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 .
Response to Amendment
The Amendment filed 01/14/2026 has been entered. Claims 10-14 have been canceled. Claim 1 has been amended.
Response to Arguments
Applicant's arguments filed 01/14/2026 have been fully considered but they are not persuasive.
Regarding the 112(b) rejections, applicant’s arguments have been fully considered and are appreciated. However, the examiner respectfully disagrees. Applicant has amended claim 1 to state light is output “by a light source of the camera,” however does not amend other instances throughout the claims with the same issue. Applicant additionally points at ¶0054 as support for the amendment, however, ¶0054 only states that light is output from the camera, not from a light source of the camera. However, since light sources 240 are disposed adjacent to the camera, such as in Fig. 2A, to function in combination with the camera for eye tracking, examiner will assume these are the light source of the camera. Without clarifying at every instance where the light is coming from, there is ambiguity about the optical path within the device, see 103 rejection of claim 1 and 112(b) rejections below.
Regarding the 103 rejections, applicant’s arguments in combination with the amendments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Raffle et al. (US 20130207887 A1).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
"light in the near-infrared wavelength band output from the camera" in claim 1
"light output from the camera" in claim 2
"camera outputs...light" in claim 5
"the path of light output from the camera" in claim 6
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
Claims 1-9 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 claims 1-2 and 5-6, the limitations “light…output from the camera,” “light output from the camera,” “camera outputs or receives light,” and “light output from the camera,” respectively, raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
Although claim 1 states there is light output by a light source of the camera, it is unclear in further limitations whether the light is coming from the light source of the camera already mentioned or if there is light coming directly from the camera, which is also unclear because a camera does not output light.
For the purposes of examination, examiner assumes “light…output from the light source of the camera”, “light output from the light source of the camera”, “camera towards the camera”, respectively for claims 1-2 and 5-6.
Claims 2-9 are dependent on claim 1 and claims 7-9 are dependent on claim 2, and therefore inherit the same issues.
Claims 4 and 7 recite the limitation "the dummy optical system" in the second lines of each claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examiner, examiner assumes “the first dummy optical system”. Claims 8-9 are dependent on claim 7 and therefore inherit the same issues.
Regarding claim 7, the limitation “further comprising light sources which are disposed on a surface of the first dummy optical system facing the camera or a surface of the beam splitter facing the examinee's eyeball, and irradiate light toward the beam splitter” raises clarity issues. It is unclear how this limitation should be interpreted and it is unclear as to what the metes and bounds of the above claim limitations are and would be needed to meet the above claim limitations.
It is unclear if these are new light sources or if they are the light source of the camera. Based on Fig. 2A, which shows the light sources adjacent to the camera and functionally emitting light from the camera, examiner assumes the light sources are the light source of the camera.
It is further unclear what is meant by the light sources being disposed “on a surface of the first dummy optical system facing the camera”. It is unclear if there is a surface of the first dummy optical system that faces the camera and that is the surface that the light sources are disposed on, or if the light sources are disposed on any surface of the first dummy optical system and the light sources are facing the camera.
Similarly, it is unclear what is meant by the light sources being disposed on “a surface of the beam splitter facing the examinee's eyeball, and irradiate light toward the beam splitter.” It is unclear if there is a surface of the beam splitter facing the examinee’s eyeball and that is the surface the light sources are disposed on, or if the light sources are disposed on any surface of the beam splitter and the light sources are facing the examinee’s eyeball.
Further, it is unclear if “and irradiate the light toward the beam splitter” applied to the scenario where the light sources are disposed on the first dummy optical system surface or the beam splitter surface or both. In either interpretation of the beam splitter surface scenario, shown in Fig. 2B, the light sources cannot also irradiate the beam splitter and have the device continue to function as intended because then the light sources would not send light towards the eyeball. This would also contradict claim 1, which states the beam splitter causes the light in the near-infrared wavelength band output from the camera to enter a pupil of the examinee.
For the purposes of examination, examiner assumes “wherein the light source of the camera is disposed on a surface of the first dummy optical system between the first dummy optical system and the camera s light toward the beam splitter.”
Claims 8-9 are dependent on claim 7 and therefore inherit the same issues.
Regarding claims 8-9, the limitation “the light sources” raises clarity issues for similar reasons as in claim 7. For the purposes of examination, the examiner assumes “the light sourceof the camera” in claim 8 and “the light sourceof the camera is” in claim 9.
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.
Claim(s) 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Raffle et al. (US 20130207887 A1), hereinafter Raffle.
Regarding independent claim 1, Raffle discloses an augmented reality apparatus for examining an examinee's ocular dyskinesia1, the augmented reality apparatus comprising:
an image output unit (128; Fig. 1; ¶0015) that outputs light corresponding to an augmented reality image (¶0002);
a camera (124; Fig. 1; ¶0016) photographing the examinee's eyeball by outputting directing light in a near-infrared wavelength band output (¶0020) by a light source (134; Fig. 1; ¶0020) of the camera (124) (since the light source 134 works together with the camera 124 to perform eye tracking, it is considered a light source of the camera) to the examinee's eyeball and receiving light reflected from the examinee's eyeball (¶0020; Fig. 1);
a beam splitter (112; Fig. 1; ¶0016) which reflects or transmits light in a visible wavelength band (¶0015) output from the image output unit (128) or entering the examinee's eyeball from the outside (Fig. 1); light in the near-infrared wavelength band (¶0020) output from the light source of the camera (134) enters a pupil of the examinee (Fig. 1; ¶0020);
a first dummy optical system (side of 102 that is to the left of 112 in Fig. 1, i.e., “left 102”; Fig. 1; ¶0014) which is disposed between the camera (124) and the beam splitter (112) to extend an optical distance between the beam splitter (112) and the camera (124) (Fig. 1);
a second dummy optical system (side of 102 that is to the right of 112 in Fig. 1, i.e., “right 102”; Fig. 1; ¶0014) which is disposed on a side surface opposite to a side surface of the beam splitter (112) where the first dummy optical system (left 102) is disposed (Fig. 1) to increase the angular range for examining the examinee's ocular dyskinesia2;
a control unit which controls the operation of the image output unit (128) and the camera (124) (inherent for there to be some control unit in order to be able to use the device; ¶0039); and
a power supply unit which supplies power so that each configuration in the augmented reality apparatus is capable of being operated (inherent for there to be some power supply unit in order to power the device; ¶0039).
Raffle does not disclose the beam splitter causes the light in the near-infrared wavelength band output from the camera to enter a pupil of the examinee. However, it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). One would have been motivated to move the light source 134 inside the light guide 102 to be placed before the beam splitter 112 in the optical path toward the eye for the purpose of making the device more compact and protecting the light source – resulting in the beam splitter causing light in the near-infrared wavelength band output from the camera (light source of the camera 134) to enter a pupil of the examinee.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle so that the beam splitter causes the light in the near-infrared wavelength band output from the camera to enter a pupil of the examinee since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art and for the purpose of making the device more compact and protecting the light source.
Regarding claim 3, Raffle discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the image output unit (128) is disposed vertically3 above the beam splitter (112) (the image output unit sends light to the beam splitter, and a direct line can be drawn between the image output unit and the beam splitter, therefore it meets the limitation).
Regarding claim 4, Raffle discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the camera (124) is disposed on a side surface far from the beam splitter (112) of the first dummy optical system (left 102) (Fig. 1).
Regarding claim 5, Raffle discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses the camera (124) receives light in the near-infrared wavelength band (¶0020).
Claim(s) 2 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Raffle (US 20130207887 A1) in view of Lee et al. (US 20200225464 A1), hereinafter Lee.
Regarding claim 2, Raffle discloses the augmented reality apparatus of claim 1, including the light source of the camera being disposed before the beam splitter in the optical path towards the eye, as set forth above. Raffle further discloses the beam splitter (112) comprises: a first surface (Fig. 1) which is disposed in a direction facing the camera and the examinee's eyeball (Fig. 1), and reflects light output from the light source of the camera to the examinee's eyeball (see claim 1 rejection); and the first surface is disposed in a direction facing the image output unit (128) and the examinee's eyeball (Fig. 1), and allows a portion of each of light output from the image output unit (128) and light of a real world entering from the outside to enter the examinee's eyeball (Fig. 1).
Raffle does not disclose a second surface which is disposed in a direction facing the image output unit and the examinee's eyeball, and allows a portion of each of light output from the image output unit and light of a real world entering from the outside to enter the examinee's eyeball.
However, Lee teaches a similar apparatus comprising an image output unit (710; Fig. 13; ¶0094) that outputs light corresponding to an augmented reality image (¶0094), a camera (1330; Figs. 13, 18; ¶0139, ¶0107; it is implicit that the image generator 1330 is also a camera due to ¶0107 where image generator 850 is stated to be a camera and ¶0139 where it is stated that light is sent to the image generator 1330), and a beam splitter (1320; Fig. 13; ¶0119), wherein the beam splitter (1320) comprises: a first surface (1420; Figs. 13, 14B, 18; ¶0126-¶0128) which is disposed in a direction facing the camera (1330) and the examinee's eyeball (Figs. 13, 14B); and a second surface (1410; Figs. 13, 14A, 18; ¶0126-¶0128) which is disposed in a direction facing the image output unit (710) and the examinee's eyeball (Figs. 13, 14A), and allows a portion of each of light output from the image output unit (710) and light of a real world entering from the outside to enter the examinee's eyeball (Figs. 17-18; ¶0136-¶0139).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to incorporate the beam splitter of Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee).
Regarding claim 6, Raffle discloses the augmented reality apparatus of claim 1, as set forth above. Raffle further discloses a second beam splitter (113; Fig. 1; ¶0017) disposed at an intersection point of a path of light output from the image output unit (128) and the path of light towards the camera (124) (Fig. 1). Raffle does not disclose this is the same beam splitter.
However, Lee teaches a similar apparatus comprising an image output unit (710; Fig. 13; ¶0094) that outputs light corresponding to an augmented reality image (¶0094), a camera (1330; Figs. 13, 18; ¶0139, ¶0107; it is implicit that the image generator 1330 is also a camera due to ¶0107 where image generator 850 is stated to be a camera and ¶0139 where it is stated that light is sent to the image generator 1330), and a beam splitter (1320; Fig. 13; ¶0119), wherein the beam splitter (1320) is disposed at an intersection point of a path of light output from the image output unit (710) and the optical path towards the camera (1330) (Fig. 13). Further, it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art. In re Larson 144 USPQ 347, 349, (CCPA 1965).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to incorporate the beam splitter of Lee for the purpose of reflecting incident light beams in different directions and allowing light beams to be incident on the camera, image output unit, and eyeball without any additional components, thus reducing the overall size of the system (¶0121 of Lee) and since it has been held that making in one piece an article which has formerly been formed in multiple pieces involves only routine skill in the art.
Regarding claim 7, Raffle in view of Lee discloses the augmented reality apparatus of claim 2, as set forth above. Raffle does not disclose the light source of the camera is disposed on a surface of the first dummy optical system between the first dummy optical system and the camera and irradiates light toward the beam splitter.
However, Raffle teaches in an alternate embodiment (Fig. 3) a light source (302; Fig. 3; ¶0031) disposed on a surface of the second dummy optical system (right 102), and irradiate light toward the beam splitter (112). It has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950). Whether the light source is positioned facing the eyeball as shown in Fig. 2, on the surface of the first dummy optical system, or on the surface of the second dummy optical system is functionally equivalent.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Raffle to have the light source of the camera disposed on the surface of the first dummy optical system between the camera and the first dummy optical system and irradiating light toward the beam splitter since it has been held that a mere rearrangement of elements without modification of the operation of the device only involves routine skill in the art. In re Japikse 86 USPQ 70 (CCPA 1950).
Regarding claim 8, Raffle in view of Lee discloses the augmented reality apparatus of claim 7, including the light source of the camera being disposed between the camera and the first dummy optical system, as set forth above, which further results in a configuration wherein the light source of the camera (134) irradiates light toward the first surface (Fig. 1 of Raffle).
Regarding claim 9, Raffle in view of Lee discloses the augmented reality apparatus of claim 7, as set forth above. Raffle further discloses the light source of the camera is disposed biased in a preset direction (Fig. 1; ¶0020).
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 NATASHA NIGAM whose telephone number is (571)270-5423. The examiner can normally be reached Monday - Friday 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
/NATASHA NIGAM/Examiner, Art Unit 2872 May 13th, 2026
/George G. King/Primary Examiner, Art Unit 2872
1 This recitation in the preamble is directed to intended use of the device and has not been given any patentable weight since it has been held “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation” Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81, see MPEP 2111.02. Further, any device that can perform eye tracking can perform this intended use, such as the device of Lee in view of Modrzejewska and further in view of McGrath.
2 A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Because the prior art device meets all the structural limitations of the claimed apparatus it therefore also meets this limitation. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114.
3 Regarding the term “vertically” it is not interpreted to mean a particular direction since no frame of reference is established.
Prosecution Insights