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 .
Priority
Acknowledgement is made of this application being the National Stage application of the European Application No. PCT/EP2023/061342, filed on April 28, 2023, and Applicant’s claim of foreign priority to European Application No. EP22172898.3, filed on May 12, 2022.
Information Disclosure Statement
The information disclosure statement (“IDS”) filed on 11/12/2024 was reviewed and the listed references were noted.
Drawings
The 3 page drawings have been considered and placed on record in the file.
Status of Claims
Claims 1-20 are pending.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “processing system being configured to …” and “user interface configured to …” in Claims 13-14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 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.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows.
Claim 12 recites “A computer program product comprising computer program code means which, …”. Computer programs, per se, are not in one of the statutory categories of invention because a computer program is merely a set of instructions capable of being executed by a computer - the computer program itself is not a process. MPEP § 2106.
A computer program, at best, is a functional descriptive material per se. Descriptive material can be characterized as either "functional descriptive material" or "nonfunctional descriptive material." Both types of "descriptive material" are nonstatutory when claimed as descriptive material per se, 33 F.3d at 1360, 31 USPQ2d at 1759. When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994) )(discussing patentable weight of data structure limitations in the context of a statutory claim to a data structure stored on a computer readable medium that increases computer efficiency) and >In re Warmerdam, 33 F.3d *>1354, 1360- 61,31 USPQ2d *>1754, 1759 (claim to computer having a specific data structure stored in memory held statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361,31 USPQ2d at 1760 (claim to a data structure per se held nonstatutory). See MPEP 2106.01. Applicant may overcome this rejection by amending the claim to, for example, recite: “A computer program product comprising a computer-readable storage medium, which stores
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method, a system, and a computer program to determine whether or not an area of interest is within field of view of two individuals in the same physical environment, and responsive to that determination, provide additional instructions. For example, with respect to analysis of method Claim 1:
Step 1:
With regard to Step 1, the instant claim is directed to a method or a process; therefore, the claim is directed to one of the statutory categories of invention.
Step 2A, Prong One:
With regard to 2A, Prong One, the limitations “aiding a second individual to identify an area of interest to a first individual, wherein the first and second individuals are located in a same physical environment”, “determining an area of interest to the first individual, within a field of view of the first individual, with respect to a physical environment in the vicinity of the first individual”, “determining whether or not the determined area of interest is within a field of view of the second individual”, “responsive to determining that the determined area of interest is not within the field of view of the second individual”, “providing an indicator that the determined area of interest is not within the field of view of the second individual to the first individual and/or the second individual; and/or providing (230) further information about the determined area of interest to the second individual”, and “responsive to determining that the determined area of interest is within the field of view of the second individual, neither providing the indicator that the determined area of interest is not within the field of view of the second individual to the first individual and/or the second individual nor providing the further information about the determined area of interest to the second individual” as drafted, recite an abstract idea, such as a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind of the two individuals in the same physical environment. That is, an individual may determine if he(she) has the same field of view of an area of interest that the second individual has, and based on the results of that determination take further actions. This is the concept that falls under the grouping of abstract ideas mental processes, i.e., a concept perform in the human mind, evaluation, judgement, and/or opinion of two individuals in the same room/physical environment.
Step 2A, Prong Two:
The 2019 PEG defines the phrase “integration into a practical application” to require an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception. In the instant case, there are no additional steps/limitations in the claim, to apply, rely on, or use the judicial exception as an indication of integration of the judicial exception into a practical application. That is, In addition, the mere recitation of generic computer components/program, such as “a user interface’ or “a processing system’, or “a computer program product” as recited in Claims 12-14, used to perform the recited/identified abstract idea, do not integrate the identified abstract idea into a practical application. Accordingly, there are no additional steps/limitations to integrate the abstract idea into a practical application; and therefore, the claim recites an abstract idea.
Step 2B:
Because the claim fails under Step 2A, the claim is further evaluated under Step 2B. The claim herein does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as discussed above with respect to integration of the abstract idea into practical application, the additional elements to perform the recited steps, amount to no more than insignificant extra-solution activity. Mere instructions to apply an exception using generic components cannot provide an inventive concept. Therefore, Claim 1 is not patent eligible. Independent Claims 12 and 13 are analyzed in the same manner as Claim 1, as they do not add any limitations that either integrate the abstract idea into a practical application or provide more than insignificant extra-solution activity. Dependent Claims 2-11 and 14 are rejected under this section of the rules, as they do not provide any limitations that either integrate the abstract idea into a practical application or provide more than insignificant extra-solution activity.
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. 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 1-2 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Dwight Meglan (US 2018/0032130 – IDS) in view of Salter et al. (US 2014/0375683 - IDS).
Consider Claim 1, Meglan discloses “A computer-implemented method of aiding a second individual to identify an area of interest to a first individual (Meglan, Paragraph [0025] discloses “the location of an item that the clinician is looking for may be determined and appropriately marked in the display of another person who is looking at the same location but from a different point of view”), “wherein the first and second individuals are located in a same physical environment” (Meglan, Paragraph [0003] discloses “A surgeon and the associated staff in a typical operating room communicate during MIS or robotic surgeries through non-optimal means” and Figs. 5 and 6) , “the computer- implemented method comprising: determining an area of interest to the first individual, within a field of view of the first individual, with respect to a physical environment in the vicinity of the first individual; determining whether or not the determined area of interest is within a field of view of the second individual” (Meglan, Paragraph [0015], wherein it is disclosed “the gaze of the eye of the first user from the first tracking module, highlights a first portion of the first augmented image based on the gaze of the eye of the first user”; and Paragraph [0025] discloses “By monitoring the clinician's gaze, the location of an item that the clinician is looking for may be determined and appropriately marked in the display of another person who is looking at the same location but from a different point of view”); indicator that the determined area of interest is not within the field of view of the second individual to the first individual and/or the second individual nor providing the further information about the determined area of interest to the second individual”. However, in an analogous field of endeavor, Salter discloses “determining whether or not the determined area of interest is within a field of view of the second individual; responsive to determining that the determined area of interest is not within the field of view of the second individual: providing an indicator that the determined area of interest is not within the field of view of the second individual to the first individual and/or the second individual; and/or providing further information about the determined area of interest to the second individual: (Salter, Paragraph [0016] discloses “various indications, e.g., audio or visual features, may be presented to user 106 to alert the user to information in the environment which is outside of the augmented reality field of view” and Paragraph [0022] discloses “to identify location and movements of a user, to identify real objects in an augmented reality field of view and present augmented reality imagery therefore, to detect objects located outside a field of view of the user, and to present indications of positional information associated with objects located outside the field of view of the user, among other tasks”; and the example recited in Paragraph [0025]); “and responsive to determining that the determined area of interest is within the field of view of the second individual, neither providing the indicator that the determined area of interest is not within the field of view of the second individual to the first individual and/or the second individual nor providing the further information about the determined area of interest to the second individual” (Salter, Paragraph [0026] discloses “in other examples, marker 412 may no longer be displayed or may change in appearance, e.g., change color shape, size, content of information displayed, orientation, etc., when the corresponding object enters field of view 102”)(emphasis added).
Accordingly, before the effective filing date of the instant application, it would have been obvious to one of ordinary skill in the art to combine Meglan with the teachings of Salter to provide certain instructions responsive as to whether or not the region of interest is within field of view of the first and/or second persons. One of ordinary skill in the art would be motivated to combine Meglan and Salter to timely and efficiently manage situations when the area of interest falls outside of the field of view of interested individuals. Accordingly, the combination of Meglan and Salter discloses the invention of Claim 1.
Consider Claim 2, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1, comprising a step of, responsive to determining that the determined area of interest is not within the field of view of the second individual, providing, to the first individual, an indicator that the determined area of interest is not within a field of view of the second individual” (Salter, Paragraph [0016] discloses “various indications, e.g., audio or visual features, may be presented to user 106 to alert the user to information in the environment which is outside of the augmented reality field of view”). The proposed combination as well as the motivation for combining the Meglan and Salter references presented in the rejection of Claim 1, apply to Claim 2 and are incorporated herein by reference. Thus, the method recited in Claim 2 is met by Meglan and Salter.
Consider Claim 7, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1 further comprising obtaining second communication data representing one or more verbal or non- verbal communications from the first individual; wherein the step of determining whether or not the determined area of interest is within a field of view of the second individual is only performed if the second communication data contains a verbal or non-verbal communications from the first individual about the area of interest” (Meglan, Paragraph [0025] discloses “By monitoring the clinician's gaze, the location of an item that the clinician is looking for may be determined and appropriately marked in the display of another person who is looking at the same location but from a different point of view. Eye tracking may also be combined with voice recognition or other forms of non-hand centric intention indication (e.g. a specific eye blink pattern), so that the clinician can look at an item, indicate that he/she wants someone else to be shown the same item, and the other person will see the item from their viewpoint.” Also, Paragraph [0033] discloses “The wearer of an ARHMD equipped with eye gaze tracking can show another person wearing an ARHMD exactly what they are interested in, in the OR or surgical site. This allows detailed communication of location centric information to be reliably transferred between the surgeon and OR staff which improves efficiency and safety”).
Consider Claim 8, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1 wherein the further information comprises an indicator of a recommended adjustment to the field of view of the second individual such that the determined area of interest would fall within the adjusted field of view” (Salter, Paragraph [0029] discloses “an appearance of a visual indicator may signify density of objects comprising augmented reality information in a particular direction or location, in that a corresponding number of markers may be displayed on that side of the display. As another example, a size of a visual indicator may be based on a number of objects associated with that visual indicator, such that a relatively larger size of a displayed marker may indicate a relatively larger number of objects associated with that marker”, i.e., the direction indicator may be interpreted as recommended adjustment to the field of view). The proposed combination as well as the motivation for combining the Meglan and Salter references presented in the rejection of Claim 1, apply to Claim 8 and are incorporated herein by reference. Thus, the method recited in Claim 8 is met by Meglan and Salter.
Consider Claim 9, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1 wherein the further information comprises identifying information about the determined area of interest and/or an image of the determined area of interest” (Salter, Paragraph [0025] discloses “the markers may be displayed in a location that represents a relative location of the corresponding out-of-view object. For example, markers 410, 412, and 414 positioned at the right side of the field of view 102 may indicate objects positioned to the right of the user outside the user's field of view, and thus may indicate a direction to turn to view the corresponding objects.”, i.e., identifying the location of interest and directing user to the direction for the region of interest to appear in the field of view of the user). The proposed combination as well as the motivation for combining the Meglan and Salter references presented in the rejection of Claim 1, apply to Claim 9 and are incorporated herein by reference. Thus, the method recited in Claim 9 is met by Meglan and Salter.
Consider Claim 10, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1 wherein the further information comprises, if the determined area of interest is obstructed by an object within the field of view of the second individual, an indicator of the relative position of the obstructing object within the field of view of the second individual” (Salter, Paragraph [0024] discloses “The term "outside of a field of view" and the like as used herein signify objects out of an angular field of view, objects occluded by other objects (real or virtual), and/or objects that are not directly visible for any other reason.” Paragraph [0029] discloses “an appearance of a visual indicator may signify density of objects comprising augmented reality information in a particular direction or location, in that a corresponding number of markers may be displayed on that side of the display. As another example, a size of a visual indicator may be based on a number of objects associated with that visual indicator, such that a relatively larger size of a displayed marker may indicate a relatively larger number of objects associated with that marker”, i.e., the direction indicator may be interpreted as an indication of the relative position of the obstructed objects from the field of view). The proposed combination as well as the motivation for combining the Meglan and Salter references presented in the rejection of Claim 1, apply to Claim 10 and are incorporated herein by reference. Thus, the method recited in Claim 10 is met by Meglan and Salter.
Consider Claim 11, the combination of Meglan and Salter discloses “The computer-implemented method of claim 1 wherein: the computer-implemented comprises, responsive to determining that the determined area of interest is not within the field of view of the second individual providing further information about the determined area of interest to the second individual; and the step of providing the further information comprises providing a visual representation, at a user interface, of the further information to the second individual” (Salter, Paragraph [0025] discloses “the markers may be displayed in a location that represents a relative location of the corresponding out-of-view object. For example, markers 410, 412, and 414 positioned at the right side of the field of view 102 may indicate objects positioned to the right of the user outside the user's field of view, and thus may indicate a direction to turn to view the corresponding objects.”). The proposed combination as well as the motivation for combining the Meglan and Salter references presented in the rejection of Claim 1, apply to Claim 11 and are incorporated herein by reference. Thus, the method recited in Claim 11 is met by Meglan and Salter.
Claim 12 recites a computer program with instructions corresponding to the steps of the method recited in Claim 1. Therefore, the recited instructions of this claim are mapped to the proposed combination in the same manner as the corresponding steps of method Claim 1. Additionally, the rationale and motivation to combine the Meglan and Salter references, presented in rejection of Claim 1, apply to this claim. Finally, the combination of Meglan and Salter discloses programs (Meglan, Paragraph [0058] discloses use of computer programs).
Claim 13 recites a processing system with elements corresponding to the steps of the method recited in Claim 1. Therefore, the recited elements of this claim are mapped to the proposed combination in the same manner as the corresponding steps of method Claim 1. Additionally, the rationale and motivation to combine the Meglan and Salter references, presented in rejection of Claim 1, apply to this claim. Finally, the combination of Meglan and Salter discloses a processing system (Meglan, Fig. 1:104).
Consider Claim 14, the combination of Meglan and Salter discloses “A system comprising: the processing system of claim 13; and a user interface configured to provide a visual representation of the indicator for the first individual and/or second individual and/or further information for the second individual” (Meglan, Fig. 2; Paragraph [0038] discloses “The processor 104 includes an image processing filter 116 that processes the received still frame images, video, or data to generate an augmented image or video”. Paragraph [0024] discloses use of a augmented reality head mounted display).
Allowable Subject Matter
Claims 3-6 are objected to as being dependent upon a rejected base claim, but would be allowable if: (i) rewritten in independent form including all of the limitations of the base claim and any intervening claims; and (ii) the rejection of claims under 35 U.S.C. 101 is overcome. The following is a statement of reasons for the indication of allowable subject matter: for example, consider Claim 3, none of the cited prior art references, alone or in combination, provides a motivation to teach the ordered combination of the limitations recited in this claim with the limitations of Claim 1, on which this claim is dependent. Claim 4-5 are not rejected over prior art due to their dependency from Claim 3. Consider Claim 6, none of the cited prior art references, alone or in combination, provides a motivation to teach the ordered combination of the limitations recited in this claim with the limitations of Claim 1, on which this claim is dependent.
Conclusion
The prior art made of record and not relied upon are considered pertinent to Applicant’s disclosure: Simon A.I. Stent (US 2019/0317594): Fig. 5.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Siamak HARANDI whose telephone number is (571)270-1832. The examiner can normally be reached Monday - Friday 9:30 - 6:00 ET.
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/Siamak Harandi/Primary Examiner, Art Unit 2662
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