Part III DETAILED ACTION
1.The present application is being examined under the pre-AIA first to invent provisions. This application has been examined. Claims 1-20 are pending in this application.
Claim Interpretation – 35 U.S.C. § 112 (f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
2. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: Claims 1-4 recite the limitations, “imaging device configured to generate’; “one gaze estimating program configured to perform”; and “boundary adjustment program configured to perform”. Limitations are depicted in figs. 1-2 and the description thereof.
.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
3. Claims 1-4 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. The limitation in claim 1 “best represent the user’s point of regard” is vague and indefinite. It is not clear what the “user’s point of regard” represents. Clarification or correction is required.
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.
4. Claim(s) 1-4 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The limitations, under their broadest reasonable interpretation, cover mental process (concept performed in a human mind, including as observation, evaluation, judgment, opinion, organizing human activity and mathematical concepts and calculations). The claim(s) recite(s) a system for determining user’s region of interest on a display screen. This judicial exception is not integrated into a practical application because the steps do not add meaningful limitations to be considered specifically applied to a particular technological problem to be solved .The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such except for the generic computer elements at high level of generality (i.e., processor, memory).
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
The method in claim 1 (and the computer system and computer program product in claim(s) 8 and 15) comprise a mental process that can be practicably performed in the human mind (or generic computers or components configured to perform the method) and, therefore, an abstract idea.
Regarding Claim(s) 1: the claims recites the steps (functions) of:
obtaining image data for one or more users of a display (similar to a mental process of including receiving, observation and evaluation data, and can be done mentally in the human mind; similar to recognizing an acquired image on a gas station sign for example); generating a set of raw gaze predictions for each of the one or more users of the display (similar to a mental process including observation of an image, evaluating of an image, and setting information based on an evaluation or analysis); perform a weighted selection of refined display screen grid boundaries that best represent the user's point of regard on the display screen based on head-eye information and display screen layout dimensions. (similar to a mental process of including receiving, observation and evaluation data, and can be done mentally in the human mind; similar to recognizing head and eye movement of a person for example).
These limitations, as drafted, is a simple process that, under their broadest reasonable interpretation, covers performance of the limitations in the mind or by a human. The Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person could mentally analyze an image, prioritizing the image based on information and integrating the images for displaying,either mentally or using a pen and paper. The mere nominal recitation that the various steps are being executed by a device/in a device (e.g. processing unit) does not take the limitations out of the mental process grouping. Thus, the claims 1.13 and 14 recite a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? NO, the claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
5. Claim(s) 2-4 does/do not recite any of the exemplary considerations that are indicative of an abstract idea having been integrated into a practical application. Claim(s) 2-4 and recite(s) the further limitations of:
The limitations such as: adjusting layout; assigning a label or vector and selecting a personalized region of interest (similar to a mental process of including receiving, observation and evaluation data, and can be done mentally in the human mind; similar to evaluating the image and selecting a personalized region can be applied to adjust that can be done mentally or in a piece of paper).
These limitations are recited at a high level of generality (i.e. as a general action or change being taken based on the results of the acquiring step) and amounts to mere post solution actions, which is a form of insignificant extra-solution activity. Further, the claims are claimed generically and are operating in their ordinary capacity such that they do not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
STEP 2B: Do claims 2-4 recite additional elements that amount to significantly more than the judicial exception? NO, the claims do not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, that examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claim(s) 1-4 does/do not recite any additional elements that are not well-understood, routine or conventional. The use of a computer to perform “receiving, determining, and causing”, as claimed in Claim(s) 1-4 is a routine, well-understood and conventional process that is performed by computers or well known devices.
Thus, since Claim(s) 1-4 is/are: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that Claim(s) 1-4 is/are not eligible subject matter under 35 U.S.C 101.
Furthermore, claims 1-4 lack an inventive concept that transforms the abstract idea into a patent-eligible invention. There are no additional elements claimed with the exception, both individually and as an ordered combination, to ensure that the claims describe a product or process that applies the exception in a meaningful way. The claims do not include additional elements amount to significantly more in terms of improving functionalities of a computer/device itself, improving another technology or technical field, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine claim to a particular useful application or by use of a particular machine that is unconventional.
In conclusion, the claims 1-4 do not comply with the current standards for patent eligible subject matter under 35 USC § 101.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable
over claims 1-14 of U.S. Patent No. 12,141,343. Although the claims at issue are not identical, they
are not patentably distinct from each other because claims 1-4 of the instant application are
anticipated recited or covered by the limitations of claims 1-14 of ‘343, such as the system (claim
1 of the instant application) having imaging device (or capturing) configured to obtain image data
for one or more users of a display (reads on steps a-b of claim 1 of ‘343); at least one gaze
estimating program of the configured to generate a set of raw gaze predictions for each of the one or
more users of the display (reads on the gaze estimation is calculated step b of claim 1 of ‘343);
and at least one boundary adjustment program configured to perform a weighted selection of refined
display screen grid boundaries that best represent the user's point of regard on the display screen
based on head-eye information and display screen layout dimensions. (reads on adjusting the
screen grid boundaries of claim 1 of ‘’343).
, by creating an objective function
comprising at least one quality estimation function and at least one constraint, wherein each of the at
least one quality estimation functions trains at least one machine learning method that generates
quality estimation output based on training input data to be at least substantially the same as training
target data, and an objective function output is the output of the objective function, and comprises the
quality estimation output of the at least one quality estimation function, a portion thereof, a function
thereof, and/or or combinations thereof (reads on the creating an object function of claim 1 of
‘132, and description within the creating step); providing a model as input data to the objective
function and generating model-related objective function output; and modifying the model based on
the model-related objective function output to transform the model to a generated model, wherein the
generated model is the generated dental model (reads on the providing a model of claim 1 of
‘132, and description within the providing step); wherein the generated dental model is a dental
crown and the at least one constraint is a minimum material thickness of the dental crown (reads on
the wherein a model of claim 1 of ‘132, and description within the providing step). Clearly, the
broad limitations of the independent claim(s) of the current application are cover by the limitations of
claims ‘132. Claim 1 of the instant application is broader than the limitations of claim 1 of ‘132, and all
the limitations of claim 1 of the instant application are covered by within the limitations of claim 1 of
‘132 . It would have been obvious to one of ordinary skill in the art at the effective time of the
invention to combine the features of claim 1 of ‘132 to create the broader system as recited in claim 1
of the instant application. Clearly, all the limitations of claim 1 are recited in the limitations of claim 1
of ‘132. Claims 2-19 of the instant application are clearly obvious over claims 1-18 of ‘132.
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dierkes et al. (11,556,741) teaches a devices, systems and methods for predicting gaze related parameters using a neural network.
Lyons et al. (2016/0093136) teaches a system and method for automatic eye tracking calibration.
Kohlhoff et al. (2015/0309569) teaches a user interface control using gaze tracking.
Sztuk et al. (2014/0145935) teaches a method for eye tracking control on a display of a mobile device.
Maltz (2014/0049452) teaches a eye gaze user interface and calibration method.
6. Any inquiry concerning this communication or earlier communications from the Examiner should
be directed to Gabriel I. Garcia whose telephone number is (571) 272-7434. The examiner can
normally be reached Monday-Thursday from 7:30 AM-6:00 PM.. The fax phone number for this group
is (571) 273-8600.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Benny Tieu can be reached on (571) 272-7490. The fax phone
number for the organization where this application or proceeding is assigned is 571-
273-8300.
Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published
applications may be obtained from either Private PAIR or Public PAIR. Status
information for unpublished applications is available through Private PAIR only. For
more information about the PAIR system, see http://pair-direct.uspto.gov. Should you
have questions on access to the Private PAIR system, contact the Electronic Business
Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO
Customer Service Representative or access to the automated information system, call
800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Any inquiry of a general nature or relating to the status of this application should be
directed to the Group receptionist whose telephone number is (571) 272-2600.
/Gabriel I Garcia/
Primary Examiner, Art Unit 2676
June 10, 2026
Prosecution Insights