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
Claims 9-28 are currently pending. Claims 9-24, 26, and 28 have been amended. Claims 9, 14, and 19 have been amended to overcome the 35 U.S.C. 112(a) rejection set forth in the Non-Final Office Action mailed on 04 June 2026.
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: eye tracker unit in claims 9, 14, and 19 are neural signal capture device in claims 9, 10, 14, and 15.
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.
“eye tracker unit” is interpreted as a camera as mentioned in [0046] of the PGPUB
“neural signal capture device” is interpreted as an EEG device, as mentioned in [0041]-[0044] of the PGPUB
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 9-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 9 follows.
STEP 1
Regarding claim 9, the claim recites a series of steps or acts, including determining a direction of gaze of a user. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
STEP 2A, PRONG ONE
The claim is then analyzed to determine whether it is directed to any judicial exception. The steps of
determining a direction of gaze of a user using an eye tracker unit of a head-piece, the direction of gaze with respect to a plurality of real-world objects located along a same line of sight at different depths of field;
causing a generator to modulate the plurality of visual stimuli having respective temporal profiles; and
validating, by the at least one processor, which of the plurality of real-world objects is an intentional objection of focus in accordance with a correlation between the electrical signals and the respective characteristic modulations of the plurality of visual stimuli, the validating discriminating between the plurality of real-world objects at different depths of field along the same line of sight
set forth a judicial exception. These steps describe a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is an Abstract Idea. The modulating step describes a mathematical process (including mathematical relationships, mathematical formulas or equations, mathematical calculations). Thus, the claim is also drawn to mathematical concept, which is also an Abstract Idea.
STEP 2A, PRONG TWO
Next, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim fails to recite an additional element or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception. Claim 9 recites validating which of the plurality of real-world objects is an intentional objection of focus in accordance with a correlation between the electrical signals and the respective characteristic modulations of the plurality of visual stimuli, the validating discriminating between the plurality of real-world objects at different depths of field along the common line of sight, which is merely adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)). The validating of the plurality of real-world objects does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the validated plurality of real-world objects, nor does the method use a particular machine to perform the Abstract Idea.
STEP 2B
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the Abstract Idea, the claim recites additional steps of:
generating a plurality of visual stimuli, each visual stimulus having a respective characteristic modulation;
overlaying each of the plurality of visual stimuli over a respective one of the plurality of real-world objects using a head up display of the head-piece; and
receiving electrical signals corresponding to neural responses to the plurality of visual stimuli from a neural signal capture device.
The generating and receiving steps are well-understood, routine and conventional activities for those in the field of medical diagnostics. Further, the generating, overlaying, and receiving steps are each recited at a high level of generality such that it amounts to insignificant presolution activity, e.g., mere data gathering step necessary to perform the Abstract Idea. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional step that distinguishes it from well-understood, routine, and conventional data gathering and comparing activity engaged in by medical professionals prior to Applicant's invention. Furthermore, it is well established that the mere physical or tangible nature of additional elements such as the obtaining and comparing steps do not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2358-59 (2014)).
Regarding claim 9, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited stimulus generator, head up display of the head-piece, at least one processor, and neural signal capture device are generic sensors configured to perform pre-solutional data gathering activity and the at least one processor and the eye tracker unit are configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application. Furthermore, [0120] of Corson et al. ‘214 (US Pub No. 2010/0214214 – previously cited) teaches that these components are well-understood, routine, and conventional (WURC).
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in Diehr in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not provide an improvement to the technical field. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is therefore drawn to non-statutory subject matter.
The same rationale applies to claims 14 and 19.
The dependent claims also fail to add something more to the abstract independent claims. Claims 10, 11, 13, 15, 16, 18, 21, and 23 recite steps that add to the abstract idea as these steps recite mental processes. Claims 12, 17, and 22-28 recites an additional element that does not provide an improvement or effect a change. The steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
Response to Arguments
Applicant argues that the step of “determining the direction of gaze of a user using an eye tracker unit of a head-piece” cannot be performed mentally or by hand. Examiner respectfully disagrees, as the direction of gaze could be mentally determined by viewing where the user is looking. Regarding the head-piece, the head-piece is a generic computer component. Furthermore, according to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application. Regarding Applicant’s arguments to the modulating step, it is noted that the Examiner has state that this is a mathematical process, not a mental process.
Applicant argues that the amended claims do not recite a user inspecting a report and forming an opinion about the user’s own intentional object of focus and thus, does not recite a mental process. However, the recitation of the eye tracker unit of the head-piece, stimulus generator, head up display of the head-piece, and the at least one processor are generic computer components. As mentioned above, according to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
Applicant argues that the claims improve operation of eye-tracking and brain-computer-interface technology and lists the improvements on page 10 of the filed Remarks. Even if these improvements may be true, the claims merely mentions an abstract idea (determining, modulating, validating) used to output a data point (validating). The Examiner suggests to amend the independent claims to include more details to how the visual stimuli are generated based on the determined direction of gaze to potentially overcome the 101. It is noted that claim 12 recites this, however, claim 12 merely recites that the visual stimuli are generated based on the determined direction of gaze. Examiner suggests to include how validating real-world objects would improve the system/technology. The Examiner also suggests to include more detail to the structure to potentially overcome the 101 in step 2B, where the structures are not well-understood, routine, and conventional. As such, Applicant’s arguments are not persuasive and the 35 U.S.C. 101 rejection has been maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at (571) 272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791
