2021003602 (P.T.A.B. Oct. 12, 2021)

Carl Zeiss Vision International GmbH

Patent Trials and Appeals BoardOct 12, 2021

2021003602 (P.T.A.B. Oct. 12, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/856,974 12/28/2017 Katharina Rifai 1346.0004-US1 5184 65770 7590 10/12/2021 Thrive IP Jeremy Stipkala 5401 NETHERBY LANE SUITE 1201 NORTH CHARLESTON, SC 29420 EXAMINER GRANT, MICHAEL CHRISTOPHER ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 10/12/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): JEREMY.STIPKALA@Thrive-IP.COM docket@thrive-ip.com rebecca.seaman@thrive-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ___________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KATHARINA RIFAI, SIEGFRIED WAHL, and MARIA BARRAZA-BERNAL ____________ Appeal 2021-003602 Application 15/856,974 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).2 We REVERSE and enter new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Carl Zeiss Vision International GmbH as the applicant and real party in interest. Appeal Br. 3. 2 This case came before the Board for regularly scheduled hearing on September 27, 2021. Citations to the transcript use the prefix “Tr.” Appeal 2021-003602 Application 15/856,974 2 THE INVENTION Appellant’s invention relates to human vision therapy. Spec. ¶ 2, 32. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer program stored on a non-transitory storage medium with program code to execute a method for training a preferred retinal locus of fixation for a person having an eye with a field of vision including an area of partially diminished or entirely degenerated visual acuity when the computer program is loaded in a computer or executed in the computer, the method comprising: - determining an inefficient retinal region (Inefficient PRL) for a specific vision task outside an area (Central Scotoma) of a partially diminished or entirely degenerated visual acuity in a field of vision of an eye of a person and a more efficient retinal region (Efficient PRL) for the specific vision task outside the area (Central Scotoma) of the partially diminished or entirely degenerated visual acuity in the field of vision of the eye of the person, - inducing a preferred retinal locus of fixation (Efficient PRL) for the specific vision task outside the inefficient retinal region (Inefficient PRL), but in the more efficient retinal region (Efficient PRL) by shifting the retinal locus of fixation from the inefficient retinal region outside the area onto the more efficient retinal region outside the area, whereby the inducing the preferred retinal focus of fixation (Efficient PRL) for the specific vision task outside the inefficient retinal region (Inefficient PRL), but in the more efficient retinal region (Efficient PRL) comprises one or both of: - measures to encourage the person to move a head, an eye, or the head and the eye to gaze with the retinal location of fixation of the eye of the person lying outside the inefficient retinal region (Inefficient PRL), or - measures to discourage the person to move the head, the eye, or the head and the eye to gaze in a direction with the retinal location of fixation of the eye of the person lying inside the inefficient retinal region (Inefficient PRL). Appeal 2021-003602 Application 15/856,974 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Rorabaugh US 5,035,500 July 30, 1991 Cislo US 8,454,159 Bl June 4, 2013 Rosen US 2015/0250583 A1 Sept. 10, 2015 Stuart non-patent literature3 April, 2013 MAIA non-patent literature4 Mar. 31, 2014 Lad non-patent literature5 April, 2014 Morales non-patent literature6 May, 2015 The following rejections are before us for review: 1. Claims 1, 3, 8, and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, and Stuart. 2. Claims 2, 9, 10, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, and Cislo. 3. Claims 4–6 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, Cislo, and Rorabaugh. 3 Stuart, Annie, Expanded Role for Microperimetry in Visual Rehabilitation, Eyenet, April, 2013. 4 Morales, Marco, MAIA – Vision Training Module, Wayback Machine date Mar. 31, 2014 downloaded from URL https://web.archive.org/web/20140331 /https://www.slideshare.net/marcoulises/maia-vision. 5 Lad, Eleonora, Evaluation of visual function impairments in patients with dry age-related macular degeneration, INVESTIGATIVE OPHTHALMOLOGY & VISUAL SCIENCE, April 2014, Vol.55, 5213. 6 Morales, Marco, Augmented Reality Eyewear for Home-Based Vision Training After Biofeedback Rehabilitation of Eccentric Fixation, May, 2015. Appeal 2021-003602 Application 15/856,974 4 4. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, and Lad. 5. Claims 12, and 13 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, Cislo, and Lad. 6. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, Cislo, Lad, and Rorabaugh. 7. Claim 16 is rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, Rorabaugh, Lad, and Admitted Prior Art. 8. Claim 17 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Stuart, Rorabaugh, Lad, and Rosen. 9. Claim 21 is rejected under 35 U.S.C. § 103 as being unpatentable over MAIA, Morales, Rorabaugh, and Lad. OPINION New Ground of Rejection Unpatentable Subject Matter – Claims 1–18, 20, and 21 Legal Principles Applicable to Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, courts recognize certain exceptions to Section 101, namely: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas. See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 70–71 (2012). The Supreme Court has set forth “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (citing Mayo, 566 U.S. at 72–73). According to the Supreme Court’s framework, we must first Appeal 2021-003602 Application 15/856,974 5 determine whether the claims at issue are directed to one of those concepts. Id. If so, we must secondly “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. In situations where an abstract idea is implemented on a computer, the first step in the Alice/Mayo analysis asks whether the focus of the claims is on a specific improvement in computer capabilities or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). A claimed invention must embody a concrete solution to a problem having “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018) quoting SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021–22 (Fed. Cir. 2018). Frequently, computer software based inventions fail to pass section 101 muster, because they fail to recite any assertedly inventive technology for improving computers or because the elements of the asserted invention is so result-based that they amount to patenting the patent-ineligible concept itself. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d at 1350, 1354–55 (Fed. Cir. 2016) (claims lacking “any requirements for how the desired result is achieved”); SAP Am., 890 F.3d at 1022 (claims not focused on any improved computer or network). The Supreme Court characterizes the second step of the analysis as “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to Appeal 2021-003602 Application 15/856,974 6 significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72). Where the claim is directed to an abstract idea that is implemented on a computer, merely stating the abstract idea while adding the words “apply it” is not enough to establish such an inventive concept. See Alice, 573 U.S. at 223. [I]f that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Id. at 224. The PTO has published guidelines on the application of Section 101. Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “Guidelines”). Under the Guidelines, in conducting step one of the Alice framework, we first look to whether the claim recites: (1) any judicial exceptions; and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Under prong 1 of an abstract idea analysis, we look to whether the claim recites an abstract idea. Then, if it does, under prong 2, we look at the claim, as a whole, and determine whether the claim is “directed to” the abstract idea or, instead, is “directed to” a “practical application” of the abstract idea. The Guidelines identify three key concepts identified as abstract ideas: (a) mathematical concepts; (b) certain methods of organizing human activity, including “managing personal behavior”; and (c) mental processes. Guidelines, 84 Fed. Reg. at 52. Under Step One – prong one of the Guidelines’ analysis, a method of organizing human activity is recognized by the courts as an abstract idea. Appeal 2021-003602 Application 15/856,974 7 See In re TLI Communications LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (classifying and storing digital images is an abstract idea as a method of organizing human activity); see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (tracking financial transactions to determine whether they exceed a pre-set spending limit is an abstract idea as a method of organizing human activity); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (screening messages is an abstract idea as a method of organizing human activity); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering internet content is an abstract idea as a method of organizing human behavior). Under Prong 2 of Step 1 of the Guidelines, we do not assume that such claims are directed to patent ineligible subject matter because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) quoting Alice. Instead, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). If the claims are not directed to an abstract idea, the inquiry ends. Guidelines. If the claims are “directed to” an abstract idea, then the inquiry proceeds to the second step of the Alice framework. Id. Consequently, we consider whether Appellant’s invention includes elements that integrate the judicial exception into a practical application. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a Appeal 2021-003602 Application 15/856,974 8 meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Guidelines, 84 Fed. Reg. at 53. Under step 2 of the Alice/Mayo analysis under our Guidelines, we look more precisely at what the claim elements add in terms of whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed to. SAP Am., 898 F.3d at 1167. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 77–78). Those “additional features” must be more than well-understood, routine, conventional activity. Mayo, 566 U.S. at 79. With the foregoing principles in mind, we analyze the claims of the pending application on appeal. Claim 1 With respect to Step 1 – prong 1 under the Guidelines, claim 1 recites a “computer program” that implements a “method for training” for a “person.” Claims App. Training programs organize human activity. Multimedia Plus, Inc. v. PlayerLync LLC, 198 F.Supp.3d 264, 269-70 aff’d 695 F. App’x 577 (Fed. Cir. 2017); In re Noble Systems Corp. Appeal No. 2016-007634 (PTAB Aug. 10, 2018), aff’d 755 Fed.Appx. 1017 (Fed. Cir. 2019). With respect to Step 1 – prong 2 under our Guidelines, we find that claim 1 lacks elements that integrate the abstract idea into a practical application. The claim recites a “computer program” that performs four steps “when the computer program is . . . executed” on a computer. Claims Appeal 2021-003602 Application 15/856,974 9 App. The first step determines a retinal region. Id. The second step induces a person to fix their gaze to a retinal region. Id. The third and fourth steps encourage or discourage the use of particular retinal regions. Id. There is no structure or apparatus identified in the claim that facilitates performance of these steps apart from the “computer program” recited in the claim preamble. The prospect that Appellant’s method uses a computerized “tool” does not render the claims less abstract. An abstract idea does not become non- abstract by limiting the invention to a particular technological environment. Intellectual Ventures I, 792 F.3d at 1367; see also Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (Merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract); see also Alice, 573 U.S. at 224 (the fact a computer exists in the physical realm is beside the point). Moreover, a person can divert their gaze without using a computer, an instructor, or any other external stimuli or apparatus. Appellant using a computer to encourage a user divert his or her gaze falls short of the standard of integration into a “practical application” required by our Guidelines. Before turning to step 2 of the Alice/Mayo analysis, we note that the particular training undergone by a person in claim 1 relates to a natural phenomenon, namely, the condition of a person’s vision, in general, and the health of the retina, in particular. The computer implemented method of claim 1 does not provide “therapy” per se for the person’s condition. The health of the retina remains unchanged after the person undergoes training. Appellant’s training merely helps a patient cope with his or her infirmity, it Appeal 2021-003602 Application 15/856,974 10 does not heal it. Thus, Appellant’s invention touches on two judicial exceptions to patentable subject matter: (1) natural phenomena; and (2) abstract idea. For purposes of this appeal, we focus primarily on the abstract idea aspect of the invention.7 Turning now to step 2 of the Alice/Mayo analysis under our Guidelines, Appellant recites a “computer program.” Claims App. We understand that the program is executed on a computer. The remaining claim limitations merely describe a desired result or outcome of using the computer program. No other features are recited that describe or identify how the desired outcome is achieved. Appellant’s claimed invention lacks “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Interval Licensing, 896 F.3d at 1343; SAP Am., 890 F.3d at 1021–22. There is no indication from reading the claim that something other than well-understood, routine, or conventional activity is involved in achieving the desired result. Claim 11 Claim 11 is an independent claim that is substantially similar in scope to claim 1. Claims App. Claim 11 recites an “inducing arrangement” and “means” to encourage or discourage a user to change the direction of their visual gaze. Claims App. Claim 11 is directed to the same abstract idea of 7 Our previous decisions in the cases of In re Reavy, Appeal No. 2018- 005039, 2019 WL 1776846 (PTAB NE, 25M 2019), and In re Jou, Appeal No. 2019-003305, 2019 WL 2601973 (PTAB June 13, 2019) are instructive on how we have previously resolved natural phenomenon cases similar to the one presented here involving guided human therapy and training. Nevertheless, our analysis under the judicial exception of abstract idea is sufficient to resolve this particular matter. Appeal 2021-003602 Application 15/856,974 11 organizing human activity as claim 1. Humans can divert their gaze without training or prompting. Training a person to change where they fixate their gaze can be accomplished without computers or other external physical tools or devices. Appellant’s recitals of an “inducing arrangement” is broad, vague, generic, and does not rise to the level of a “practical application” of the abstract idea. As with claim 1, claim 11 lacks “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Interval Licensing, 896 F.3d at 1343. When an applicant invokes the means plus function provision of Section 112 with respect to an element in a claim for a combination, the claim is construed to cover corresponding structure, material or acts described in the Specification and equivalents thereof. 35 U.S.C. § 112(f) According to Appellant, claim 11’s recitals of “means” are supported by paragraphs 44 and 69 of the Specification. Appeal Br. 8. We have reviewed paragraphs 44 and 69 of the Specification. Spec. ¶¶ 44, 69. Neither paragraph identifies or describes any physical structure. Id. At best, they describe a desired outcome of the training. Id. For example, paragraph 69 states that: “The main strategy used to induce new efficient PRL locations is by discouraging inefficient PRL 82 and encouraging efficient PRL 81 regions.” Id. ¶ 69. There is nothing in paragraphs 44 and 69 that amounts to significantly more than a patent upon the ineligible concept itself. Alice, 573 U.S. at 217–18, Mayo, 566 U.S. at 72. Claim 21 Claim 21 is an independent claim that is similar in scope to claim 11 except that it also includes one of either: (1) a gaze dependent blocking arrangement; or (2) a gaze dependent shifting arrangement. Blocking and Appeal 2021-003602 Application 15/856,974 12 shifting arrangements are described in paragraphs 80 through 96 of the Specification and include presentation screens, electro-optical prism devices, prismatic contact lenses, intraocular lenses, electrochromic devices such as spectacles with photochromic blocking regions, and head mounted displays. Spec. ¶¶ 80–96. Such devices are described at a high level of generality that presumes familiarity on the part of the reader. Id. For example, Appellant identifies a “gaze-contingent training tool” as an off-the-shelf device sold by Appellant under the trade name VR One. Id. at 80. None of the devices are described in a way that purports to be an advance in vision science technology. A patent applicant is required to submit a specification that contains a written description of the invention in “full, clear, concise, and exact terms.” 35 U.S.C. § 112(a). Generally, for purposes of the Alice/Mayo analysis, a specification demonstrates the well-understood, routine, conventional nature of step 2 “additional elements” when it describes them in a manner that indicates they are sufficiently well-known that they need not be described with particularity to satisfy 35 U.S.C. § 112(a). That is certainly the case here. As we understand Appellant’s claim, well-known, conventional devices such as contact lenses are used in connection with implementation of Appellant’s abstract idea of organizing human activity, namely, training a person to divert their gaze and, more particularly, diverting the gaze so as to use a healthy part of the retina rather than a part of the retina that has been degraded by macular degeneration. Claim 21 falls squarely within a judicial exception to patentable subject matter and, accordingly, is hereby rejected under Section 101. Appeal 2021-003602 Application 15/856,974 13 Claims 2–10, 12–18, and 20 These claims depend, directly or indirectly, from either of claims 1 or 11. Claims App. We have reviewed each of these claims and determine that none of them adds additional elements that cause them to claim something significantly more than well-understood, routine, or conventional activity. These claims are also rejected under Section 101. New Grounds of Rejection Indefiniteness of Claims 1–18, 20, and 21 The controlling statute provides that “[t]he 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.” 35 U.S.C. § 112(b). A claim is properly rejected as indefinite under Section 112(b) if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). The test for definiteness under 35 U.S.C. § 112, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Rigorous application of the statutory standard to particularly point out and distinctly claim the subject matter regarded to be the invention serve an important public notice function. See Predicate Logic, Inc. v. Distributive Appeal 2021-003602 Application 15/856,974 14 Software, Inc., 544 F.3d 1298, 1300 (Fed. Cir. 2008). During patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). It is generally preferable to resolve ambiguity in claims during patent prosecution rather than attempting to resolve the ambiguity in litigation. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (cited with approval in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Section 112 places the burden of precise claim drafting on the applicant. In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). A claim that omits matter disclosed to be essential to the invention may be rejected under 35 U.S.C. § 112(b) as indefinite. In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by Appellant as necessary to practice the invention. MPEP § 2172.01. Claim 1 Claim 1 recites a computer program that executes a method on a computer. Claims App. Among other things, the programmed method determines an inefficient retinal region, induces a retinal locus of fixation, and encourages or discourages a person to alter their visual gaze. Id. A person of ordinary skill in the art would understand that the computer program would not be operable to execute the claimed method unless it interfaced and interacted with other structures that would provide input information to the program and receive and respond to outputs from the program. Sources of such input and structures to receive and respond to Appeal 2021-003602 Application 15/856,974 15 such output information are not identified in the claim. During the hearing, Appellant admitted that the claimed invention could not be practiced without the computer accessing input and output devices. Tr. 5:11 – 6:17. Thus, claim 1 is missing essential matter, thereby failing to particularly point and distinctly claim the subject matter regarded as the invention. Furthermore, the phrases “measures to encourage” and “measures to discourage” are vague and uncertain with respect to their metes and bounds. There are many ways in which a person can be encouraged or discouraged while performing a task. On resumption of prosecution following this appeal, Appellant is urged to clarify whether it intends “measures to” as invoking the means plus function and/or step plus function provisions of Section 112(f). In the event Appellant invokes Section 112(f), and elects at some point to proceed again before this Board, Appellant is reminded of the following requirement of our rules to identify the structure, material, or acts described in the Specification as corresponding to each claimed function. For each rejected independent claim, and for each dependent claim argued separately under the provisions of paragraph (c)(1)(iv) of this section, if the claim contains a means plus function or step plus function recitation as permitted by 35 U.S.C. 112(f), then the concise explanation must identify the structure, material, or acts described in the specification in the Record as corresponding to each claimed function with reference to the specification in the Record by page and line number or by paragraph number, and to the drawing, if any, by reference characters. 37 C.F.R. § 41.37(c)(1)(iii). In the instant case, the Summary of Claimed Subject Matter section of Appellant’s Appeal Brief refers only to paragraphs 34, 35, 36, and 39 of the Specification, all of which appear in the Appeal 2021-003602 Application 15/856,974 16 “Summary” section of the Specification. Appeal Br. 4–5. The cited paragraphs fail to identify structure, material, or acts with specificity. Id. There are no citations to the Detailed Description of Exemplary Embodiments section of the Specification in the Summary of Claimed Subject Matter section of Appellant’s Appeal Brief that identify corresponding structure, material, or acts in support of an invocation of the means plus function provisions of Section 112(f). Id. Thus, claim 1 is rejected under 35 U.S.C. § 112(b) because: (1) it is missing essential matter; and (2) regardless of whether Appellant intends to rely on Section 112(f), which itself is unclear, the overall meaning of the claim is unclear. Claims 2–10, and 20 These claims are rejected by reason of their dependency from claim 1. We will leave it to the Examiner to consider additional reasons for rejecting these claims upon resumption of prosecution. Claim 11 Claim 11 recites an “inducing arrangement.” Claims App. This term is overly broad, vague, and otherwise unclear in terms of its metes and bounds. An apparatus claim is not necessarily indefinite if it recites a limitation in functional terms. Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Functional language may be employed to limit the claims without using the means-plus- function format. K–2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999). However, the use of functional language may fail to provide a clear-cut indication of the scope of subject matter embraced by the claim and thus can be indefinite. Halliburton Energy Servs. v. M–I LLC, 514 Appeal 2021-003602 Application 15/856,974 17 F.3d 1244, 1255 (Fed. Cir. 2008); In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)). It is unclear to us whether use of the term “inducing arrangement” is intended to invoke Section 112(f). To the extent that Appellant desires or intends to invoke Section 112(f), Appellant’s Appeal Brief fails to comply with our above quoted rule with respect to identifying corresponding structure, materials or acts in the Summary of the Claimed Subject Matter section of the Appeal Brief. 37 C.F.R. § 41.37(c)(1)(iii). The only citation to the Specification that Appellant offers in the Summary of the Claimed Subject Matter section of its Appeal Brief with respect to the inducing arrangement is paragraph 54, which is taken from the Summary Section of the Specification and gives only a vague and generic description of the function to be performed without identifying any specific corresponding structure that performs the function. Appeal Br. 8. No citations to the Detailed Description Of Exemplary Embodiments section of the Specification are offered in the Summary of the Claimed Subject Matter section of the Appeal Brief, leaving us to scour the Specification for possible structure that might perform the claimed function. Id. For purposes of determining the metes and bounds of the claim, it is unclear to us how many components make up an “inducing arrangement,” and it is equally unclear how those components interact with each other to accomplish the claimed function. Claims 12–18 These claims are rejected by reason of their dependency from claim 11. We will leave it to the Examiner to consider additional reasons for rejecting these claims upon resumption of prosecution. Appeal 2021-003602 Application 15/856,974 18 Claim 21 As with claim 11, claim 21 recites an “inducing arrangement.” Claims App. As with claim 11, Appellant’s Appeal Brief cites only to paragraph 54 from the Summary Section of the Specification. Appeal Br. 11. Thus, claim 21 suffers from the same infirmity that was identified above with respect to claim 11. Claim 21 also recites a “gaze dependent blocking arrangement” and a “gaze dependent shifting arrangement.” Claims App. The metes and bounds of these two “arrangements” is equally unclear. Unpatentability of Claims 1–18, 20, and 21 over Prior Art Because we have concluded that claims 1–18, 20, and 21 are indefinite, the prior art rejections of these claims must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862 (CCPA 1962). Appeal 2021-003602 Application 15/856,974 19 CONCLUSION Claims Rejected 35 U.S.C. § References/Basis Aff’d Reversed New Ground 1-18, 20, 21 101 Eligibility 1-18, 20, 21 1-18, 20, 21 112 Indefiniteness 1-18, 20, 21 1, 3, 8, 11 103 MAIA, Morales, Stuart 1, 3, 8, 11 2, 9, 10, 20 103 MAIA, Morales, Stuart, Cislo 2, 9, 10, 20 4-6 103 MAIA, Morales, Stuart, Cislo, Rorabaugh 4-6 7 103 MAIA, Morales, Stuart, Lad 7 12, 13 103 MAIA, Morales, Stuart, Cislo, Lad 12, 13 14, 15 103 MAIA, Morales, Stuart, Cislo, Lad, Rorabaugh 14, 15 16 103 MAIA, Morales, Stuart, Lad, Rorabaugh 16 17, 18 103 MAIA, Morales, Stuart, Rorabaugh, Lad, Rosen 17, 18 21 103 MAIA, Morales, Rorabaugh, Lad 21 Overall Outcome 1-18, 20, 21 FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2021-003602 Application 15/856,974 20 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)