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 .
Election/Restrictions
Applicant’s election without traverse of invention II in the reply filed on 13 October 2025 is acknowledged.
Claims 1-10 and 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 October 2025.
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:
Input device, first recited in claim 11 (microphone, hand controller, touchscreen; p. 16, lines 16-18 as filed)
Storage device, first recited in claim 11 (hard disk drive, CD, DVD, RAM, ROM, SSDs, flash memory; p. 16, lines 22-26 as filed)
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 17 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 13, 16, 17 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 16 defines that the device includes a remote storage device and/or an edge storage device, and then calls for transmitting data “to at least one of an edge computing device and a remote storage device”. Are the devices which the data transmitted to separate from the devices that are part of the system, particularly the second recitation of “a remote storage device”? If they are the same the claim should call for transmitting data to the remote storage device. Further, each pair includes a remote storage device and an edge [something] device, is the intent for these edge devices to refer to the same object or does the invention actually include both an “edge storage device” and an “edge computing device”? Clarification is required.
Claim 17 defines that “the input device” comprises one of “an optical sensor, a temperature sensor, a humidity sensor, and a light sensor”. Per the disclosure of the instant invention, “an input device” is a microphone, hand controller, or touchscreen, where any sort of sensor (that is, “sensors 607”) including a camera or temperature sensor is defined as a wholly separate element and not an “input device 606”, see p. 16 lines 16-21 of the specification as filed. No other components are defined as being “an input device”. It is unclear how these “sensors” are considered “input devices” when they are defined as being wholly distinct components. The Examiner further notes that an “optical sensor” is also not defined as being “an input device”, and is only described at p. 6, lines 17-25, and “a temperature/humidity sensor” is also only described at p. 7, line 1, which links a humidity sensor to the category of “sensors 607” and not “input device 606”. It is unclear whether an “input device” is a specific device for input which invokes 112f, as defined in the disclosure, or if the intent is to generically call for using various devices as sources of input, as more suggested by the claims. Clarification is required.
Claim limitation “communications device”, first recited in claim 13, invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. At best the disclosure defines “various and/or numerous communication ports” (p. 16 as filed) that allow communication but not disclosed as being used as a “communications device”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim limitations “edge storage device” and “edge computing device”, each recited in claim 16, invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. No device that can perform “edge storage” or “edge computing” has been defined, nor are these standard terms in the art for any sort of computing device that might not invoke 112f. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claim limitation “remote storage device”, recited in claim 16, invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. At best the disclosure only defines this device as “a patient database” which is accessed via a server (p. 14 as filed), but does not actually disclose any structure that performs storage, as a database given its broadest reasonable interpretation is merely a collection of data. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claims so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 11-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Please see the following Subject Matter Eligibility (“SME”) analysis:
For analysis under SME Step 1, the claims herein are directed to a system, which would be classified under one of the listed statutory classifications (SME Step 1=Yes).
For analysis under revised SME Step 2A, Prong 1, independent claim 1 recites an eye examination system comprising a wearable head mounted display device comprising a processor, an input device, a communications device, optical display screens, a speaker, and a storage device, a computer system, and at least one electronic device, with instructions on the storage device that cause the processor to receive selection of a test module associated with a downloaded eye test, provide instructions concerning the eye test, receive input data responsive to the instructions, and store the received data.
The dependent claims (claims 12-17) appear to be encompassed by the abstract idea of the independent claims since they merely indicate outputting results (claim 16), specify the input device (claim 17), and obtaining additional data and generating additional information based on the additional data (claims 12-15)
The underlined portions of the claims are an indication of elements additional to the abstract idea (to be considered below).
The claim elements may be summarized as the idea of presenting instructions to manage personal behavior; however, the Examiner notes that although this summary of the claims is provided, the analysis regarding subject matter eligibility considers the entirety of the claim elements, both individually and as a whole (or ordered combination). This idea is within the following grouping(s) of subject matter:
Methods of organizing human activity (e.g. managing personal behavior or relationships or interactions between people) – as based on providing instructions concerning an eye test that results in generation of data responsive to the subject following the instructions
Mental processes (e.g., concepts performed in the human mind such as observation, evaluation, judgment, and/or opinion) as based on the observation and evaluation of eye test results and comparisons to baselines – a judgment or opinion regarding eye health.
Therefore, the claims are found to be directed to an abstract idea.
For analysis under revised SME Step 2A, Prong 2, the above judicial exception is not integrated into a practical application because the additional elements do not impose a meaningful limit on the judicial exception when evaluated individually and as a combination. The additional elements are that claim 1 recites a computing system (the processor of the HMD device) as apparently performing the activities. These additional elements do not reflect an improvement in the functioning of a computer or an improvement to other technology or technical field, effect a particular treatment or prophylaxis for a disease or medical condition (there is no medical disease or condition, much less a treatment or prophylaxis for one), implement the judicial exception with, or by using in conjunction with, a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing (there is no transformation/reduction of a physical article), and/or apply or use the judicial exception in some other meaningful way beyond generically linking use of the judicial exception to a particular technological environment.
The claims appear to merely apply the judicial exception, include instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform the abstract idea. The additional elements appear to merely add insignificant extra-solution activity to the judicial exception and/or generally link the use of the judicial exception to a particular technological environment or field of use.
For analysis under SME Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as indicated above, are merely “[a]dding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp.” that MPEP § 2106.05(I)(A) indicates to be insignificant activity.
There is no indication the Examiner can find in the record regarding any specialized computer hardware or other “inventive” components, but rather, the claims merely indicate computer components which appear to be generic components and therefore do not satisfy an inventive concept that would constitute “significantly more” with respect to eligibility, particularly as the disclosure states that “off-the-shelf HMDs may be used when configured to perform eye tests in accordance with methods disclosed herein. In particular, the various methods described below could be performed using an HMD that was designed for another purpose” (p. 5, lines 30-33 as filed).
The individual elements therefore do not appear to offer any significance beyond the application of the abstract idea itself, and there does not appear to be any additional benefit or significance indicated by the ordered combination, i.e., there does not appear to be any synergy or special import to the claim as a whole other than the application of the idea itself.
The tasks performed by the processor further include receipt and storage of data (selection of a test module, receipt of input data), which at best could be considered the insignificant extrasolution activity of data gathering, as these are not recited as being performed by any particular component and are required for all uses of the recited judicial exception (see, for example, Presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price, OIP Technologies, 788 F.3d at 1363, 115 USPQ2d at 1092-93, and Determining the level of a biomarker, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968. See also PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012))
Regarding dependent claim 17, the Examiner notes that the recited “input devices” are not recited as being used for any particular purpose, even the data gathering noted above, such that these elements also do not add anything significantly more. The remainder of dependent claims, as indicated above, appear encompassed by the abstract idea since they merely limit the idea itself or the computer components performing the abstract idea; therefore the dependent claims do not add significantly more than the idea.
Therefore, SME Step 2B=No, any additional elements, whether taken individually or as an ordered whole in combination, do not amount to significantly more than the abstract idea, including analysis of the dependent claims.
Please see the Subject Matter Eligibility (SME) guidance and instruction materials at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility, which includes the latest guidance, memoranda, and update(s) for further information.
Claim Rejections - 35 USC § 102
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.
Claim(s) 11-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fateh (US 2019/0159669).
Regarding claim 11, Fateh discloses an eye examination system for administering modular eye tests to a patient comprising:
a head mounted display (HMD) device (element 100) comprising an HMD processor (paragraph [0031]), an input device operably connected to the HMD processor (paragraph [0031]), a communications device operably connected to the HMD processor (paragraph [0031]), optical display screens operably connected to the HMD processor (paragraph [0030]), at least one speaker operably connected to the HMD processor (paragraph [0032]), and a storage device operably connected to the HMD processor (paragraph [0031]), wherein the HMD device is configured for wearing by a patient (paragraph [0026]);
a computer system operably connected to the HMD device via a communications network (paragraph [0031]); and
at least one electronic device operably connected to the computer system (paragraph [0031]);
wherein the storage device comprises processor executable instructions which when executed causes the HMD processor to:
receive, via one of the input device and the communications device, selection of a test module associated with a specific eye test (paragraph [0017], [0048]) which has been downloaded from an application store to the HMD device (paragraphs [0017], [0022], [0060]-[0064]);
provide instructions to the patient via one of the optical display screens or the at least one speaker concerning the specific eye test (paragraph [0038]);
receive, via the input device, patient input data responsive to the specific eye test instructions (paragraph [0038]); and
store the patient input data in the storage device (paragraph [0042]).
Regarding claim 12, Fateh further discloses that the storage device comprises further processor executable instructions which when executed causes the HMD processor to:
determine that the test module was selected by an eye doctor (paragraph [0048]); and
generate a baseline model of the specific eye test results of the patient (paragraph [0049]); and
store the baseline model of the patient in the storage device (paragraph [0042]).
Regarding claim 13, Fateh further discloses a communications device operable connected to the HMD processor (paragraph [0056]-[0058]) and that the storage device comprises further processor executable instructions which when executed causes the HMD processor to:
determine that the test module was selected by the patient (paragraphs [0046]-[0048]);
determine that the specific eye test results significantly deviate from a baseline model of the patient (paragraph [0049]); and
transmit the specific eye test results to an eye doctor associated with the patient (paragraphs [0052]-[0054]).
Regarding claim 14, Fateh further discloses that the storage device comprises further processor executable instructions which when executed causes the HMD processor to:
determine that the test module was selected by the patient (paragraphs [0046]-[0048]);
determine that the specific eye test results do not significantly deviate from a baseline model of the patient (paragraphs [0049]-[0050]); and
store the specific eye test results in the storage device (paragraphs [0042], [0050]).
Regarding claim 15, Fateh further discloses that the storage device comprises further processor executable instructions which when executed causes the HMD processor to:
transform, based on patient vision parameters, the patient input data into “recovery parameters” (paragraph [0049]-[0050]);
modify individual patient vision parameters based on further patient input data received via the input device (paragraphs [0049]-[0051]);
retest the patient (paragraphs [0049]-[0051]; figure 7);
determine that the retesting of the patient is successful (paragraphs [0017], [0049]-[0051]);
generate updated recovery parameters (paragraphs [0049]-[0051]); and
store the updated recovery parameters in the storage device (paragraph [0042]).
Regarding claim 16, Fateh further discloses at least one of a remote storage device and an “edge storage” device, and wherein the storage device comprises further processor executable instructions which when executed causes the HMD processor to transmit the patient input data to at least one of an “edge computing” device and a remote storage device (paragraphs [0052]-[0054], [0063]-[0064]).
Regarding claim 17, Fateh further discloses that the input device of the HMD device comprises at least one of an optical sensor, a temperature sensor, a humidity sensor, and a light sensor (paragraph [0032]).
Conclusion
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/KAREN E TOTH/Examiner, Art Unit 3791