DETAILED ACTION
This Final action is in response to an amendment filed 7/27/2026. Currently claims 21-40 are pending.
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 .
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.
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Claims 21-22, 24-27, 29-35 and 37-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 8-9, 12-15, 17-18 and 20 of U.S. Patent No. 12,429,697 (hereinafter ‘697). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are more specific and therefore anticipate the instant claims, as follows:
Instant claim 21
Patent ‘697 claims 1+9
21. A head-mounted display (HMD), comprising: one or more one or more processors configured to detect a contact lens shift associated with an eye, including to: capture one or more images of the eye;
analyze the one or more images to estimate: a first center location of the eye, and a second center location of the eye based at least in part on a shape of a detected cornea of the eye; determine that a difference between the first center location and the second center location causes a contact lens shift threshold to be exceeded;
and
generate, based at least in part on the exceeding of the contact lens shift threshold, a notification of an excessive contact lens shift.
1. A head-mounted display (HMD), comprising: one or more one or more processors configured to detect a contact lens shift associated with an eye, including to: capture one or more images of the eye;
analyze the one or more images to estimate: a first center location of the eye, and a second center location of the eye based at least in part on a shape of a detected cornea of the eye; determine that a difference between the first center location and the second center location causes a contact lens shift threshold to be exceeded; detect, based at least in part on the exceeding of the contact lens shift threshold, that the eye is disposed behind a contact lens and that the contact lens shifts excessively relative to the eye; and activate a gaze tracking compensation technique, during an operating session following an enrollment process, in response to said detecting that the contact lens shifts excessively relative to the eye, based at least in part on the exceeding of the contact lens shift threshold.
9. The system of claim 6, wherein the HMD device is configured to generate a notification of the contact lens shift via the display.
Instant independent claim 21 is anticipated by patent ‘697 claims 1+9. The difference being than patent ‘697 claim 1 is more specific, and that patent ‘697 claim 9 generates the notification via the display.
The same reason applied to instant claim 21, applies to instant independent claim 30 with respect to patent ‘697 claims 12+18.
Instant independent claim 37 is anticipated by patent ‘697 claim 20 and the notification of an excessive contact lens shift is obvious over patent ‘697 claim 18, similar to instant claim 21.
Instant claims 22, 31 and 38 do not find verbatim support in the patent ‘697 claims. However, the “recommendations or instructions to a user to perform an action to mitigate the excessive contact lens shift” maps to “instruct the user to orient the eye toward …the display” in response to the excessive contact lens shift in patent ‘697 claims 7, and therefore instant claims 22, 31 and 38 are also anticipated by patent ‘697 claim 7.
Instant dependent claims 24-27, 29, 32-35 and 39-40 map as follows:
Instant
24, 39
25, 40
26
27
29
32
33
34
35
‘697
2+3
4
6
9
8
13
14
15
17
Claim Rejections - 35 USC § 103
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.
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.
Claims 21, 24-25, 30, 32-34, 37 and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. in US 2017/0329400 (hereinafter Noda) in view of Miller et al. in US 2018/0335836 (hereinafter Miller).
Regarding claim 21, Noda disclose a head-mounted display (Noda’s Fig. 2 and par. 45: eyewear terminal), comprising: one or more one or more processors (Noda’s Fig. 4 and par. 54: control unit 140) configured to detect variations in optical axis vectors (Noda’s par. 105-106: step S160) associated with an eye (Noda’s Figs. 1, 7), including to: capture one or more images of the eye (Noda’s par. 52); analyze the one or more images (Noda’s par. 62-64: computing and evaluation) to estimate: a first center location of the eye (Noda’s Figs. 7-8 and par. 74, 80: marker vector Vm which start at user’s pupil center S), and a second center location of the eye (Noda’s Figs. 7-8 and par. 77, 79: optical axis vector Vo based on curvature center C of cornea) based at least in part on a shape of a detected cornea of the eye (Noda’s Fig. 7 and par. 78: curvature radius of the cornea); determine that a difference between the first center location and the second center location causes a threshold to be exceeded (Noda’s Figs. 8, 11-12 and par. 85-86, 99-106: whether discrepancy between angles ω and θ becomes large, correlation coefficient rxy becomes small below threshold rth); and based at least in part on exceeding of the threshold (Noda’s Figs. 8, 11-12 and par. 85-86, 99-105: whether discrepancy between angles ω and θ becomes large, correlation coefficient rxy becomes small below threshold rth), modify a calibration (Noda’s par. 106, 112, 121: calibration setting is modified).
Noda fails to disclose detecting a contact lens shift, the threshold being a contact lens shift threshold or generating, based at least in part on the exceeding of the contact lens shift threshold, a notification of an excessive contact lens shift.
However, Noda does disclose that variation in the optical axis outside an allowable range (Noda’s Fig. 5 and par. 105-106: output No of step S160) is caused by the user wearing a contact lens that moves over the cornea (Noda’s par. 112, 114).
Therefore, it would have been obvious to one of ordinary skill in the art, that Noda’s threshold (Noda’s par. 86, 105-106: angle ω outside range and rxy below a threshold rth) is a contact lens shift threshold (Noda’s par. 112: variation in the detected optical axis occurs when the user is wearing contact lenses), and that exceeding the threshold results in detection of a contact lens shift (Noda’s par. 114, 112); in order to obtain the predictable result of modifying the calibration settings (Noda’s par. 106) according to the already known causes of optical axis variation: user wearing contact lens (Noda’s par. 112, 114).
Still Noda fails to disclose generate, based at least in part on the exceeding of the contact lens shift threshold, a notification of an excessive contact lens shift.
Nevertheless, in the related field of endeavor of contact lens displays, Miller discloses displaying a message that calibration is necessary when the contact lens is misaligned (Miller’s par. 79).
Thus, it would also have been obvious to one of ordinary skill in the art, that Noda’s HMD generates a notification for calibration (as taught by Miller) representative of the contact lens shift (Noda’s par. 112) when the threshold is exceeded (Noda’s par. 106), in order to obtain the benefit of informing the user of calibration (Miller’s par. 79).
By doing such combination, Noda n view of Miller disclose:
A head-mounted display (Noda’s Fig. 2 and par. 45: eyewear terminal), comprising:
one or more processors (Noda’s Fig. 4 and par. 54: control unit 140) configured to detect a contact lens shift (Noda’s Fig. 5 and par. 105-106: step 160 detection of optical variation which upon combination is detecting that a contact lens moves over cornea per par. 112) associated with an eye (Noda’s Figs. 1, 7), including to:
capture one or more images of the eye (Noda’s par. 52);
analyze the one or more images (Noda’s par. 62-64: computing and evaluation) to estimate:
a first center location of the eye (Noda’s Figs. 7-8 and par. 74, 80: marker vector Vm which start at user’s pupil center S), and a second center location of the eye (Noda’s Figs. 7-8 and par. 77, 79: optical axis vector Vo based on curvature center C of cornea) based at least in part on a shape of a detected cornea of the eye (Noda’s Fig. 7 and par. 78: curvature radius of the cornea);
determine that a difference between the first center location and the second center location (Noda’s Figs. 7-8, 12: angle ω represents the difference between Vm and Vo) causes a contact lens shift threshold (Noda’s par. 86, 105-106: angle ω outside range and rxy below a threshold rth, which upon combination is caused by contact lens shift per par. 112) to be exceeded (Noda’s Figs. 8, 11-12 and par. 85-86, 99-105: whether discrepancy between angles ω and θ becomes large, correlation coefficient rxy becomes small below threshold rth); and
generate, based at least in part on the exceeding of the contact lens shift threshold (Noda’s: par. 106: rxy becomes small below threshold rth and thus calibration is modified, which thus results in a message displayed for calibration per Miller’s par. 79), a notification (Miller’s par. 79: message) of an excessive contact lens shift (Miller’s par. 79: “Calibration necessary, initiating calibration” which indicates the contact lens shift of Noda’s par. 112).
Regarding claim 30, Noda in view of Miller disclose a method comprising the steps as explained for claim 21.
Regarding claim 37, Noda in view of Miller disclose one or more non-transitory computer readable media (Noda’s Fig. 15 and par. 124, 127) storing program instructions (Noda’s par. 124: program) that when executed by one or more processors (Noda’s Fig. 15 and par. 124: CPU) of a head-mounted display (Noda’s Fig. 2 and par. 45: eyewear terminal) cause the HMD to perform steps as explained for claim 21.
Regarding claims 24 and 39, Noda in view of Miller disclose wherein:
the first center location (Noda’s Figs. 7-8 and par. 74, 80: marker vector Vm which start at user’s pupil center S) is determined based at least on one or more other detected features of the eye including a pupil, an iris, or a limbus of the eye (Noda’s Figs. 7-8 and par. 74, 80: pupil); and
the second center location (Noda’s Figs. 7-8 and par. 77, 79: optical axis vector Vo based on curvature center C of cornea) is determined based at least in part on a pose of the eye (Noda’s Figs. 7-8 and par. 73: eye looking at marker M [pose]) determined from an eye model (Noda’s Fig. 7 and par. 77: cornea is taken to be part of a sphere [eye model]).
Regarding claims 25, 34 and 40, Noda in view of Miller disclose wherein determining the difference between the first center location and the second center location (Noda’s Figs. 8, 11-12 and par. 85-86, 99-105: whether discrepancy between angles ω and θ becomes large, correlation coefficient rxy becomes small below threshold rth) comprises determining a shift vector between the first center location and the second center location in a two- dimensional plane (Noda’s Figs. 8, 11-12 and par. 99-105: angles ω and θ from Vo to Vm).
Regarding claim 32, Noda in view of Miller disclose wherein the first center location (Noda’s Figs. 7-8 and par. 74, 80: marker vector Vm which start at user’s pupil center S) is determined based at least on one or more other detected features of the eye including a pupil, an iris, or a limbus of the eye (Noda’s Figs. 7-8 and par. 74, 80: pupil).
Regarding claim 33, Noda in view of Miller disclose wherein the second center location (Noda’s Figs. 7-8 and par. 77, 79: optical axis vector Vo based on curvature center C of cornea) is determined based at least in part on a pose of the eye (Noda’s Figs. 7-8 and par. 73: eye looking at marker M [pose]) determined from an eye model (Noda’s Fig. 7 and par. 77: cornea is taken to be part of a sphere [eye model]).
Claims 26-29 and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Noda in view of Miller as applied above, in further view of the Thier et al. in US 2024/0005698 (hereinafter Thier).
Regarding claims 26 and 35, Noda in view of Miller discloses wherein:
the HMD includes:
a display (Noda’s Fig. 4 and par. 53: see 130) configured to generate visual content for a user (Noda’s par. 53: displays information), and
a gaze tracking system (Noda’s Fig. 4 and par. 108: elements 110-120, 140-150 and 200 enable gaze tracking) configured to track a gaze direction of the user towards the display (Noda’s Figs. 6-10 and par. 58).
Noda in view of Miller fail to disclose said detecting of the contact lens shift is performed during an enrollment process of the user to calibrate the gaze tracking system for the user.
However, in the same field of endeavor of eye gaze tracking, Thier discloses performing calibration of eye gaze during enrollment process (Thier’s par. 20).
Therefore, it would have been obvious to one of ordinary skill in the art, that Noda in view of Miller’s calibration (Noda’s par. 106, 112) would take place during the enrollment process (Thier’s par. 20), in order to obtain the benefit of a user-specific calibration (Thier’s par. 23).
By doing such combination, Noda in view of Miller and Thier disclose:
said detecting of the contact lens shift (Noda’s Fig. 5 and par. 105-106: step 160 detection of optical variation which upon combination is detecting that a contact lens moves over cornea per par. 112) is performed during an enrollment process of the user (upon combination with Thier’s par. 20) to calibrate the gaze tracking system for the user (Thier’s par. 23 and Noda’s Fig. 5 and par. 105-106).
Regarding claim 27, Noda in view of Miller and Their disclose wherein the HMD device (Noda’s Fig. 2 and par. 45: eyewear terminal) is configured to generate the notification of the contact lens shift (Miller’s par. 79: “Calibration necessary, initiating calibration” which indicates the contact lens shift of Noda’s par. 112) via the display (Miller’s par. 79: display, which is thus performed in display 130 of Noda’s Fig. 4).
Regarding claims 28 and 36, Noda in view of Miller and Their further disclose wherein the one or more processors (Noda’s Fig. 4 and par. 54: control unit 140) are further configured to: retry said calibrating the gaze tracking system for the user after said generating the notification (Miller’s par. 79: “Calibration necessary, initiating calibration” where the initiating calibration is the calibration performed again per Noda’s par. 106).
It would also have been obvious to one of ordinary skill in the art, that the notification for initiating calibration (Miller’s par. 79) precedes the calibration performed again (Noda’s par. 106), in order to obtain the benefit of informing the user of calibration (Miller’s par. 79).
Regarding claim 29, Noda in view of Miller and Thier disclose wherein:
the gaze tracking system (Noda’s Fig. 4: elements 110-120, 140-150 and 200) includes:
a plurality of light emitting diodes (Noda’s Fig. 2 and par. 46: see 103 which upon combination are LEDs per par. 126) configured to emit lights towards the eye (Noda’s par. 46), and two or more cameras (Noda’s Fig. 2 and par. 47: imaging units 104R and 104L) configured to capture reflections of the lights emitted by the LEDs (Noda’s Fig. 3 and par. 47, 52); and
the first center location or the second center location of the eye (Noda’s Figs. 7-8: Vm or Vo) are determined based at least in part on the reflections captured by the two or more cameras (Noda’s Fig. 3 and par. 55, 72, 77-78).
It would also have been obvious to one of ordinary skill in the art that Noda’s light sources (Noda’s Fig. 2 and par. 46: see 103) are light emitting diodes (Noda’s par. 126), in order to obtain the predictable result of using an already known technology for light emission (Noda’s par. 126).
Allowable Subject Matter
Claims 22-23, 31 and 38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 22, 31 and 38, the prior art fails to disclose ALL limitations of independent claims 21, 30 and 37 respectively, in addition to “generate a recommendation or an instruction to a user to perform an action to mitigate the excessive contact lens shift”.
Dependent claim 23 is indicated as allowable for at least the same reason than claim 22.
Miller’s notification (Miller’s par. 79) fails to disclose a recommendation or an instruction to a user to perform an action to mitigate the excessive contact lens shift as required by claims 22, 31 and 38.
Nor does any other prior art disclose this limitation.
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
On the Remarks pgs. 10-11, Applicant argues with respect to independent claim 21 that Miller is not analogous art to Noda because Miller is directed to an eye-mounted contact lens display and Noda is directed to a head-mounted display, and therefore a person of ordinary skill in the art would not look for solutions in the art of eye-mounted contact lenses (such as Miller) when Noda already discloses an HMD. The office must respectfully disagree, Noda and Miller are both directed to the same art of wearable displays, Noda’s is head-mounted and Miller’s is eye-mounted. Both Noda and Miller also describe issues with contact lenses, Noda explains that contact lens shift causes variations in the optical axis that result in a modification of the calibration of the display (Noda’s par. 112, 114, 105-106), Miller discloses that contact lens is misaligned and therefore projects a notice of calibration (Miller’s par. 79), thus both are related to wearable displays with calibration based on contact lens shift.
On the Remarks pgs. 12-14, Applicant also argues that Noda in view of Miller’s par. 79 notice of “calibration necessary, initiating calibration” does not disclose a notification of an excessive contact lens shift. The office must again respectfully disagree, Noda discloses modifying the calibration (Noda’s par. 106) because the contact lens moves over the cornea causing variation in the optical axis (Noda’s par. 112). Noda does not disclose the notification. Miller discloses informing the user that calibration is necessary when a contact lens is misaligned (Miller’s par. 79). Thus, it would be obvious that Noda’s generates a notification for calibration representative of contact lens shift (Miller’s par. 79), when the threshold is exceeded due to contact lens shift (Noda’s par. 106, 112)(Miller’s par. 79).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Liliana Cerullo whose telephone number is (571)270-5882. The examiner can normally be reached 8AM to 3PM MT.
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/LILIANA CERULLO/Primary Examiner, Art Unit 2621
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