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 .
Summary of the Claims
The present application (18/634,743) was filed on April 12, 2024 and claims priority to 63/458,945 filed on April 13, 2023. Claims 1-19 are pending. Claim 1 (a contact lens system) and claim 10 (a method of operating a contact lens system) are the independent claims.
References and Documents Cited in this Action
Park (US 9,810,910 B1)
Shtukater (US 2017/0270636 A1)
Summary of Rejections and Objections in this Action
Examiner objects to claims 3, 6, 8-10, 12, 13, 17, and 19.
Claims 1-19 are rejected under 35 U.S.C. 112(b) as being indefinite.
Claims 1, 3-5, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park.
Claims 2, 6-9, 11, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Park in view of Shtukater.
Drawings
Examiner acknowledges the drawings filed on August 8, 2024. These drawings are acceptable.
Claim Objections
Examiner objects to claims 3, 6, 8-10, 12, 13, 17, and 19 for minor informalities. However, Examiner notes that all of these claims are also rejected under 35 U.S.C. 112(b) for being indefinite for additional reasons (see complete rejection and details further in this Office action). Applicant should ensure that any changes made to the claims to overcome these objections should be consistent with any changes necessary to overcome the 35 U.S.C. 112(b) rejections.
Claim 3 should have the word “an” in front of “external source” (line 3 of the claim) for grammatical reasons.
Claim 6 should have the word “an” in front of “embedded display” (line 2 of the claim).
Claim 8 should recite “comprising” instead of “comprises” (line 1 of the claim).
Claim 9 should recite “an” in front of “antenna” in line 1 of the claim and “the” in front of “antenna” in line 2 of the claim. Claim 9 should also recite “a” in front of communication module” (line 3 of the claim). Claim 9 should also recite lowercase “a communication transceiver” and “an induction coil” instead of uppercase “A communication transceiver” and “An induction coil” (lines 3-4 of the claim).
Claim 10 should recite “a” in front of “display projector” (line 4 of the claim) and “a” in front from “output grating” (line 5 of the claim).
Claim 12 should have a colon (:) instead of a semi-colon (;) after “comprises” (line 2 of the claim) and “lense” should be spelled “lens” (line 7 of the claim). Claim 12 should also recite “an” in front of “external source” (line 3 of the claim).
Claim 13 should recite “an” in front of “external communication device” (line 3 of the claim).
Claim 17 should recite “an” in front of “orientation module” (line 2 of the claim) and “an” in front of “image or depth image capture device” (lines 4-5 of the claim). Claim 17 should also recite “device” instead of “deice” (line 3 of the claim).
Claim 19 should recite lowercase “the” instead of uppercase “The” (line 2 of the claim).
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 1-19 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.
Independent claim 1 recites “the retina” and “the eye” (line 7 of the claim). The claim is indefinite because there is insufficient antecedent basis for these limitations. Claims 2-9 depend on claim 1 and are also indefinite for at least the same reason.
Claims 2, 4, 5, and 9 further recite “contact lens” in several places instead of “contact lens system” or “contact lens substrate” as previously recited in parent claim 1. There is insufficient antecedent basis for the phrase “contact lens” alone, and it is unclear whether “contact lens” refers to “contact lens system” or “contact lens substrate.”
Claim 3 further recites “the eye” (line 9 of the claim). There is insufficient antecedent basis for this limitation.
Claim 7 further recites “based on inputs from the forward facing image or depth image capture sensor” (lines 2-3 of the claim). There is insufficient antecedent basis for this limitation because claims 1 and 5 on which claim 7 depends do not recite these sensor elements.
Independent claim 10 recites “the contact lens device” (line 2 of the claim). There is insufficient antecedent basis for this limitation because the claim previously recites “a contact lens system,” not a contact lens “device.”
Claims 11-14 and 17-19 all recite “The method of claim 9,” but the claims are indefinite because claim 9 is not a method claim. Claim 10 is the independent method claim. Claims 15 and 16 each depend on claim 13 and are also indefinite for at least this reason.
Claim 12 further recites “the eye” (line 8 of the claim). There is insufficient antecedent basis for this limitation.
Claims 13 and 14 further recite “contact lens” or “two paired contact lenses” in several places instead of “contact lens system” as previously recited in independent method claim 10 (assuming that claims 13 and 14 are meant to depend on claim 10). There is insufficient antecedent basis for the phrase “contact lens” alone.
Claims 15-17 and 19 each further recite “the said processor module” (line 1 or line 2 of each claim). There is insufficient antecedent basis for this element, even assuming the claims are meant to depend on claim 10, because method claim 10 does not recite a processor module.
Claim 16 further recites “based on inputs from the forward facing image or depth image capture sensor” (lines 2-3 of the claim). There is insufficient antecedent basis for this limitation, even assuming the claim is meant to depend on claim 10, because method claim 10 does not recite these sensor elements.
Claim 17 further recites “the eye” twice (lines 2 and 4 of the claim). There is insufficient antecedent basis for these limitations.
Claim 19 further recites “the said communication module,” “the contact lens display,” and “the said embedded waveguide display” (lines 5-7 of the claim). There is insufficient antecedent basis for these limitations.
Claim Rejections - 35 USC § 102
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 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, 3-5, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park (US 9,810,910 B1).
Regarding independent claim 1, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses a contact lens system (Figures 2, 4A-B, and 5), comprising:
a contact lens substrate (i.e., substrate 430; see also transparent material 421);
a power supply module (i.e., “a power source”; column 8, lines 3-7);
an embedded waveguide module (including waveguide 225; Figure 2) , further comprising:
at least one projector (i.e., including light source 405),
at least one input grating (i.e., receiving optical element 223 that “includes a Bragg grating”; column 5, lines 5-9), and
at least one out coupling grating designed to project light into the retina of the eye (i.e., outcoupling optical element 227 that also “may be a Bragg grating”; column 5, lines 14-18; column 7, lines 10-29).
Regarding claim 3, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses that the said power supply module provides power to
the contact lens system and further comprises: at least one battery to store electric charge and to power electro-optical components of the lens system or at least one light sensor to generate electric current from incident light (i.e., “a battery and/or a photovoltaic element”; column 8, lines 3-7).
Regarding claim 4, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses a communication module, which further
comprises:
a communication device embedded in the contact lens system (i.e., transceiver 539); whereas,
the communication device configured to communicate with one or more external communication device or with another paired contact lens (i.e., base station 565; column 8, lines 23-32).
Regarding claim 5, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses a processor module that is situated onboard of the contact lens system or external to the contact lens system and is configured to process computer instructions executing computer program (i.e., control circuitry 409 that may be “a microprocessor”; column 6, lines 59-65).
Regarding independent claim 10, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses a method of operating a contact lens system (Figures 2, 4A-B, and 5), comprising:
powering the contact lens device with an embedded waveguide module (including waveguide 225; Figure 2) by an integrated power supply module (i.e., “a power source”; column 8, lines 3-7);
projecting light onto an input grating (receiving optical element 223 that “includes a Bragg grating”; column 5, lines 5-9), from display projector (i.e., including light source 405); and
outputting light from output grating of the waveguide (i.e., outcoupling optical element 227 that also “may be a Bragg grating”; column 5, lines 14-18; column 7, lines 10-29).
Regarding claim 12, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses that the said power supply module provides power to the contact lens system and further comprises at least one battery to store electric charge and to power electro-optical components of the lens system or at least one light sensor to generate electric current from incident light (i.e., “a battery and/or a photovoltaic element”; column 8, lines 3-7).
Regarding claim 13, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses establishing and maintaining communication between at least one contact lens system and external communication device (i.e., transceiver 539 communicates with base station 565; column 8, lines 23-32).
Regarding claim 14, as well as the claim may be understood with respect to 35 U.S.C. 112(b) as discussed above, Park discloses a processor module, situated onboard of the
contact lens system or external to the contact lens and configured to process computer instructions executing computer program (i.e., control circuitry 409 that may be “a microprocessor”; column 6, lines 59-65).
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.
Claims 2, 6-9, 11, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Park (US 9,810,910 B1) in view of Shtukater (US 2017/0270636 A1).
Examiner notes that the Shtukater reference shares an inventor with the present application but it was published in 2017, over a year before the filing of the present application.
Regarding claims 2 and 11, as well as the claims may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens system and method as discussed above with regard to claims 1 and 10, respectively. Park does not specifically disclose a forward facing image capturing device or a depth image capturing device. However, Shtukater teaches a contact lens system that is related to the one disclosed by Park including a contact lens substrate 101, a power supply module 107, and a display 105 that projects light into the retina of the eye (Figure 1; paragraphs [0095]- [0112]. Shtukater further teaches a forward facing image capturing device or a depth image capturing device is embedded into the contact lens (paragraphs [0163], [0207], and [0248]). It would have been obvious to include obtaining images from a forward facing image capturing device or a depth image capturing device as taught by Shtukater in the system and method disclosed by Park in order to advantageously collect information about the user’s environment (Shtukater, paragraph [0248]).
Regarding claims 6 and 15, as well as the claims may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens system and method as discussed above with regard to claims 1 and 10, respectively. Park discloses a processor module (i.e., control circuitry 409) and producing images but is silent with regard to 3 dimensional or 2 dimensional frames of reference. However, in Shtukater’s related system, Shtukater further teaches a processing module 103 that processes image disposition on an embedded display 105 relative to 3 dimensional or 2 dimensional frame of reference (paragraphs [0118]-[0121]). Regarding claims 6 and 15, it would have been obvious to a person of ordinary skill in the art to process image disposition on embedded display relative to 3 dimensional or 2 dimensional frame of reference as taught by Shtukater in the system and method disclosed by Park in order to advantageously switch between frames of reference as desired to effectively present information and images to the user.
Regarding claims 7 and 16, as well as the claims may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens system and method as discussed above with regard to claims 1 and 10, respectively. Park discloses a processor module (i.e., control circuitry 409) and producing images but does not disclose tracking external geometry by building and maintaining 3d mesh in memory based on inputs from the forward facing image or depth image capture sensor. However, in Shtukater’s related system, Shtukater teaches a forward facing image capturing device or a depth image capturing device is embedded into the contact lens (paragraphs [0163], [0207], and [0248]). Shtukater also teaches tracking external geometry by building and maintaining a 3d model of reality in memory based on inputs from these sensors (paragraph [0182]-[0184] and [0214]). Regarding claims 7 and 16, it would have been obvious to track external geometry by building and maintaining a 3d mesh based on inputs from a forward facing image capturing device or a depth image capturing device as taught by Shtukater in the system and method disclosed by Park in order to advantageously match additional images to the 3D real world geometry of the user’s environment (Shtukater, paragraph [0214]).
Regarding claims 8 and 18, as well as the claims may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens system and method as discussed above with regard to claims 1 and 10, respectively. Park does not specifically disclose a focus determination device or determining or tracking focal point of an eye at any given point of time. However, in Shtukater’s related system, Shtukater further teaches determining or tracking focal point of an eye at any given point of time with a focus determination device 804 (paragraphs [0227]-[0239]). Regarding claims 8 and 18, it would have been obvious to a person of ordinary skill in the art to include a focus determination device to track a focal point of an eye as taught by Shtukater in the system and method disclosed by Park in order to advantageously collect information about what the user is looking at and display images accordingly (Shtukater, paragraphs [0224]-[0226])
Regarding claim 9, as well as the claim may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens system as discussed above with regard to claim 1. Park discloses a communication transceiver 539 for communication module and generally disclose that transceiver 539 can communication via Wifi or Bluetooth. (column 8, lines 23-30) but is silent with respect to an antenna for implementing these communication protocols. However, in Shtukater’s related system, Shtukater further discloses antenna 102 curled around at the periphery of the contact lens system, whereas antenna is configured to function as a communication transceiver for communication module or as an induction coil for the power supply module (paragraphs [0064] and [0112]). Regarding claim 9, it would have been obvious to a person of ordinary skill in the art to include an antenna as taught by Shtukater in the system disclosed by Park in order to effectively and predictably implement the communication protocols already disclosed by Park.
Regarding claim 17, as well as the claim may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens method as discussed above with regard to claim 10. Park does not specifically disclose determining and/or tracking orientation of the eye. However, in Shtukater’s related system, Shtukater further teaches tracking eye orientation with an orientation module 104 embedded into the contact lens device (paragraphs [0151]-[0156]). It would have been obvious to include determining and/or tracking orientation of the eye as taught by Shtukater in the method disclosed by Park in order to advantageously collect information about what the user is looking at and display images accordingly (Shtukater, paragraphs [0151]-[0156]).
Regarding claim 19, as well as the claim may be understood with respect to 35 U.S.C. 112(b), Park discloses a contact lens method as discussed above with regard to claim 10. Park discloses an embedded waveguide display (including waveguide 225; Figure 2), a processor module (i.e., control circuitry 409) and a communication module (i.e., transceiver 539) but does not specifically disclose that the processor module is configured to compute disposition of an image on display according to either 3D or 3D Frame of reference, overlay an image(s) onto the real world view in 3D mesh, and that the communication module further communicates the image and optionally its disposition of an image on display to the contact lens display and the embedded waveguide display projecting the image in the right position.
However, in Shtukater’s related system, Shtukater further teaches a processing module 103 that computes disposition of an image on display according to either 3D or 3D Frame of reference, overlay an image(s) onto the real world view in 3D mesh, and a communication module that further communicates the image and optionally its disposition of an image on display to the contact lens display and the display projecting the image in the right position (paragraphs [0013] and [0118]-[0121]). Regarding claim 19, it would have been obvious to compute disposition of an image and project the image in the right position as taught by Shtukater in the method disclosed by Park in order to advantageously match additional images to the 3D real world geometry of the user’s environment (Shtukater, paragraph [0214])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina Leung at telephone number (571) 272-3023. If attempts to reach the examiner are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at (571) 272-6660.
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/CHRISTINA Y. LEUNG/Primary Examiner, Art Unit 3991