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 .
2. The following office action is a Final Office Action in response to the communications received on 11/13/2025.
Claims 1-107 are already canceled; and claim 108 is amended. Accordingly, claims 108-120 are pending in this application.
Claim Rejections - 35 USC § 101
3. 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 108-120 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;
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).
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 109-120). 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 11/13/2025). However, the arguments are not persuasive at least for the following reasons:
Firstly, while referring to the current claim amendment (claim 108), Applicant asserts, “[t]he instant amendments are made to further expedite prosecution . . . M.P.E.P. § 2106.03(a)(2)(11) . . . ‘[t]he term ‘certain’ qualifies the ‘certain methods of organizing human activity’ grouping . . . First, not all methods of organizing human activity are abstract ideas (e.g., ‘a defined set of steps for combining particular ingredients to create a drug formulation’ is not a certain ‘method of organizing human activity’) . . . Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances as explained in MPEP § 2106.04(a)(3).’ In the instant application, the proposed method clearly falls outside of these sub-groupings . . . claim 108 now recites providing 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. Applicant submits that this step is not related to the organizing human activity and cannot be performed mentally as the human brain/eyes cannot reliably sample at a rate of 500 Hz or more” (emphasis added).
Although Applicant’s arguments above appear to be directed to Prong One of Step 2A (i.e., certain methods of organizing human activity, or a mental process), Applicant does not appear to properly apply the inquiry set forth under Prong One of Step 2A. When there is a finding that a given claim is reciting an abstract idea, it is worth noting that the inquiry—under Prong One—does not necessarily require all of the limitations of that claim to recite an abstract idea. Instead, it is based on identifying one or more limitations that recite an abstract idea, while excluding those that do not recite any abstract idea. Thus, when considering claim 108 as an example, the claims does recite limitations that are not abstract idea—such as, the camera utilized to track the patient’s eye movement by capturing 1,000 samples, at a sampling rate greater than 500 Hz, etc. However, just because the claim recites the above limitation, it does not necessarily mean that the claim does not recite any abstract idea. Instead, while excluding the above limitation, one identifies one or more limitations that recite an abstract idea. For instance, since the claim recites one or more activities that the user/patient is instructed or required to perform (e.g., the patient is required to provide a response to a stimulus presented to him/her; wherein the response is in the form of viewing the stimulus on the display, etc.), the claim does recite managing personal behavior, under the abstract idea group certain methods of organizing human activity. Similarly, since the claim recites one or more the calculations that are performed in order to determine one or more results (e.g., analyzing eye pupil movement of the first eye of the patient; generating a plot that reflects a trajectory traveled by the first eye in response to a visual stimulus, etc.), the claim does recite a mental process—such as, a limitation(s) that can be performed in the human mind and/or using a pen and paper (e.g., an observation, an evaluation, and/or a judgment, etc.).
Thus, even if the claim recites one or more limitations that are not abstract idea; such as, the limitation that specifies the use of a camera to “track[] 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 . . .at a sampling rate of greater than 500 Hz”, this once again does not necessarily imply that the claim is immune from the eligibility inquiry under Prong One of Step 2A.
The observations above demonstrate that claim 108 (including each of the dependent claims) do recite an abstract idea; namely, the groups, mental processes and certain methods of organizing human activity. Consequently, Applicant’s arguments are not persuasive.
Secondly, the inaccuracy noted above regarding the crux of Applicant’s argument is further demonstrated when considering the decision regarding Electric Power Group. For instance, the claim that the court considered regarding Electric Power Group recites—at least in part—the following limitations (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 . . .
Thus, if one applies Applicant’s theory to claim 12 above, one may incorrectly conclude that the claim is not a mental process. In particular, one may be tempted to argue that the process of detecting and automatically analyzing events on an electric power grid in real-time, including: (a) receiving . . . synchronized phasor measurements; (b) detecting and analyzing . . . frequency instability, voltages, phase angles, etc., are computer implemented functions/steps that cannot practically be performed in the human mind (and/or using a pen and paper).
In contrast, despite the limitations above, the court concluded that the claim is reciting an abstract idea; namely, a mental process. This is because the claim is using the existing technology—merely as a tool—to facilitate an abstract idea; such as, collecting information, analyzing the information, and displaying certain results. Similarly, Applicant’s current claims (e.g., see claim 108) are also using the existing computer technology—merely as a tool—to facilitate an abstract idea. In particular, a display is utilized to show stimuli to a user; and a camera is utilized to track the user’s eye movements (as the user visually follows the stimuli), wherein the camera takes 1,000 samples at a rate of 500 Hz; and furthermore, a computer/processor is utilized to calculate one or more results. In this regard, neither the claimed implementation nor the disclosed implementation provides any technological improvement over the relevant existing technology, regardless of whether the devices are considered individually or in any ordered combination. Of course, given the lack of technological improvement, along with the generic and conventional arrangement of the additional elements, none of the current claims implements an element—or a combination of elements—that amounts to “significantly more” than an abstract idea.
It is further worth noting that various board decisions, which considered claims that are analogous to the current claims, do support the Office’s findings above (e.g., see Appeal 2020-006674; also Appeal 2021-000937).
Thus, at least for the reasons discussed above, the Office concludes that none of the current claims implements an inventive concept that amounts to “significantly more” than an abstract idea.
Prior Art
● Considering claim 108 as a whole (including the respective dependent claims), the prior art does not teach or suggest the current claims. Similar to the point made in the previous office-action, the current application is a continuation of Appl. # 17/181,769. Accordingly, regarding the state of the prior art, see the relevant office-action related to Appl. # 17/181,769; such as, the office-action dated 02/02/2023 or 07/20/2023.
Double Patenting
4. 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 108-120, 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.
Although the exemplary analysis above is related to claims 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
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 filled 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUK A GEBREMICHAEL whose telephone number is (571) 270-3079. The examiner can normally be reached from 7:00 AM - 3:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PETER VASAT can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUK A GEBREMICHAEL/Primary Examiner, Art Unit 3715
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