DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-2 of U.S. Patent No. 12,291,361 to Samadani et al. (hereinafter “Samadani”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than Samadani.
Allowable Subject Matter
Claim(s) 1-7 would be allowable if rewritten, amended, or a terminal disclaimer filed to overcome the double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
U.S. Patent Application Publication No. 2010/0238405 to Newman et al. (hereinafter “Newman”) discloses a system (Abstract) comprising: a display (130) (Fig. 2) (para [0092]) configured to present a stimulus to the subject (para [0092]); an eye tracker (120) (Fig. 2) (para [0090]) having a camera (para [0120]), the eye tracker being configured and arranged to track an eye movement of a subject (para [0120]) along a trajectory having a perimeter to obtain at least 100,000 samples of eye position (para [0090] and [0097]) over a period of 30 to 500 seconds (para [0010], [0054], and/or [0164]); the eye movement being tracked in response to a visual stimulus presented on the display (para [0092]); a processor (112) (Fig. 2) (para [0089]) in communication with the eye tracker (as can be seen in Fig. 2), the processor being configured and arranged to: create a dataset of the eye movement (para [0098]).
U.S. Patent Application Publication No. 2010/0100001 to Aguilar et al. (hereinafter “Aguilar”) teaches generate a plot of a dataset (Fig. 4), the plot reflecting a timecourse of eye position versus time (Fig. 4).
U.S. Patent Application Publication No. 2002/0169364 to Baumzweiger et al. (hereinafter “Baumzweiger”) teaches identifying one or more features to indicate a deficit in cranial nerve function (para [0047]-[0048]).
However, the prior art of record does not disclose and would not have rendered obvious the ordered combination of elements recited in the claim(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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