DETAILED ACTION
Information Disclosure Statement
The information disclosure statement(s) filed on 11/08/2024 is/are in compliance with the provisions of 37 CFR 1.97 and is/are being considered by the Examiner.
Priority
Acknowledgment is made of applicant’s claim for priority for U.S. National Stage under 35 U.S.C. 371 filed on 06/10/2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55(f)(2).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 12 limitations “means for determining…means for comparing…and means for obtaining.…” have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This is interpreted to correspond to a circuit (¶0074 of PG-PUB of originally-filed specification). For purposes of prosecution, the Examiner will consider known equivalents.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea in the form of mathematical calculations combined with mental processes, without significantly more. Claims 1-15 recite(s) a method and a system, respectively, of obtaining an optical prescription, wherein the method encompasses determining a parameter, organizing and manipulating information through mathematical correlations. Specifically, the obtained optical prescription data based on “the comparison of the determined values of the fatigue parameter” amounts to an extra-solution activity of mere data-gathering to provide an input for the for the subsequent mathematical calculations. See In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). Furthermore, such a generally recited data collection could easily be performed by the human mind, in addition to the mathematical calculations, which could be performed mentally or with pen and paper. See Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). See also MPEP § 2106.04(a)(2).1IL.B: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”; see also Synopsys, 839 F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Thus, the instant claims are directed to an ineligible abstract idea.
The Court has repeatedly determined in similar cases that such mathematical correlations are a judicial exception to patent eligibility and directed to an abstract idea. See Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). In the present case, the judicial exception is not integrated into a practical application because the claims provide no actual or practical applications, and recite the abstract idea of the mental processes of calculating progression profile values of a lens, without reciting any additional details. Furthermore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because those additional elements that do appear merely list the steps of the abstract idea. Specifically, the step of “determining a fatigue parameter associated with a visual fatigue level of a subject carrying out a visual task involving any kind of visual content…comparing the determined values of the fatigue parameter” amounts to obtaining data, organizing and manipulating information through mathematical correlations, all of which can be performed mentally or by hand. Additionally, the claim directed to “A non-transitory computer-readable storage medium, storing a computer program that when executed by a computer causes the computer to execute the method” amounts to nothing more than an instruction to apply the abstract idea using a generic computer and does not render the abstract idea patent-eligible. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). Similarly, the method further comprising “performing at least one objective measurement relating to the subject…performing at least one subjective measurement relating to the subject” also does not add a meaningful limitation to the process of mere data gathering followed by organizing and manipulating information through mathematical calculations, as recited and encompassed by the claims. Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 2-11 and 13-15 are rejected as being dependent upon Claims 1 and 12, respectively, and fail to cure the deficiencies of the rejected base claim, as the claims do not add any additional elements beyond method steps drawn to the abstract idea. As such, Claims 1-15 do not raise the abstract idea to the level of patentable subject matter.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6 and 10-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kanter (US 2022/0189010 A1; as cited in IDS filed 11/08/2024).
Regarding Claim 1, Kanter discloses: A method for obtaining an optical prescription (¶0027: there is provided a method for providing a frame recommendation), the method comprising:
determining a value of a fatigue parameter for at least two intermediate optical prescriptions among a plurality of intermediate optical prescriptions (¶0065, 0040: The data of detecting the consumer in a scene is received and analyzed in 330 in order to determine an event being indicative of a behavioral compensation for vision impairment [fatigue] (e.g. at least one parameter that aids in prescribing eyewear), where the events include squinting, chin lifting, increase or decrease of viewing distance between the consumer and an object being observed, or changing the position of the eyeglasses on the consumer's face [fatigue parameters]), wherein each determined value of the fatigue parameter is associated with a respective one of the plurality of intermediate optical prescriptions (¶0041: if a squinting detected, the notification data relating to the vision impairment comprises a different prescription to what the consumer is wearing; ¶0044: If a consumer adjusts the distance between his eyes and an item to view at greater distances, the notification data comprises recommendations for a new prescription or progressive addition lenses (PAL), and/or recommendations for a higher additional power (ADD portion)), the fatigue parameter associated with a visual fatigue level of a subject carrying out a visual task involving any kind of visual content (¶0039: processing unit 102 is configured to identify a consumer, identify in the image visual behavior (difficulties) or wrong eyewear usage behavior of the detected consumer (if the consumer is wearing eyewear), and send an alert to alert the consumer to renew their prescription), comparing the determined values of the fatigue parameter (¶0057, 0040: the preselected data stored in a database may be used to compare at least one image of the sensing data with images being indicative of a plurality of behavioral compensation for low visual acuity stored in the database. Processing unit 102 may run a series of different algorithms to identify different events simultaneously relating for example to the position and orientation of the head); and obtaining the optical prescription, based on the comparison of the determined values of the fatigue parameter (¶0043, 0048: processing unit 102 may process the received data to identify an event being related to an abnormal distance between the item and the consumer's face. If a consumer adjusts the distance between his eyes and an item to very small distances in order to see small figures, the notification data comprises recommendations for a new prescription…processing unit 102 may process the received data to compare the differences in light intensity between the two eyes to identify amblyopia or anisometropia).
Regarding Claim 2, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: determining the plurality of intermediate optical prescriptions, each intermediate optical prescription being different to another intermediate optical prescription among the plurality of intermediate optical prescriptions (¶0041-53, 0075: processing unit 102 additionally processes the received event data to detect strabismus, amblyopia, nystagmus, where the notification data from processing the different events comprises new prescription which may comprise recommendations for more additions…for example, if a high prescription is detected in an event (i.e. hyperope or myope), a recommendation for a high-index lens can be made).
Regarding Claim 3, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: further comprising receiving the plurality of intermediate optical prescriptions, each intermediate optical prescription being different to another intermediate optical prescription among the plurality of intermediate optical prescriptions (¶0041-53: processing unit 102 additionally processes the received data to detect strabismus, amblyopia, nystagmus…the notification data from processing the different events comprises new prescription which may comprise recommendations for more additions).
Regarding Claim 5, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: wherein each of the plurality of intermediate optical prescriptions comprises a value of a dioptric optical parameter, the dioptric optical parameter associated with a visual acuity condition of the subject (¶0044, 0060: recommendations for a new prescription comprises recommendations for a higher additional power (ADD portion) if the consumer is a progressive/bi-focal wearer…after the eye examination, the Rx parameters (e.g. Sph, Cyl, Axis, Add Power) or Visual Acuity (VA) can be stored and related to the detected event).
Regarding Claim 6, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: wherein each of the plurality of intermediate optical prescriptions comprises a set of optical parameters, the set of optical parameters comprising a plurality of dioptric optical parameters and a corresponding value associated with a respective one of the plurality of dioptric optical parameters, wherein the plurality of dioptric parameters are associated with a visual acuity condition of the subject (¶0044, 0060: recommendations for a new prescription comprises recommendations for a higher additional power (ADD portion) if the consumer is a progressive/bi-focal wearer…after the eye examination, the Rx parameters (e.g. Sph, Cyl, Axis, Add Power) or Visual Acuity (VA) can be stored and related to the detected event).
Regarding Claim 10, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: further comprising determining a baseline value of the fatigue parameter, the baseline value associated with a baseline visual fatigue level of the subject carrying out the visual task involving any kind of visual content, wherein the baseline value of the fatigue parameter is determined before determining the plurality of intermediate optical prescriptions (¶0043, 0057-59: measured distance may then be compared to a reference data (e.g. default value) containing a distance threshold [baseline threshold] defining abnormality…preselected data stored in a database may be used to compare at least one image of the sensing data with images being indicative of a plurality of behavioral compensation for low visual acuity stored in the database, the identified event is stored as a reference data to be correlated with future measured data).
Regarding Claim 11, Kanter discloses the method according to Claim 10, as above. Kanter further discloses: further comprising calculating a difference between the determined value of the fatigue parameter associated with the respective one of the plurality of intermediate optical prescription, and the baseline value of the fatigue parameter (¶0043, 0057-59: measured distance may then be compared to a reference data (e.g. default value) containing a distance threshold defining abnormality…preselected data stored in a database may be used to compare at least one image of the sensing data with images being indicative of a plurality of behavioral compensation for low visual acuity stored in the database, the identified event is stored as a reference data to be correlated with future measured data).
Regarding Claim 12, Kanter discloses: A system for obtaining an optical prescription, the system comprising: means for determining a value of a fatigue parameter for at least two intermediate optical prescriptions among a plurality of intermediate optical prescriptions, the fatigue parameter associated with a visual fatigue level of a subject carrying out a visual task involving any kind of visual content, wherein each determined value of the fatigue parameter is associated with a respective one of the plurality of intermediate optical prescriptions; means for comparing the determined values of the fatigue parameter; and means for obtaining the optical prescription, based on the comparison of the determined values of the fatigue parameter (see rejection of claim 1 supra).
Regarding Claim 13, Kanter discloses the system according to Claim 12, as above. Kanter further discloses: wherein at least one of the means for determining the value of the fatigue parameter for the at least two intermediate optical prescriptions among the plurality of intermediate optical prescriptions, the means for comparing the determined values of the fatigue parameter, the means for obtaining the optical prescription, comprises a circuit (¶0043, 0048: processing unit 102 [circuit] may process the received data to identify an event being related to an abnormal distance between the item and the consumer's face. If a consumer adjusts the distance between his eyes and an item to very small distances in order to see small figures, the notification data comprises recommendations for a new prescription…processing unit 102 may process the received data to compare the differences in light intensity between the two eyes to identify amblyopia or anisometropia).
Regarding Claim 14, Kanter discloses the system according to Claim 13, as above. Kanter further discloses: means for determining the plurality of intermediate optical prescriptions, each intermediate optical prescription being different to another intermediate optical prescription among the plurality of intermediate optical prescriptions, wherein the means for determining the plurality of intermediate optical prescriptions comprises the circuit (¶0041-53, 0075: processing unit 102 additionally processes the received event data to detect strabismus, amblyopia, nystagmus, where the notification data from processing the different events comprises new prescription which may comprise recommendations for more additions…for example, if a high prescription is detected in an event (i.e. hyperope or myope), a recommendation for a high-index lens can be made); and means for receiving the plurality of intermediate optical prescriptions, each intermediate optical prescription being different to another intermediate optical prescription among the plurality of intermediate optical prescriptions, wherein the means for receiving the plurality of intermediate optical prescriptions comprises the circuit, or any combination of the above (¶0041-53: processing unit 102 additionally processes the received data to detect strabismus, amblyopia, nystagmus…the notification data from processing the different events comprises new prescription which may comprise recommendations for more additions).
Regarding Claim 15, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: comprising a non-transitory computer-readable storage medium storing instructions, that when executed by a computer. cause the computer to execute the steps of the method (¶0057: Processing unit 102 may comprise a memory 102C (i.e. non-volatile computer readable medium) for storing a database e.g. reference data indicative of behavioral compensation for low visual acuity and/or data indicative of the notification and/or data indicative of a follow-up of the notification. Memory 102C may be relayed via wireless or wired connection by a unit external to a central database. Processor 102B may record the received data in database in memory 102C and/or may query/cross-reference the received data with data in the database to identify if the data is indicative of behavioral compensation for low visual acuity and may communicate such data to a device (e.g. display or mobile device) at which processor 102B may signal to display a message corresponding to the identified data)
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kanter (US 2022/0189010 A1) in view of Kato et al. (US 2013/0044291 A1).
Regarding Claim 4, Kanter discloses the method according to Claim 1, as above. Kanter does not appear to explicitly disclose the limitations recited in claim 4.
Kato is related to Kanter with respect to a method determining a value of a fatigue parameter associated with a visual fatigue level of a subject carrying out a visual task involving any kind of visual content (¶0078-82, 0105, 0114, 0151) and Kato teaches: wherein obtaining the optical prescription based on the comparison of the determined values of the fatigue parameter (¶0142: by comparing the eye movements performed immediately after the start of the game and the eye movements performed after a certain amount of time elapsed from the start of the game, it is possible to detect fatigue) comprises: selecting the determined value of the fatigue parameter corresponding to a lowest visual fatigue level, among the determined values of the fatigue parameter (¶0151: The output unit 250 then determines if the level of fatigue determined in Step S1120 exceeds a predetermined value (S1130). For example, the level of fatigue is determined by three levels: no fatigue; fatigue symptoms; and fatigued); and obtaining the optical prescription, based on the respective one of the intermediate optical prescriptions associated with the determined value of the fatigue parameter corresponding to the lowest visual fatigue level (¶0271: fatigue states are quantitatively measured from eye movements. By using the quantitative level of fatigue and the elapsed time, an advice is given to the user at the time point to take a break).
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 method of Kanter in view of Kato to satisfy the claimed condition, because such a fatigue level is known and would be measured to prevent extreme fatigue from occurring, as taught in paragraphs ¶0075 of Kato.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kanter (US 2022/0189010 A1) in view of Allione et al. (US 2019/0231185 A1).
Regarding Claim 7, Kanter discloses the method according to Claim 1, as above. Kanter further discloses: wherein determining the value of the fatigue parameter for each intermediate optical prescription among the plurality of intermediate optical prescriptions comprises: performing at least one objective measurement relating to the subject (¶0022, 0047: processing unit 102 may process the received data to run a Bruckner Test, performing a Hirschberg test, and measuring the blink count/frequency); and obtaining at least one parameter relating to information about the subject, or any combination of the above (The brightness difference of the pupils is evaluated via Bruckner Test to predict hyperopia and myopia).
Kanter does not appear to explicitly disclose: performing at least one subjective measurement relating to the subject.
Allione is related to Kanter with respect to a method of obtaining an optical prescription comprising carrying out visual tasks involving any kind of visual content for determining a value for optical prescriptions (¶0009-11, 0013, 0019) and Allione teaches: performing at least one subjective measurement relating to the subject (¶0017-19: a subjective process in which at least one optotype is shown to the individual, wherein said current vision acuity parameter comprises a current vision acuity distance assessed in the second step as an optimal value of the distance defined between the eyes of the individual and said previous vision correcting device, this optimal distance value being suitable for obtaining a desired acuity level upon the visual sensorial evaluation of the individual).
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 method of Kanter in view of Allione to satisfy the claimed condition, because such subjective measurement is known and would be utilized to determining an updated visual correction of an individual already having vision impairment that is already corrected with a pair of glasses (or any other equivalent means) without the need of a complex and costly apparatuses and without the mandatory intervention of a professional eye care, as taught in paragraphs ¶0001, 0006, 0020 of Allione.
Regarding Claim 8, Kanter-Allione discloses the method according to Claim 7, as above. Kanter further discloses: wherein the at least one objective measurement relating to the subject comprises: at least one pupil-tracking measurement, a critical flicker fusion frequency measurement, an accommodation micro-fluctuation measurement, a blink frequency measurement, a blink amplitude measurement, and/or a measurement relating to the subject's facial features, related to the visual fatigue level of the subject carrying out the visual task involving any kind of visual content (¶0022, 0047: processing unit 102 may process the received data to run a Bruckner Test, performing a Hirschberg test, and measuring the blink count/frequency).
Regarding Claim 9, Kanter-Allione discloses the method according to Claim 7, as above. Allione (see rejection of claim 7 supra) further discloses: wherein the at least one subjective measurement relating to the subject comprises at least one answer by the subject to at least one question, related to the visual fatigue level of the subject carrying out the visual task involving any kind of visual content (¶0018-19, 0061, 0083: a subjective process in which at least one optotype is shown to the individual, wherein said current vision acuity parameter comprises a current vision acuity distance assessed, this optimal distance value being suitable for obtaining a desired acuity level upon the visual sensorial evaluation of the individual…different types of optotypes are useable to cover acuity assessment related to the sphere and other related to the cylinder/astigmatism).
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 method of Kanter in view of Allione to satisfy the claimed condition, because such subjective measurement is known and would be utilized to determining an updated visual correction of an individual already having vision impairment that is already corrected with a pair of glasses (or any other equivalent means) without the need of a complex and costly apparatuses and without the mandatory intervention of a professional eye care, as taught in paragraphs ¶0001, 0006, 0020 of Allione.
Other Relevant Documents Considered
Prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Fayolle et al. (US 10690945 B2) and Nashner (US 2007/0121066 A1) disclose a method of obtaining an optical prescription comprising carrying out visual tasks involving any kind of visual content for determining a value for optical prescriptions, and further satisfying some of the additional conditions as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANVITHA SRIDHAR whose telephone number is (571)270-0082. The examiner can normally be reached M-F 930-1800 (EST).
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BALRAM T PARBADIA/Primary Examiner, Art Unit 2872
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