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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 29, 2025 has been entered.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive.
Regarding the 101:
Examiner notes the ‘filtering’ limitations are recited at a high level of generality. Nothing is specific is recited. If given data, a human can remove portions of that data in their mind or by hand with paper and pen and retain the rest, thus constituting filtering. There is no complexity to the filtering recited in the claims. Rather the steps/functions are claimed at a high level of generality. This is not analogous to “a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), Research Corp. Techs., 627 F.3d at 868, 97 USPQ2d at 1280.” as nothing specific is claimed. This filtering is more akin to “a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);” since the filtering is claimed at a high level of generality such that it could be practically performed in the human mind. Examiner notes ‘real-time’ does not provide significantly more. For example from MPEP 2106.04(a)(2) III D: “Examples of product claims reciting mental processes include: • A wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid – Electric Power Group, 830 F.3d at 1351 and n.1, 119 USPQ2d at 1740 and n.1;”. At best real-time merely indicates the use of a generic computer to perform the abstract idea.
The instant application claims are not analogous to Example 40. Example 40 was deemed to have a claim that recites significantly more as the claim as a whole provided an improvement in the technology. In the instant application, filtering data is not an improvement, it is a normal analysis process done in all data analysis fields.
The instant application claims are not analogous to Example 3. Example 3 was deemed to have a claim that recites significantly more as the claim as a whole provided a transformation of data that provided an improvement in the technology. In the instant application, filtering data is not a transformation and is not an improvement, it is a normal analysis process done in all data analysis fields.
The instant application claims are not analogous to Example 25. Example 25 was deemed to have a claim that recites significantly more as the claim recites “The additional steps specifically relate to the particular variables used, how the variables are gathered, the process by which the rubber is molded and cured, and how the result of the cure time calculation is used.” (emphasis added). The instant applicant does not use the calculation in any specific way other than post-solutionary data output which does not provide significantly more.
The instant application claims are not analogous to Example 46, Claim 2. As noted in Example 46 and the analysis of claim 2, the limitation that provides significantly more is “(d) automatically sending a control signal to the feed dispenser to dispense a therapeutically effective amount of supplemental salt and minerals mixed with feed when the analysis results for the animal indicate that the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany.”. Nothing in the instant application is analogous to this. Instead, the instant application claims are analogous to claim 1 of Example 46, which merely recites acquiring data, doing generic analysis and display the results of that generic analysis.
Per MPEP 2106.05 I: ‘Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.’
Examiner notes that the Berkheimer memo is related to additional elements. Contrary to Applicant’s assertion “use of eye movement data for intoxication detection” is not an additional element. As such Applicant’s arguments concerning this are not persuasive.
The steps are, as claimed, capable of being performed in the human mind similar to the examples given in MPEP 2106.04(a)(2)(III)(A)-(C), wherein it is described that “a claim to ‘collecting information, analyzing it, and displaying certain results of the collection and analysis’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind” recites a mental process and that claims which merely use a computer as a tool to perform a mental process are not eligible when “there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper” such as “mental processes of parsing and comparing data” when the steps are recited at a high level of generality and a computer is used merely as a tool to perform the processes. As discussed above with respect to integration of the abstract idea into a practical application, the present elements amount to no more than mere indications to apply the exception.
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. 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 the independent Claims (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG. Further per MPEP 2106.05(a): ‘It is important to note, the judicial exception alone cannot provide the improvement.’
Response to Amendment
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:
-‘sensing arrangement’ in claims 20 and 29 interpreted to be a camera per the specification
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-40 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20 recites the limitation "the filtered eye movement data" in Line 9. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is meant to be the same as the ‘desired signal elements’ previously recited or not.
The term “substantially” in claims 20, 29, and 36 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “desired” in claims 20, 29, and 36 is a relative term which renders the claim indefinite. The term “desired” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 29 recites the limitation "the filtered eye movement data" in Line 10. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is meant to be the same as the ‘desired signal elements’ previously recited or not.
Claim 36 recites the limitation "the filtered calibration set of eye movement data" in Line 8. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is meant to be the same as the ‘desired signal elements’ previously recited or not.
Claim 36 recites the limitation "the filtered eye movement data" in Line 18. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this is meant to be the same as the ‘desired signal elements’ previously recited or not.
Claim 36 recites ‘desired signal elements’ twice in the claim, making it unclear if each recitation is meant to refer to the same element or not.
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 20-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claimed invention in claims 20-40 are all within at least one of the four categories (claims 20-40 being processes).
Step 2A, Prong One
Independent claim 20 recites:
receiving eye movement data relating to movement of one or both of the subject's eyes for a period of time;
filtering…the eye movement data…to retain desired signal elements
calculating…corresponding values of one or more recorded eye movement dynamics from the filtered eye movement data, the one or more recorded eye movement dynamics including at least one intersaccadic parameter;
comparing the corresponding values of the one or more recorded eye movement dynamics to one or more baseline measurements to identify an intoxicated state of the subject; and
causing a perceptible alert to be produced by an alerting arrangement.
Independent claim 29 recites:
receiving eye movement data relating to movement of one or both of the subject's eyes for a period of time;
comparing…the eye movement data to one or more baseline measurements corresponding to an intoxicated state, the comparing comprising:
filtering the eye movement data…to retain desired signal elements
extracting one or more current eye movement dynamics, including one or more intersaccadic parameters, from filtered eye movement data; and
comparing the one or more intersaccadic parameters to one or more thresholds of the one or more baseline measurements; and
delivering…an alert indicating the subject is in the intoxicated state.
Independent claim 36 recites:
receiving a calibration set of eye movement data relating to movement of one or both of the subject's eyes for a first period of time;
filtering…the calibration set of eye movement data…to retain desired signal elements;
extracting…one or more calibration eye movement dynamics, including one or more intersaccadic parameters, from the filtered calibration set of eye movement data;
calculating a threshold value from the one or more calibration eye movement dynamics;
receiving eye movement data relating to movement of one or both of the subject's eyes for a second period of time;
filtering….the eye movement data…to retain desired signal elements;
extracting… one or more eye movement dynamics, including one or more intersaccadic parameters, from the filtered eye movement data;
comparing… the one or more eye movement dynamics to the threshold value; and
delivering an alert indicating the subject is intoxicated.
These limitations describe a mental process (including an observation, evaluation, judgment, opinion) under the broadest reasonable standard, as a skilled practitioner is capable of performing the recited limitations and making a mental assessment thereafter. Examiner notes that nothing from the claims suggests that the limitations cannot be practically performed by a medical, biomedical or engineering professional with the aid of a pen and paper; their knowledge gained from education, background, or experience; or by using a generic computer as a tool to perform mental process steps in real time. Examiner additionally notes that nothing from the claims suggests and undue level of complexity that the mental process steps cannot be practically performed by a human with the aid of a pen and paper, or using a generic computer as a tool to perform the mental process steps.
Examples of ineligible claims that recite mental processes include:
• a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom, S.A.;
• claims to “comparing BRCA sequences and determining the existence of alterations,” where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics Corp.
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC.
See p. 7-8 of October 2019 Update: Subject Matter Eligibility.
Step 2A, Prong Two
This judicial exceptions (abstract ideas) in claims 20-40 are not integrated into a practical application because:
•The abstract idea amounts to simply implementing the abstract idea on a computer. For example, the recitations regarding the generic computing components for performing the abstract ideas merely invoke a computer as a tool.
•The data-gathering steps do not add a meaningful limitation to the method as they are insignificant extra-solution activity.
•There is no improvement to a computer or other technology. “The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process.” MPEP 2106.05(a) II. The claims recite a computer that is used as a tool for performing the abstract ideas
•The claims do not apply the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition. Rather, the abstract idea is utilized to determine a relationship among data to provide a medical measurement.
•The claims do not apply the abstract idea to a particular machine. “Integral use of a machine to achieve performance of a method may provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not provide significantly more.” MPEP 2106.05(b). II. “Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.” MPEP 2106.05(b) III. The pending claims utilize a computer to perform the abstract ideas. The claims do not apply the obtained response measurement to a particular machine. Rather, the data is merely output in a post-solution step.
When considered in combination, the additional elements (i.e. the generic computer functions and conventional equipment/steps) do not amount to significantly more than the abstract idea. Looking at the claim limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Step 2B
The additional elements are identified as follows: ‘collected by a sensing arrangement’ in claim 20, ‘a control unit’ in claim 20, ‘a data filter’ in claim 20, ‘an alerting arrangement’ in claim 20, ‘collected by a sensing arrangement’ in claim 29, ‘a control unit’ in claim 29, ‘a data filter’ in claim 29, ‘obtained from a sensing arrangement’ in claim 36, ‘a control unit’ in claim 36, ‘a data filter’ in claim 36, ‘in real-time’ in claims 20, 29, and 36.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by
Applicant’s Specification (Paragraphs 0021) for the sensing arrangement (camera)
Applicant's specification (Paragraphs 0023, 0025, 0026) which discloses that the processor and memory comprise generic computer components that are configured to perform the generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry; and
The prior art provided by the Applicant in the IDS and by the Examiner in PTO-892 in the parent applications 16/428,791 and 15/306,892 which disclose each of the elements as being known and conventional in the art elements;
Thus, the claimed additional elements “are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, III. A. 3. Furthermore, the court decisions discussed in MPEP § 2106.05(d)(ll) note the well-understood, routine and conventional nature of such additional elements as those claimed. See option III. A. 2. in the Berkheimer memorandum.
Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception into a practical application or provide significantly more. See Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99 USPQ2d 1690 (Fed. Cir. 2011). See MPEP 2106.05(b).
Regarding the dependent claims, the dependent claims are directed to either 1) steps that are also abstract or 2) additional data output that is well-understood, routine and previously known to the industry or 3) further recite additional elements at a high level of generality which are conventional in the art.
Claims 39 recites additional elements at a high level of generality which are conventional in the art
Claims 21-28, 30-35, 37-40 are steps that are also abstract as a mental process through additional data gathering or analysis or they further narrow the abstract ideas recited in the respective independent claims
Although the dependent claims are further limiting, they do not recite significantly more than the abstract idea. A narrow abstract idea is still an abstract idea and an abstract idea with additional well-known equipment/functions is not significantly more than the abstract idea.
Conclusion
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/PATRICK FERNANDES/Primary Examiner, Art Unit 3791