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 .
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, 3, 4, and 6-14 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.
Regarding claim 1, the phrase “said neuro-sensor” in line 4 lacks proper antecedent basis as line 3 recites “at least one sensor”. When more than one sensor is present, to which of the plurality of sensors does “said neuro-sensor” refer? The same indefiniteness issue applies to the phrase “the neuro-sensor” in element a). The phrase “the neural signal” in element c) also lacks proper antecedent basis as the claim recites two neural signals – one detected from “one area of the brain” and another detected from “another area of the brain”. Furthermore, element a) recites “the neural signals” (plural). To which of these two neural signals does “the neural signal” refer? For this examination, the phrase is being interpreted as referring to any neural signal detected by the device.
Regarding claim 3, the claim is indefinite in that it is dependent on a cancelled claim. For this examination, claim 3 is being interpreted as being dependent on claim 1. Further regarding claim 3, it is unclear what further limitations the claim provides to claim 1. Claim 3 recites determining at least one specific feature from the plurality of recorded neural signals; claim 1 already recites comparing at least one specific feature determined from the recorded neural signals, which would inherently require determining the at least one specific feature. Claim 3 recites comparing said specific feature determined from said plurality of neural signals to a respective threshold specific feature; this limitation is already recited in claim 1. Claim 3 recites assessing whether the subject is experiencing discomfort glare and/or disability glare based on the comparison; this step is also already recited in claim 1. Are the determining, comparing, and assessing steps of claim 3 the same steps recited in claim 1, or are they steps performed in addition to the steps recited in claim 1? For this examination, any reference(s) meeting the limitations set forth in claim 1 will also read on claim 3.
Regarding claim 4, the claim, like claim 3, recites a step of determining at least one specific feature from each recorded neural signal – a step already recited in claim 1. For this examination, this limitation in claim 4 is not being given patentable weight. Further regarding claim 4, the phrases “said given specific area of the brain”, “the neural signal”, and “the threshold neural signal” each lack proper antecedent basis. Finally, the phrase “said at least one specific feature of each recorded neural signal being compared to a respective threshold specific feature of the threshold neural signal originate [originating] from a same area of the brain of the subject of the at least one specific feature of each recorded neural signal” (emphasis added) renders the claim indefinite. The italicized portion of the limitation is not understood in the context of the claim. For this examination, claim 4 is being interpreted such that the control unit is adapted to compare said at least one specific feature of each recorded neural signal to a respective threshold specific feature of the threshold neural signal (a limitation already present in claim 1).
Regarding claim 6, the phrase “said amplitude value” lacks proper antecedent basis. It is also unclear why the number “1” is present after the term “eye” in line 3 of the claim. Further regarding claim 6, the phrases “the neural signal originating from said at least one area of the brain” and “said at least one area of the brain” both lack proper antecedent basis.
Regarding claim 7, the phrase “any of” in line 1 renders the claim indefinite in that claim 7 is solely dependent on claim 1.
Regarding claim 8, the phrase “said light source” in line 2 lacks proper antecedent basis as claim 7 recites “at least one light source”. For the purpose of examination, the phrase in claim 8 is being interpreted as “the at least one light source”. The phrase “said same or the two areas of the brain of the subject” renders the claim indefinite. The phrase “said same or the two areas of the brain” lacks proper antecedent basis. Further regarding claim 8, it is unclear how exactly the threshold neural signal is determined. The claim indicates that a recorded neural signal for which the change in brain activity occurs is determined as the threshold neural signal, but brain activity is constantly changing. Furthermore, a subject’s brain activity would change with each given light condition to which at least one of their eyes was exposed. Is there a particular change in brain activity that indicates that a recorded neural signal should be determined as the threshold neural signal, or would any recorded neural signal that indicates a change in brain activity (which would be all recorded neural signals) be determined as the threshold neural signal? Clarification is requested.
Regarding claim 9, the phrase “the light condition” lacks proper antecedent basis as claim 8 recites a plurality of given light conditions. The phrase “the ratio of maximum amplitude values” also lacks proper antecedent basis. Further regarding the phrase “the ratio of maximum amplitude values”, a ratio is a comparison between two values. When more than two maximum amplitude values exist (i.e., more than 2 neural signals), how would the ratio of maximum amplitude values be determined?
Regarding claim 10, is the discomfort threshold neural signal the same as or different than the threshold neural signal of claim 1? The phrases “the shift from discomfort glare to painful glare” and “the shift from the no-glare state to disability glare” also lack proper antecedent basis. For the purpose of examination, the phrases are being interpreted as “a shift from discomfort glare to painful glare” and “a shift from the no-glare state to disability glare”, respectively. Further regarding claim 10, it is unclear what further limitation the claim provides to claim 1. Claim 10 merely recites that there are three different threshold neural signals, but fails to tie the threshold signals to the claimed device.
Regarding claim 11, the phrase “the eye” lacks proper antecedent basis as claim 1 recites “the eyes”. To which of the subject’s two eyes is “the eye” referring? Further regarding claim 11, as with claim 10, it is unclear what further limitation the claim provides to the claimed device. Claim 11 recites a method step, without tying the method step to any particular functional element of the claimed device. Is the filter part of the claimed device? As currently written, claim 11 could be interpreted such that a filter separate from the claimed device is provided to an eye of the subject while step a) is being performed.
Regarding claim 12, the phrase “The eyeglass” in the preamble lacks proper antecedent basis. For the purpose of examination, the phrase is being interpreted as “Eyeglasses”.
Regarding claim 13, the phrase “The method” in the preamble lacks proper antecedent basis. For the purpose of examination, the phrase is being interpreted as “A method”. Further regarding claim 13, step b) renders the claim indefinite. According to step a), one neural signal is recorded; to what is “each neural signal recorded” referring if only one neural signal is recorded? Furthermore, the phrase “providing, each neural signal recorded, a threshold neural signal” is not understood. For this examination, the phrase “each neural signal recorded” is not being given patentable weight. Regarding step c), the phrases “said neural signals” and “the threshold neural signals” both lack proper antecedent basis. For this examination, the phrases are being interpreted as “said neural signal” and “a threshold neural signal”.
Claims not explicitly rejected above are rejected due to their dependence on a rejected base claim.
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 1, 3, 4, and 6-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. A streamlined analysis of claim 13 follows.
Regarding claim 13, the claim recites a series of steps or acts, including recording a neural signal, providing a threshold neural signal, and comparing the recorded neural signal to the threshold neural signal. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
The claim is then analyzed to determine whether it is directed to any judicial exception. The step of assessing whether a recorded neural signal correlates with a discomfort glare and/or disability glare by comparing the recorded neural signal to the threshold neural signal sets forth a judicial exception. This step describes a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Thus, the claim is drawn to a Mental Process, which is an Abstract Idea.
Next, the claim as a whole is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The claim fails to recite an additional element or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception. Claim 13 fails to recite any application of the assessment. The assessment does not provide an improvement to the technological field, the method does not effect a particular treatment or effect a particular change based on the assessment, nor does the method use a particular machine to perform the Abstract Idea.
Next, the claim as a whole is analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception. Besides the Abstract Idea, the claim recites additional steps of recording a neural signal while at least one eye of a subject receives a given light condition, and providing a threshold neural signal. The recording and providing steps are each recited at a high level of generality such that they amount to insignificant presolution activity, e.g., mere data gathering steps necessary to perform the Abstract Idea. When recited at this high level of generality, there is no meaningful limitation, such as a particular or unconventional step that distinguishes it from well-understood, routine, and conventional data gathering and comparing activity engaged in by medical professionals prior to Applicant's invention. Furthermore, it is well established that the mere physical or tangible nature of additional elements such as the recording and comparing steps do not automatically confer eligibility on a claim directed to an abstract idea (see, e.g., Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2358-59 (2014)).
Consideration of the additional elements as a combination also adds no other meaningful limitations to the exception not already present when the elements are considered separately. Unlike the eligible claim in Diehr in which the elements limiting the exception are individually conventional, but taken together act in concert to improve a technical field, the claim here does not provide an improvement to the technical field. Even when viewed as a combination, the additional elements fail to transform the exception into a patent-eligible application of that exception. Thus, the claim as a whole does not amount to significantly more than the exception itself. The claim is therefore drawn to non-statutory subject matter.
Regarding claim 1, the device recited in the claim is a generic device comprising generic components configured to perform the Abstract Idea. The recited at least one neuro-sensor is a generic sensor configured to perform pre-solutional data gathering activity, and the control unit is a computer system is configured to perform the Abstract Idea. According to section 2106.05(f) of the MPEP, merely using a computer as a tool to perform an abstract idea does not integrate the Abstract Idea into a practical application.
The same rationale applies to claims 12 and 14. While claim 12 recites that the control unit is adapted to determine a value for a variable parameter of a generically claimed active filter, it does not positively recite that the control unit is configured to apply the determined value to the active filter.
The dependent claims also fail to add something more to the abstract independent claims as they generally recite method steps pertaining to data gathering and the comparison of data. The recording, providing, assessing, and comparing steps/functions recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
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.
Claims 1, 3, 4, 7, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hideaki et al.’581 (JP 2020-130581 – previously cited) in view of Miller et al.’946 (US Pub No. 2008/0214946 – previously cited) further in view of Wu et al.’556 (US Pub No. 2009/0192556 – previously cited).
Regarding claims 1 and 3, Hideaki et al.’581 discloses a device for assessing discomfort glare and/or disability glare of a subject (see ABSTRACT and first paragraph of page 4, beginning with “The present inventor has found…”), the device comprising: at least one neuro-sensor for detecting a neural signal linked to the sensitivity of the eyes of the subject (page 4, second full paragraph, beginning with “Further, the glare sensory test device…”; and page 5, third full paragraph, beginning with “FIG. 1 is a diagram schematically showing…”), wherein said neuro-sensor comprises a plurality of electrodes (Figure 1, electrodes 60, 61, 62; page 6, 7th full paragraph), each electrode capable of being placed anywhere on the head of the subject, including in a forehead region above the eyes and in a back region behind the head of the subject, and wherein each electrode is capable of detecting a neural signal originating from an area of the brain (including one area and another area); a control unit (page 5, third full paragraph, beginning with “FIG. 1 is a diagram schematically showing…”) adapted to: a) record the neural signals of the subject detected by the at least one neuro-sensor while at least one eye of the subject receives a given light condition (pages 6-8); and c) assess the neural signals recorded in step a) to correlate each signal to a discomfort glare and/or disability glare of the subject (pages 6-8).
Hideaki et al.’581 discloses all of the elements of the current invention, as discussed above, except for the control unit being adapted to: b) provide a threshold neural signal for each neural signal recorded, each threshold neural signal being characteristic of a shift for the subject for no-glare state to discomfort glare and/or disability glare, and c) assess whether the neural signals recorded in step a) correlate with discomfort glare and/or discomfort glare of the subject by comparing each neural signal recorded in step a) to a respective threshold neural signal provided in step b). Miller et al.’946 teaches comparing an acquired signal with a threshold signal in order to correlate the acquired signal to one of a plurality of medical conditions (sections [0085], [0111]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the control unit of Hideaki et al.’581 such that it is configured to b) provide a threshold neural signal for each recorded signal that is characteristic of a shift for the subject for no-glare state to discomfort glare and/or disability glare, and c) assess whether each neural signal recorded in step a) correlates with discomfort glare and/or discomfort glare of the subject by comparing the recorded neural signal to a respective threshold neural signal provided in step b), as it would merely be the simple substitution of one known assessment method (comparing a recorded neural signal to a threshold neural signal, as taught by Miller et al.’946) for another (comparing a value obtained from the recorded neural signal to a threshold range, as taught by Hikdeaki et al.’581) to obtain predictable results.
Hideaki et al.’581 in view of Miller et al.’946 discloses all of the elements of the current invention, as discussed above, except for the control unit being adapted to: determine at least one specific feature of each recorded neural signal, compare each said at least one specific feature of a respective recorded neural signal to a threshold specific feature of a respective threshold neural signal, and depending on the result of said comparison, assess whether the subject is experiencing discomfort glare and/or disability glare.
Wu et al.’556 teaches that when comparing an acquired/recorded signal to a threshold signal in order to classify the recorded signal into a category, a specific feature of the recorded signal can be compared to a corresponding specific feature of the threshold signal (sections [0224-0226]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have modified the control unit of Hideaki et al.’581 in view of Miller et al.’946 such that it is adapted to determine at least one specific feature of each recorded neural signal, compare said at least one specific feature of the recorded neural signal to a threshold specific feature of the respective threshold neural signal, and depending on the result of said comparison, assess whether the subject is experiencing discomfort glare and/or disability glare. The modification to Hideaki et al.’581 in view of Miller et al.’946 would merely be combining prior art elements according to known methods to yield predictable results.
Regarding claim 4, Wu et al.’556 discloses that the at least one specific feature includes an amplitude value of the neural signal (section [0223-0224], [0226]). As each recorded neural signal is recorded after the at least one eye of the subject receives a given light condition, the amplitude value of each recorded neural signal is an amplitude value of a neural signal originating from at least one area of the brain of the subject at a chosen time after said at least one eye of the subject receives the given light condition.
Regarding claim 7, Hideaki et al.’581 discloses that the device comprises at least one light source that is operated by the control unit to expose said at least one eye of the subject to said given light condition (page 6, second full paragraph, beginning with “Returning to FIG. 1, the display control unit 20…”).
Regarding claim 10, as the claim fails to provide a further limitation to the claimed device, Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556 reads on claim 10.
Regarding claim 11, as the claim fails to provide a further limitation to the claimed device, Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556 reads on claim 11. Furthermore, the eyes of the subject are capable of being provided with a filter through which the light passes before reaching the eyes of the subject while step a) is being performed.
Regarding claim 13, the sections of Hideaki et al.’581 cited above, as modified by Miller et al.’946 and Wu et al.’556, disclose a method comprising steps a), b), and c) of claim 13, with the exception of placing an electrode in a forehead region above the eyes of the subject. Official notice is being taken that it is well known in the EEG signal analysis art to use an electrode in the forehead region as a ground or reference electrode. As such, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to have moved either the ground or reference electrode of Hideaki et al.’581 (electrode 61 or 62) to the forehead region of the subject to act as a ground or reference electrode. The recorded neural signal would be detected using electrode 60 at the back of the head (as shown in Figure 1 of Hideaki et al.’581) and the ground/reference electrode placed on the forehead region.
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Chene et al.’820 (WO 2018/197820 – previously cited) in view of Hideaki et al.’581 further in view of Miller et al.’946 further in view of Wu et al.’556.
The US translation of Chene et al.’820, seen in US Pub No. 2020/0146546 – previously cited, will be referenced for the following rejections.
Regarding claim 12, Chene et al.’546 discloses eyeglasses comprising: an active filter defined at least by one variable parameter chosen among a transmission value and/or a spectrum range (sections [0021], [0147], [0168-0172]), wherein a control unit of a device is adapted to determine a value for said variable parameter of the active filter based on assessing a discomfort glare and/or disability glare when the subject receives a light condition through the eyeglasses (sections [0168-0172]).
Chene et al.’546 discloses all of the elements of the current invention, as discussed above, except for the eyeglasses comprising the device as claimed in claim 1. As discussed in paragraph 7 above, Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556 teaches the device of claim 1, wherein the device assesses discomfort glare and/or disability glare. It would have been obvious to one of ordinary skill in the art to have modified the eyeglasses of Chene et al.’546 to include the device of claim 1, as taught by Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556, as it would provide a means for the eyeglasses to assess the discomfort glare and/or disability glare of the subject. The modification to Chene et al.’546 would provide one integral eyeglass device to assess discomfort and/or disability glare of the subject and to dynamically adjust an active filter of the eyeglasses based on the assessment, instead of separate eyeglasses and a separate discomfort glare and/or disability glare assessment device. According to MPEP section 2144.04 V. B., the use of a one piece construction instead of separate pieces of construction would merely be a matter of obvious design choice.
Regarding claim 14, Chene et al.’546 discloses a virtual reality headset intended to be worn by a subject, the virtual reality headset comprising a fastening unit for keeping a device in front of the eyes of said subject (see ABSTRACT, Figure 2, and sections [0109-0111], [0130], [0305]).
Chene et al.’546 discloses all of the elements of the current invention, as discussed above, except for the virtual reality headset comprising the device as claimed in claim 1. As discussed in paragraph 7 above, Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556 teaches the device of claim 1, wherein the device assesses discomfort glare and/or disability glare. It would have been obvious to one of ordinary skill in the art to have modified the virtual reality headset of Chene et al.’546 to include the device of claim 1, as taught by Hideaki et al.’581 in view of Miller et al.’946 further in view of Wu et al.’556, as it would provide a means for the virtual reality headset to assess the discomfort glare and/or disability glare of the subject. The modification to Chene et al.’546 would provide one integral virtual reality headset device to assess discomfort and/or disability glare of the subject and to dynamically adjust an active filter of the virtual reality headset based on the assessment, instead of a separate virtual reality headset and a separate discomfort glare and/or disability glare assessment device. According to MPEP section 2144.04 V. B., the use of a one piece construction instead of separate pieces of construction would merely be a matter of obvious design choice.
Examiner’s Note
The following is a statement of reasons for the lack of prior art rejections:
Regarding claim 6, none of the prior art discloses or suggests, either alone or in combination, a device comprising a control unit that determines a ratio between a maximum amplitude of a neural signal originating from one area of the brain and a maximum amplitude of a neural signal originating from another area of the brain, in combination with the other claimed elements.
Regarding claim 8, none of the prior art discloses or suggests, either alone or in combination, a device comprising a control unit that compares with each other recorded neural signals to evaluate a change in brain activity as a function of a light condition received by at least one eye, and that determines a threshold neural signal as the recorded neural signal for which the change in brain activity occurs, in combination with the other claimed elements.
Response to Arguments
Applicant's arguments filed 30 March 2026 have been fully considered.
Regarding the rejections of the claims under 35 U.S.C. 112(b), while Applicant’s amendments have overcome some of the previous rejections, as noted in paragraph 3 above, indefiniteness issues remain in the claims.
Regarding the rejection of the claims under 35 U.S.C. 101, Applicant’s arguments are not persuasive. Reciting the specific locations of generic electrodes, particularly for a device claim, does not overcome the rejection. In order to overcome the 101 rejection, the claimed device would need to recite a “particular machine”. Currently, the claimed device comprises a plurality of electrodes and a control unit. The plurality of electrodes is generically claimed and is configured to perform routine data gathering activity. The control unit is a computer system configured to perform routine data gathering steps, and the Abstract Idea itself. No “particular machine” is recited in the device claims. Nor is a particular machine recited in the method claims.
Applicant’s argument that the human mind cannot perform the assessing step is not persuasive. The human mind is capable of seeing a signal/feature of a signal, mentally comparing it to another signal/feature of a signal, and making an assessment based on the comparison.
Applicant’s argument that the claimed invention provides an improvement is not persuasive as (1) Applicant does not state what the improvement is, and (2) no evidence is provided supporting the alleged improvement.
Regarding the rejections of the claims in view of the previously cited prior art, Applicant’s arguments are not persuasive. As noted above, with regard to the device claims, the recited locations of the electrodes do not overcome the Hideaki reference. For prior art to read on a device claim, the prior art must teach the structural elements of the claimed invention, and be capable of performing the functions recited in the claimed invention. The prior art need not specifically teach any particular method steps recited in the claim that are drawn to an intended use of the claimed device. In other words, for claim 1, the prior art does not need to teach placing an electrode in a forehead region and placing another electrode in a back region of the head; it need only teach an electrode that can be placed in a forehead region and an electrode that can be placed in a back region of the head. Structurally, the device of Hideaki comprises a neuro-sensor comprising a plurality of electrodes, wherein each electrode is capable of being placed anywhere on a subject’s head, including on a forehead region and in a back region behind the head. Regarding claim 13, because the locations of the electrodes do need to be taught by the prior art for the method claim, the Examiner has modified the rejection of claim 13 such that one of the ground or reference electrodes of Hideaki is placed in a forehead region of the subject. It is noted that for claim 13, only one neural signal is recorded; there is no “dual detection”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hiromoto et al.’723 (JP 2015/226723 – previously cited) discloses a device and method for assessing discomfort and/or disability glare via neural signal analysis.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ETSUB D BERHANU/Primary Examiner, Art Unit 3791
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