DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is in response to a filing of 8/18/2025.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 16-17, 25, 29-40 and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Poolman et al (US 20100280372) in the view of Linde (US 4818097).
Regarding Claim 16, Poolman teaches a nystagmus testing system (fig. 1A-D; abstract) comprising:
a nystagmus testing device (fig. 1A-B; Administering the HGN (Horizontal gaze nystagmus) Test -- see ¶[0168]-- ¶[0178]);
wherein the nystagmus testing device (fig. 1A-B) includes:
a housing (fig. 1A-B and fig. 1D) including a front display positioned to face a test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10), and a rear display positioned to face a test administrator (fig. 1A, Display, input),
(¶[0208], line 1-15, exemplary embodiment of the observation device 10 includes two sides-a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation. As shown in FIG. 1A, the user or operator side of the observation device 10 in the exemplary embodiment includes a user interface 32 that may include a feedback generator 34. Through the user interface 32, the user is able to operate the observation device 10 and control various functions thereof; ¶[0209], line 1-11, The subject side of the observation device 10 in the exemplary embodiment (best shown in FIG. 1B) includes at least one image collector 24, at least one stimulus generator 31, a trigger, and at least one audio collector 28),
a camera mounted on the housing (fig. 1B, Stimulus, Cameras)
a controller (fig. 3, Processor, Stimulus, Camera Controllers, Display, Memory) configured to control
(i) the front display to conduct a nystagmus testing routine including a plurality of tests (¶[0178], line 1-9, HGN (Horizontal gaze nystagmus); vertical nystagmus; ¶[0209], line 1-24, the user interface 32 may allow the user to change the frequency, duration, or pattern of visual and/or aural stimuli. Different stimuli may be provided simultaneously for optimal diagnosis of different subject conditions; ¶[0214], line 1-27, The base member 20 and the external CPU 42 cooperate to produce a visual stimulus 46 on the projection system 40. As the visual stimulus 46 is displayed, the image collectors 24 in the base unit 20 observe and/or record various parameters of the subject 12. The parameters that the image collector records are dependent on the tests with which the observation device 10 is designed to be used and/or the conditions for which the subject is being tested) and
(ii) the camera to record video of the test subject's eyes during the plurality of tests (fig. 3, Processor, Stimulus, Camera Controllers, Digital Cameras (-- can take video images); fig. 4, Visual Stimuli, EYES, Imager;--imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application).
But Poolman does not specifically disclose that wherein a telescopic pole, and a nystagmus testing device supported on the telescopic pole.
However, Linde teaches an apparatus (abstract; fig. 1; col. 1, line 62 -- col. 2, line 2, A target is moved along the arcuate member… nystagmus is observed), wherein a telescopic pole (figs. 1-4, 12), and a nystagmus testing device supported on the telescopic pole (fig. 1, 12, 18, 26).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the nystagmus testing device of Poolman by the apparatus of Linde for the purpose of providing of an apparatus/process for quickly, simply, objectively and accurately measuring an individual's ocular tracking ability (abstract, line 1-12).
Regarding Claim 17, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein each of the plurality of tests is directed to determining one of lack of smooth pursuit, distinct and sustained nystagmus at maximum deviation, onset of nystagmus prior to 45 degrees, and vertical gaze nystagmus (¶[0174]-- ¶[0178], LACK OF SMOOTH PURSUIT; DISTINCT NYSTAGMUS AT MAXIMUM DEVIATION; ANGLE OF ONSET OF NYSTAGMUS PRIOR TO FORTY-FIVE DEGREES; vertical nystagmus, as disclosed in Poolman).
Regarding Claim 25, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein the front display is configured to display a visual stimulus (fig. 1B, Stimulus, Cameras; fig. 2B, 40, 46), and where the controller is configured to control movements of the visual stimulus on the front display during the plurality of test (fig. 3, Processor, Stimulus; fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42; ¶[0215], line 1-11, an external CPU 42 will be required to provide visual stimulus 46; ¶[0226], line 1-6, device 10 may be configured to provide nearly an infinite number of stimuli. For example, lights, series of lights, patterns of lights, colors of lights, or any other visual stimulus including a combination thereof and/or animation thereof, as disclosed in Poolman).
Regarding Claim 29, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein the controller is further configured to display the video of the test subject's eyes on the rear display (fig. 1A, Display; fig. 3, Display, Processor, Camera Controllers, Digital Cameras (--can take video images); fig. 4, EYES, Imager;--imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application, as disclosed in Poolman).
Regarding Claim 30, Poolman - Linde combination teaches that the nystagmus testing system of claim 29, wherein the controller is configured to display the video on the rear display while the nystagmus testing routine is being conducted (fig. 1A, Display; fig. 3, Display, Processor, Camera Controllers, Digital Cameras (--can take video images); fig. 4, EYES, Imager;--imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application, as disclosed in Poolman).
Regarding Claim 31, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein the nystagmus testing device further includes a microphone, and wherein the controller is further configured to control the microphone to record audio during the plurality of tests (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 3, Display, Processor, Stimulus, Audio Recording; ¶[0209], line 1-11, The subject side of the observation device 10 in the exemplary embodiment (best shown in FIG. 1B) includes at least one image collector 24, at least one stimulus generator 31, a trigger, and at least one audio collector 28, as disclosed in Poolman).
Regarding Claim 32, Poolman - Linde combination teaches that the nystagmus testing system of claim 31, wherein the nystagmus testing device further includes a speaker, and wherein the controller is further configured to play the audio on the speaker while displaying the video of the test subject's eyes on the rear display (¶[0218], line 1-16, In another embodiment, a speaker may be used to generate an auditory stimulus, or it may be user-generated, and the observation device will simply include an image collector and/or feedback collector ( e.g., microphone), and/or electronic storage media; fig. 4, Audio Stimuli, EARS; fig. 3, Display, Processor, Stimulus, Audio Recording; and fig. 1A, Display, as disclosed in Poolman).
Regarding Claim 33, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein the nystagmus testing device further includes a light source mounted on the housing and positioned to face the test subject (¶[0168], line 1-7, HGN test, use of a flashlight to illuminate the subject's face; ¶[0209], line 1-25, The subject side of the observation device may also include one or more illuminators 22 to provide for increased clarity and/or precision with the image collector 24, as disclosed in Poolman).
Regarding Claim 34, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, further comprising a base configured to provide traction to grip a surface supporting the system (figs. 1-4, 22, 12, as disclosed in Linde).
Regarding Claim 35, Poolman - Linde combination teaches that the nystagmus testing system of claim 16, wherein the front display is configured to rotate 90 degrees relative to the telescopic pole (fig. 4, 18, 26, as disclosed in Linde).
Regarding Claim 36, Poolman teaches a method (fig. 1A-D; abstract) comprising:
positioning a nystagmus testing device (fig. 1A-B; Administering the HGN (Horizontal gaze nystagmus) Test—see ¶[0168]-- ¶[0178]) such that a front display of the nystagmus testing device faces a test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10);
(¶[0208], line 1-15, exemplary embodiment of the observation device 10 includes two sides-a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation. As shown in FIG. 1A, the user or operator side of the observation device 10 in the exemplary embodiment includes a user interface 32 that may include a feedback generator 34. Through the user interface 32, the user is able to operate the observation device 10 and control various functions thereof; ¶[0209], line 1-11, The subject side of the observation device 10 in the exemplary embodiment (best shown in FIG. 1B) includes at least one image collector 24, at least one stimulus generator 31, a trigger, and at least one audio collector 28),
adjusting to position the front display of the nystagmus testing device slightly above eye level of the test subject (¶[0171], line 1-6, The HGN test requires only an object for subjects to follow with their eyes, such as a pen or the tip of a penlight. The officer places the object approximately twelve to fifteen inches from the subject's face and slightly higher than eye level);
pressing a start button to cause the nystagmus testing device to perform a nystagmus testing routine (fig. 3, Processor, Trigger/Selector; ¶[0173]-- ¶[0174], before conducting the test; While conducting the test; ---there is a step/process of start in between),
wherein the nystagmus testing routine includes
(i) a visual stimulus being moved to different positions along the front display (fig. 1B, Stimulus, Cameras; fig. 3, Processor, Stimulus; fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42; ¶[0215], line 1-11, an external CPU 42 will be required to provide visual stimulus 46; ¶[0226], line 1-6, device 10 may be configured to provide nearly an infinite number of stimuli. For example, lights, series of lights, patterns of lights, colors of lights, or any other visual stimulus including a combination thereof and/or animation thereof) and
(ii) video of the test subject's eyes being recorded by a camera of the nystagmus testing device while the visual stimulus is moved to the different positions (fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42; fig. 3, Processor, Stimulus, Camera Controllers, Digital Cameras (can take video images); fig. 4, Visual Stimuli, EYES, Imager;--imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application).
But Poolman does not specifically disclose that wherein positioning a nystagmus testing device supported by a telescopic pole and adjusting the telescopic pole.
However, Linde teaches an apparatus (abstract; fig. 1; col. 1, line 62—col. 2, line 2, A target is moved along the arcuate member… nystagmus is observed), wherein positioning a nystagmus testing device supported by a telescopic pole (figs. 1-4, 12) and adjusting the telescopic pole (figs. 1-4, 12, 13, 28, 29).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the nystagmus testing device of Poolman by the apparatus of Linde for the purpose of providing of an apparatus/process for quickly, simply, objectively and accurately measuring an individual's ocular tracking ability (abstract, line 1-12).
Regarding Claim 37, Poolman - Linde combination teaches that the method of claim 36, wherein positioning the nystagmus testing device such that the front display of the nystagmus testing device faces the test subject comprises positioning the nystagmus testing device with the front display between 12-15 inches away from the test subject's nose (fig. 2A-B, 12, 10; ¶[0171], line 1-6, The HGN test requires only an object for subjects to follow with their eyes, such as a pen or the tip of a penlight. The officer places the object approximately twelve to fifteen inches from the subject's face and slightly higher than eye level, as disclosed in Poolman).
Regarding Claim 38, Poolman - Linde combination teaches that the method of claim 36, wherein positioning the nystagmus testing device such that the front display of the nystagmus testing device faces the test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10; ¶[0208], line 1-15, exemplary embodiment of the observation device 10 includes two sides-a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation, as disclosed in Poolman), comprises engaging a base connected to the telescopic pole with a surface on which the test subject is standing to provide traction with the surface (figs. 1-4, 22, 12, as disclosed in Linde).
Regarding Claim 39 Poolman - Linde combination teaches that the method of claim 36, wherein positioning the nystagmus testing device such that the front display of the nystagmus testing device faces the test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10; as disclosed in Poolman), comprises positioning the nystagmus testing device such that a rear display of the nystagmus testing device faces a test administrator (fig. 1A, Display, input; ¶[0208], line 1-15, exemplary embodiment of the observation device 10 includes two sides-a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation, as disclosed in Poolman).
Regarding Claim 40, Poolman - Linde combination teaches that the method of claim 39, wherein the nystagmus testing routine further includes the video of the test subject's eyes being displayed on the rear display (fig. 1A, Display; fig. 3, Display, Processor, Camera Controllers, Digital Cameras (--can take video images); fig. 4, EYES, Imager;--imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application, as disclosed in Poolman).
Regarding Claim 42, Poolman - Linde combination teaches that the method of claim 36, further comprising rotating the front display by 90 degrees relative to the telescopic pole during the nystagmus testing routine (fig. 4, 18, 26, as disclosed in Linde).
Regarding Claim 43, Poolman teaches a method (fig. 1A-D; abstract) comprising:
positioning a nystagmus testing device (fig. 1A-B; Administering the HGN (Horizontal gaze nystagmus) Test—see ¶[0168]-- ¶[0178]) such that a front display of the nystagmus testing device is oriented in a first position facing a test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10);
(¶[0208], line 1-15, exemplary embodiment of the observation device 10 includes two sides-a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation. As shown in FIG. 1A, the user or operator side of the observation device 10 in the exemplary embodiment includes a user interface 32 that may include a feedback generator 34. Through the user interface 32, the user is able to operate the observation device 10 and control various functions thereof; ¶[0209], line 1-11, The subject side of the observation device 10 in the exemplary embodiment (best shown in FIG. 1B) includes at least one image collector 24, at least one stimulus generator 31, a trigger, and at least one audio collector 28),
pressing a start button to cause the nystagmus testing device to perform a nystagmus test (fig. 3, Processor, Trigger/Selector; ¶[0173]-- ¶[0174], before conducting the test; While conducting the test; ---there is a step/process of start in between), that includes moving a visual stimulus along a length of the front display while the front display is in the first position (fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42; ¶[0226], line 1-6, device 10 may be configured to provide nearly an infinite number of stimuli. For example, lights, series of lights, patterns of lights, colors of lights, or any other visual stimulus including a combination thereof and/or animation thereof).
But Poolman does not specifically disclose that wherein rotating the front display by 90 degrees from the first position to a second position facing the test subject.
However, Linde teaches an apparatus (abstract; fig. 1; col. 1, line 62—col. 2, line 2, A target is moved along the arcuate member… nystagmus is observed), wherein rotating the front display by 90 degrees from the first position to a second position facing the test subject (fig. 4, 18, 26).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the nystagmus testing device of Poolman by the apparatus of Linde for the purpose of providing of an apparatus/process for quickly, simply, objectively and accurately measuring an individual's ocular tracking ability (abstract, line 1-12).
Poolman - Linde combination teaches that pressing the start button (fig. 3, Processor, Trigger/Selector, as disclosed in Poolman) to cause the nystagmus testing device to perform a vertical gaze nystagmus test (¶[0178], line 1-10, vertical nystagmus; checks for vertical nystagmus by raising the object several inches above the subject's eyes, as disclosed in Poolman; col. 5, line 69—col. 6, line 3, it may also be placed in the vertical position and the test is continued, moving the target nine inches in each direction from the mid-point of the arcuate member, as disclosed in Linde) that includes moving the visual stimulus along the length of the front display while the front display is in the second position (fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42, as disclosed in Poolman).
Regarding Claim 44, Poolman - Linde combination teaches that method of claim 43, wherein the horizontal gaze nystagmus test comprises a test for determining lack of smooth pursuit, a test for determining distinct and sustained nystagmus at maximum deviation, and a test for determining onset of nystagmus prior to 45 degrees, or any combination thereof (¶[0174]-- ¶[0178], LACK OF SMOOTH PURSUIT; DISTINCT NYSTAGMUS AT MAXIMUM DEVIATION; ANGLE OF ONSET OF NYSTAGMUS PRIOR TO FORTY-FIVE DEGREES; vertical nystagmus, as disclosed in Poolman).
Regarding Claim 45, Poolman - Linde combination teaches that method of claim 43, wherein the horizontal gaze nystagmus test and the vertical gaze nystagmus test performed by the nystagmus testing device each further include recording video of the test subject's eyes with a camera of the nystagmus testing device while the visual stimulus is moved along the length of the front display (fig. 2B, 40, 42,46;-- visual stimulus 46 moving following a path with an arrow under computer 42; fig. 3, Processor, Stimulus, Camera Controllers, Digital Cameras (-- can take video images); fig. 4, Visual Stimuli, EYES, Imager;-- imager taking images of eyes; ¶[0216], line 1-9, the observation device 10 includes at least one component capable of observing a relevant parameter for the test the observation device 10 is designed to administer. For example, if an image collector 24 is in operative communication with a storage media or processing unit, that image collector 24 may be used in conjunction with an external CPU 42 and projection system 40 to provide the user with the appropriate data for a specific application, as disclosed in Poolman).
Allowable Subject Matter
Claim 41 is 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.
The following is an examiner’s statement of reasons for allowance: The prior art taken singularly or in combination fails to anticipate or fairly suggest the limitations of the independent claims, in such a manner that a rejection under 35 U.S.C. 102 or 103 would be proper.
In regard to claim 41, the prior art taken either singly or in combination fails to anticipate or fairly suggest wherein the nystagmus testing routine further includes a visual tracker being displayed on the rear display such that the test administrator is aware the position of the visual stimulus while observing the test subject's eyes.
Response to Arguments
Applicant's arguments filed on 8/18/2025 have been fully considered and are not persuasive.
In the remarks, applicant argues that:
(A). the proposed combination of Poolman and Linde fails to teaches or suggests "a nystagmus testing device" that includes both "a rear display positioned to face a test administrator" and "a controller configured to control [a] front display to conduct a nystagmus testing routine including a plurality of tests.".
(B). the POSITA would not have found it obvious to combine Linde's adjustable "arm 13 and leg member 12" with either embodiment of Poolman's observation device 10, as proposed in the Office Action.
(C). a POSITA would have no motivation to attach Linde's adjustable "arm 13 and leg member 12" to Poolman's second embodiment because the device is taught to be "mounted" in "a fixed position," which would not permit any adjustment. Id at ,i [0214]. For at least these reasons, the POSITA would not have found it obvious to combine Poolman and Linde as asserted in the Office Action.
(D). none of the cited prior art teaches or suggests "adjusting [a] telescopic pole to position [a] front display of [a] nystagmus testing device slightly above eye level of [a] test subject."
(E). Poolman and Linde fails to arrive at the invention of claim 36 because none of the cited prior art teaches or suggests "pressing a start button to cause the nystagmus testing device to perform a nystagmus testing routine, wherein the nystagmus testing routine includes a visual stimulus being moved to different positions along the front display."
(F). the POSITA would not have found it obvious to combine Linde's adjustable "arm 13 and leg member 12" with either embodiment of Poolman's observation device 10, as proposed in the Office Action.
In response to applicant's argument(s):
(A). Poolman teaches in ¶[0208], line 1-15 and ¶[0209], line 1-11 that “exemplary embodiment of the observation device 10 includes two sides---a subject side that is generally positioned facing the subject during observation and a user side that is generally positioned facing the user during operation. As shown in FIG. 1A, the user or operator side of the observation device 10 in the exemplary embodiment includes a user interface 32 that may include a feedback generator 34. Through the user interface 32, the user is able to operate the observation device 10 and control various functions thereof” and “The subject side of the observation device 10 in the exemplary embodiment (best shown in FIG. 1B) includes at least one image collector 24, at least one stimulus generator 31, a trigger, and at least one audio collector 28”. ---that is, the user or operator side (FIG. 1A) and subject side (fig. 1B). So, Poolman teaches "a nystagmus testing device" (fig. 1A-B) that includes "a rear display positioned to face a test administrator" (fig. 1A).
Poolman teaches also teaches in fig. 3 that a processor (--controller) configured to control the front display (--stimulus with camera, trigger and microphone in fig. 1B) to conduct a nystagmus testing routine including a plurality of tests (see ¶[0178], line 1-9, ¶[0209], line 1-24 and ¶[0214], line 1-27, HGN (Horizontal gaze nystagmus); vertical nystagmus; the tests with which the observation device 10 is designed to be used and/or the conditions for which the subject is being tested; the external CPU 42 cooperate to produce a visual stimulus 46; the visual stimulus 46 is displayed).
(B). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In reKeller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). See also In reSneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In reNievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).
Further, Linde teaches a nystagmus testing device (abstract; fig. 1; col. 1, line 62 -- col. 2, line 2), wherein nystagmus visual stimulus (fig. 1, 18, 26) is supported on a telescopic pole (figs. 1-4, 12). It takes read of claim term of “wherein a telescopic pole, and a nystagmus testing device supported on the telescopic pole”. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the nystagmus testing device of Poolman by the apparatus of Linde for the purpose of providing of an apparatus/process for quickly, simply, objectively and accurately measuring an individual's ocular tracking ability.
Examiner has met all requirements establishing a prima facie case: all factual findings required by Graham were supplied in the previous and present Actions; the references are related art, and Applicant has supplied no evidence that there is no reasonable expectation of success; all claim limitations were met in the previous and present Actions, and Applicant has merely made the allegation that the limitations are not met, and thus has not provided any evidence or argument directed to how the identified elements in the first action fail to meet the claimed limitations or to how the identified elements are otherwise distinguishable from the claimed limitations. Neither has Applicant supplied any evidence or argument addressing any failure of Examiner's application of the TSM test, pursuant to current governing law (see KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007)).
(C). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the Remarks, applicant is cherry picking examples to support his position but ignoring other examples that meet the claimed limitations. Applicant uses ¶[0214] of second embodiment of Poolman, which teaching the device to be "mounted" in "a fixed position", which is not correct. Poolman also teaches in ¶[0213] of an exemplary embodiment, wherein the device may easily be moved from one position to another.
More, the adjustable arm 13 can be become un-adjustable once the nut 28 is tighten (see figs. 1-2, 28 of Linde), no any changes (adjustments) happening, the pole is at a fixed length.
(D), Poolman teaches a nystagmus testing device (fig. 1A-B; Administering the HGN (Horizontal gaze nystagmus) Test—see ¶[0168]-- ¶[0178]) such that a front display of the nystagmus testing device faces a test subject (fig. 1B, Stimulus, Cameras, Microphones, Trigger; fig. 2A-B, 12, 10). Poolman also teaches in ¶[0171], line 1-6 that “The HGN test requires only an object for subjects to follow with their eyes, such as a pen or the tip of a penlight. The officer places the object approximately twelve to fifteen inches from the subject's face and slightly higher than eye level”. Poolman teaches using a nystagmus testing device to do HGN test, not using a pen or the tip of a penlight to do HGN test. So, “The officer places the object approximately twelve to fifteen inches from the subject's face and slightly higher than eye level” takes read of claimed “a front display (--Stimulus) of a nystagmus testing device slightly above eye level of [a] test subject”.
(E). Poolman teaches “pressing a start button to cause the nystagmus testing device to perform a nystagmus testing routine” (see fig. 3, Processor, Trigger/Selector; ¶[0173]-- ¶[0174], before conducting the test; While conducting the test; ---there is a step/process of start in between); and “wherein the nystagmus testing routine includes a visual stimulus being moved to different positions along the front display" (fig. 1B, Stimulus; fig. 3, Processor, Stimulus; fig. 2B, 46;-- visual stimulus 46 moving following a path with an arrow under computer 42, which comprising moving along the front display (in x/y directions); ¶[0215], line 1-11, an external CPU 42 will be required to provide visual stimulus 46; ¶[0226], line 1-6, device 10 may be configured to provide nearly an infinite number of stimuli. For example, lights, series of lights, patterns of lights, colors of lights, or any other visual stimulus including a combination thereof and/or animation thereof).
(F). Linde teaches that the adjustable arm 13 can be become un-adjustable once the nut 28 is tighten (see figs. 1-2, 28 of Linde). In this case, no any changes (adjustments) happening, the pole is at a fixed length.
Further, it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA 1954). Therefore, providing “adjustable” from “un-adjustable” is obvious in art, vice versa.
Therefore, the POSITA would have found it obvious to combine Linde's fixed "arm 13 and leg member 12" with either embodiment of Poolman's observation device 10, as proposed in the Office Action.
Examiner’s Note
Regarding the references, the Examiner cites particular figures, paragraphs, columns and line numbers in the reference(s), as applied to the claims above. Although the particular citations are representative teachings and are applied to specific limitations within the claims, other passages, internally cited references, and figures may also apply. In preparing a response, it is respectfully requested that the Applicant fully consider the references, in their entirety, as potentially disclosing or teaching all or part of the claimed invention, as well as fully consider the context of the passage as taught by the reference(s) or as disclosed by the Examiner.
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 extension fee 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 communication from the examiner should be directed to Jie Lei whose telephone number is (571) 272 7231. The examiner can normally be reached on Mon.-Thurs. 8:00 am to 5:30 pm.
If attempts to reach the examiner by the telephone are unsuccessful, the examiner's supervisor, Thomas Pham can be reached on (571) 272 3689.The Fax number for the organization where this application is assigned is (571) 273 8300.
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/JIE LEI/Primary Examiner, Art Unit 2872