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 . 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 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.
Response to Amendment
This Office Action is responsive to the amendment filed 05/27/2025 (“Amendment”). Claims 1, 4, 8-11, 13, and 15-20 are currently under consideration. The Office acknowledges the amendments to claims 1 and 17. Claims 5-7 and 14 remain withdrawn.
The objection(s) to the drawings, specification, and/or claims, the interpretation(s) under 35 USC 112(f), and/or the rejection(s) under 35 USC 101 and/or 35 USC 112 not reproduced below has/have been withdrawn in view of the corresponding amendments.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1 and 17 are objected to because of the following informalities: the recitations of “parallelpiped” should instead read –parallelepiped— and the recitations of “plate-like shaped” should instead read –plate-shaped--. Appropriate correction is required.
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: “cover member” in claims 1 and 17, “support member” in claims 1 and 17, and “force exerting member” in claims 1 and 17.
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 (e.g. for “cover member,” element 61, for “support member,” element 62, and for “force exerting member,” a spring as described in ¶ 0033 of the specification as filed).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4, 8-11, 13, and 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 17, there is no support for the cover member being fixed to the measurement section. ¶ 0036 of the specification as filed describes the cover 60 being fixed such that the measurement section 31 is covered with the cover member 61, which is not the same thing.
Claims 4, 8-11, 13, 15, 16, and 18-20 are rejected because they depend on rejected claims.
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.
Claims 1, 4, 8-11, 13, 15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2016/0135728 (“Furukawa”), International Patent Application Publication WO 2014/024228 (“Koyama,” an English-language machine translation of which is provided and cited to herein), US Patent Application Publication 2015/0216471 (“Goldstein”), and US Patent Application Publication 2013/0050768 (“Hill”).
Regarding claim 1, Furukawa teaches [a] measuring instrument having a longitudinal direction (as shown in Fig. 1, horizontal), the measuring instrument comprising: a grip (Fig. 1, main body 10) … that includes a switch (¶¶s 0044-0047 describe a pressing force detecting unit 50 that detects pressing force, and units 66 and 68 that initiate measurement when the pressing force falls within an appropriate range. These units and their associated triggering function are considered a switch); a probe including a measurement section and a joint section that includes an end portion that is inserted into the grip to form a connection between the measurement section and the grip (Fig. 1, swing member 20 including an area for detection unit 30 and another area (end portion) for swing shaft 14, which is inserted into the grip) the measurement section including a sensor having a plate-like shaped measurement surface that is flat and exposed in a direction perpendicular to the longitudinal direction (Fig. 1, sensor 32); a cover (Fig. 3, cover 110) that includes a cover member that is fixed to the measurement section (as shown in Fig. 3) and a support member that fixes the cover member to an external surface of the grip (Fig. 3, adhesive sheet 112); and a circuit board … having an oscillation circuit mounted thereon (¶ 0046, control unit 60 in Fig. 1 includes an oscillation circuit for the sensor 32), the oscillation circuit being configured to output an oscillatory signal corresponding to an electrical signal detected by the sensor (¶¶s 0046, 0055), …, wherein the grip includes a force exerting member that is constructed to exert force on the probe in a direction in which the probe swings (Fig. 2, biasing member 40, ¶¶s 0042-0045), and wherein the switch of the grip is configured to be turned on when the probe swings in such a way to resist the force exerting member, such that a control circuit of the measuring instrument starts determining a moisture content based on the oscillatory signal (¶¶s 0044-0047).
Furukawa does not appear to explicitly teach the grip being a substantially rectangular parallelepiped, the circuit board being disposed in the joint section and having a principal surface that is parallel to the plate-like shaped measurement surface of the sensor.
Koyama teaches a grip being a substantially rectangular parallelepiped (Fig. 1A, right side), and using a separate circuit board for interfacing with a sensor, the circuit board located in a probe portion of the device (Fig. 1B, circuit board 153; page 3, ¶ beginning with “Reference numeral 153”).
Goldstein teaches a moisture sensor, ribbon-type cable, and corresponding circuit board all arranged in one plane with limited degrees of freedom (Fig. 11A, ¶ 0112, the cable enables certain types of rotation/movement but prevents others).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the grip of Furukawa a substantially rectangular parallelepiped, as in Koyama, since such a modification would have involved a mere change in the shape of a component (a change in shape is generally recognized as being within the level of ordinary skill in the art when the choice of shape has no significant impact on the operation of the invention. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). It would have been obvious to arrange a circuit board in the joint section of Furukawa, as in Koyama, for the purpose of better accommodating the shape of the casing/housing (Koyama: page 3, ¶ beginning with “In addition.” Note that this allows for greater flexibility in design of the grip/body portion), and for the purpose of locating analog front end (AFE) components closer to the sensor to reduce signal quality loss. It would have been obvious to arrange the board flatly, parallel to the plate-like shaped measurement surface (with the ribbon-type cable accommodating the swinging motion contemplated), as in Goldstein, as a mere matter of design choice (the neck portion of Furukawa having a suitable location for mounting a circuit board and the ribbon-type cable being known for accommodating the kinds of bends and movement found in Furukawa), and for the purpose of limiting the height of the in-mouth portion to make it easier to use (Goldstein: Figs. 5A and 5B), including being able to conform the in-mouth portion to the relevant cavity (Goldstein: ¶ 0102), and for being able to measure low quantities of saliva (Goldstein: ¶ 0009).
Furukawa-Koyama-Goldstein does not appear to explicitly teach the circuit board being more rigid than a resinous exterior of the probe.
Hill teaches using a stiff PCB to compensate for the low stiffness of a housing (¶¶s 0018, 0019).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a circuit board that is more rigid than a resinous probe exterior in the combination as in Hill, for the purpose of helping to establish and/or maintain rigidity of the probe (Hill: ¶¶s 0018, 0019).
Regarding claim 17, Furukawa teaches [a] measuring instrument extending in a lengthwise direction (as shown in Fig. 1, horizontal), the measuring instrument comprising: a grip (Fig. 1, main body 10) … that includes a switch (¶¶s 0044-0047 describe a pressing force detecting unit 50 that detects pressing force, and units 66 and 68 that initiate measurement when the pressing force falls within an appropriate range. These units and their associated triggering function are considered a switch); a probe that has a joint section that includes an end portion that is inserted into the grip and that movably connects the probe to the grip (Fig. 1, swing member 20 including an area for detection unit 30 and another area (end portion) for swing shaft 14, which is inserted into the grip), a measurement section disposed in the probe and including a sensor with a plate-like shaped measurement surface that is flat and that is exposed in a direction perpendicular to the lengthwise direction (Fig. 1, the area for detection unit 30, which includes sensor 32); a cover (Fig. 3, cover 110) that includes a cover member that is fixed to the measurement section (as shown in Fig. 3) and a support member that fixes the cover member to an external surface of the grip (Fig. 3, adhesive sheet 112); and a circuit board … having an oscillation circuit (¶ 0046, control unit 60 in Fig. 1 includes an oscillation circuit for the sensor 32) that is configured to output an oscillatory signal corresponding to an electrical signal detected by the sensor (¶¶s 0046, 0055), …, wherein the grip includes a force exerting member that is constructed to exert force on the probe in a direction in which the probe moves (Fig. 2, biasing member 40, ¶¶s 0042-0045), and wherein the switch of the grip is configured to be turned on when the probe swings in such a way to resist the force exerting member, such that a control circuit of the measuring instrument starts determining a moisture content based on the oscillatory signal (¶¶s 0044-0047).
Furukawa does not appear to explicitly teach the grip being a substantially rectangular parallelepiped, the circuit board being disposed in the joint section and having a principal surface that extends in a direction parallel to the plate-like shaped measurement surface of the sensor.
Koyama teaches a grip being a substantially rectangular parallelepiped (Fig. 1A, right side), and using a separate circuit board for interfacing with a sensor, the circuit board located in a probe portion of the device (Fig. 1B, circuit board 153; page 3, ¶ beginning with “Reference numeral 153”).
Goldstein teaches a moisture sensor, ribbon-type cable, and corresponding circuit board all arranged in one plane with limited degrees of freedom (Fig. 11A, ¶ 0112, the cable enables certain types of rotation/movement but prevents others).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the grip of Furukawa a substantially rectangular parallelepiped, as in Koyama, since such a modification would have involved a mere change in the shape of a component (a change in shape is generally recognized as being within the level of ordinary skill in the art when the choice of shape has no significant impact on the operation of the invention. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). It would have been obvious to arrange a circuit board in the joint section of Furukawa, as in Koyama, for the purpose of better accommodating the shape of the casing/housing (Koyama: page 3, ¶ beginning with “In addition.” Note that this allows for greater flexibility in design of the grip/body portion), and for the purpose of locating analog front end (AFE) components closer to the sensor to reduce signal quality loss. It would have been obvious to arrange the board flatly, parallel to the plate-like shaped measurement surface (with the ribbon-type cable accommodating the swinging motion contemplated), as in Goldstein, as a mere matter of design choice (the neck portion of Furukawa having a suitable location for mounting a circuit board and the ribbon-type cable being known for accommodating the kinds of bends and movement found in Furukawa), and for the purpose of limiting the height of the in-mouth portion to make it easier to use (Goldstein: Figs. 5A and 5B), including being able to conform the in-mouth portion to the relevant cavity (Goldstein: ¶ 0102), and for being able to measure low quantities of saliva (Goldstein: ¶ 0009).
Furukawa-Koyama-Goldstein does not appear to explicitly teach the circuit board being more rigid than a resinous exterior of the probe.
Hill teaches using a stiff PCB to compensate for the low stiffness of a housing (¶¶s 0018, 0019).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a circuit board that is more rigid than a resinous probe exterior in the combination as in Hill, for the purpose of helping to establish and/or maintain rigidity of the probe (Hill: ¶¶s 0018, 0019).
Regarding claim 4, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to claim 1, as outlined above. Furukawa-Koyama-Goldstein-Hill further teaches wherein the circuit board disposed in the joint section of the probe is adjacent to a distal end of the probe (Koyama: Fig. 1B).
Regarding claims 8 and 18, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to the corresponding claims 1 and 17, as outlined above. Regarding claim 8, Furukawa-Koyama-Goldstein-Hill further teaches wherein the probe is swingably supported by the grip (Furukawa: Fig. 5, via swing shaft 14 and biasing member 40).
Claim 18 is rejected in like manner.
Regarding claims 9 and 19, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to the corresponding claims 1 and 17, as outlined above. Regarding claim 9, Furukawa-Koyama-Goldstein-Hill further teaches wherein the sensor is a capacitive sensor and the oscillation circuit is connected to the sensor with a pair of traces being laid therebetween (Furukawa: ¶ 0039, capacitance type sensor; Fig. 7a, wirings 26c arranged so as to prevent capacitance between the wirings from affecting measurement, as described in ¶¶s 0069 and 0070).
Claim 19 is rejected in like manner.
Regarding claims 10, 11, and 20, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to the corresponding claims 9 and 19, as outlined above. Regarding claims 10 and 11, Furukawa-Koyama-Goldstein-Hill further teaches wherein one trace of the pair of traces extends apart from the other trace, wherein the pair of traces extend parallel and apart from each other (Furukawa: as shown in e.g. Fig. 7a).
Claim 20 is rejected in like manner.
Regarding claim 13, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to claim 1, as outlined above. Furukawa-Koyama-Goldstein-Hill further teaches wherein the switch is disposed on a main circuit board in the grip (Furukawa: ¶ 0044, pressing force detection unit 50 is controlled by control unit 60. It would have been obvious to dispose the unit 50 on the main board where unit 60 is located (i.e., the processing component of the strain gauge), for the purpose of reducing the number of components required, and using one controller for all processing).
Regarding claim 15, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to claim 1, as outlined above. Furukawa-Koyama-Goldstein-Hill further teaches a pair of electrodes disposed on the measurement surface of the sensor (Furukawa: Fig. 2c, electrodes 36 and 38).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Furukawa-Koyama-Goldstein-Hill in view of US Patent Application Publication 2006/0203319 (“Kouma”).
Regarding claim 16, Furukawa-Koyama-Goldstein-Hill teaches all the features with respect to claim 15, as outlined above. Furukawa-Koyama-Goldstein-Hill does not appear to explicitly teach wherein the pair of electrodes comprise a comb teeth shape.
Kouma teaches making an electrode pair with a comb-teeth shape (Title, Abstract, Fig. 1, etc.).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the electrode pair of the combination comb teeth shaped, as in Kouma, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art when the choice of shape has no significant impact on the operation of the invention. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Response to Arguments
Applicant’s arguments filed 05/27/2025 have been fully considered.
In response to the arguments regarding the rejections under 35 USC 103, they are not persuasive. Applicant’s newly added features are found in the prior art references of record, as outlined above. Furukawa teaches a joint section inserted into the grip, and a cover attached to the external surface of the grip. Koyama teaches the shape of the grip.
Regarding the rigidity of the circuit board, Hill is cited for this teaching, not Goldstein. Goldstein is cited to teach the parallel arrangement. And, Koyama is cited for moving the circuit board distally.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Each of the modifications proposed by the Office finds its support in the prior art, and is motivated by teachings of the prior art.
Thus, all claims remain rejected in light of the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANDREY SHOSTAK whose telephone number is (408) 918-7617. The examiner can normally be reached Monday - Friday 7 am - 3 pm.
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/ANDREY SHOSTAK/Primary Examiner, Art Unit 3791