DETAILED ACTION
Oath/Declaration
Oath and declaration filed on 10/14/2024 is accepted.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory obviousness -type double patenting as being unpatentable over claims 1 and 2 respectively U.S. Patent No.12,114,927 B2.
Although the conflicting claims are not identical, they are not patentable distinct from each other because the instant claims are anticipated by the patented claims.
The claims of the instant application corresponds to the patented claim as follows:
Instant application 18/914,945
Regarding claim 1, A method of measuring presbyopia, the method comprising the steps of: a) using a series of lenses to present images to a user such that the images have optical qualities of an image presented in the range of 3 inches to 3 feet.
Regarding claim 2, further comprising the steps of using a first lens the first lens comprising a front surface comprising an aspherical surface and the first lens comprising back concave surface
Regarding claim 3, further comprising the use of a second lens the second lens being a spherical convex lens disposed proximal to an optical system such as an eye.
U.S. Patent No. 12,114,927 B2
Regarding claim 1, A method of measuring presbyopia, the method comprising the steps of: a) using a series of lenses to present images to a user such that the images have optical qualities of an image presented in the range of 10 inches to 2 feet.
b) of using a first lens the first lens comprising a front surface comprising an aspherical surface and the first lens comprising back concave surface
Regarding claim 2, further comprising the use of a second lens the second lens being a spherical convex lens disposed proximal to an optical system such as an eye.
Analysis
the claims at issue are not identical, they are not patentably distinct from each other because they are but different definitions of the same disclosed subject matter, varying in breadth or scope of definition as set forth in MPEP 806.03.
In this case, claims 1 and 2 of Patent claims 1and 2 include all structural elements as now claimed. Note that the image height ranges (claim 1).
Claim Rejections - 35 USC § 103
3. 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 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(s) 1 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yee (2006/0264916 A1) in view of Dai et al (2008/0106698 A1).
Regarding claim 1, Yee discloses (refer to figures 1-4) a method of measuring presbyopia (10) (figure 2) (paragraph 0046), the method comprising the steps of: a) using a series of lenses (L) (figure 4) to present images to a user.
Yee discloses all of the claimed limitations except the images have optical qualities of an image presented in the range of 3 inches to 3 feet.
Dai et al discloses all of the claimed limitations except the images have optical qualities of an image presented in the range of 3 inches to 3 feet (see image analysis different techniques use, paragraph 0168 and different size of images 10m and 1m to 40 cm not limited, paragraph 0276).
Regarding claim 12, Yee discloses (refer to figures 1-4) a method for measuring presbyopia (10) (figure 2) (paragraph 0046) the method comprising the steps of: a) using plano frames (18), a plurality of clip on lenses (L)(L) (figure 4)
Yee discloses all of the claimed limitations except a pair of near vision attachments and a pair of mid vision attachments.
Dai et al discloses a pair of near vision attachments and a pair of mid vision attachments (paragraph 0131) (paragraph 0137).
It would have been obvious to use of different vision analysis technique in to the Yee a method of measuring presbyopia for the purpose of changing viewing with the eye and determining desire power for the eye as teaches Dai (paragraph 0014).
Allowable Subject Matter
4. Claims 2- 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
5. The following is a statement of reasons for the indication of allowable subject matter: further comprising the steps of using a first lens the first lens comprising a front surface comprising an aspherical surface and the first lens comprising back concave surface and further comprising the use of a second lens the second lens being a spherical convex lens disposed proximal to an optical system such as an eye and further including the step of using a screen image proximal to the first lens, the screen image passing through the first lens, second lens and to the measured optical system and further including the step of moving the first lens along an optical axis to present multiple perceived image distances to the measured optical system and further including a first position and a second position for the first lens, with the first lens moving along an optical axis and using an added lens disposed between the second lens and the optical system being measured, the added lens used to adjust the perceived distance between the screen image from the optical system being measured and wherein the added lens is disposed between the first lens and screen image and wherein the added lens comprising a plurality of lenses and the added lens comprises a plurality of added lenses that are used for measurement of far vision, near vision and mid-vision testing.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED A HASAN whose telephone number is (571)272-2331. The examiner can normally be reached M-TH 6 AM -4 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bumsuk Won can be reached at 571-272-2713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMED A HASAN/Primary Examiner, Art Unit 2872 6/25/2026
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