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 .
Response to Amendment
This office action is responsive to the amendment filed on November 14, 2025. As directed by the amendment: claim(s) 1, 11 and 14 have been amended, claim(s) 12 have been cancelled, and no claim(s) have been added. Thus, claims 1-11 and 13-14 are currently pending in the application.
Response to Arguments
Applicant’s arguments, see pgs. 6-7, filed November 14, 2025, with respect to the objection of claims 1-11 and 13-14 have been fully considered and are persuasive. The objection of claims 1-11 and 13-14 has been withdrawn.
Applicant’s arguments, see pgs. 6-7, filed November 14, 2025, with respect to the 35 U.S.C 112(b) rejection of claims 1-11 and 13-14 and 35 U.S.C. 112(f) rejection of claims 11 and 14 have been fully considered and are persuasive. The 35 U.S.C 112(b) rejection of claims 1-11 and 13-14 and 35 U.S.C. 112(f) rejection of claims 11 and 14 has been withdrawn.
Applicant’s arguments, see pgs. 6-7, filed November 14, 2025, with respect to the 35 U.S.C 101 rejection of claim 12 have been fully considered and are persuasive. The 35 U.S.C 101 rejection of claim 12 has been withdrawn.
Applicant's arguments filed November 14, 2025 have been fully considered but they are not persuasive, regarding the 35 U.S.C 101 rejection of claims 1-11 and 13-14. The applicant principally argues that the basis of the rejection is moot based on policy changes adopted by Director of Patents John Squires regarding training machine learning models. The examiner respectfully disagrees. Firstly, the claims do not detail any machine learning limitations or details in the instant specification. Therefore, it is unclear how the information presented by the applicant regarding Director of Patents John Squires is relevant to the 35 U.S.C. 101 rejection of the claims. Furthermore, the applicant argues that the claimed invention is carried out in “real-time” with the use of an eye-tracker and a laser source. However, the eye-tracker and laser source are merely additional elements which are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
The applicant has not presented persuasive arguments to overcome the 35 U.S.C. 101 rejection of claims 1-11 and 13-14; therefore, the 35 U.S.C. rejection of claims 1-11 and 13-14 is maintained and detailed below.
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 1-11 and 12-14 are rejected under 35 U.S.C. 101 because the claimed invention details a system and method (Step 1) directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
In accordance with MPEP 2106.04, each of Claims 1-11 and 12-14 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of Claims 1-11 and 12-14 recites at least one step or instruction for determining ventilatory threshold for a subject, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) or a certain method of organizing human activity in MPEP 2106.04(a)(2)(II) or mathematical concept in MPEP 2106.04(a)(2)(I). Accordingly, each of Claims 1-11 and 12-14 recites an abstract idea.
Specifically, Claim 1 recites
A computer implemented method for controlling a device adapted for projecting a light beam on at least a part of an eye of a wearer, the part of the eye comprising a plurality of portions, the device having an optical module (additional element) comprising a light source (additional element), a pupil being defined for the eye, said method comprising:
- providing the size of the pupil, (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- determining a command law of the radiant power of the light source, the command law being determined on provided pupil size, and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- sending the determined command law to the light source, (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein a maximum light intensity and a minimum light intensity are defined for the part of the eye and, at the determining, the command law further depends from at least one parameter selected from the group consisting of the maximum light intensity and the minimum light intensity, each one of the maximum light intensity and the minimum light intensity varying spatially in the part of the eye from one portion of the part of the eye to another portion in the part of the eye; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein the part of the eye comprises transfected cells of the retina or electronic retinal implants; (a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) and/or managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C));
wherein the light source emits light in real time as a function of the determined command law; and ; (additional element)
wherein the size of the pupil is measured by an eye tracker ; (additional element)
Additionally, Claim 11 recites
A wearable device adapted for projecting a light beam on at least a part of an eye of a wearer of the wearable device, the part of the eye comprising a plurality of portions, the wearable device having an optical module (additional element) comprising a light source (additional element), a pupil being defined for the eye, the wearable device comprising:
- a size-determining module adapted to provide the size of the pupil, (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- a data processing unit adapted to determine a command law of the radiant power of the light source, the command law being determined on the provided pupil size, and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- a command module adapted to send the determined command law to the light source, (additional element)
wherein a maximum light intensity and a minimum light intensity are defined for the part of the eye and the command law further depends from at least one parameter selected in the group of the maximum light intensity and a minimum light intensity, each one of the maximum light intensity and the minimum light intensity varying spatially in the part of the eye from one portion of the part of the eye to another portion in the part of the eye, (a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) and/or managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C));
wherein the part of the eye comprises transfected cells of the retina or electronic retinal implants; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein the light source emits light in real time as a function of the determined command law; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein the size of the pupil is measured by an eye tracker (additional element).
Similarly, Claim 14 recites
A method for treating a disease comprising projecting a therapeutically effective light beam on at least a part of an eye of a wearer, the part of the eye comprising a plurality of portions, using a wearable device adapted for projecting a light beam on at least a part of an eye of a wearer of the wearable device, the wearable device having an optical module (additional element) comprising a light source (additional element), a pupil being defined for the eye, the wearable device comprising:
- a size-determining module adapted to provide the size of the pupil, (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- a data processing unit adapted to determine a command law of the radiant power of the light source, the command law being determined on the provided pupil size, and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
- a command module adapted to send the determined command law to the light source, (additional element)
wherein a maximum light intensity and a minimum light intensity are defined for the part of the eye and the command law further depends from at least one parameter selected in the group of the maximum light intensity and a minimum light intensity, each one of the maximum light intensity and the minimum light intensity varying spatially in the part of the eye from one portion of the part of the eye to another portion in the part of the eye; (a judgement or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III) and/or managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity in MPEP 2106.04(a)(2)(II)(C));
wherein the part of the eye comprises transfected cells of the retina or electronic retinal implants; (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein the light source emits light in real time as a function of the determined command law; and (observation, judgment or evaluation, which is grouped as a mental process in MPEP 2106.04(a)(2)(III))
wherein the size of the pupil is measured by an eye tracker (additional element).
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract idea in each of independent Claims 1, 11 and 14 (and their respective dependent Claims 2-10 and 13) is not integrated into a practical application under MPEP 2106.04(d) because the additional elements (identified above in independent Claims 1, 11 and 14), either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h) or represent insignificant extra-solution activity according to MPEP 2106.05(g). More specifically, the additional elements of: optical module, command module, light source, and eye tracker are generic and used for data gathering adding insignificant extra-solution activity to the judicial exception in independent Claims 1, 11 and 14 (and their respective dependent claims) which do not improve the functioning of a computer, or any other technology or technical field according to MPEP 2106.04(d)(1) and 2106.05(a). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent Claims 1, 11 and 14 (and their respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process) using rules (e.g., computer instructions) executed by a computer (e.g., external programming device or computer as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claims 1, 11 and 14 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent Claims 1, 11 and 14 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 2106.04(d).
Step 2B per MPEP 2106.05
None of Claims 1-11 and 13-14 include additional elements that are sufficient to amount to significantly more than the abstract idea in accordance with MPEP 2106.05 for at least the following reasons.
These claims require the additional elements of: optical module, command module, light source, and eye tracker. The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, pg. 23 lines 5-18 details the use of an optical module that may include various optical elements such as mirrors, collimators, photodiodes or liquid lens with such generality that they are generic and commercially available. Further, in applicant’s specification pg. 23 lines 14-29 cites generic and commercially available items such as light emitting diodes, optical fibers or any light element generating light dependent on the variant of the medical device. Per Applicant’s specification, pg. 22 lines 13-26 details an eye tracker that can merely use a light source and a camera with such generality that they are generic and commercially available. Per applicant’s specification pg. 23 lines 1-2, the command module is an electronic circuit with at least one electronic chip connected to system 10 which is detailed on pg. 11 lines 16-35 as a miniaturized computer described with such generality that they are generic and commercially available.
Accordingly, in light of Applicant’s specification, the claimed term computer is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available technology, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for computers. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III)). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in Claims 1, 11 and 14 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method and system of Claims 1-11 and 13-14 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 1, 11 and 14 (and their dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of the Claims 1-11 and 13-14 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-11 and 13-14 are not patent eligible and rejected under 35 U.S.C. 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jessandra Hough November 28, 2025
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796