REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 19/214,044 (“the ‘044 application”) for U.S. Patent No. 10,791,586 (“the ‘586 Patent”).
Claims 1-38 are currently pending.
Reason for Reissue
The Reissue Declaration by the Assignee (“Reissue Dec by Assignee”) filed December 3, 2025 says as the error statement,
“To add claims reciting features disclosed in the specification and not included in original claims.”
Defective Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because
the error which is relied upon to support the reissue application is not an error upon which a reissue can be based; and
the person signing the oath/declaration does not have a title that carries apparent authority, or a statement of authorization to act on behalf of the assignee.
See 37 CFR 1.175 and MPEP § 1414.
Per MPEP § 1414 II C “[i]t is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error. A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.” [emphasis added]
35 USC 251 Rejection
Claims 1-38 are rejected as being based upon a defective reissue oath/declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the oath/declaration is set forth in the discussion above in this Office action.
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.
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:
Functional Phrase # (“FP#”)
Claim
No.
Functional Phrases that Invoke
§ 112 ¶ 6
Corresponding Structure in the ‘586 Patent
1
7
a processor configured to
determine whether the user gaze is maintained on the at least one electronic device included in the image for a predetermined period of time
See at least 13:55-64; 14:39-49
2
8
a processor configured to
analyze whether the at least one electronic device is included in the obtained image
See at least 9:59-10:36
3
16
a processor configured to
based on the tracking of the eyes of the user via the eye-tracking second camera, detect a viewing direction of the user
See at least 13:26-32; 13:65-14:5; Figs. 8-10
4
16
a processor configured to
based on determining that the viewing direction of the user corresponds to the identified electronic device for a predetermined period of time, display, on the display, a user interface element for establishing a wireless connection with the identified electronic device
See at least 14:6-29 and 14:39-49; 15:5-14; Fig. 11
Table 1: Identification of Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ 6, they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ 6.
A review of the ‘586 specification shows that claims 7-13 and 16-23 are computer-implemented limitations requiring programming/software.
For example, the ‘586 Patent says at 14:20-29, “The smart glasses 110 execute an application. An application is a program registered together with identification information or device information regarding an electronic device. An application is a program for controlling an electronic device or an application that performs the same functions as an electronic device. When an application is executed, the smart glasses 110 may provide a screen image to a user for controlling an electronic device. Alternatively, the smart glasses 110 may execute a voice recognition program.”
The ‘586 Patent also says at 37:32-36, “The present disclosure may be described in terms of functional block components and various processing steps. Such functional blocks may be realized by any number of hardware and/or software components configured to perform the specified functions.”
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.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: none of the prior art of record discloses:
Regarding claims 1, 7, and 14:
obtaining an image including at least one electronic device based on a direction of a user gaze;
determining whether the user gaze is maintained on the at least one electronic device included in the image for a predetermined period of time; and
establishing a wireless connection with the at least one electronic device based on the determination.
Regarding claims 16, 24, and 32:
obtain, via the first camera, an image including an electronic device,
identify the electronic device included in the image obtained via the first camera, based on the tracking of the eyes of the user via the eye-tracking second camera, detect a viewing direction of the user,
based on determining that the viewing direction of the user corresponds to the identified electronic device for a predetermined period of time, display, on the display, a user interface element for establishing a wireless connection with the identified electronic device, and
establish the wireless connection with the electronic device based on a user input for the user interface element.
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘586 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of published reissue applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users.
Signed:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992
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