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 .
Information Disclosure Statement
As required by M.P.E.P. 609, the applicant’s submissions of the Information Disclosure Statement dated 4/10/2024, 1/29/2025, and 1/15/2026 is acknowledged by the examiner and the cited references have been considered in the examination of the claims now pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “graphical user interface” (claims 1, 11, 17); “eye examination” (claims 1, 6, 9, 11, 16, 17); must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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:
a) configuring a graphical user interface (GUI) to display,…in claims 1, 11, 17
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
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 1-20 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 claims 1, 11, 17, the claim limitation “configuring a graphical user interface (GUI) to display” invokes 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.
Specifically, Applicant’s specification fails to disclose any structure, material, to perform the configuration or arrangement. Applicant’s specification appears to disclose essentially a display without any means for performing the arranging.
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.
Claims 2-10, 12-16, and 18-20 are rejected as dependent upon claims 1, 11, 17.
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 11 and 17 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, 11, the claim recites “a processor configured to execute instructions stored in the memory to: determine a distance between the display screen and a user of the handheld computing device” which is a computer implemented function without the necessary/corresponding algorithm (MPEP 2161.01 - If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made). Applicant’s specification does not appear to disclose any/sufficient computer algorithm to perform the eye tracking data to determine whether the user is looking at the target.
As to claim, 19, the claim recites “one or more processors to perform operations comprising: detecting, via a camera of a device of a user, a visual indicator located on an occluder” which is a computer implemented function without the necessary/corresponding algorithm (MPEP 2161.01 - If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description must be made). Applicant’s specification does not appear to disclose any/sufficient computer algorithm to perform the eye tracking data to determine whether the user is looking at the target.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4, 7, 9-15, 17, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang (20130128229).
Regarding claim 1, Huang discloses a method for eye examination (Fig 2, [0037], test subject's eyes), comprising: detecting ([0043], detect pattern), via a camera (camera 110) of a device (device 100), a visual indicator (165) located on an occluder (160) while the occluder is covering at least a portion of a user’s face (Fig 3A, [0039], an occluder 160 is shown that may be used to occlude vision in one eye so the other eye can be tested); configuring a graphical user interface (GUI) to display (Fig 13- Fig 16, [0067], game round to test perifoveal vision), at a display screen of the device ([0067], display area 122), an eye examination administered to the user ([0067], test perifoveal vision); and outputting, via the device, a result of the eye examination based on information encoded by the visual indicator ([0067], inform the player of the number of correct choices made and the number of test rounds played).
Regarding claim 2, Huang discloses wherein the detecting includes detecting a lens of the occluder covering an eye of the user ([0050], 160 could be mounted over plano glasses or strapped on as an eye patch).
Regarding claim 4, Huang discloses wherein the detecting includes detecting an opaque surface of the occluder (160) covering an eye of the user (Fig 3A, [0039], the visual feature 165 could include, for example, a horizontal bar 165A with well-defined termination points (e.g., vertical bars 165B and 165C) so that the length of the horizontal bar may be easily determined by computerized automatic image processing).
Regarding claim 7, Huang discloses wherein the occluder is configured as eyewear that includes frames to rest on the user’s face and arms to rest on the user’s ears (Fig 3A, [0039], occluder 160 could be mounted on spectacle 150 or could be fixed on user’s head using head straps).
Regarding claim 9, Huang discloses further comprising: determining, via the camera (110), a distance between the user and the display screen; and verifying the distance before administering the eye examination (Fig 3A, Fig 3B, [0039], device 100 may display an instruction 140 on the screen 120 (and/or by sound) so the user can position his or her head within the optimal range of distance from the device).
Regarding claim 10, Huang discloses wherein the occluder (160) includes a handle to be held in one hand of the user to hold the occluder against the user’s face, and the device is a portable electronic device to be held in another hand of the user (Fig 3A, [0039], occluder 160 could be mounted on spectacles 150 or could be fixed on the user's head using straps).
Regarding claim 11, Huang discloses a handheld computing device ([0091], computer system configurations, including hand-held devices), comprising: a front facing built-in camera oriented in a first direction (Fig 3A, [0039], occluder 160 could be mounted on spectacles 150 or could be fixed on the user's head); a display screen (120) oriented in the first direction ([0039], device 100 may display an instruction 140 on the screen 120); a memory (22); and a processor configured to execute instructions stored in the memory to (Fig 3A, [0093], processing unit 21): determine a distance between the display screen and a user of the handheld computing device (Fig 3A, Fig 3B, [0039], [0093], based on video analysis, user can position his or her head within the optimal range of distance from the device); determine, via the front facing built-in camera (Fig 2, [0038]), an eye of the user covered by an occluder (Fig 3A, [0039], an occluder 160 is shown that may be used to occlude vision in one eye so the other eye can be tested); detect, via the front facing built-in camera (Fig 3A, [0039], occluder 160 could be mounted on spectacles 150 or could be fixed on the user's head), a visual indicator (165) located on the occluder (160) while the occluder is covering at least a portion of a user’s face (Fig 3A, [0039], an occluder 160 is shown that may be used to occlude vision in one eye so the other eye can be tested); configure a graphical user interface (GUI) to display (Fig 13- Fig 16, [0067], game round to test perifoveal vision), via the display screen (122), an eye examination to the user ([0067], test perifoveal vision); and output, via the display screen, a result of the eye examination based on information encoded by the visual indicator ([0067], inform the player of the number of correct choices made and the number of test rounds played).
Regarding claim 12, Huang discloses wherein the handheld computing device is a smartphone ([0079], smart phone) or a tablet computer ([0079], tablet computer).
Regarding claim 13, Huang discloses wherein determining the eye of the user covered by the occluder includes determining whether the eye is a left eye of the user or a right eye of the user (Fig 3A, [0039], occlude vision in one eye so the other eye can be tested).
Regarding claim 14, Huang discloses wherein the detection includes detecting the visual indicator on a surface that is opposite of another surface that is against the user’s face (Fig 2, Fig 3A, [0039], user can position his or her head within the optimal range of distance from the device).
Regarding claim 15, Huang discloses wherein the detection includes detecting a lens of the occluder covering another eye of the user ([0050], occluder 160 should be mounted over the spectacle lens over the eye not being tested).
Regarding claim 17, Huang discloses a non-transitory computer readable medium storing instructions operable to cause one or more processors to perform operations ([0093], computing device 12 includes a system memory 22, the processing unit 21, and a system bus 23 that operatively couples various system components, including the system memory 22, to the processing unit 21) comprising: detecting ([0043], detect pattern), via a camera (camera 110) of a device of a user (device 100), a visual indicator (165) located on an occluder (160) while the occluder is covering at least a portion of a user’s face (Fig 3A, [0039], an occluder 160 is shown that may be used to occlude vision in one eye so the other eye can be tested); configuring a graphical user interface (GUI) to display (Fig 13- Fig 16, [0067], game round to test perifoveal vision), at a display screen of the device ([0067], display area 122), an eye examination administered to the user ([0067], test perifoveal vision); and outputting, via the device, a result of the eye examination based on information encoded by the visual indicator ([0067], inform the player of the number of correct choices made and the number of test rounds played).
Regarding claim 18, Huang discloses wherein the detecting includes detecting a lens of the occluder covering an eye of the user ([0050], 160 could be mounted over plano glasses or strapped on as an eye patch).
Regarding claim 20, Huang discloses wherein the detecting includes detecting an opaque surface of the occluder (160) covering an eye of the user (Fig 3A, [0039], the visual feature 165 could include, for example, a horizontal bar 165A with well-defined termination points (e.g., vertical bars 165B and 165C) so that the length of the horizontal bar may be easily determined by computerized automatic image processing).
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3, 5, 6, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Huang (20130128229) in view of Lee (20230036308).
Regarding claim 3, Huang discloses the invention as described within claim 2 but does not teach wherein the information indicates a power of the lens used to simulate distance vision. However, within a similar endeavor, Lee teaches wherein the information indicates a power of the lens used to simulate distance vision (Fig 10, [0123], zones A1, A2, and A3 may be adapted to respectively simulate cylindrical lenses having optical powers). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system of Huang with the components of Lee for the purpose of increasing and providing use convenience to a user.
Regarding claim 5, Huang discloses the invention as described within claim 1 but does not teach wherein a type of the occluder is identified by the information. However, Lee teaches wherein a type of the occluder is identified by the information ([0170], select the most clearly visible one of the re-displayed VA measuring images and obtain information (a third input) about user's selection). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system of Huang with the components of Lee for the purpose of increasing and providing use convenience to a user.
Regarding claim 6, Huang discloses the invention as described within claim 1 but does not teach wherein the information indicates the eye examination, from a plurality of eye examinations, to be performed. However, Lee teaches wherein the information indicates the eye examination, from a plurality of eye examinations, to be performed ([0170], select the most clearly visible one of the re-displayed VA measuring images and obtain information (a third input) about user's selection). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system of Huang with the components of Lee for the purpose of increasing and providing use convenience to a user.
Regarding claim 16, Huang discloses the invention as described within claim 11 but does not teach wherein the information indicates the eye examination, from a plurality of eye examinations, to be performed. However, Lee teaches wherein the information indicates the eye examination, from a plurality of eye examinations, to be performed ([0170], select the most clearly visible one of the re-displayed VA measuring images and obtain information (a third input) about user's selection). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system of Huang with the components of Lee for the purpose of increasing and providing use convenience to a user.
Regarding claim 19, Huang discloses the invention as described within claim 2 but does not teach wherein the information indicates a power of the lens used to simulate distance vision. However, Lee teaches wherein the information indicates a power of the lens used to simulate distance vision (Fig 10, [0123], zones A1, A2, and A3 may be adapted to respectively simulate cylindrical lenses having optical powers). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the optical system of Huang with the components of Lee for the purpose of increasing and providing use convenience to a user.
Allowable Subject Matter
Claim 8 is objected to 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: with respect to the allowable subject matter, none of the prior art either alone or in combination disclose or teach of the claimed combination of limitations to warrant a rejection under 35 USC 102 or 103.
Specifically, with respect to dependent claim 3, the prior art of Huang taken either singly or in combination with any other prior art fails to suggest such a method including the specific arrangement: “wherein the visual indicator is a quick response (QR) code that indicates a power of a lens and an identification of an occluder”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sakurada (20170127942), Reichow (7926943), and Horn (5946075) are examples of a vision assessment method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sharrief I Broome whose telephone number is (571)272-3454. The examiner can normally be reached Monday-Friday 8am-5pm, EST.
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.
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Sharrief I. Broome
Primary Examiner
Art Unit 2872
/SHARRIEF I BROOME/ Primary Examiner, Art Unit 2872
Prosecution Insights