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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/09/2026 has been entered.
Response to Amendment
The amendments to the claims, in the submission dated 02/09/2026, are acknowledged and accepted. Claims 9, 10, 14, and 16 are amended. Claims 47-49 are added without the addition of new matter. Claims 1-6, 9-10, 14, 16, 29-33, 37-38, 40-42, and 44-49 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10, 14, and 16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Per MPEP 608.01(n)(III), in accordance with 35 U.S.C. 112(d), or pre-AIA 35 U.S.C. 112, fourth paragraph, a claim in dependent form shall contain:
(i) a reference to a claim previously set forth, and
(ii) then specify a further limitation of the subject matter claimed.
A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Following the statute, the test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends and specify a further limitation of the subject matter claimed. In this case, claim 10 depends on new claim 47, and claims 14 and 16 depend on new claim 48, and therefore claims 10, 14, and 16 do not further limit claims previously set forth.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
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 1-3, 5, 9, 30, 32, 38, 42, 44-45, and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Nisper et al. US PGPub 2016/0004102 A1 (of record, see Office action dated 11/07/2025, hereinafter, “Nisper”) in view of Batchko et al. US PGPub 2007/0030573 A1 (of record, see IDS dated 04/22/2024, hereinafter, “Batchko”).
Regarding independent claim 1, Nisper discloses an adjustable fluid-filled lens or mirror assembly (see Fig. 1 depicting eyeglasses 90 and refer to title and abstract as well as at least par. [0001] disclosing the invention is directed to an adjustable, fluid-filled lens) comprising a fluid-filled envelope and a supporting structure therefor (Figs. 3, 5a, 5b, 6a, and 6b, dish-shaped part 12, membrane 8, rear supporting ring 10 and diaphragm 24 define a sealed interior cavity 22 that is filled with a transparent fluid, par. [0050], equivalent to a fluid-filled envelope and a supporting structure therefor);
the fluid-filled envelope being constituted by a first wall which is formed of a distensible elastic membrane having an exterior optical surface of variable curvature (Figs. 3, 5a, 5b, 6a, and 6b, an increase in fluid pressure in cavity 22 causes membrane 8 to distend into a convex shape, par. [0052], equivalent to an exterior optical surface of variable curvature), a second wall which is spaced from the first wall in a direction parallel to an optical axis of the adjustable fluid-filled lens or mirror assembly (Figs. 3, 5a, 5b, 6a, and 6b, dish-shaped part 12 is equivalent to a second wall spaced apart from membrane 8 along the front-rear axis, which is the z-axis as shown in Fig. 3, par. [0037] and is also the optical axis direction for eyeglasses 90), and a collapsible peripheral side wall which extends between the first and second walls, and being filled with a substantially incompressible fluid (Figs. 3, 5a, 5b, 6a, and 6b, cavity 22 is bounded by flexible side wall 18, and cavity 22 is filled with transparent oil 11, par. [0050]);
a membrane holding structure which is attached to a peripheral edge of the membrane for holding the membrane under tension (Fig. 3, membrane 8 is sandwiched between front ring 2 and rear ring 10 that form a supporting member for membrane 8, par. [0047], which must be under tension to function as intended); and
one or more selectively operable actuator assemblies for moving one or more corresponding regions of the peripheral edge of the membrane towards or away from the second wall in a direction parallel to the optical axis for controlling the profile of the peripheral edge of the membrane (Fig. 3, adjuster wheel 108 is rotated to adjust the focus of lens 1 during use, par. [0051], via gear train 107 to move cam plate 122, and cam follower 126 is fixedly attached to front ring 2, and this causes the front and rear rings 2 and 10 to move relative to the rear shell 6b, par. [0052]);
wherein the or each actuator assembly comprises a connecting member which is attached to the membrane or membrane holding structure at a respective actuation point (Fig. 3, cam plate 122 and cam follower 126 with adjuster 104 and adjuster wheel 108 adjust the focus of lens 1 during use, par. [0051]), a linear actuator which is mounted to the supporting structure and a linkage which is connected between the connecting member and an output point on the linear actuator (Fig. 3, cam plate 122 undergoes translational movement via gear train 107 and cam follower 126 is fixedly attached to front ring 2, and this causes the front and rear rings 2 and 10 to move relative to the rear shell 6b, par. [0052]);
wherein the linear actuator is a linear shape-memory alloy (SMA) actuator comprising an array of SMA wires which are coupled together to work in parallel (Nisper teaches the adjustment mechanism could be mechanically, electrically or magnetically operated and/or may involve use of a phase change material, e.g., a shape memory alloy, par. [0078]), and the linkage is configured for converting curvilinear motion of the output point of the SMA actuator in a direction transverse the optical axis to linear motion of the connecting member in a direction parallel to the optical axis, thereby to move the corresponding region of the peripheral edge of the membrane towards or away from the second wall (when adjuster wheel 108 is rotated, where rotation is an example of curvilinear motion, gear train 107 causes cam plate 122 to undergo translational movement and cam follower 126 is fixedly attached to the front ring 2 and causes front ring 2 and rear ring 10 to move relative to the rear shell 6b, equivalent to motion parallel to the optical axis, par. [0052]).
Nisper does not disclose the array of SMA wires extend circumferentially with respect to the edge of the membrane.
In the same field of invention, Batchko teaches a fluidic lens 150 (see Batchko Figs. 2G and 2H, par. [0129]) with constricting band 158 circumferentially arrayed around fluidic lens 150. Batchko teaches nitinol as an example of SMA wire and as an exemplary material for constricting band 158 (Batchko, par. [0127]), thus Batchko discloses SMA wire as actuator elements arrayed circumferentially with respect to the edge of the membrane (Batchko pars. [0127-129]).
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 apply the teachings of Batchko to the disclosure of Nisper and modify the adjustable fluid-filled lens of Nisper by modifying the actuators thereof with SMA wire actuators, such as those disclosed by Batchko and taught as an option by Nisper, to achieve efficient adjustment of the focal length with an actuator of small size and rapid response time (Batchko, par. [0122]).
Regarding dependent claim 2, Nisper in view of Batchko (hereinafter, “modified Nisper”) discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses wherein the linear SMA actuator is attached to the supporting structure to extend circumferentially around the fluid-filled envelope (Batchko Figs. 2G-2H depict actuators 158 arrayed circumferentially around membrane 146 of fluidic lens 140, par. [0129]).
Regarding dependent claim 3, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses wherein the SMA wire array (i.e., actuator band 158 of Batchko) is received within an elongate duct or housing that is fixedly secured to the supporting structure (as shown in at least Batchko Fig. 18B, the fluidic optical devices disclosed therein can include housings 1812 that fits around a corresponding lenslet 1802 in the lenslet array 1800, with actuators, such as actuator band 158, also disposed in the housings 1812, refer to Batchko par. [0161]).
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 have applied the teachings of Batchko to the disclosure of Nisper and ensured the SMA wires added to the spectacles of Nisper would be housed and fixedly secured to the supporting structure of the adjustable fluid-filled lens and supporting structure thereof, to ensure the device is securely held together (Batchko, par. [0152]).
Regarding dependent claim 5, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses wherein the linkage comprises a pivoting linkage that is secured to the supporting structure (Batchko, Figs. 14A-14B illustrate axial constriction of a fluid-filled compliant lens tube 1402 between rings 1404 and 1406, and Batchko teaches the arms may be linkages pivotally connected to the two rings, par. [0156]).
Regarding amended dependent claim 9, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Nisper further discloses wherein the membrane holding structure comprises comprising a bendable supporting ring (Nisper discloses the front surface of the transparent disk 24 is sealed to a membrane sub-assembly comprising a transparent, nonporous, elastic membrane 8 that is sandwiched between a pair of resiliently bendable membrane supporting rings comprising a front ring 2 and a rear ring 10, par. [0047]).
Regarding dependent claim 30, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in in claim 1, but the prior art combination does not disclose the assembly further comprising an electronic bus for addressing separate longitudinal sections of the SMA wire array.
However, Batchko teaches a variation of fluidic lens 130 in par. [0130], fluidic lens 160, that has electrodes to apply voltage to the actuator. Batchko also teaches a fluidic lens 700, depicted in Fig. 7, that has electrodes 726 that provide voltage to the membrane 706 to alter its shape.
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 have included an electronic bus taught by Batchko in the eyeglasses disclosed by Nisper, as an electronic bus to address separate sections of the SMA wires is necessary for the SMA actuator to function as intended.
Regarding dependent claim 32, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses wherein each SMA actuator comprises a plurality of electrical supply wires for directing current to longitudinally contiguous sections of the SMA wire array (in par. [0249], Batchko teaches the use of wires for focus and optical adjustment in fluidic device 6406).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have included a plurality of electrical supply wires such as those taught by Batchko in the eyeglasses disclosed by Nisper for directing current to sections of the SMA wire array to provide control over the range of focal powers of the fluidic lens (Batchko, par. [0156]).
Regarding dependent claim 38, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses wherein the distensible membrane that is held around its periphery by a bendable supporting ring, the assembly further comprising control electronics for controlling the operation of the one or more SMA actuators for displacing the supporting ring at the one or more actuation points according to a desired focusing power (Batchko teaches a fluidic optical device 6004, depicted in Fig. 60 thereof, connected to control circuitry 6012 for controlling the optical state of the fluidic device by controlling the SMA actuators, Batchko par. [0244]).
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 include the control circuitry of Batchko fluidic optical device 6004 into the adjustable fluid-filled lens of Nisper to provide control of the SMA actuators (Batchko par. [0244]).
Regarding dependent claim 42, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses the assembly further comprising one or more sensors for determining the actuation state of the lens or mirror assembly (Batchko teaches a fluidic optical device 6004, depicted in Fig. 60, connected to sensors 6010 for determining the optical state of the fluidic device, refer to Batchko par. [0244], which would also determine the actuation state of the device).
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 include the sensors of Batchko fluidic optical device 6004 into the adjustable fluid-filled lens of Nisper to provide feedback on the optical condition of the lens, (Batchko par. [0244]).
Regarding dependent claim 44, modified Nisper discloses an AR/VR headset comprising one or more lens assemblies as claimed in claim 1 (see rejection of claim 1 above, and Nisper discloses a micro-LCD projector 108, shown in Fig. 6a, that generates an image and projects the image onto optical element 100 via light beam 109, par. [0060], therefore Nisper discloses eyeglasses 90 that are equivalent to an AR/VR headset).
Regarding dependent claim 45, modified Nisper discloses an AR/VR headset as claimed in claim 44 and Nisper further discloses an AR/VR headset which comprises at least one pair of lens assemblies that are aligned on an optical axis with a transparent display interposed therebetween (Nisper, Fig. 6a, micro-LCD projector 108 is disposed at the rear of lens assembly 1 to project light beam 109 onto optical element 100, par. [0060], where optical element 100 is disposed within the sealed interior cavity 22, par. [0058], therefore optical element 100 is disposed between rear cover plate 16 and front cover plate 4 as shown in at least Fig. 3 of Nisper).
Regarding new dependent claim 49, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Nisper further discloses wherein the pressure of the fluid within the envelope is adjustable to cause the distensible membrane to distend outwardly or to retract inwardly (Nisper Figs. 3, 5a, 5b, 6a, and 6b, an increase in fluid pressure in cavity 22 causes membrane 8 to distend into a convex shape and Nisper teaches the volume of the cavity 22 can be selectively reduced or increased and therefore the fluid pressure is respectively increased or decreased, par. [0052], thus teaching the distension of the membrane outward or inward as needed or desired); the distensible membrane having an optical surface of variable focusing power as the shape of the membrane is changed (Nisper Figs. 3, 5a, 5b, 6a, and 6b, an increase in fluid pressure in cavity 22 causes membrane 8 to distend into a convex shape, par. [0052], equivalent to an exterior optical surface of variable curvature).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to independent claim 1 above, and further in view of Fuss US Patent 6,449,434 B1 (of record, see IDS dated 04/22/2024, hereinafter, “Fuss”).
Regarding dependent claim 4, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, but the prior art combination does not disclose wherein the linear SMA actuator comprises a first yoke member that is attached to the SMA wire array at one end thereof and anchored to the supporting structure, a second yoke member that is attached to the SMA wire array at another end thereof, a tension member that is attached to the second yoke member, and a return spring that is connected to the tension member and anchored to the supporting structure; wherein the linkage is connected to the tension member at the output point.
In the related field of lens displacement, Fuss teaches a mechanism for displacing a lens using SMA wire 80 that has opposite ends that are fixed in place 82 and 84 with a catch projection 88 to provide tension to the SMA wire, and a return spring 74 (see Fuss Figs. 1 and 2 and col. 4 lines 34-42).
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 have modified the adjustable fluid-filled lens disclosed by Nisper according to the teachings of Fuss, by using a first and second yoke member to secure the SMA wire taught by Fuss at either end of its length, and to use a projection attached to the second yoke to apply tension to the SMA wire, and to attach a return spring to provide a reliable method for returning the actuator to a rearward position (Fuss col. 4 lines 30-34).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to independent claim 1 above, and further in view of Elliot US PGPub 2017/0191470 A1 (of record, see IDS dated 04/22/2024, hereinafter, “Elliot”).
Regarding dependent claim 6, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, but the prior art combination does not disclose wherein the lens or mirror assembly comprises a plurality of actuator assemblies for controlling the position of multiple regions of the peripheral edge of the membrane relative to the second wall.
In the related field of shape memory actuators, Elliot teaches multiple shape memory actuators 902 (see Figs. 9A-9D thereof) may be connected to form a multi-structured actuator (Elliot par. [0063]).
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 have included in the SMA actuators as many individual SMA wires as necessary in the eyeglasses disclosed by Nisper and modified to include SMA wires as taught by Batchko for controlling the range of motion of the actuator (Elliot, par. [0056]).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to claim 1 above, and further in view of Holland et al. US PGPub 2016/0223837 A1 (of record as US Patent 9,671,621, see IDS dated 04/22/2024, hereinafter, “Holland”).
Regarding dependent claim 29, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Nisper further discloses wherein the optical surface of the membrane has a spherical, spherocylindrical or other shape of variable curvature (Nisper teaches membrane 8 distends into a convex shape, par. [0052], where a convex surface is a section of a spherical surface).
The prior art combination does not teach the optical surface of the membrane 8 is defined by one or more Zernike polynomials selected from
Z
k
±
j
, wherein k is 2, 3 or 4 and j is 0 or an integer that is less than k.
In the same field of invention, Holland discloses a deformable membrane assembly comprising a deformable membrane in contact with a body of fluid and a selectively operable adjuster for adjusting the pressure of the fluid for causing distension of the membrane in accordance with a predefined form (par. [0013] thereof), where the deformable membrane assembly may comprise a lens or mirror assembly in which the membrane is desired to deform in accordance with one or more Zernike polynomials (Holland, par. [0031]).
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 have applied the teachings of Holland to the disclosure of Nisper so that membrane 8 of Nisper would suitably conform to a predominant spherical bending mode superposed by one or more selected second, third or fourth order Zernike polynomials to introduce one or more deviations from sphericity selected from astigmatism, coma and trefoil to afford the usual range of lens shapes required by an optometrist (Holland, par. [0031]).
It is noted by the Examiner that Zernike polynomials are mathematical functions of circular wavefront profiles to describe aberrations in an optical device, and as such the recitation of Zernike polynomials to define the optical surface of a deformable membrane does not distinguish the instant invention from the prior art, since Zernike polynomials are commonly used in modeling optical devices and the recitation of Zernike polynomials does not distinguish the structure of the claimed device relative to the prior art.
Claims 31 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to claim 1 above, and further in view of Hirokubo et al. US PGPub 2015/0092275 A1 (of record, see IDS dated 04/22/2024, hereinafter, “Hirokubo”).
Regarding dependent claim 31, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 30, but the prior art combination does not disclose wherein the electronic bus is configured to supply a pulse-width-modulated voltage to the individual longitudinal sections of the array. However, Batchko does teach that a person having ordinary skill in the art would know that the appropriate adjustment of the voltage applied to the electrodes can control the focal properties of the fluidic lens (refer to at least Batchko par. [0141]).
In the related field of actuator systems for optical modules, Hirokubo teaches the use of voltage-controlled pulse width modulators to control the actuators of an optical device (see par. [0037-38] and [0152] thereof).
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 have modified the fluid-filled lens assembly disclosed by Nisper to include the pulse width modulators of Hirokubo to provide high resolution control of the SMA actuators in the Nisper and Batchko combination (Hirokubo pars. [0007-0008]).
Regarding dependent claim 37, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, and Batchko further discloses the assembly further comprising a control circuit (Batchko Fig. 60 depicts control circuitry 6012 for fluidic optical device 6004, Fig. 60).
The prior art combination does not explicitly disclose the control circuit is configured to supply pulse modulated voltage to the or each SMA actuator, nor does the prior art combination teach or disclose wherein the frequency of the pulses is variable for adjusting the length of the SMA wires.
However, Batchko does teach that a person having ordinary skill in the art would know that the appropriate adjustment of the voltage applied to the electrodes can control the focal properties of the fluidic lens (refer to at least Batchko par. [0141]), and that precise control over the SMA wires by control signals provide control over the range of focal powers of the fluidic lens (Batchko, par. [0156]).
In the related field of actuator systems for optical modules, Hirokubo teaches the use of voltage-controlled pulse width modulators to control the actuators of an optical device (refer to at least Hirokubo pars. [0037-38] and [0152]). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the fluid-filled lens assembly of Nisper to include the pulse width modulators of Hirokubo to provide high resolution control of the SMA actuators as taught by Batchko (Hirokubo pars. [0007-0008]).
Claims 33, 47, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to claim 1 above, and further in view of Shen US PGPub 2017/0315365 A1 (of record, see Office action dated 04/22/2025, hereinafter, “Shen”).
Regarding dependent claim 33, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 32, but the prior art combination does not disclose wherein the electrical supply wires are arranged in a ribbon cable.
In the same field of invention, Shen discloses virtual reality goggles in the form of head mounted display system 300, with ribbon cables 340 and 342 to connect electronic components to display system 300 (refer to at least title and abstract, as well as par. [0039], and see at Figs. 1 and 3A thereof).
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 have applied the teachings of Shen to the disclosure of Nisper and used ribbon cables such as ribbon cables 340 and 342 taught by Shen to connect electrical units and convey signals to and from the eyeglasses of Nisper (Shen, par. [0039]).
Regarding new dependent claim 47, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, wherein the second wall is provided by a surface that is spaced from the first wall (Figs. 3, 5a, 5b, 6a, and 6b, dish-shaped part 12 is equivalent to a second wall spaced apart from membrane 8 along the front-rear axis, which is the z-axis as shown in Fig. 3, par. [0037], and is also the optical axis direction for eyeglasses 90) or a layer of material that is supported on the surface of the hard member; and
the or each actuator comprises an actuator assembly that incorporates an SMA wire array (Nisper teaches the adjustment mechanism could be mechanically, electrically or magnetically operated and/or may involve use of a phase change material, e.g., a shape memory alloy, par. [0078]).
Nisper does not specifically disclose the second wall is provided by a surface of a hard member (Nisper discloses the dish-shaped part 12 is made of polyethylene terephthalate and is about 6 mm thick, par. [0044]), nor does Nisper specifically disclose the or each actuator comprises a ribbon actuator assembly which is arranged circumferentially around at least part of the periphery of the hard member.
However, Nisper discloses other suitable materials for the dish-shaped part 12 may be used and the thickness adjusted accordingly (par. [0044]). 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 have applied the teachings of Nisper to the disclosure of Nisper and selected a material with an appropriate thickness to render the dish-shaped part 12 as a hard member or equivalent, because Nisper teaches the option and feasibility of such a modification (Nisper, par. [0044]).
In the same field of invention, Shen discloses virtual reality goggles in the form of head mounted display system 300, with ribbon cables 340 and 342 to connect electronic components to display system 300 (refer to at least title and abstract, as well as par. [0039], and see at Figs. 1 and 3A thereof).
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 have applied the teachings of Shen to the disclosure of Nisper and used ribbon cables such as ribbon cables 340 and 342 taught by Shen to connect electrical units and convey signals to and from the eyeglasses of Nisper (Shen, par. [0039]).
The prior art combination of Nisper in view of Shen does not disclose a ribbon actuator assembly which is arranged circumferentially around at least part of the periphery of the hard member.
In the same field of invention, Batchko teaches a fluidic lens 150 (see Batchko Figs. 2G and 2H, par. [0129]) with constricting band 158 circumferentially arrayed around fluidic lens 150. Batchko teaches nitinol as an example of SMA wire and as an exemplary material for constricting band 158 (Batchko, par. [0127]), thus Batchko discloses SMA wire as actuator elements arrayed circumferentially with respect to the edge of the membrane (Batchko pars. [0127-129]).
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 apply the teachings of Batchko to the disclosure of Nisper and modify the adjustable fluid-filled lens of Nisper by modifying the actuators thereof with SMA wire actuators, such as those disclosed by Batchko and taught as an option by Nisper, to achieve efficient adjustment of the focal length with an actuator of small size and rapid response time (Batchko, par. [0122]).
Claims 48, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko and Shen as applied to claim 47 above, and further in view of Fuss.
Regarding new dependent claim 48, Nisper in view of Batchko and Shen discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 47, wherein the SMA wire array (i.e., actuator band 158 of Batchko) comprises SMA wires (Nisper teaches the adjustment mechanism could be mechanically, electrically or magnetically operated and/or may involve use of a phase change material, e.g., a shape memory alloy, par. [0078]); and
the membrane holding structure (i.e., Nisper Fig. 3, membrane 8 is sandwiched between front ring 2 and rear ring 10 that form a supporting member for membrane 8, par. [0047]) through a linkage such that power developed by the SMA wire array is transmitted to the membrane holding structure at the actuation point for displacing the membrane holding structure in the region of the actuation point towards the second wall in a direction parallel to the optical axis (Nisper Fig. 3, cam plate 122 and cam follower 126 with adjuster 104 and adjuster wheel 108 adjust the focus of lens 1 during use, par. [0051], by distention of membrane 8 towards or away from the dish-shaped part 12 to adjust the focal power of the lens, par. [0052]).
The prior art combination of Nisper in view of Batchko and Shen does not specifically disclose a plurality of individual SMA wires which are held at each end by a yoke that is attached to the hard member or one or more parts connected thereto or to a housing for the lens assembly.
In the related field of lens displacement, Fuss teaches a mechanism for displacing a lens using SMA wire 80 that has opposite ends that are fixed in place 82 and 84 with a catch projection 88 to provide tension to the SMA wire, and a return spring 74 (see Fuss Figs. 1 and 2 and col. 4 lines 34-42).
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 have modified the adjustable fluid-filled lens disclosed by Nisper according to the teachings of Fuss, by using a first and second yoke member to secure the SMA wire taught by Fuss at either end of its length, and to use a projection attached to the second yoke to apply tension to the SMA wire, and to attach a return spring to provide a reliable method for returning the actuator to a rearward position (Fuss col. 4 lines 30-34).
Regarding amended dependent claim 10, the prior art combination of Nisper in view of Batchko and Shen discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 47, and Batchko further discloses wherein the SMA wires extend circumferentially around at least part of the periphery of the hard member (Batchko teaches a fluidic lens 150, see Figs. 2G and 2H and refer to par. [0129] thereof, with constricting band 158 circumferentially arrayed around fluidic lens 150, equivalent to SMA wires extending circumferentially around at least part of the periphery of the hard member).
Regarding amended dependent claim 14, Nisper in view of Batchko, Shen, and Fuss discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 48, and Fuss further discloses wherein the linkage comprises a pivoting linkage and a tension member, and wherein the pivoting linkage is pivoted to the hard member or a part connected thereto or to a housing for the lens or mirror assembly (the pivoting linkage equivalent of the Nisper, Batchko, Shen, and Fuss combination is ring spring 26 as taught by Fuss, see Fuss Figs. 1 and 2 and is connected to catch projection 88 that provides tension to the SMA wire, Fuss col. 4 lines 39-40, satisfying the limitation as recited).
Regarding amended dependent claim 16, Nisper in view of Batchko, Shen, and Fuss discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 48, and Fuss further discloses wherein the yoke at one end is attached to the hard member or part connected thereto through a return spring for returning the SMA wire array to its extended state (see Fuss Figs. 1 and 3, return spring 74 acts to return actuator to a default state, col. 4 lines 60-64, and Fuss teaches SMA wire 80 that has opposite ends that are fixed in place 82 and 84 with a catch projection 88 to provide tension to the SMA wire, and a return spring 74, see Fuss Figs. 1 and 2 and col. 4 lines 34-42, thus teaching the yoke is attached at one end)..
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable Nisper in view of Batchko as applied to claim 1 above, and further in view of Yamasaki US PGPub 2005/0231599 A1 (of record, see Office action dated 04/22/2025, hereinafter, “Yamasaki”).
Regarding amended dependent claim 40, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 38, but the prior art combination does not disclose wherein the control electronics are operable to set the focusing power automatically (Batchko discloses a fluidic lens optical system, shown in at least Fig. 33 thereof, as an autofocus element, refer to Batchko, par. [0225], but does not provide further details).
In the related field of generating, processing, transmitting or transiently displaying images, Yamasaki discloses head mounted unit 2 with image capturing unit 30 that has autofocus processing circuit 98 for performing auto-focus control of image capturing unit 30 (see Fig. 2 of Yamasaki, and refer to at least par. [0177]).
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 have applied the teachings of Yamasaki to the disclosure of Nisper and included an autofocus processing circuit, such as AF processing circuit 98 taught by Yamasaki, to control the focus of eyeglasses 90 of Nisper automatically with control electronics (Yamasaki, par. [0189]).
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to claim 1 above, and further in view of Blum et al. US Patent 6,517,203 B1 (of record, see IDS dated 04/22/2024, hereinafter, “Blum”).
Regarding dependent claim 41, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 1, but the prior art combination does not disclose the assembly further comprising an eye-tracking device to determine the point of gaze or vergence of a user and adjust the focusing power of the lens or mirror assembly accordingly.
In the related field of electro-active optics, Blum teaches electro-active eyewear to correct vision, see at least Fig. 14, incorporating tracking signal sources 1430 and tracking signal receivers 1440 to precisely locate the eye movements of the wearer to correct refractive errors in the wearer’s line-of-sight (refer to at least Blum col. 14 lines 19-41). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the eyeglasses disclosed by Nisper with the eye-tracking signal sources and signal receivers as disclosed by Blum, to adjust the focusing power of the adjustable fluid-filled lens to an optimum optical state (Blum, col. 14, lines 24-41).
It is noted that the above limitations are directed towards a component that is external to the adjustable fluid-filled lens or mirror assembly, and are therefore treated as optional and as not part of the device. The above limitations are also of intended use in a specific application of an eyewear system or HUD/HMD system. To this point, it is held that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.) See MPEP § 2114.
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Nisper in view of Batchko as applied to claim 1 above, and further in view of Noda et al. US PGPub 2009/0034094 A1 (of record, see Office action dated 04/22/2025, hereinafter, “Noda”).
Regarding dependent claim 46, modified Nisper discloses the adjustable fluid-filled lens or mirror assembly as claimed in claim 3, but the prior art combination does not disclose wherein each of the SMA wires of the SMA wire array are individually controlled.
In the related field of driving mechanisms, Noda discloses a lens driving device with SMA actuators that are individually controlled (Noda, par. [0063]). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have applied the teachings of Noda to the disclosure of Nisper and made each of the SMA actuators individually controlled to reliably control the orientation and displacement of the membrane 8 of the eyeglasses of Nisper (Noda, par. [0063]).
Response to Arguments
Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
With respect to Applicant’s arguments regarding the Advisory Action of 01/16/2026, the amendments to claims 42 and 45 were not minor changes, and the amendments were not specifically suggested by the Examiner. In the amended claims submitted 08/22/2025, claim 45 was orphaned due to its dependency on canceled claim 43, which left the limitations of claim 45 completely indefinite, and claim 42 depended on “any preceding claim”, which rendered the claim as not being understandable per MPEP 608.01(n), as well as the amendments to claim 1 which changed the spacing direction of the first and second walls of the fluid-filled lens, all of which contributed to the requirement for a new search and application of new prior art in the Final Office Action dated November 7, 2025. Applicant argues that the earlier amendments filed on 22 August 2025 merely clarified terminology, and did not alter the scope of the claim e.g., claim 1 was amended to recite "a second wall which is spaced from the first wall on a z axis in a direction parallel to an optical axis of the lens or mirror assembly", and "shape memory alloy (SMA) ". These amendments did not broaden the claim. Examiner respectfully disagrees.
In the Office action of 04/22/2025, claim 1 was rejected under 35 U.S.C. §112 for being indefinite because the full scope of the limitations of claim 1 had not been properly presented because the claim lacked a full stop. Furthermore, the limitation “…spaced from the first wall on a z-axis…” was indefinite because any one of the three spatial dimensions could be labeled or defined as the z-axis, and thus the amendment to specify the direction of the spacing between first and second walls as along an optical axis changed the scope of the claims.
Applicant has argued that Nisper fails to disclose a linear actuator comprising an array of SMA wires which are coupled together to work in parallel and which extend circumferentially with respect to the edge of the membrane and a linkage configured for converting curvilinear motion of an output point of the SMA actuator in a direction transverse the optical axis to linear motion of a connecting member in a direction parallel to the optical axis, thereby to move the corresponding region of the peripheral edge of the membrane towards or away from the second wall. Applicant further argues that the constricting band 158 taught by secondary reference Batchko operates by shortening its circumference as it contracts, thereby tightening uniformly around the membrane 156 and applying radial pressure around the entire periphery of the lens, as opposed to at distinct actuation points, thus Applicant concludes that it is unclear and unobvious how the constricting band of Batchko might be integrated into the lens assembly of Nisper in place of the cam plate mechanism to drive the tabs 120 on the supporting rings 2, 10 and thus shift the supporting rings relative to the housing. Applicant has further argued that Batchko fails to disclose, hint or suggest an actuator assembly comprising an array of parallel SMA wires extending transversely to the z-axis, and a linkage configured for converting linear motion of the SMA actuator in a direction transverse the z-axis to linear motion on the z-axis of a connecting member attached to the to the membrane or membrane holding structure at a respective actuation point, thereby to move a corresponding region of the peripheral edge of the membrane to adjust the optical power of the lens assembly and control the shape of the optical surface, as required by claim 1. Examiner respectfully disagrees.
Applicant’s arguments of the unworkability of the combination, due to the different operation of Batchko constricting band 158, appear to be based on a literal application of the actual structure of Batchko fluidic lens 100 to the actual structure of Nisper eyeglasses 90. However, that is not the proper standard for the analysis required under 35 USC 103(a). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Keller at 881, goes on to revisit the long history of the U.S. Court of Customs and Patent Appeals (CCPA) regarding the nature of suggestion established by the combined teachings of the references rather than the actual results of a physical, bodily incorporation:
To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other. In re Griver, 53 CCPA 815, 354, F.2d 377, 148 USPQ 197 (1966); In re Billingsley, 47 CCPA 1108, 279 F.2d 689, 126 USPQ 370 (1960). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Wood, 599 F.2d 1032, 202 USPQ 171 (CCPA 1979); In re Passal, 57 CCPA 1151, 426 F.2d 828, 165 USPQ 720 (1970); In re Richman, 57 CCPA 1060, 424 F.2d 1388, 165 USPQ 509 (1970); In re Rosselet, 52 CCPA 1533, 347 F.2d 847, 146 USPQ 183 (1965).
The structure taught in the combined teachings of the references, as set forth above, is a fluid-filled adjustable focus lens. Because the structure of the combined system is the same as that claimed, it must inherently perform the same function of adjusting focal power by the deformation, distention, or displacement of the membrane that functions as an optical surface of the lens system. See MPEP § 2112.01.
With respect to claims 4, 9-10, 14, and 16, Applicant argues that secondary reference Fuss is not in the same technical field because it fails to disclose fluid-filled lenses or similar optical elements, and Applicants notes that Fuss is concerned with a solid mechanical lens movement system with a shape-memory alloy wire is used to actuate cams and springs for moving a conventional glass/plastic lens between preset focus positions. Examiner respectfully disagrees.
Fuss is classified in G03B 13/00, where technology related to viewfinders and focusing aids for cameras such as autofocus systems are classed. Per MPEP 904.01(c), “not only must the art be searched within which the invention claimed is classifiable, but also all analogous arts must be searched regardless of where the claimed invention is classified.” Thus it is required to search related and analogous art, such as cameras, for lens related prior art disclosures. Furthermore, Applicant acknowledges that Fuss discloses shape-memory alloy wire as actuators for a lens system; the fact that Fuss does not disclose fluid-filled lenses is not required for the art to be considered analogous and relevant to the instant application.
With respect to claim 6, Applicant has argued that the skilled person would not be concerned with secondary reference Elliot for improving an adjustable fluid filled lens as disclosed in Nisper and/or Batchko and would not be motivated to combine the teachings in those references, because Elliot is not concerned with fluid-filled lenses or similar optical elements. Examiner respectfully disagrees.
Applicant has acknowledged that Elliot discloses an array-based actuator platform using SMA material structured into a body for improved control in applications like variable fluid channels, element rotation, or forming complex deformable structures, all controllable through a custom matrix-driven electrical interface. Elliot is cited to teach multiple shape memory actuators connected to form a multi-structured actuator, and is not cited to teach fluid-filled lenses or similar optical elements.
With respect to claim 29, Applicant argues that Holland does not cure the deficiencies of Nisper and Batchko because Holland does not disclose or suggest a fluid-filled lens or mirror assembly comprising a linear SMA actuator. Examiner respectfully disagrees.
Holland discloses a deformable membrane 70 in contact with a body of fluid 90 with a mechanism to adjust the pressure of fluid 90 to distend membrane 70 as described in the abstract of Holland at least. Holland is not cited to teach or suggest SMA actuators, but instead is cited for teaching a deformable membrane assembly may comprise a lens or mirror assembly in which the membrane is desired to deform in accordance with one or more Zernike polynomials (Holland, par. [0031]).
With respect to claims 31 and 37, Applicant argues that secondary reference Hirokubo fails to disclose or mention SMA actuators, fluid lenses, and/or deformable membranes, thus the skilled person would not therefore be concerned with Hirokubo for improving an adjustable fluid filled lens as disclosed in Nisper and/or Batchko and would not be motivated to combine the teaching in those references. Examiner respectfully disagrees. Hirokubo is cited for teaching the use of voltage-controlled pulse width modulators to control the actuators of an optical device (see par. [0037-38] and [0152] thereof), not for any fluid-filled lens or similar optical structure lacking in Nisper and/or Batchko.
With respect to claim 33, Applicant has argued that secondary reference Shen is not concerned with a fluid-filled lens or mirror assembly comprising a linear SMA actuator and that therefore Shen is not in the same technical field as the present claimed invention, and the skilled person would not, therefore, look to Shen for improving an adjustable fluid filled lens as disclosed in Nisper and/or Batchko. Examiner respectfully disagrees.
Shen is cited to teach ribbon cables for eyewear, such as head mounted display system 300, to connect electronic components to display system 300 and thus teach the use of ribbon cables to connect electrical units and convey signals to and from the eyeglasses, and is not cited to teach adjustable fluid filled lenses.
With respect to claim 40, Applicant has argued Yamasaki does not disclose any form of automatic focusing or autofocus mechanism and is not concerned with fluid-filled lens or mirror assemblies and does not disclose such an assembly comprising a linear SMA actuator, and thus, the skilled person would not therefore be concerned with Yamasaki for improving an adjustable fluid filled lens as disclosed in Nisper and/or Batchko and would not be motivated to combine the teaching in those references. Examiner respectfully disagrees.
Yamasaki is cited to teach control electronics to set the focusing power automatically, and is not cited to teach fluid-filled lenses.
With respect to claim 41, Applicant argues that secondary reference Blum is not concerned with fluid filled lens or mirror assemblies comprising a distensible membrane and a linear SMA actuator and therefore even if the skilled person were to consider the combination of teaching of Nisper, Batchko and Blum, there is nothing disclosed, hinted or suggested that would render claim 41 obvious. Examiner respectfully disagrees.
Blum is cited to teach electro-active eyewear with eye tracking to precisely locate the eye movements of the wearer to correct refractive errors in the wearer’s line-of-sight and is not cited to teach fluid-filled lenses.
With respect to claim 46, Applicant argues that if the skilled person were to start from Nisper, in view of Batchko, there is no reason why the skilled person would look to Noda because it is not concerned with a fluid filled lens or mirror assembly or a device for use in a fluid filled lens or mirror assembly. Examiner respectfully disagrees.
Noda is cited to teach a lens driving device with SMA actuators that are individually controlled (Noda, par. [0063]), and is not cited to teach fluid-filled lenses.
No other substantial arguments were presented after page 18 of Remarks. Therefore, the prior art teaches the invention as currently claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin W Hustoft whose telephone number is (571)272-4519. The examiner can normally be reached Monday - Friday 8:30 AM - 5:30 PM Eastern Time.
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, Thomas Pham can be reached at (571)272-3689. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN W. HUSTOFT/ Examiner, Art Unit 2872
/THOMAS K PHAM/ Supervisory Patent Examiner, Art Unit 2872