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 .
Terminal Disclaimer
The terminal disclaimer filed on 2/17/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11,963,723 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Claims 1, 3-6 and 8-19 are pending; claims 2, 7 and 20 have been canceled.
The examiner has removed the double patenting rejection in view of the approved terminal disclaimer of 2/17/26.
Applicant's arguments filed 2/17/26 have been fully considered but they are not persuasive.
The applicant argues:
The Applicant's attorney respectfully submits the Office Action's 101 rejection fails to establish aprimafacie case of patent ineligible subject matter. More particularly, the Appellant's attorney submits that the Office Action's 101 rejection fails to establish a prima facie case of patent ineligible subject matter and merely lists the basis as "Software instructions are non-statutory under 35 USC 101". (See Office Action, pg. 2). According to MPEP § 2106 and related examination guidelines, a prima facie case of ineligibility under 35 U.S.C. § 101 requires the examiner to establish a reasonable foundation showing a claim is directed to a judicial exception (abstract idea, law of nature, or natural phenomenon) and lacks an inventive concept, based on the record. Applicant's Attorney feels that the present claims, as amended, define a statutory framework which falls within the definition of a "new and useful process, machine, manufacture ... ".
The examiner respectfully disagrees because the claims as amended don’t include hardware (e.g., a processor) in the body of the claims for performing their steps and therefore are nothing more than software instructions.
The applicant argues:
The “claims as amended, define a statutory framework which falls within the definition of a "new and useful process, machine, manufacture ...”.
The examiner respectfully disagrees because the claims as amended don’t include hardware (e.g., a processor) in the body of the claims for performing their steps and therefore are nothing more than software instructions which are non-statutory under 35 U.S.C. 101.
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, 3-6 and 8-18 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 claim 1 is directed to “A computer-implemented method of providing an AR-overlay in a medical environment, the AR-overlay being projected into a field-of-view provided by an AR-device as a function of predefined viewing-characteristics” with steps of acquiring, determining and changing, which are nothing more than software instructions.
Software instructions are non-statutory under 35 U.S.C. 101; claims 3-6, 8, 10-18 depend from claim 1 and therefore have the same problem and are rejected under the same rationale.
Claim 9 is similar in scope to claim 1 (i.e., it contains steps that are nothing more than software instructions) and therefore it is rejected under the same rationale as claim 1.
Allowable Subject Matter
Claim 19 is allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 19, the prior art doesn’t teach:
further the steps of:
determining whether to darken out the field-of-view provided by the AR- device except for a defined region of interest, based on the spatial direction of the visual axis of the eyes with respect to the object;
controlling the AR-device to darken out a physical surrounding of the user in response to the spatial direction of the visual axis of the eyes of the user with respect to the object indicates that the eyes are looking at the object, and
controlling an amount of light entering the AR-device to display the physical surrounding of the user in response to the eyes of the user not looking at the object.
Claims 1, 3-6, 8-16 and 18 would be allowable except for the 101 rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art doesn’t teach:
wherein the method further comprises:
determining whether to darken out the field-of-view provided by the AR-device except for a defined region of interest, based on the spatial direction of the visual axis of the eyes with respect to the object;
controlling the AR-device to darken out a physical surrounding of the user in response to the spatial direction of the visual axis of the eyes of the user with respect to the object indicates that the eyes are looking at the object, and
controlling an amount of light entering the AR-device to display the physical surrounding of the user in response to the eyes of the user not looking at the object.
Claims 17 would be objected to (except for the 101 rejection) as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 17, the prior art doesn’t teach
17. (Original) The method according to claim 1, wherein at least one X-ray-image is displayed, which is registered with a patient's anatomy within the field-of-view provided by the AR-device, and wherein, when a spatial direction of a visual axis of the AR-device or the eyes substantially corresponds to a direction of an X-ray-path, at least one CT-image, particularly a DDR-rendering thereof is displayed, which is registered with the patient's anatomy within the field-of-view provided by the AR-device.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. 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 MAURICE L MCDOWELL, JR whose telephone number is (571)270-3707. The examiner can normally be reached Mon-Fri: 2pm-10pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Said A. Broome can be reached at 571-272-2931. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAURICE L. MCDOWELL, JR/Primary Examiner, Art Unit 2612