DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 08/27/2026 has been entered.
3. Currently claim 108 has been amended; claims 1-107 and 119 are canceled. Therefore, claims 108 to 118 and 120 are currently pending in this application.
Claim Rejections - 35 USC § 101
4. Non-Statutory (Directed to a Judicial Exception without an Inventive Concept/Significantly More)
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 108-118 and 120 are rejected under 35 U.S.C.101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The current claims fall within one of the four statutory categories of invention (MPEP 2106.03).
Step 2A [Wingdings font/0xE0] Prong One:
The claim(s) recite a judicial exception, namely an abstract idea, as shown below:
— Considering claim 108 as a representative claim, the following claimed limitations recite an abstract idea:
perform a clinical intervention on the patient;
provide a stimulus for the patient, and track eye pupil movement of a first eye of the patient in response to the stimulus for more than 30 seconds;
analyze eye pupil movement of the first eye of the patient, the analyzing comprises predicting positions the pupil of the first eye based on time elapsed since a start of the visual stimuli;
generate a plot that reflects a trajectory traveled of the first eye in response to a visual stimuli, the plot having four segments that represent different directions;
calculate a plurality of velocities of the first eye including a segment velocity of eye pupil movement in each of the four segments of the plot, and compare a first segment velocity of eye pupil movement with at least one of three other segment velocities of the four segments;
assess recovery of the patient in response to the clinical intervention based on the calculated plurality of velocities.
Thus, the limitations identified above recite an abstract idea since the limitations correspond to certain methods of organizing human activity, and/or mental processes, which are part of the enumerated groupings of abstract ideas identified according to the current eligibility standard (see MPEP 2106.04(a)). For instance, given the limitations regarding the process of performing a clinical intervention on a patient, including: presenting a stimulus for the patient, thereby requiring the patient to track the stimulus; observing the patient’s analyzing the patient’s performance; creating a plot/graph based on the analysis, etc., the claims correspond to certain methods of organizing human activity.
Similarly, given the limitations regarding the process of: analyzing eye pupil movement of the first eye of the patient; generating a plot that reflects a trajectory traveled of the first eye in response to a visual stimuli, the plot having four segments that represent different directions; calculating (e.g., based on one or more measured parameters already gathered) a plurality of velocities of the first eye including a segment velocity of eye pupil movement in each of the four segments of the plot, and comparing a first segment velocity of eye pupil movement with at least one of three other segment velocities of the four segments; assessing recovery of the patient in response to the clinical intervention based on the calculated plurality of velocities, etc., the claims also correspond to mental processes; such as, an observation, an evaluation and/or a judgment process, etc.
Step 2A [Wingdings font/0xE0] Prong Two:
The claim(s) recite additional element(s), wherein an eye tracking device that comprises a computer/processor, a display and a camera, is utilized to facilitate the recited steps regarding: presenting a stimulus to the patient (e.g., providing, using the eye tracking device positioned 10 cm from the patient, a stimulus on the display for the patient; and tracking eye pupil movement of a first eye of the patient in response to the stimulus for more than 30 seconds to capture at least 1,000 samples using the camera at a sampling rate of greater than 500 Hz); collecting and analyzing the patient’s responses (e.g., analyzing eye pupil movement of the first eye of the patient using the computer in electronic communication with the camera . . . predicting positions of an eye pupil of the first eye based on time elapsed since a start of the visual stimuli).
In addition, one or more graphical and/or numerical results are generated (e.g., generating a plot that reflects a trajectory traveled of the first eye in response to a visual stimuli, the plot having four segments that represent different directions; calculating a plurality of velocities of the first eye including a segment velocity of eye pupil movement in each of the four segments of the plot, and comparing a first segment velocity of eye pupil movement with at least one of three other segment velocities of the four segments); and thereby, the recovery of the patient in response to the clinical intervention is assessed based on the calculated plurality of velocities, etc.
However, the claimed additional element(s) fail to integrate the abstract idea into a practical application since the additional element(s) are utilized merely as a tool to facilitate the abstract idea. Thus, when each claim is considered as a whole, the additional element(s) fail to integrate the abstract idea into a practical application since they fail to impose meaningful limits on practicing the abstract idea. For instance, when each of the claims is considered as a whole, none of the claims provides an improvement over the relevant existing technology.
The observations above confirm that the claims are indeed directed to an abstract idea.
Step 2B
Accordingly, when the claim(s) is considered as a whole (i.e., considering all claim elements both individually and in combination), the claimed additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to “significantly more” than the abstract idea itself (also see MPEP 2106). The claimed additional elements are directed to conventional computer elements, which are serving merely to perform conventional computer functions.
Accordingly, when each of the current claims is considered as a whole (e.g., see the discussion under Prong Two above regarding such consideration of the claim as a whole), none of the claims recites an element—or a combination of elements—directed to an inventive concept.
Note also that such utilization of the conventional computer technology to generate one or more results, based on the analysis of collected data related to one or both eyes of a subject, etc., is directed to a well-understood, routine or conventional activity in the art (e.g. see US 5,422, 690; US 6,346,887; US 2004/0233061, etc.).
The observations above confirm that the current claimed invention fails to amount to “significantly more” than an abstract idea.
It is worth noting that the above analysis already encompasses each of the current dependent claims (i.e., claims 109-118 and 120). Particularly, each of the dependent claims also fails to amount to “significantly more” than the abstract idea since each dependent claim is directed to a further abstract idea, and/or a further conventional computer element(s) utilized to facilitate the abstract idea.
Accordingly, the findings above demonstrate that none of the claims implements an element—or a combination of elements—directed to an inventive concept (e.g., none of the current claims is reciting an element—or a combination of elements—that provides a technological improvement over the existing/conventional technology).
► Applicant’s arguments directed to section §101 have been fully considered (the arguments filed on 08/27/2026). However, the arguments are not persuasive at least for the following reasons:
Firstly, while listing the limitations that claim 108 is currently reciting, Applicant asserts that “[t]he Office asserts that steps (d)-(g) — analyzing eye pupil movement, generating the four segment trajectory plot, calculating segment velocities, and comparing them—constitute an unpatentable mental process because they could be performed as ‘an observation, an evaluation, and/or a judgment.’ This characterization does not withstand scrutiny under MPEP § 2106.04(a)(2)(III)(C), which confirms that a claim limitation is not a mental process if it cannot practically be performed in the human mind . . . Claim 108 requires capturing at least 1,000 discrete, time-stamped samples of eye pupil position over a period exceeding 30 seconds; resolving that sample stream into a plot comprising four distinct directional segments . . . This is a defined computational procedure operating on a dataset that no human could contemporaneously perceive, retain, and process by unaided observation or with pen and paper, particularly where the samples are captured at a rate that inherently exceeds the temporal resolution of human visual perception and manual recording. Segmenting over 1,000 discrete data points into four directional bins and computing per-bin velocities in a form suitable for pairwise numerical comparison is qualitatively different from the kind of holistic, low-volume ‘evaluation’ or ‘judgment’ that the mental-process grouping is intended to capture” (emphasis added).
However, besides mischaracterizing the Office’s analysis, Applicant also appears to fail to properly apply the test for mental processes. It is worth noting that the Office does not identify any of the computer elements as part of the abstract idea. For instance, step (d) recites, “analyzing eye pupil movement of the first eye of the patient using the computer in electronic communication with the camera” (emphasis added). In this regard, as quite evident from the findings presented under Prong One of Step 2A, the Office does not identify the computer elements (i.e., the computer that communicates with the camera) as part of the abstract idea. In contrast, while simply disregarding the fact above, Applicant appears to make a blanket assertion that “[t]he Office asserts that steps (d)-(g) . . . constitute an unpatentable mental process” (emphasis added). Thus, Applicant’s assertion is already invalid from the outset.
Secondly, Applicant’s assertions directed to the number of samples that current claim 108 requires—namely, the “1,000 discrete, time-stamped samples of eye pupil
position over a period exceeding 30 seconds”, etc., is also irrelevant. Although the recited term, “a period exceeding 30 seconds” (emphasis added) broadly encompasses various time durations (e.g., 10 minutes, 1 hour, 2 hours, etc.), the claim is referring to the operation of the camera, “1,000 samples using the camera at a sampling rate of greater than 500 Hz”, see part (c) of claim 108 (emphasis added). However, as already pointed out above, none of the computer elements, which includes the structural and functional features of the claimed camera, is considered as part of the abstract idea. In contrast, while improperly blending the additional elements with the abstract idea, Applicant is once again attempting to challenge the Office’s findings under Prong One (i.e., the finding regarding mental processes). Consequently, Applicant’s arguments above are not relevant even to challenge—much less negate—the Office’s findings. In fact, Appellant’s theory above, namely Appellant’s attempt to emphasize the incapability of a human to perform such high sampling rate like the camera, appears to be similar to the argument that the Appellant presented in the case of Appeal No 2021-000937 (see page 9, emphasis added),
“ Appellant contends that the operations of measuring the subject’s right eye positions and left eye positions and generating a disconjugacy metric could not be performed in the human mind because a doctor would need to be able to measure eye positions at a frequency (on the order of 200–1250 pictures of each eye per orbit), and with enough precision and accuracy, to generate a metric indicative of an impairment.”
Thus, as quite evident from the excerpt above, the Appellant is emphasizing the functions of the measurement device to negate the finding regarding mental processes. In particular, Appellant is essentially emphasizing the incapability of a human (the doctor) to perform as a machine. Of course, the Board right away pointed out the inaccuracy of Appellant’s theory, “[t]his line of argument, as it pertains to the measurement apparatus and the operation of measuring eye positions, and not to the operations of generating a disconjugacy metric and comparing the metric to a baseline” (again see page 9, the last paragraph, emphasis added).
The observation above confirms that Applicant’s current theory is also not valid since Applicant is also attempting to challenge the Office’s finding regarding mental processes, while improperly relying of the operation of the camera. Consequently, Applicant’s theory, the alleged “defined computational procedure operating on a dataset that no human could contemporaneously perceive, retain, and process . . . particularly where the samples are captured at a rate that inherently exceeds the temporal resolution of human visual perception and manual recording” (emphasis added), is once again not relevant to challenge the Office’s findings regarding mental processes.
Appellant is also mischaracterizing the exemplary analysis that the Office previously presented based on Electric Power Group. Applicant’s asserts, “[t]his distinguishes the present claims from Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), on which the Office relies. The claim at issue in Electric Power Group recited ‘detecting’ and ‘analyzing’ events on a power grid using only functional, result-oriented language, without reciting any specific algorithm, calculation . . . Claim 108, by contrast, recites the specific computational steps themselves: segmentation into four directional bins, calculation of a discrete velocity value per segment, and comparison of specific segment velocities against one another. The specificity of the claimed data-processing methodology, not merely the volume of data, is what takes this claim outside the mental-process grouping” (emphasis added).
However, regarding the analysis presented in the previous office action, the Office is not necessarily relying on Electric Power Group to show the abstract idea that the claims are reciting. In fact, the Office is not necessarily required to cite any court decision when identifying the abstract idea that Applicant’s claims are reciting. Instead, the Office discussed Electric Power Group merely to signify Applicant’s incorrect theory; namely, Applicant’s strategy to repeatedly emphasize the claimed computer elements in order to challenge the Office’s findings regarding mental processes. It is again important to consider the claim—i.e., claims 12—of Electric Power Group (emphasis added),
12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid . . . receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements . . . detecting and analyzing events in real-time from the plurality of data streams . . . measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes . . .
Accordingly, when applying Applicant’s theory above to claim 12, Applicant would argue that claim 12 does not recite a mental process because a human cannot mentally detect events on an interconnected electric power grid in real time. Of course, Applicant would also argue that a human cannot mentally receive a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements, etc.
Thus, it is again evident from the observation above that the Office’s exemplary analysis directed to Electric Power Group is intended merely to signify Applicant’s inaccurate theory.
In addition, regarding the current claims, it is noted that Applicant is essentially relying on part of the abstract idea, namely the alleged “specific computational steps”, in order to challenge the Offices finding regarding mental processes. However, calculation or computational steps are typically concepts that a human performs in the mind (and/or using a pen and paper). Of course, when considering claim 108, a human (e.g., a clinician, etc.) uses the existing computer technology (e.g., a computer and a camera, etc.) to facilitate the process of gathering and analyzing data, including generating one or more results (e.g., numerical/graphical data, a possible diagnosis, etc.). However, such use of the existing computer technology—merely as a tool—to facilitate the claimed abstract idea does not necessarily mean that the claim is not reciting an abstract idea; namely, a mental process. Thus, none of Applicant’s assertions, including Applicant’s alleged “specificity” of the “claimed data processing methodology”, negates the Office’s findings regarding mental processes.
Note also that, except for utilizing the existing computer technology to facilitate the abstract idea, none of the claims—when considered as a whole—implements a new or advanced technological feature. Accordingly, given the lack of technological improvement, including the generic and conventional arrangement of the claimed additional elements, none of the claims implements an inventive concept that amounts to “significantly more” than an abstract idea.
Accordingly, at least for the reasons discussed above, the Office concludes that the current claims fail to comply with section §101.
Claim Rejections - 35 USC § 112
5. 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 108 to 118 and 120 are rejected under 35 U.S.C.112(b), or second paragraph (pre-AIA ), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 108 recites, “analyzing eye pupil movement of the first eye of the patient using the computer in electronic communication with the camera, wherein the analyzing comprises temporally calibrating pupil movement by predicting positions of an eye pupil of the first eye based on time elapsed since a start of the visual stimuli” (emphasis added).
(i) However, it is unclear whether the term “an eye pupil of the first eye”, as recited in line 3 of part (d), is referring to the same “pupil” of the first eye, as recited in the first line of part (d).
(ii) In addition, it is also unclear what is implied per the expression, “temporally calibrating pupil movement”, since the pupil is a natural element that moves naturally when responding to a stimulus. Although the limitation in question above was previously presented (previous claim 119), further evaluation of the limitation has revealed that it is unclear whether the expression, “temporally calibrating pupil movement”, is implying the calibration of the patient’s automatic physiological response to a stimulus.
Accordingly, the current claims (i.e., claims 108-118 and 120) are ambiguous at least for the reasons above.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees.
A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 108-118 and 120, in view of Rothberg (US 5,422,690), are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of US 11,013,441 (hereinafter “the patent”)
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claimed features are directed to obvious modification of the claims in the corresponding patent.
For example, claim 108 of the current application recites features that are similar to the features of claim 1 of the patent, except that claims 108 doses not positively recite, calculating a standard deviation or p value for eye pupil movement of the at least one of the first eye and the second eye of the subject as compared to the normal or mean eye pupil movement.
However, each of claim 108 already recites the process of calculating a plurality of velocities including a segment velocity of eye pupil movement. In addition, Rothberg already teaches the process of storing baseline data regarding eye/pupil moment, wherein the baseline data involves mean value and standard deviation value related to each eye, and wherein Rothberg further calculates and compares the deviation of the current measured as eye/pupil velocity with the baseline data (col.4, lines 62-67; col.5, TABLE 2; col.5, lines 20-48; col.16, lines 12-24).
Accordingly, given the above teaching, 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 current claims in view of Rothberg; for example, by incorporating eye baseline data into the database, including an algorithm that calculates the mean and standard deviation for each of the one or more eyes, etc., in order to enable the current claims to accurately determine, based on the comparison to the baseline data, whether the movement/velocity of the pupil of one/both eyes of the user is within acceptable range.
Similarly, regarding the eye tracking device that comprises a display, a computer/processor, as recited per claims 108, the term “device suitable for tracking eye pupil movement”, as recited per claim 1 of the patent, broadly encompasses devices—including those with a processor and a display—that are suitable to track eye pupil movement.
Alternately, claim 1-13 of the patent, in view of Waldorf 2014/0171756 (see [0039] to [0043]), are directed to obvious modification of the current claims. Accordingly, based on the consideration of knowledge readily available to one of ordinary skill in the art, or alternatively by considering the teaching of US 2014/0171756, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claim 1 of the patent; for example, by (a) incorporating an eye tracking device that further involves a display and an integral processing capability, (b) specifying one or more recommended parameters as applied to: (i) the distance that the tracking device should be positioned, (ii) the time duration for tracking one or both eyes, and (iii) the number of samples to be collected and the rate of sampling, etc., so that the modified claim would provide more reasonable estimations or results, while at the same time making the tracking device more portable in order to allow a user (e.g. a clinician, etc.) to perform the diagnoses steps at one or more sites.
Note also that current claim 108 recites the step, “performing a clinical intervention on the patient”, as part of the initial step; and the steps “assessing recovery of the patient in response to the clinical intervention based on the calculated plurality of velocities”, as part of its final step.
However, given the generic nature of each of the above steps, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claim 1 of the patent; for example, by providing a relevant environment—such as a clinical setting, including an initial procedure and a final procedure to be carried out; so that the user’s medical condition (if any) is first treated prior executing the evaluation steps; and furthermore, the user’s progress or deterioration (if any) is evaluated at the end of the steps, based on the results of the evaluation, etc., so that the user would get a more relevant help to improves his/her mental condition, etc.
In addition, the limitation, “the analyzing comprises temporally calibrating pupil movement by predicting positions of an eye pupil of the first eye based on time elapsed since a start of the visual stimuli”, does not negate the obviousness analysis presented above since the pupil of the eye is always naturally responding to a stimulus (i.e., the natural response is not dictated by the alleged calibration).
Although the exemplary analysis above is related to claim\s 108 and 122, it is worth to note similar analysis applies to each of the current claims. Note also that a limitation directed to an intended purpose does not negate the obviousness analysis since the modification encompasses the claimed structural and functional features.
Conclusion
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/BRUK A GEBREMICHAEL/Primary Examiner, Art Unit 3715
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