DETAILED ACTION
Non-Final Rejection
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 .
Claims Status
Claim 3 was amended and claim 6 was newly added in a preliminary amendment dated 1/30/23. Claims 1-6 are currently pending.
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 1-6 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 1 recites a device comprising a touch screen. The remaining limitations read like method steps (displaying, providing) and it is unclear how they relate to the device. For example, the limitations can be interpreted as:
The device having additional hardware for displaying and providing the information claimed on the touchscreen.
The touchscreen is programmed to perform the displaying and providing limitations.
The touchscreen is merely capable of performing the displaying and providing.
For purposes of examination, the Office interpreted the claim as including any of the above interpretations. This issue extends to claim 2.
Claim 3 states that the device further comprises “a mark for standby position of a hand of the testee to prevent the hand from remaining positioned between the testee and the touch screen.” Fig. 7a and b show the mark for the user to position the hand. The location of the mark would appear to always be between the testee and the touch screen. It is unclear how the location of the mark could prevent this from occurring. Claim 6 has the same issue. The Office assumed Applicant meant the mark was to ensure the hand remained positioned between the testee and the touch screen in a manner that did not block the visual field of the user.
Claim 4 recites a vision testing system and then includes additional limitations for sequentially displaying various information on a touch screen and providing results based on a testee touching the screen. It is unclear how all the limitations following the word “system” in line 1 of the claim further limit the system (similar issue to claim 1 above).
Claim 5 recites a computer program for vision testing. The limitations relate to what the program does but does not provide any structure related to the program. The metes and bounds of this claim are indefinite.
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.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 1 is directed to a computer program which has no physical or tangible form (i.e. information, see MPEP 2106.03(I)) .
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reichow et al. (US 7926943, US version of JP2013-510653 which is cited in the IDS).
Regarding claim 1, Reichow et al. disclose a vision testing device (Abstract – “Systems and methods may test and/or train the peripheral visual abilities of an individual.“) comprising a touch screen (105), sequentially displaying visual targets on the touch screen while displaying a fixation target whose position is fixed on the touch screen (see at least col. 2, lines 36-47 which includes the following excerpt –“Referring now to FIG. 1, a system 100 for training and/or testing the peripheral visual abilities of an individual 150 is illustrated. System 100 may comprise a central display element 110 and a peripheral display element 120. Central display element 110 and peripheral display element 120 may comprise portions of a larger display device 105. In the example illustrated in FIG. 1, display device 105 may comprise a touch-sensitive monitor. As illustrated in the example of FIG. 1, individual 150 may register an input using display device 105 as a touch-sensitive input device for responding to peripheral visual indicia such as indicia 125 displayed in the peripheral display element 120. In the example illustrated in FIG. 1, central display element 110 displays a central visual indicia 115.”), during a period from the beginning to the end of the test, and providing a test result based on whether a testee taps the visual target or not (col. 2, line 65- col. 3, line 5 and Fig. 9, box 950).
Due to the 112 issues with this claim, claim 1 is alternatively rejected in view of the touchscreen disclosed by the Reichow et al. reference. The remaining limitations may be rejected on the basis that Reichow is capable of being programmed to perform the functions listed.
Regarding claim 2, Reichow et al. disclose wherein multiple rounds of presenting the visual target to the testee include a round where the number of visual targets to be presented at once is more than one, during the period from the beginning to the end of the test, and the testee tapping all of the visual targets presented is considered as correct (fig. 9, box 920 - > 940 -> 950).
Regarding claim 4, Reichow et al. disclose a vision testing system sequentially displaying visual targets on a touch screen while displaying a fixation target whose position is fixed on the touch screen, during a period from the beginning to the end of the test, and providing a test result based on whether a testee taps the visual target or not (Fig. 1 shows a visual test system, while it is unclear how the rest of the limitations further limit the system, the Office believes that the system in Fig. 1 discloses the functions noted as described in the claim 1 rejection, in box 920, Reichow states that “indicia” is presented meaning more than one and thus this would occur sequentially).
Regarding claim 5, Reichow et al. disclose a vision testing program for making a computer function to sequentially display visual targets on a touch screen while displaying a fixation target whose position is fixed on the touch screen, during a test, and to provide a test result based on whether a testee taps the visual target or not (the device of Fig. 1 in Reichow is realized via a computing environment shown in Fig. 6 which inherently requires programming).
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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Reichow et al. (US 7926943) in view of Mandelstam-Manor et al. (US 2008/0079902, cited in the IDS, hereinafter referred to as M-M).
Regarding claim 3, Reichow et al. do not disclose the vision testing device further comprising a mark for standby position of a hand of the testee to prevent the hand from remaining positioned between the testee and the touch screen. However, the use of designated areas for placing the indicating hand during a visual test was known in the arts at the time of the filing of the invention. M-M teach an apparatus and method for monitoring position of a subject’s hand and shows an example of a prior art system (see Figs. 1A-E which show a user watching a screen and touching it in response to stimuli presented on the screen. M-M notes that the marking hand is required to return to a rest position in between each the projection of stimulus ([0045]). The resting position in this case is adjacent to a switch for detecting the hand which triggers a circuit that indicates the subject is ready for the next test (see [0047], the sensor was interpreted as a marking). It would have been obvious to a person having ordinary skill in the art at the time of the filing of the invention to modify Reichow et al. to include a marking such as that taught by M-M for the tester to put his/her hand during testing because M-M notes that this prevents the hand from blocking the view.
Claim 6 is rejected using the same argument for claim 3.
Conclusion
Claims 1-6 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tho Q. Tran whose telephone number is (571)270-1892. The examiner can normally be reached 7-5.
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/THO Q TRAN/ Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791
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