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 with traverse of invention I in the reply filed on 8 December 2025 is acknowledged. The traversal is on the ground(s) that there would be no burden in examining two inventions using the time and resources allotted for examination of one invention. This is not found persuasive because only one invention remains in the claims, the claims directed to an additional invention having been canceled with this response.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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, 4-8 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 in lines 2-3 calls for obtaining information including “each gaze movement information measured using at least one target” – it is unclear whether the intent is to obtain a plurality of sets of movement information, each corresponding to a single target, or to obtain a plurality of sets of movement information each corresponding to the same target, or some other movement information. Clarification is required.
Claim 1 in line 3 defines “at least one target”; lines 8 and 11 refer to “each target”; lines 13, 15, 23 refer to “the target”; it is unclear how many targets are involved in the invention as claimed.
Claim 1 in line 31 refers to “the target center”; there is insufficient antecedent basis for this limitation in the claim, as no target center has been defined. Further, if the intent is to refer to a center of “the target”, it is unclear which of the at least one target/each target would be “the target” having a center as noted above. Clarification is required.
Claim 1 defines that a start time point is determined as “a time point when movement satisfies preset conditions according to a saccade included in the gaze movement information”. As presented it appears the gaze movement information must inherently include a saccade having taken place such that the “conditions according to a saccade” can be satisfied? It appears the intent may be that the start time point is defined as corresponding to when a saccade is identified in the gaze movement information? Clarification is required.
Claim 1 further defines that “the preset conditions” include a first condition and a second condition, where the start time is determined as a time point “satisfying all of the first conditions”. There is no antecedent basis for the existence of more than one first condition. Further, the claim already defines the start time as corresponding to movement satisfying the preset conditions (that is the first condition and the second condition). Further, the claim defines the start time point in lines 12-13 as being “a time point when movement… satisfies preset conditions” but then redefines the start time point in lines 17-19 as being “a time point satisfying all of the first conditions” and “calculated with reference to a time point when the saccade occurs”, such that instead of being the time the saccade occurs as defined in lines 12-14 the start time has been redefined to only be calculated with reference to the time the saccade occurs.
Lines 20-21 define “the at least one parameter” as comprising three parameters; it is unclear if the intent is to define the at least one parameter as comprising an angle, a length, and/or a speed, or if the intent is that the at least one parameter actually is three parameters.
Lines 24 refers to “a start point to an end point of the saccade”; there is no indication of how these points are determined, input, or otherwise obtained for use in evaluating this parameter. At best the claim calls for obtaining movement information and indicates that a saccade takes place during the movement, but does not call for identifying features of a saccade in the movement that would allow evaluation of a start point or an end point.
Lines 31-32 define that “the end time point is determined as a time point satisfying a second condition”; lines 14-15 already define the end time point as occurring “when fixation to the target starts”, such that it is unclear if fixation to the target is considered to be a second condition, or if both must be met? Further, line 16 defines that “the preset conditions include a first condition and a second condition”, where per line 13 these preset conditions are used to define the start time point, such that the reference to “a second condition” in lines 31-32 as being part of defining the end time point is unclear as it is unclear if this is the same second condition or a different second condition, and if a different second condition, what is the first condition which it inherently references?
The term “minimal” in claim 1, line 33, is a relative term which renders the claim indefinite. The term “minimal” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what distance constitutes being “minimal” to satisfy this condition.
Lines 35-36 call for determining a threshold “using a ratio of glaucoma subjects obtained based on a normal region and a glaucoma region from the area distribution information”. It is unclear how one could find a ratio of glaucoma subjects. Further, it is unclear what a “normal region” or “glaucoma region” might be – are these parts of an eye? Or geographical regions where some glaucoma subjects might live in a glaucoma region? Clarification is required.
Claim 5 refers to “calculating area information for each subject” – are these the “glaucoma subjects” of claim 1? Or is the intent for “each subject” to refer to additional uses of the device involving additional subjects being tested? Further, is “each subject” part of the “plurality of subjects” referred to later in claim 5 or are these still additional subjects?
Claim 8 calls for use of “learning data generated by labeling a plurality of area information according to being normal or the presence or absence of glaucoma”; is the area information calculated in claim 1 this same area information that is labeled? How or where is additional area information obtained? Further if the alternatives are (1) normal, or (2) presence or absence of glaucoma, how does that provide any information when a subject without glaucoma would fall into both categories?
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06. The claims cannot be further treated on the merits.
Claim limitations “information obtaining unit”, “information analysis unit”, and “glaucoma determination unit”, each first recited in claim 1, 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 part of the disclosure sets forth any description of these “units” beyond being part of a “determination device” that is also not described as having any particular structure, material, or acts. At best the specification makes reference to “all or some of the components” as being hardware or a computer program (paragraph [072] as filed) but does not provide any specificity as to a structure for these particular units. 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 claim 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 1, 4-8 are 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 the claims as recited, ostensibly directed to a “device”, are not disclosed as having any structure that could be considered a device that performs the recited functions of this “device”, where the disclosure itself indicates that all recited functions could be “implemented in a computer program with program modules performing all or some of the functions”, such that in the absence of any structure or any product embodying a computer program, the claim are directed to a signal per se and are non-statutory.
Conclusion
No art has been applied against the claims at this time; however, as all the claims are rejected under 112 and 101 they are not presently allowable and the question of prior art will be revisited upon resolution of these other issues.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US 2016/0106315 to Kempinski, US 2022/0230722 to Neumann
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/KAREN E TOTH/ Examiner, Art Unit 3791