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 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 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:
vestibulo ocular reflex data-acquiring unit in claim 1
angular velocity data-acquiring unit in claims 2-4, 8 and1 0
analysis unit in claim 4
warning unit in claim 9
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.
The corresponding structures of the claim limitation(s) within the published specification are is/are
vestibulo ocular reflex data-acquiring unit is the software of paragraphs [0162] and [0147]
angular velocity data-acquiring unit is the software of paragraph [0162] and [0147]
analysis unit is the “CPU” of paragraph [0162] and [0147]
The warning unit is the “output device” of paragraph [0161]
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 § 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 1-10 and 12-13 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 12 follows.
STEP 1
Regarding claim 12, the claim recites a series of steps or acts, including acquiring first vestibulo ocular reflex data and second vestibulo ocular reflex data. Thus, the claim is directed to a process, which is one of the statutory categories of invention.
STEP 2A, PRONG ONE
The claim is then analyzed to determine whether it is directed to any judicial exception. The step of acquiring first vestibulo ocular reflex data and second vestibulo ocular reflex data where the first vestibulo ocular reflex data is acquired by dividing a rotation angle owing to a vestibulo ocular reflex with a rotation angle of a head position, and the second vestibulo ocular reflex data is acquired by subtracting at least a rotation angle owing to catch-up saccades (CUS) from the rotation angle of the head position to determine a residual rotation angle, followed by dividing the residual rotation angle with the rotation angle of the head position sets forth a judicial exception. This step describes a mathematical concept, which is an Abstract Idea.
STEP 2A, PRONG TWO
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. The calculating the VOR data 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 calculated VOR data, nor does the method use a particular machine to perform the Abstract Idea.
STEP 2B
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. Claim 12 also recites a step of analyzing semicircular canal functions based on the second vestibulo ocular reflex data, or based on both the first vestibulo ocular reflex data and the second vestibulo ocular reflex data; where the first vestibulo ocular reflex data is acquired by dividing a rotation angle owing to a vestibulo ocular reflex by[[with ]]a rotation angle of a head position, and the second vestibulo ocular reflex data is acquired by subtracting at least a rotation angle owing to catch- up saccades (CUS) from the rotation angle of the head position to determine a residual rotation angle, followed by dividing the residual rotation angle with the rotation angle of the head position, and wherein: the rotation angle of the head position represents an integral of the head angular velocity data during a time when the head is turned; the rotation angle owing to the vestibulo ocular reflex represents an integral of the eye angular velocity data owing to the vestibulo ocular reflex during the time when the head is turned; and the rotation angle owing to CUS represents an integral of the eye angular velocity data corresponding to CUS during the time when the head is turned, which is an abstract idea in the form of a mathematical concept.
Besides the Abstract Ideas, the claim recites the steps of collecting head angular velocity data associated with rotational movements of a head of a subject using a sensor; capturing eye movements of the subject using a detection device; determining eye angular velocity data based on the eye movement image data captured by the detection device. Obtaining head angular movements and eye movements of a subject for use in determining angular velocity data and vestibulo ocular reflex data is well-understood, routine and conventional activity for those in the field of medical diagnostics. Further, the collecting and determining steps are each recited at a high level of generality such that it amounts to insignificant presolution activity, e.g., mere data gathering step 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 obtaining 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.
Applicant is reminded that abstract ideas cannot provide a practical application or significantly more (e.g., an improvement). Both Step 2A Prong 2 and Step 2B require an additional element, not an abstract idea, to provide a practical application or significantly more (e.g., an improvement). See Genetic Technologies Limited v. Merial LLC (Fed Cir 2016). Here, the limitations “acquiring first vestibulo ocular reflex data and second vestibulo ocular reflex data where the first vestibulo ocular reflex data is acquired by dividing a rotation angle owing to a vestibulo ocular reflex with a rotation angle of a head position, and the second vestibulo ocular reflex data is acquired by subtracting at least a rotation angle owing to catch-up saccades (CUS) from the rotation angle of the head position to determine a residual rotation angle, followed by dividing the residual rotation angle with the rotation angle of the head position; analyzing semicircular canal functions based on the second vestibulo ocular reflex data, or based on both the first vestibulo ocular reflex data and the second vestibulo ocular reflex data; where the first vestibulo ocular reflex data is acquired by dividing a rotation angle owing to a vestibulo ocular reflex by a rotation angle of a head position, and the second vestibulo ocular reflex data is acquired by subtracting at least a rotation angle owing to catch- up saccades (CUS) from the rotation angle of the head position to determine a residual rotation angle, followed by dividing the residual rotation angle with the rotation angle of the head position, and wherein: the rotation angle of the head position represents an integral of the head angular velocity data during a time when the head is turned; the rotation angle owing to the vestibulo ocular reflex represents an integral of the eye angular velocity data owing to the vestibulo ocular reflex during the time when the head is turned; and the rotation angle owing to CUS represents an integral of the eye angular velocity data corresponding to CUS during the time when the head is turned” are abstract ideas and not additional elements. The additional elements of claim 12 are merely generically recited computer elements used as tools for executing the abstract ideas or insignificant extra-solution activity. See MPEP 2106.05(a), wherein “[i]t is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.”
Regarding claim 1, the device recited in the claim is a generic device comprising generic components configured to perform the abstract idea. The recited sensor and detection device are generic sensors to perform insignificant pre-solutional activity and memory and processor are 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. Paragraph [0088] of the specification as published teaches using commercially available goggle device such as ICS Impulse manufactured by Natus Medical Incorporated and Eye See Cam manufactured by Interacoustics A/S. Furthermore, Non-Patent Literature Mantokoudis et.al (Quantifying the Vestibulo-Ocular Reflex with Video-Oculography: Nature and Frequency of Artifacts) teaches that “Video-oculography devices are now used to quantify the vestibulo-ocular reflex (VOR)” (abstract) and cite the usage of a commercially available ICS Impulse VOG device (Page 41,Paragraph 3, Lines 8-10) which is a headset includes a gyroscope for detecting head movement and a camera for recording eye movement. Those in the art would recognize, these elements as are well-understood, routine, conventional activity in the field of VOR measuring (see MPEP § 2106.05(d)(I) Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018)).
The dependent claims also fail to add something more to the abstract independent claims as they generally recite method steps pertaining to data gathering, display of data, and abstract ideas. Claims 2-10 and 13 contain abstract ideas in the form of mathematical processes. Claims 4, 9, and 13 also recite mere data gathering and displaying steps. The analyzing, displaying, and data gathering steps recited in the independent claims maintain a high level of generality even when considered in combination with the dependent claims.
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.
Claim 13 is 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 13 recites the limitation "the analysis process". There is insufficient antecedent basis for this limitation in the claim. It is recommended the claim be amended to recite “the analysis method”.
Claim 13 recites the limitation "the angular velocity data-acquiring process ". There is insufficient antecedent basis for this limitation in the claim. It is recommended the claim be amended to recite “an angular velocity data-acquiring process”.
Response to Arguments
Applicant’s arguments, see remarks, filed 05/07/2026, with respect to the 35 U.S.C 112(b) rejections of claims 2-10 and 13 have been fully considered and are persuasive. The 12(b) rejections of claims 2-10 and 13 have been withdrawn.
Applicant's arguments filed 05/07/2026 with respect to the 35 U.S.C 101 rejections of claims 1-10 and 12-13 have been fully considered but they are not persuasive. In regards to the applicant’s argument that the claim integrates the judicial exception via an improvement to a technology or a field the examiner contends that abstract ideas cannot provide a practical application or significantly more (e.g., an improvement). Section 2106.05(a) of the MPEP states: "It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field." Furthermore, the hardware components listed in the claims are generic devices which are commercially available and regularly used in the art of vestibulo-ocular reflex measurements. See 101 argument above and (MPEP § 2106.05(d)(I) Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018)).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCY EPPERT whose telephone number is (571)270-0818. The examiner can normally be reached M-F 7:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUCY EPPERT/Examiner, Art Unit 3791
/ADAM J EISEMAN/Primary Examiner, Art Unit 3791
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