processor PROC and/or various variables or parameters that may be saved on the memory MEM), the tint control logic being executable by the processor to automatically adjust a tint of the at least one electronically tint controlled lens based on a light measurement from the light sensor and a sensitivity setting or at least one thresholds stored in the memory (¶0092: ambient light sensor 8 provide an indication of the currently measured illuminance. The value of the currently measured illuminance may be used by the processor PROC of the control unit 5 to calculate the target transmission value. The processor PROC then generates one or more command signals for varying the optical transmission between the initial transmission value and the target transmission value; ¶0109: control unit 5 may define a plurality of illuminance ranges which are stored in the memory MEM); and a mobile application, stored in memory of a computing device (¶0086: a dedicated application for configuring the control unit), the mobile application operably connected to the glasses and executable to: receive a first input indicative of a transition setting corresponding to a light level measured by the light sensor; receive a second input indicative of a first tint level of the at least one electronically tint controlled lens; receive a third input indicative of a second tint level of the at least one electronically tint controlled lens; and transmit the first input, the second input and the third input to the pair of glasses (¶0090, 0092: the target transmission value may be chosen as a function of the current illuminance measured by the ambient light sensor…ambient light sensor 8 measures periodically the illuminance of the exterior environment and the currently measured illuminance, which is then used by the processor PROC of the control unit 5 to calculate the target transmission value. PROC generates command signals for varying the optical transmission between the initial transmission value and the target transmission value which are sent to the voltage driver 7 generating a corresponding signal applied to the electrodes of the lenses 4a, 4b; ¶0096, 0116-18: illuminance value is measured and transmitted to the processor PROC of the control unit 5 via the input interface IN).
Regarding Claim 18, Peloux discloses the glasses according to Claim 17, as above. Peloux further discloses: wherein the mobile application is further executable to: receive a fourth input to control a tint transition time delay between the first tint level and the second tint level (¶0145-46: T.sub.Dn is thus different from t.sub.B1 such that the exponential transition function has a different time constant Tτ.sub.V(t.sub.i),τ.sub.V,target depending on whether the transmission is increased or lowered, independently of the initial and target transmission values considered, T.sub.Dn and T.sub.B1 may be chosen preferably greater than 100 milliseconds and less than 3500 milliseconds…the control unit 5 configured with first and second exponential transition functions with different values for the time constant T.sub.Dn and T.sub.B1 which were set).
Regarding Claim 19, Peloux discloses the glasses according to Claim 17, as above. Peloux further discloses: wherein the mobile application is further executable to: receive a fifth input to control a tint transition rate between the first tint level and the second tint level (¶0125: f the target transmission value is greater than the initial transmission value, for example when τv,1 is greater than τv(t0)=τv,2, a temporization duration Δt.sub.tempo,B1 is applied).
Regarding Claim 20, Peloux discloses the glasses according to Claim 17, as above. Peloux further discloses: wherein the computing device is a mobile phone (¶0086: a smartphone comprising a dedicated application).
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Barnes (US 5,841,507 A) in view of Peloux (US 2021/0033891 A1).
Regarding Claim 11, Barnes discloses the glasses according to Claim 9, as above. While Barnes teaches the limitation of “wherein the at least one lens having adjustable tint is an electrochromic lens” (see rejection supra) in accordance with the broadest reasonable interpretation of the present claim language, in the interest of compact prosecution, the Examiner notes that Barnes does not explicitly disclose a different interpretation of the electrochromic lens as recited, and thus further submits Peloux. Peloux is related to Barnes with respect to an analogous pair of glasses comprising a frame, electronically tint controlled lens in the frame; at least one light sensor and a voltage source in the frame; and control circuitry in the frame (FIGS. 1-2; ¶0075, 0080-81, 0083-84) and Peloux teaches: wherein the at least one lens having adjustable tint is an electrochromic lens (FIG. 1: 4a-b; ¶0074: variable transmission device 2 comprises two variable transmission optics 4a, 4b, here ophthalmic lenses, the variable transmission optics may be an electrochromic lens; ¶0090: in electrochromic, the target transmission value may be chosen as a function of the current illuminance measured by the ambient light sensor).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the glasses of Barnes in view of Peloux to satisfy the claimed condition, because such a lens is known and would be selected since “electrochromic compounds have the particularity of changing reversibly their colour when a voltage is applied due to oxidation and reduction reactions. Thus, by applying an electrical field between the at least two electrodes, the optical transmission of the cell and thus of the optics may be varied”, as taught in ¶0077 of Peloux.
Other Relevant Documents Considered
Prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Blum (US 2015/0286073 A1) discloses pair of glasses comprising a frame, electronically tint controlled lens in the frame; at least one light sensor and a voltage source in the frame; and control circuitry in the frame, and further satisfying some of the additional conditions as claimed.
Conclusion
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872