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
The information disclosure statement (IDS) submitted on 06/05/2025 was considered by the examiner.
Claim Objections
Claims 2-18 and 20 are objected to because of the following informalities:
Claims 2-18: in the preamble, “Claim” should be in lowercase;
Claim 7, line 1: –the– should be inserted before “peripheral”;
Claim 12, line 1: –the– should be inserted before “peripheral”;
Claim 13, line 1: –the– should be inserted before “peripheral”;
Claim 13, line 2: –the– should be inserted before “peripheral”; and
Claim 20, line 2: “an HMD” should be replaced with –a head-mounted display (HMD)–.
Appropriate correction is required.
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 3-7, 10-13, 15, and 19 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.
Claim 3 recites “a visual field” in line 2. Claim 1 recites “a visual field” in line 13. It is unclear how these recitations are related to each other. If they are the same, consistent terminology should be used. If they are different or related, the relationship between the two should be made clear (e.g., when multiple elements have similar or the same labels, clear distinct identifiers such as “first” and “second” should be used to clearly differentiate the elements). For the purposes of examination, the recitation in claim 3 will be interpreted to be “the visual field”.
Claim 3 recites “a center” in line 3. It is unclear what the center is of. For the purposes of examination, the recitation will be interpreted to be “a center of the visual field”.
Claim 4 recites “wherein simulating the one or more test scenarios comprises calibrating using a control group” in lines 1-2. It is unclear how a simulation of one or more test scenarios, which is understood to be performed on the HMD, could include a calibration. They appear to be different and unrelated steps. The Examiner suggest amending the recitation to be “further comprising calibrating using a control group”.
Claim 4 recites “the visual detection across the visual field” in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the recitation will be interpreted to be “the peripheral vision across the visual field”.
Claim 5 recites “the one or more test scenarios comprise a field of view that narrows in a controlled manner” in lines 1-2. Claim 1 recites “one or more test scenarios with a progressively narrowing field of view in the VR user interface” in lines 7-8. It is unclear how the field of view of claim 1 is related to the field of view of claim 5. If they are the same, consistent terminology should be used. If they are different or related, the relationship between the two should be made clear (e.g., when multiple elements have similar or the same labels, clear distinct identifiers such as “first” and “second” should be used to clearly differentiate the elements). For the purposes of examination, the field of view of claims 1 and 5 will be interpreted to be the same.
Claim 5 recites “a speed that challenges a user without causing excessive strain” in line 3. The terms “challenges a user” and “excessive strain” are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degrees, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, a speed that challenges a user without causing excessive strain is subjective. See MPEP 2173.05(b)(IV).
Claim 6 recites “wherein continuously tracking the gaze direction and fixation points comprises tracking reaction time, accuracy, and a point at which one or more stimuli are no longer detected” in lines 1-3, which is indefinite. The gaze direction and fixation points appear to be completely different parameters from reaction time, accuracy, and the point, so it is unclear how tracking gaze direction and fixation points comprises tracking reaction time, accuracy, and a point at which one or more stimuli are no longer detected. For the purposes of examination, the recitation will be interpreted to be “further comprising tracking reaction time, accuracy, and a point at which the one or more visual stimuli are no longer detected”.
Claim 6 recites “one or more stimuli” in lines 2-3. Claim 1 recites “one or more visual stimuli” in line 11. It is unclear whether the limitations are the same as, related to, or different from each other. If they are the same, consistent terminology should be used. If they are different or related, the relationship between the two should be made clear (e.g., when multiple elements have similar or the same labels, clear distinct identifiers such as “first” and “second” should be used to clearly differentiate the elements). For the purposes of examination, the recitation in claim 6 will be interpreted to be “the one or more visual stimuli”. Claims 12 and 15 recite similar limitations, so they rejected on similar grounds. For the purposes of examination, the recitation of “peripheral one or more stimuli detection” in claim 15 will be interpreted to be “peripheral detection of the one or more visual stimuli”.
Claim 7 recites “wherein analyzing peripheral vision” in line 1, which indicates that there is a previously-recited step which includes “analyzing peripheral vision” . There is insufficient antecedent basis for the analyzing in the claim. For the purposes of examination, the recitation will be interpreted to be “wherein assessing the peripheral vision”.
Claim 7 recites “a detailed map” in line 2. Claim 10 recites “accurate simulation” in line 2. Claim 11 recites “precise tracking” in line 2.These are relative terms which render the claims indefinite. The terms are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degrees, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, it is unclear when something starts/stops being considered detailed, accurate, or precise, so it is unclear what is being included or excluded from the scope of the limitations.
Claim 13 recites “the point” in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, the recitation will be interpreted to be “a point”.
Claim 19 recites “the HMD” in line 6 and “the camera” in line 10. There are insufficient antecedent bases for these limitations in the claim because the claim does not previously recite a head-mounted device or a camera. For the purposes of examination, the recitations will be interpreted to be “a head-mounted device (HMD)” and “a camera”, respectively.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1-20 do not include additional elements that integrate the exception into a practical application of the exception or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, p. 50, January 7, 2019), and the 2024 Guidance Update on Patent Subject Matter Eligibility (Federal Register, Vol. 89, No. 137 p. 58128, July 17, 2024).
The analysis of claim 1 is as follows:
Step 1: Claim 1 is directed to a process, which is a statutory category.
Step 2A - Prong 1: Claim 1 is directed to an abstract idea in the form of a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components.
In particular, claim 1 recites the following limitations:
[A1]: generating one or more test scenarios with a progressively narrowing field of view
[B1]: in real time, continuously tracking gaze direction and fixation points in response to one or more visual stimuli presented in the one or more test scenarios;
[C1]: in real time, assessing peripheral vision across a visual field, based on the gaze direction and fixation points.
These elements [A1]-[C1] of claim 1 are directed to an abstract idea because they are processes that, under their broadest reasonable interpretation, are mere steps that are capable of being mentally performed with the aid of pen and paper. For example, a skilled artisan is capable of thinking of test scenarios with a narrowing field of view, monitoring a gaze direction and fixation points in response to one or more visual stimuli, and assessing peripheral vision across a visual field.
Step 2A - Prong Two: Claim 1 does not recite additional elements that integrate the judicial exception into a practical application. Claim 1 recites the following additional elements:
[A2]: an electronic device including a head-mounted display and a camera;
[B2]: generating a virtual reality (VR) user interface corresponding to a three-dimensional virtual environment;
[C2]: rendering the VR user interface on the HMD;
[D2]: simulating scenarios in the VR user interface;
[E2]: using a camera.
The elements [A2]-[E2] do not integrate the exception into a practical application of the exception.
The elements [A2]-[E2] does not integrate the exception into a practical application of the exception because the elements amount to merely adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering at a higher level of generality in conjunction with the abstract idea that uses conventional, routine, and well known elements - see MPEP 2106.04(d); MPEP 2106.05(g). In this case, the elements [B2]-[D2] are necessary precursors that are performed in order to gather data for the mental analysis steps. See the analogous vaccine administration in MPEP 2106.04(d)(2)(c). Additionally or alternatively, the elements [A2]-[E2] amount to generally linking the use of a judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d); MPEP 2106.05(h). Accordingly, each of the additional elements do not integrate the abstract into a practical application because they do not impose any meaningful limitations on practicing the abstract idea.
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. Claim 1 recites the following additional elements:
[A2]: an electronic device including a head-mounted display and a camera;
[B2]: generating a virtual reality (VR) user interface corresponding to a three-dimensional virtual environment;
[C2]: rendering the VR user interface on the HMD;
[D2] simulating scenarios in the VR user interface;
[E2]: using a camera.
The elements [A2]-[E2] do not amount to significantly more than the judicial exception itself.
The elements [A2]-[E2] does not do not amount to significantly more than the judicial exception itself because the elements amount to merely adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering at a higher level of generality in conjunction with the abstract idea that uses conventional, routine, and well known elements - see MPEP 2106.05(g). In this case, the elements [B2]-[D2] are necessary precursors that are performed in order to gather data for the mental analysis steps. See the analogous vaccine administration in MPEP 2106.04(d)(2)(c). Additionally or alternatively, the elements [A2]-[E2] amount to generally linking the use of a judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Additionally, the elements are well-understood, routine, and convention. With regards to elements [A2]-[C2] and [E2], see US 2024/0029886 A1 (Abel Fernandez) at ¶ [0475]. With regards to element [D2], see US 2022/0175242 A1 (Iwata) at ¶ [0021].
In view of the above, the additional elements individually do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Independent claims 19 and 20 recite mirrored non-transitory storage medium limitations and device limitations and are not patent eligible for substantially similar reasons.
Claims 2-18 depend from claim 1, and they recite the same abstract idea as claim 1. Furthermore, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the mental process) and/or append abstract ideas (that is, the claims only recite limitations that add further mental processes) except for the following limitations.
Claims 2-3, 5, and 8-9 include limitations which further describe the parameters of the test scenarios that should be presented to the patient. However, displaying test scenarios amounts to merely adding insignificant extra-solution activity to the judicial exception for the reasons listed above. Selecting the parameters of the test scenarios amounts to a mental process because one of ordinary skill is capable of mentally deciding on the parameters of the test scenarios.
Claim 4 recites “calibrating using a control group of users with predetermined peripheral vision profiles to establish baseline performance metrics and validating accuracy of visual field assessment”. The element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception itself because the element amounts to merely adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.04(d); MPEP 2106.05(g). Additionally or alternatively, the element amounts to generally linking the use of a judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d); MPEP 2106.05(h). Additionally, the element is disclosed in ¶ [0074] of US 2015/0288944 A1 (Nistico), Col. 3, lines 44-53 of US 6,290,357 B1 (Massengill), and Col. 14, lines 37-55 of US 12,290,315 B2 (Skalicky), wherein the plurality of disclosures indicate the well-understood, routine, and conventional nature of the element.
Claim 10 recites “calibrating display settings”. The element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception itself because the element amounts to merely adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.04(d); MPEP 2106.05(g). Additionally or alternatively, the element amounts to generally linking the use of a judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d); MPEP 2106.05(h). Additionally, the element is disclosed in Col. 5, lines 41-48 of US 11,568,832 B2 (Mittal), ¶ [0080] of US 2020/0312269 A1 (Nasti), and ¶ [0031] of US 2020/0314416 A1 (Sinha), wherein the plurality of disclosures indicate the well-understood, routine, and conventional nature of the element.
Claim 11 recites “calibrating eye-tracking sensors”. The element does not integrate the exception into a practical application of the exception or amount to significantly more than the judicial exception itself because the element amounts to merely adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.04(d); MPEP 2106.05(g). Additionally or alternatively, the element amounts to generally linking the use of a judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d); MPEP 2106.05(h). Additionally, the element is well-understood, routine, and conventional. See ¶ [0005] of US 2020/0183489 A1 (Chien).
In view of the above, the additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
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.
Claims 1-3, 7, 12-14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim)
With regards to claims 1, 19, and 20, Blaha teaches a method of implementing a virtual eye test for peripheral vision testing (¶ [0007] discloses a method for monitoring a visual field of a person, which includes peripheral vision testing; ¶ [0008] discloses displaying on a virtual reality environment), a non-transitory computer readable storage medium, storing one or more programs for execution by one or more processors of a computer system (¶¶ [0270]-[0271] depict implementing the subject matter in computer programs executable on a programmable system including computer hardware), and an electronic device (¶ [0008] discloses a system including head-mounted displays a computing hardware; Also see ¶¶ [0069]-[0070]) comprising: at an electronic device including a head-mounted display and a camera (¶¶ [0069]-[0070] discloses implementing the techniques using a device such as a head-mounted virtual reality device having a virtual reality display, wherein user input may be tracked eye tracking, and at least one retinal camera): generating a virtual reality (VR) user interface corresponding to a three-dimensional virtual environment (¶¶ [0089], [0162], [0215] depict generating and rendering the stimuli for testing the visual field, wherein user interfaces with the stimuli in the test; ¶¶ [0051], [0175] depict using a 3D virtual environment); rendering the VR user interface on the HMD (¶ [0243] and Fig. 19 depict displaying a fixation target in a VR environment of the head-mountable virtual reality device 208; ¶¶ [0089], [0162], [0215] depict generating and rendering the stimuli in VR environment of a display of a head-mountable device); simulating one or more test scenarios in the VR user interface (Fig. 19 and ¶¶ [0243]-[0248] depict iteratively displaying, determining, displaying, receiving until a certain condition is met; ¶ [0098] depicts testing using a template that includes one or more layouts with logic to control how the test is administered); and while simulating the one or more test scenarios, in real time: continuously tracking, using the camera, gaze direction and fixation points in response to one or more visual stimuli presented in the one or more test scenarios (¶ [0071] discloses eye tracking using real-time eye tracking sensors; ¶¶ [0236]-[0238] depict using eye tracking to detect foveation in relation to a visual target and fixation target, which indicates that both gaze direction and fixation points of the eye are determined; also see ¶¶ [0243]-[0247] and Fig. 19); and assessing peripheral vision across a visual field, based on the gaze direction and fixation points (¶ [0249] and Fig. 19 depict providing an assessment of a condition of the visual field based on the determination of the detection by the user of the test targets during the iterative performance, wherein the assessment of the visual field necessarily includes assessing the peripheral vision; also see ¶¶ [0051], [0236] which indicate that the peripheral vision is tested).
Blaha is silent regarding whether the one or more test scenarios are simulated with a progressively narrowing field of view.
In a system relevant to the problem of assessing a field of view, Kim teaches one or more test scenarios are simulated with a progressively narrowing field of view (¶ [0281]-[0283] and Fig. 16 depict gradually reducing a radius of a target image from the periphery to the center vision of a user, thereby allowing for a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user. The Examiner notes that ¶ [0196] of the Applicant’s published application (US 2026/0060525 A1) indicates that the test scenarios simulated with a progressively narrowing field of view amount to adjusting (i.e., reducing) a visible area in real. The reduction of the radius of the target image of Kim is a reduction of the visible area of the target image and amounts to a test scenario with a progressively narrowing field of view). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the field of view of the one or more test scenarios of Blaha to incorporate that it progressively narrows as taught by Kim. The motivation would have been to provide a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user.
With regards to claim 2, the above combination teaches or suggests simulating the one or more test scenarios comprises adjusting a visible area in real-time (¶ [0281]-[0283] and Fig. 16 of Kim depict gradually reducing a radius of a target image from the periphery to the center vision of a user (i.e., reduction of a visible area of the target image)), thereby simulating a constricting visual field to challenge peripheral vision capabilities (the simulation of the constricting visual field is an inherent result of the reduction of the visible area of Kim).
With regards to claim 3, the above combination teaches or suggests the one or more test scenarios comprise one or more scenarios where objects or light points appear at edges of a visual field and move towards a center as a visible area decreases (Fig. 16 of Kim depicts the target image including an outline moving towards a center; ¶ [0283] of Kim indicates that the pattern moves from the periphery to the center of vision).
With regards to claim 7, the above combination teaches or suggests analyzing peripheral vision comprises generating a detailed map of peripheral vision, identifying any areas with reduced sensitivity or blind spots (¶ [0119] of Blaha discloses a blind spot mapping that is used to register data from the visual field test; also see ¶ [0203] which discloses mapping the visual field).
With regards to claim 12, the above combination teaches or suggests assessing peripheral vision includes evaluating how quickly a user detects one or more stimuli as the field of view narrows (the above combination of Blaha and Kim teaches or suggests presenting the stimuli as the field of view narrows; ¶ [0191] of Blaha discloses determining how quickly the target is detected).
With regards to claim 13, the above combination teaches or suggests assessing peripheral vision includes determining a point at which peripheral vision fails (¶ [0044] of Blaha discloses determining blind spots in the visual field, which would also determine points at which peripheral vision fails).
With regards to claim 14, the above combination teaches or suggests generating a color-coded circular representation of the visual field showing peripheral vision performance (Fig. 6B and ¶ [0120] of Blaha depict a color-coded circular sampling grid corresponding to the blind spot test locations).
With regards to claim 17, the above combination teaches or suggests comparing the user's peripheral vision performance to baseline metrics (¶ [0079] of Blaha discloses comparison of performance results for the same user).
With regards to claim 18, the above combination teaches or suggests providing recommendations for further evaluation based on the peripheral vision assessment (¶ [0134] of Blaha discloses recommendations on further testing can be included along with expected changes in confidence based on the test).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 12,290,315 B2 (Skalicky)
With regards to claim 4, the above combination is silent regarding calibrating using a control group of users with predetermined peripheral vision profiles to establish baseline performance metrics and validating accuracy of visual field assessment, prior to assessing the visual detection across the visual field.
In the same field of endeavor of testing visual function, Skalicky teaches calibrating using a control group of users with predetermined peripheral vision profiles to establish baseline performance metrics and validating accuracy of visual field assessment, prior to assessing the visual detection across the visual field (Col. 14, lines 37-55 teaches the consolidated/aggregated data is analysed against a population database (stored on the network server(s) (not shown) associated with data and analysis module(s) 50) that has been validated and vetted/calibrated against a cohort of glaucoma patients of various levels of visual function, and/or any other suitable cohort, and/or any data acquired from any prior visual field test). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate calibrating using a control group of users with predetermined peripheral vision profiles to establish baseline performance metrics and validating accuracy of visual field assessment, prior to assessing the visual detection across the visual field. The motivation would have been to provide a more accurate assessment of the patient’s visual field.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 2009/0009714 A1 (Clarke).
With regards to claim 5, the above combination teaches or suggests the one or more test scenarios comprise a field of view that narrows in a controlled manner (¶ [0281]-[0283] and Fig. 16 of Kim depict gradually reducing a radius of a target image from the periphery to the center vision of a user).
The above combination is silent regarding a predetermined progression based on test objectives and a speed that challenges a user without causing excessive strain.
In a system relevant to the problem assessing a visual field, Clarke teaches a predetermined progression based on test objectives and a speed that challenges a user without causing excessive strain (¶ [0036] discloses determining a fastest speed for the client to detect and respond to stimuli and using this speed for subsequent tests of spontaneous scanning and visual field assessment). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the test scenarios of the above combination to incorporate a predetermined progression based on test objectives and a speed that challenges a user without causing excessive strain as taught by Clarke. The motivation would have been to use testing parameters which allow for a more accurate diagnosis of the patient’s visual field.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 2020/0305707 A1 (Fink).
With regards to claim 6, the above combination is silent regarding whether the continuously tracking the gaze direction and fixation points comprises tracking reaction time, accuracy, and a point at which one or more stimuli are no longer detected.
In view of the rejection under 35 U.S.C. §112(b) above, the recitation is being interpreted to be “further comprising tracking reaction time, accuracy, and a point at which the one or more visual stimuli are no longer detected.”
In a system relevant to the problem of determining visual field defects, Fink teaches tracking reaction time, accuracy, and a point at which one or more stimuli are no longer detected (¶ [0008] discloses gauging reaction time and accuracy to stimuli; ¶ [0007] discloses determination of problem locations, such as visual field defects or scotomas). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate tracking reaction time, accuracy, and a point at which one or more stimuli are no longer detected as taught by Fink. The motivation would have been to provide a more complete diagnostic analysis of the patient.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 4,421,393 A (Cohen).
With regards to claim 8, the above combination teaches or suggests the progressively narrowing field of view decreases until reaching a minimum size (¶ [0281]-[0283] and Fig. 16 of Kim depict gradually reducing a radius of a target image from the periphery to the center vision of a user, which indicates that there is a target image with a minimum size)
The above combination is silent regarding whether the narrowing decreases by a predetermined amount every second.
In a system relevant to the problem of assessing visual field, Cohen teaches changing the location of a stimulus corresponding to a visual field, wherein the change is performed by a predetermined amount every second (Col. 4, lines 26-41 depict LED’s 17 being provided inwardly at a rate of 60° per second; also see Col. 4, lines 42-60 with regards to the LED’s in relation to the visual field perimeter). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the reduction of the field of view of the above combination to incorporate, based on the teachings of Cohen, that the narrowing decreases by a predetermined amount every second. Because both the speed of the reduction of image radius of Kim and the speed of Cohen are capable of being used for assessing the visual field, it would have been the simple substitution of one known equivalent element to obtain predictable results.
With regards to claim 9, the above combination teaches or suggests the progressively narrowing field of view decreases (¶ [0281]-[0283] and Fig. 16 of Kim depict gradually reducing a radius of a target image from the periphery to the center vision of a user)
The above combination is silent regarding whether the field of view narrows at a rate between 1 to 10 degrees per second.
In a system relevant to the problem of assessing visual field, Cohen teaches changing the location of a stimulus corresponding to a visual field, wherein the change is performed by a predetermined rate (Col. 4, lines 26-41 depict LED’s 17 being provided inwardly at a rate of 60° per second; also see Col. 4, lines 42-60 with regards to the LED’s in relation to the visual field perimeter).
The rate at which the field of view narrows would depend up the factors of desired accuracy of the field of view assessment. As such, the rate is a results-effective variable that would have been optimized through routine experimentation based on the desired accuracy. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to select the rate, using the rate suggested by Cohen as a starting point, so as to obtain the desired accuracy. In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date to the above combination such that the field of view narrows at a rate between 1 to 10 degrees per second. See MPEP 2144.05 (II) (A).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 11,568,832 B2 (Mittal)
With regards to claim 10, the above combination is silent regarding calibrating display settings to ensure accurate simulation of the narrowing field of view.
In a system relevant to the problem of monitoring an ocular condition using a head mounted device (Col. 5, lines 10-20 of Mittal), Mittal teaches calibrating display settings to ensure accurate simulation of parameters (Col. 5, lines 41-54 depict an ocular calibration subsystem 70 comprising a display screen settings, which alter how an object of focus is positioned). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate, based on the teachings of Mittal, calibrating display settings to ensure accurate simulation of the narrowing field of view. The motivation would have been to account for individual user ocular differences, thereby providing a more accurate diagnosis.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 2020/0183489 A1 (Chien).
With regards to claim 11, the above combination is silent regarding calibrating eye-tracking sensors to maintain precise tracking as the field of view changes.
In the same field of endeavor of eye-tracking, Chien teaches calibrating eye-tracking sensors to maintain precise tracking (¶ [0005] and Fig. 1 disclose an eye-tracking calibration procedure). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate, based on the teachings of Chien, calibrating eye-tracking sensors to maintain precise tracking as the field of view changes. The motivation would have been to improve the eye-tracking, which would subsequently improve the assessment of the field of view.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 2018/0296084 A1 (Kawahara)
With regards to claim 15, the above combination teaches or suggests generating a reaction time graph for peripheral one or more stimuli detection.
In the same field of endeavor of testing a visual field, Kawahara teaches generating a reaction time graph for peripheral one or more stimuli detection (¶¶ [0017], [0166] discloses generating a graph plotting the measured response time in relation to offset deviation/angular deviation). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate generating a reaction time graph for peripheral one or more stimuli detection as taught by Kawahara. The motivation would have been to provide a more complete diagnostic picture of the patient’s visual field.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0150727 A1 (Blaha) in view of US 2022/0269342 A1 (Kim), as applied to claim 1 above, and further in view of US 2021/0298593 A1 (Alonso).
With regards to claim 16, the above combination is silent regarding calculating an accuracy percentage at different field of view sizes.
In the same field of endeavor of perimetry, Alonso teaches calculating an accuracy percentage (Fig. 9 depicts calculating error percentages of an On-Off perimetry visual field test and corresponding the percentages with different portions of the visual field). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the above combination to incorporate, based on the teachings of Alonso, calculating an accuracy percentage at different field of view sizes. The motivation would have been to provide a more complete diagnostic picture of the patient’s visual field at the different sizes.
Double Patenting
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 19, and 20 of copending Application No. 18/820,140 (“the ‘140 application”) in view of US 2022/0269342 A1 (Kim). Claims 1, 19, and 20 of the ‘140 application include all the limitations of claims 1, 19, and 20 of the instant application except that the one or more test scenarios are simulated with a progressively narrowing field of view.
In a system relevant to the problem of assessing a field of view, Kim teaches one or more test scenarios are simulated with a progressively narrowing field of view (¶ [0281]-[0283] and Fig. 16 depict gradually reducing a radius of a target image from the periphery to the center vision of a user, thereby allowing for a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user. The Examiner notes that ¶ [0196] of the Applicant’s published application (US 2026/0060525 A1) indicates that the test scenarios simulated with a progressively narrowing field of view amount to adjusting (i.e., reducing) a visible area in real. The reduction of the radius of the target image of Kim is a reduction of the visible area of the target image and amounts to a test scenario with a progressively narrowing field of view). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified claims 1, 19, and 20 of the ‘140 application to incorporate that it has a progressively narrowing field of view as taught by Kim. The motivation would have been to provide a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user.
Claims 1, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 19, and 20 of copending Application No. 18/820,143 (“the ‘143 application”) in view of US 2022/0269342 A1 (Kim). Claims 1, 19, and 20 of the ‘143 application include all the limitations of claims 1, 19, and 20 of the instant application except that the one or more test scenarios are simulated with a progressively narrowing field of view.
In a system relevant to the problem of assessing a field of view, Kim teaches one or more test scenarios are simulated with a progressively narrowing field of view (¶ [0281]-[0283] and Fig. 16 depict gradually reducing a radius of a target image from the periphery to the center vision of a user, thereby allowing for a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user. The Examiner notes that ¶ [0196] of the Applicant’s published application (US 2026/0060525 A1) indicates that the test scenarios simulated with a progressively narrowing field of view amount to adjusting (i.e., reducing) a visible area in real. The reduction of the radius of the target image of Kim is a reduction of the visible area of the target image and amounts to a test scenario with a progressively narrowing field of view). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified claims 1, 19, and 20 of the ‘143 application to incorporate that it has a progressively narrowing field of view as taught by Kim. The motivation would have been to provide a more precise diagnosis by minimizing a non-diagnosed area in an entire visual field of the user.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL C KIM whose telephone number is (571)272-8637. The examiner can normally be reached M-F 8:00 AM - 5:00 PM EST.
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/S.C.K./Examiner, Art Unit 3791
/PUYA AGAHI/Primary Examiner, Art Unit 3791
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