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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
Applicant’s arguments with respect to claim 1 as they pertain to the prior art have been considered but are moot in view of the new ground(s) of rejection, as necessitated by amendment.
Regarding Applicant’s remarks as they pertain to claim 21 and the USC 112(b) rejection, Examiner is not persuaded. The issue isn’t as suggested by Applicant of a breadth versus indefiniteness issue, the issue is the function performed by the structure and how to infringe the claim (MPEP 2173). Specifically, there is nothing within the claim, drawings, or specification, of how to seal off the right and left compartments to prevent the right eye from seeing the left displays and vice versa. The metes and bounds are unclear since what structure infringes, or how to perform the function in order to infringe the claimed function is unknown (MPEP 2173.05(g) - Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008)).
Regarding Applicant’s remarks as they pertain to claim 23 and the USC 112(a) rejection, Examiner is not persuaded. Examiner agrees that Applicant’s specification provides support that during the covering of one eye and uncovering of the other eye, the object remains stationary:
In this state, the right eye position is being tracked and recorded even when there is no visible light illuminating the right eye (because the right display 4 has been darkened) such that the right eye is said to be “covered”, while the left display remains illuminated and displaying the object and so the left eye is “uncovered” (the object remains visible and preferably stationary in the left display 3) (para. [0021])
In that state, the processor signals the right visible light display 4 so the object disappears from the right visible light display 4 but remains displayed as stationary in the left visible light display 3 (para. [0022]).
Examiner is not persuaded that Applicant’s originally filed specification provides support that between one cover/uncover iteration and another cover/uncover iteration the object (e.g. the tree in Figure 1) remains stationary. Applicant’s remarks that Figure 8 provides evidence that such object remains stationary is also not persuasive. Figure 8 and paragraph [0025] discuss how the eyes have been tracked during the displaying and covering/uncovering of the eyes during a test, not iterative tests. Figure 8 and para. [0025] provide no statement on whether the object remained stationary.
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 14-15, 21-22 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.
As to claim 14, the claim recites “the processor is configured to: shift coordinates of the object…”, and as per claim 1 “object remains stationary in the right visible display…remains stationary in the left visible display…maintain the object at a stationary position during successive cover and uncover iterations” which appear to require the object to both be stationary from claim 1 and move (shift coordinates) from claim 14. The metes and bounds are unclear since claim 14 appears to contradict the stationary requirements of claim 1. For purpose of compact prosecution Examiner will understand the claim such that so long as the object is displayable, the coordinates of the object can necessarily be shifted.
Claim 15 is rejected as dependent upon claim 14.
As to claim 21, the claim recites “the left and right compartments comprise opaque compartments that seal off the left and right eyes to prevent the right eye from seeing the left visible light display…the left eye from seeing the right visible display…” which is a function that does not follow from the recited structure (MPEP 2173.05(g)). Specifically, neither the claims nor the originally filed disclosure provide any structure of the opaque compartment to seal the left and right eyes from each other. Is this an opaque divider between the eyes (not disclosed)? Is this some other structural element which separates the eye compartments? The metes and bounds are unclear since a person of ordinary skill in the art would not be able to draw a clear boundary what does and does not infringe the function to seal off and prevent the right eye from seeing the left visible display, the left eye from seeing the right visible display.
For purposes of compact prosecution, Examiner will understand that so long as the displays don’t display, or light is block for each, the limitation is met.
Claim 22 is rejected as dependent upon claim 21.
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.
Claims 1-15, 21-23 are 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.
As to claim 1, the claim recites “such that deviation is determined from tracked eye movement rather than from repositioning of the object” which appears to be prohibited new matter. Specifically, there is nothing within the written description specifying the negative limitation that the deviation is not (rather than) determined from repositioning of the object (MPEP 2173.05(i)).
As to claim 1, the claim recites “the processor is configured to maintain the object at a stationary position during successive cover and uncover iterations for measuring alignment…” which appears to be prohibitive new matter. Specifically, while Applicant’s originally filed specification provides support for the object is stationary during one eye being covered1, the specification fails to provide adequate support for the object being stationary during successive cover and uncover iterations1.
Claims 2-15, 21-23 are rejected as dependent upon claim 1.
As to claim 23, the claim recites “the object displayed to the left eye and the right eye remains stationary on both the left and right visible light displays between multiple successive iterations of displaying and stop displaying of the object on each of the left and right displays” which appears to be prohibitive new matter. Specifically, while Applicant’s specification discusses the displayed object can be stationary1, the specification does not specify stationary displaying between successive iterations.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-15, 21-23 are rejected under 35 U.S.C. 102(a1) as being anticipated by Miao et al. (Virtual reality-based measurement of ocular deviation in strabismus; herein Miao)2.
As to claim 1, Miao teaches a system for performing a cover-uncover test (Miao Fig. 1; Fig. 3; Fig. 4; Fig. 5), the system comprising
a headset (Miao Fig. 1) comprising
a left visible light display (Miao Fig. 1; Fig. 4)
a left compartment to fit over a left eye of a user (Miao Fig. 1; Fig. 4);
a right visible display (Miao Fig. 1; Fig. 4);
a right compartment to fit over a right eye of the user (Miao Fig. 1; Fig. 4),
wherein the left compartment and the right compartment are configured so that when the headset has been fitted over the user’s eye i) the user cannot see the right visible light display using only their left eye and ii) the user cannot see the left visible light display using only their right eye (Miao Fig. 1; Fig. 4; page 3, section 2.2 - In the VR device, they can see a square space with one target. Patient’s sight in VR is restricted to only watch forward in order to sustain the relative position of the target and the patient);
a non-visible light-based eye tracking subsystem adapted for tracking a position of the left eye and a position of the right eye (Miao Fig. 3; page 2, section 2.1 - Eye movement evaluation);
a processor (Miao Section 2.2) configured to, when the headset has been fitted over the left eye and the right eye of the user,
i) signal the left visible light display and the right visible display to display an object that the user sees as a single object while the left and right eye are open (Miao Fig. 1)
ii) record the tracked position of the left eye while signaling the left visible display to stop displaying the object so that the object ceases to be output from the left visible light display (Miao Fig. 4; Fig. 5; section 3.1; section 2.1)
iii) record the tracked position of the right eye while signaling the right visible display to stop displaying the object so that the object ceases to be output from the right visible display while the object remains displayed and stationary in the left visible display (Miao Fig. 4; Fig. 5; section 3.1; section 2.1);
wherein the processor is configured to maintain the object at a stationary position during successive cover and uncover iterations for measuring alignment between the left and right eyes (Miao Fig. 4; Fig. 5; Section 3 - Direct Measurement; Section 3.1, page 5 - 3) repeat steps 1) and 2) two times) such that the eye deviation is determined from tracked eye movement rather than from repositioning of the object (Miao Fig. 3; Fig. 4 - de; Section 3.2).
As to claim 2, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor signals the left visible light display so the object disappears from the left visible light display but remains stationary in the right visible light display (Miao Fig. 4).
As to claim 3, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor is external to the headset (Miao Section 2.2) and the headset comprises a wired or wireless communications network interface through which image data from the eye tracking subsystem is sent to the processor (Miao Section 2.2).
As to claim 4, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor is external to the headset (Miao Section 2.2) and the headset comprises a wired or wireless communications network interface through which the tracked positions of the left eye and the right eye are sent to the processor (Miao Section 2.2).
As to claim 5, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor is further configured to signal a further display to display the tracked positions of the left eye and the right eye (Miao Section 2.2).
As to claim 6, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the eye tracking subsystem images an entirety of the left eye and an entirety of the right eye (Miao Fig. 4), and wherein the processor determines gaze angles of the left eye and the right eye based on:
knowledge of distance between the left eye and the left visible light display (Miao Fig. 4);
distance between the right eye and the right visible display (Miao Fig. 4), and
location of a left pupil within the left eye and a right pupil within the right eye, or interpupillary distance (Miao Fig. 4).
As to claim 7, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor signaling the left display or the right display to stop displaying the object comprises the processor signaling the left display or the right display to darken until the object disappears (Miao Fig. 4).
As to claim 8, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor signaling the left display or the right display to stop displaying the object comprises the processor signaling the left display or the right display to darken completely (Miao Fig. 4).
As to claim 10, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches
in ii) record the tracked position of the right eye as an individual right eye calibration position (Miao Fig. 4; Section 3.1);
in iii) record the tracked position of the left eye as an individual left eye calibration position (Miao Fig. 4; Section 3.1);
and determine a deviation of the left eye or right eye based on a difference between the combined calibration positions in iv) and the individual right and left eye calibration positions (Miao Fig. 4; Sections 3.1, 3.2).
As to claim 11, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 10, and Miao further teaches the processor is further configured to prepare data for displaying the deviation of the left eye or the right eye (Miao Fig. 4; Fig. 5).
As to claim 12, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the eye tracking subsystem for tracking the position of the left eye and the position of the right eye performs imaging of an entirety of the left eye and an entirety of the right eye (Miao Fig. 3; Fig. 4; Fig. 6), and the processor is configured to process said imaging to generate each of the tracked position of the left eye and the tracked position of the right eye as an absolute position with respect to the wearer’s head (Miao Fig. 3; Fig. 4; Fig. 6), measure interpupillary distance (Miao Fig. 4; Section 3.2; Section 4.2), register virtual coordinates of the object to gaze coordinates (Miao Fig. 4; Fig. 6), and define a virtual prism correction (Miao Section 4; Fig. 6).
As to claim 13, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 12, and Miao further teaches the processor is configured to display the virtual prism correction as a measure of tropia of the user (Miao Fig. 6; Fig. 8; Section 4).
As to claim 14, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the eye tracking subsystem performs imaging of i) an entirety of the left eye to produce an imaged left eye (Miao Fig. 4; Fig. 6), and ii) an entirety of the right eye to produce an imaged right eye (Miao Fig. 4; Fig. 6), and the processor is configured to:
shift coordinates of the object (Miao Fig. 6), resulting in shifted object coordinates, until the imaged right eye and the imaged left eye become aligned or centered (Miao Fig. 6); and
convert the shifted object coordinates to an angular position or to a prism diopter measurement, of the left eye or of the right eye (Miao Fig. 6; Section 4).
As to claim 15, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 14, and Miao further teaches the processor is configured to display the prism diopter measurement as a measure of tropia of the user (Miao Fig. 6; Fig. 8; Section 4).
As to claim 21, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the left and right compartments comprise opaque compartments that seal off the left and right eyes to prevent the right eye from seeing the left visible light display and the left eye from seeing the right visible light display when the headset is fitted over the left and right eyes (Miao Fig. 1; Fig. 4; page 3, section 2.2 - a VR device, a FOVE, is used…In the VR device, they can see a square space with one target. Patient’s sight in VR is restricted to only watch forward in order to sustain the relative position of the target and the patient).
As to claim 22, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 22, and Miao further teaches the left and right compartments comprise entirely opaque compartments that seal off the left and right eyes in complete darkness when the left and right visible light displays are turned off (Miao Fig. 1; section 2.2).
As to claim 23, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the object displayed to the left eye and the right eye remains stationary on both the left and right visible displays between multiple successive iterations of displaying and stop displaying of the object on each of the left and right visible light displays (Miao Fig. 4; Section 3.1).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Miao as applied to claim 1 above, and further in view of Oz et al. (2018/0028057 - Oz; of record).
As to claim 9, Miao teaches all the limitations of the instant invention as detailed above with respect to claim 1, and Miao further teaches the processor is configured to before ii) and iii) and while the user fixates on the object (Miao Fig. 1; Fig. 4; Fig. 6);
iv) record a combined calibration position of the left eye and a combined calibration position of the right eye while the left and right visible displays are displaying the object that the user would see as a single object (Miao Fig. 1; Fig. 4; Section 2.1; Section 3.1), while their left and right eyes are both open simultaneously, if their eyes were centered (Miao Fig. 1; Fig. 4; Section 2.1; Section 3.1).
Miao does not specify if the displays are simultaneously displaying.
In the same field of endeavor Oz teaches a cover-uncover test with a calibration display of both eyes viewing the object simultaneously with the displays displaying simultaneously (Oz Fig. 4a - Step 1; para. [0077] - Step 1 starts with both eyes not covered. Two test targets, one for each eye, coincide on the display unit and both alternating shutters are transparent. Then, initial data is obtained from the camera unit. More specifically, the camera unit (eye tracker) collects the data of each eye condition e.g. gazing direction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to provide both displays as displaying since, as taught by Oz, such features allow for generating initial gaze directions (Oz para. [0077], [0076]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Modrzejewska et al. (US 2025/0295307); Uchida et al. (HMD-based cover test system for the diagnosis of ocular misalignment)3 are cited as additional examples of a cover-uncover tests.
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 ZACHARY W WILKES whose telephone number is (571)270-7540. The examiner can normally be reached M-F 8-4 (Pacific).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY W WILKES/Primary Examiner, Art Unit 2872 May 12, 2026
1 Originally filed specification para. [00021], [00022]
2 Yinan Miao, Jun Young Jeon, Gyuhae Park, Sang Woo Park, Hwan Heo,
Virtual reality-based measurement of ocular deviation in strabismus; Computer Methods and Programs in Biomedicine,Volume 185, 2020, 105132, ISSN 0169-2607, https://doi.org/10.1016/j.cmpb.2019.105132.
3 Uchida, N., Takatuka, K., Yamaba, H. et al. HMD-based cover test system for the diagnosis of ocular misalignment. Artif Life Robotics 24, 332–337 (2019). https://doi.org/10.1007/s10015-018-0520-4
Prosecution Insights