JAND, INC.

Patent Trials and Appeals Board

Jun 19, 2020

14996917 - (D) (P.T.A.B. Jun. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/996,917 01/15/2016 Joseph Carrafa 103343-0019 4877
1923 7590 06/19/2020
MCDERMOTT, WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
PICHLER, MARIN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
06/19/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mweipdocket@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH CARRAFA and DAVID HOWARD GOLDBERG
Appeal 2019-005245
Application 14/996,917
Technology Center 2800
Before JEFFREY T. SMITH, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 11–18. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Jan. 15, 2016 (“Spec.”),
Final Office Action dated Dec. 14, 2018 (“Final Act.”), Appeal Brief dated
Mar. 20, 2019 (“Appeal Br.”), Examiner’s Answer dated June 10, 2019
(“Ans.”), and Reply Brief dated June 28, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as JAND, Inc. Appeal
Br. 3.
Appeal 2019-005245
Application 14/996,917

2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a mobile device used for administering an
eye examination. Spec. 1. Claim 11, the sole independent claim on appeal,
is reproduced below with italics indicating the limitation argued by
Appellant:
11. A mobile device comprising:
a camera;
a user interface comprising a visual display;
a memory comprising instructions; and
a processor coupled to the camera, the processor
configured to execute the instructions to:
capture a first image of an object using the camera set to a
fixed focusing distance;
determine, with reference to the first image, an absolute
size of the object;
capture a second image of the object using the camera;
determine, with reference to the second image, a distance
from the mobile device to the object;
provide, via the user interface, an indication via the
display to move the mobile device relative to the object; and
receive, via the user interface, input from the mobile
device in response to an eye examination program.
Appeal Br. 13 (Claims Appendix).
Appeal 2019-005245
Application 14/996,917

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Garcia US 2014/0300722 A1 Oct. 9, 2014
Limon US 2016/0120402 A1 May 5, 2016
Schubart3 US 2017/0135571 A1 May 18, 2017

REJECTION
Claims 11–18 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Schubart, Limon, and Garcia. Final
Act. 3.
OPINION
The Examiner finds that Schubart teaches a mobile device comprising
all of the elements of claim 11, except that Schubart does not explicitly
disclose that the mobile device provides “an indication via the display” or
that its camera is “set to a fixed focusing distance” for capturing a first
image, as recited in claim 11. Final Act. 3–5 (citing Schubart ¶¶ 10–17, 20,
25, 28, 30, 34, 36, 44, 50–53, 63–65). The Examiner further finds that
Schubart teaches an indication “to move the mobile device relative to the
object” as recited in claim 11, because Schubart’s mobile computer includes
various testing distances where the optotype sizes are scaled for each of the
different testing distances. Id. at 4 (citing Schubart ¶¶ 22, 24, 25, 42–44, 59,
66, 68).

3 The Examiner relies upon US 2017/0135571 A1 as the closest English
language equivalent to WO 2015/197149 A1.

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Application 14/996,917

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The Examiner further finds that Limon teaches a system for
measurement of refractive error of an eye based on subjective distance
metering, which provides an indication through a display to move the mobile
device relative to the object or to move the object relative to the mobile
device. Id. at 5 (citing Limon 5 ¶¶ 126, 127, Figs. 3A, 3B). The Examiner
determines that it would have been obvious to one of ordinary skill in the art
to have used Schubart’s display to provide an indication to the subject, “in
order to provide instructions to the subject through the screen for eye
examination and measuring.” Id.
With regard to the second feature missing from Schubart, the
Examiner finds Garcia teaches an image based measurement tool where the
digital camera is set to a fixed focusing distance. Id. at 5–6 (citing Garcia ¶¶
120, 121). The Examiner determines that it would have been obvious to one
of ordinary skill in the art to have set Schubart’s camera at a fixed focal
length in order to compute the predicted distance of the object from the
camera. Id. at 6.
Appellant argues that while Schubart teaches a mobile computer that
may be set up at an arbitrary distance from the test subject and Limon
teaches that the UI may request the subject to distance from the mobile
device display, neither reference teaches an indication to move the mobile
device relative to the object. Appeal Br. 8–10. Specifically, Appellant
argues that Limon teaches moving the subject away from the mobile device,
but claim 11 requires moving the mobile device relative to the object. Reply
Br. 2–3.
Appellant’s argument persuasively identifies reversible error.
Although Schubart and Limon teach moving the subject relative to display
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Application 14/996,917

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or the mobile device, none of the references teaches moving the display of
the mobile device with respect to the object, as required by claim 11.
Schubart does not teach moving the mobile device relative to the object,
because it describes integrating the object (i.e. the optotype) into the mobile
device. The Examiner’s finding that Schubart teaches an indication to move
the mobile device relative to the object (see Final Act. 4) is not supported by
Schubart because sizing of the optotypes on Schubart’s mobile device
display is dependent upon the distance of the mobile device from the subject,
with an arbitrary test distance set at 1–10m. Schubart ¶¶ 25, 68. Similarly,
Limon does not teach moving the mobile device relative to the object
because it teaches that the object image is integrated into the mobile device,
and the user is instructed to move the mobile device relative to the subject’s
eye. Limon ¶¶ 135–137, Figs. 3A, 3B.
Because both Schubart and Limon teach integrating the mobile device
with the display showing the object image, the distance between the object
and the mobile device cannot be changed. Moreover, the Examiner’s
rationale for combining Limon’s feature of providing instructions to the
subject via the display with Schubart’s device (i.e., “in order to provide
instructions via the screen to subject for eye examination and measuring”
(Final Act. 5)) is insufficient, because Schubart already provides an
indication via its display. Accordingly, we reverse the rejection of claim 11.
We reverse the rejection of dependent claims 12–18 for the same
reasons as discussed above.
CONCLUSION
The Examiner’s rejection is REVERSED.
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Application 14/996,917

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–18 103 Schubart, Limon,
Garcia
11–18
REVERSED