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 .
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.
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.
Examiner notes: currently, NO limitation invokes interpretation under § 112(f).
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
Claim(s) 1-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-21 of U.S. Patent No. 10610165. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim(s) substantially anticipate(s) the identified claim(s) of this application.
Claim(s) 1-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-9 of U.S. Patent No. 10966669. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim(s) substantially anticipate(s) the identified claim(s) of this application.
Claim(s) 1-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-8 of U.S. Patent No. 12635957. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim(s) substantially anticipate(s) the identified claim(s) of this application.
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.
Examiner notes: for brevity, economy, and clarity of reading, select of the claims may be addressed jointly herein when instances of limitations with verbatim or near-verbatim similarity are recited in the body of differently numbered claims and/or when multiple different limitations are clearly addressed by a same/similar citation to/within a reference.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stack (US 20130308099 A1) in view of Pavlidis (US 4838681 A).
For claim 1, Stack teaches A method for detecting, diagnosing or screening for cognitive impairment in a subject comprising:
a) positioning the subject in front of a screen; [Fig(s). 1B]
b) displaying a video to the subject on the screen, the video including a target that moves around a predefined closed perimeter of the screen, the target forming at least one revolution on the screen around the closed perimeter; [¶¶75-78]
c) tracking eye movement of at least one eye of the subject as the subject watches the video; [¶¶78-83]
d) analyzing eye movement of at least one eye of the subject; [¶¶78-83]
e) calculating a statistical test for eye movement of at least one eye of the subject as compared to a normal or mean eye movement; [¶¶109-117]
f) detecting, diagnosing or screening for an impairment based on the calculated statistical test. [¶¶109-117 esp. ¶115]
Stack fails to teach step providing a clinical intervention based on the test.
Pavlidis teaches a method of screening for a cognitive impairment in a subject using eye tracking [abstract, col. 3 ll. 35-45] including a step of providing a suitable clinical intervention based on statistical analyses. [col. 22 ll. 30-40 col. 23 l. 40 – col. 24 l. 5]
It would have been obvious to one of ordinary skill at the time the invention was filed to modify the method of Stack to incorporate the treatment step of Pavlidis in order to aid the subject with any determined impairment. As motivated by Pavlidis col. 23 l. 40 – col. 24 l. 5.
For claim 2, Stack teaches The method according to claim 1 wherein eye movement of both eyes of the subject are tracked and analyzed. [Fig(s). 6]
For claim 3, Stack teaches The method according to claim 1 wherein both x and y coordinates of eye position for one or both eyes of a subject are collected. [¶104]
For claim 4, Stack teaches The method according to claim 1 wherein the eye movement is tracked for at least about 100 seconds. [¶48, ¶126]
For claim 5, Stack teaches The method according to claim 1, further comprising comparing eye movement of at least one eye of the subject to the eye movement of the other eye of the subject or comparing eye movement of at least one eye of the subject to the eye movement of an eye of one or more other subjects or controls. [¶¶112-113, ¶¶116-117]
For claim 6, Stack teaches The method according to claim 1, further comprising comparing eye movement of both eyes of the subject to the eye movement of one or both eyes of one or more other subjects or controls. [¶¶112-113, ¶¶116-117]
For claim 7, Stack teaches The method according to claim 1 wherein the tracking, analyzing and comparing comprises collecting raw x and y cartesian coordinates of pupil position, normalizing the raw x and y cartesian coordinates, and sorting the data by eye. [absolutizing and normalizing per ¶¶104-106, ¶111, ¶116]
For claim 8, Stack teaches The method according to claim 1 wherein the analyzing and comparing comprises calculating multiple individual metrics. [¶¶109-114]
For claim 9, Stack teaches The method according to claim 1,
wherein the analyzing and comparing comprises calculating one or more individual metric selected from the group consisting of L height, [60 in Fig(s). 4] L width, [58 in Fig(s). 4] L area, L varXrit, L varXlef, L varTotal, R height, [60 in Fig(s). 4] R width, [58 in Fig(s). 4] R area, R varYtop, R varXrit, R varXlef, R varTotal, Conj varX, Conj varXrit, Conj varXbot, Conj varXlef and Conj varYlef.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stack in view of Pavlidis and Waldorf (US 20130278899 A1).
For claim(s) 10-12, Stack fails to teach the video display including a target making five revolutions around the perimeter with a unique color for each revolution.
Waldorf teaches an eye tracking method [abstract] including a step of providing a video display of a target making multiple revolutions around a perimeter including color changes. [Fig(s). 3 ¶¶50-58]
It would have been obvious to one of ordinary skill at the time the invention was filed to modify the method of Stack to incorporate the video of Waldorf in order to aid in the evaluation of children and younger athletes. As motivated by Waldorf ¶17. The particular use of five revolutions and a specific new color for each revolution would be a matter of design choice. See MPEP § 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN S MELHUS whose telephone number is (571)272-5342. The examiner can normally be reached Monday - Friday | 9:00 AM - 5:00 PM.
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/BENJAMIN S MELHUS/
Primary Examiner, Art Unit 3791
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