DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The action is in response to amendments filed on 08/01/2025. Claims 7 and 13 have been amended. Claims 8-12, 18 have been cancelled. Claims 7, 13-17, 19 are pending and examined below.
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.
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:
“a measuring circuit configured to chronologically measure a heart rate or a pulse rate of the measurement subject” in claim 7
“a processor configured to obtain a statistic of a plurality of values of the heart rate or the pulse rate chronologically measured by the measuring circuit” in claim 7
“a correction circuit configured to correct the photoacoustic signal detected by the detector based on the statistic obtained by the processor” In claim 7
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.
“a measuring circuit” is described in US 20220160235 A1, the PGPub the of Instant Application, as a laser rhemoter or ECG device in paragraph [0035].
“a processor” is described in US 20220160235 A1, the PGPub the of Instant Application, as a CPU in paragraph [0040] that is capable of measuring a statistic of heart rate and pulse rate, the statistic including a dispersion, a standard deviation, an average, or a temporal differential value (paragraph [0036]).
“a correction circuit” is described US 20220160235 A1, the PGPub the of Instant Application, as a CPU in paragraph [0040], but fails to teach in sufficient detail how the correction circuit performs the function of correcting the photoacoustic signal detected by the detector based on the statistic obtained by the processor.
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(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(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 7 and 13, and claims dependent thereof, 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 claim 7, the claim recites “a correction circuit configured to correct the photoacoustic signal detected by the detector based on the statistic obtained by the processor”. However, the Specification fails to teach an algorithm, steps, or computation in sufficient detail to meet the written description requirement. Rather Applicant merely repeats the intended results without sufficient details as to how this is to be accomplished. Though the Specification recites using statistics obtained by a pre-set correction coefficient and that “the correction coefficient is set so that the concentration value that is calculated by the concentration calculation unit 106 based on a corrected value obtained by the correction unit 105 correcting a photoacoustic signal detected by the detection unit 102 immediately after the above-described predetermined period of time is equal to the concentration value measured through the analysis of the blood”, the Specification fails to teach in sufficient specificity how that is done and how the correction coefficient corrects the concentration value (what algorithms or mathematical process/formulas are used), and essentially serves as a black box designed to perform the recited function. As such claim 7, and claims dependent thereof, fail to meet the 35 USC 112(a) written description requirement. (see MPEP 2181 (II)(B)).
Regarding claim 13, the claim is a parallel method claim and rejected for substantially the same reasons as claim 7.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 13, and claims dependent thereof, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 7, “a correction circuit” is described US 20220160235 A1, the PGPub the of Instant Application, as a CPU in paragraph [0040], but fails to teach in sufficient detail how the correction circuit performs the function of correcting the photoacoustic signal detected by the detector based on the statistic obtained by the processor. As such the claim is rejected for being indefinite under 35 USC 112(b). See MPEP 2181(II)(B) which states “… a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor” and “Mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish a specific software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.”
Regarding claims 7 and 13, the claims the claim recites “a correction circuit configured to correct the photoacoustic signal detected by the detector based on the statistic obtained by the processor”. The claims were rejected under 35 USC 112(a) as discussed above because the Specification fails to teach an algorithm, steps, or computation. As such, additionally, it is unclear as to how the system/method corrects the photoacoustic signal detected by the detector based on the statistic. As such the claim is indefinite.
Response to Arguments
Applicant’s arguments, filed 08/01/2025, with respect to some of the 35 USC 101 rejections, 35 USC 112(a) and (b) rejections, the 35 USC 112(d) rejections, and the prior art rejections have been fully considered and are persuasive. The 35 USC 101 rejections, 35 USC 112(a) and (b) rejections, the 35 USC 112(d) rejections, and the prior art rejections have been withdrawn.
Applicant's arguments filed 08/01/2025 in regards to the 35 USC 101 rejection and 35 USC 112(a) and (b) rejections have been fully considered but they are not persuasive.
35 USC 112(a)/(b) Rejections of claims 7 and 13, and claims dependent thereof:
Applicant traverses the 35 USC 112(a)/(b) Rejections of claims 7 and 13. Specifically Applicant argues that the Specification cites Japanese Patent Application Publication No. 2010-104858 which teaches a formula that can calculate blood component concentration. Thus there is sufficient disclosure in the Specification. Examiner respectfully disagrees.
The specification fails to explicitly teach that the methods of Japanese Patent Application Publication No. 2010-104858 are used to measure a concentration in the Instant Application. Rather, the Specification only recites using statistics obtained by a pre-set correction coefficient and that “the correction coefficient is set so that the concentration value that is calculated by the concentration calculation unit 106 based on a corrected value obtained by the correction unit 105 correcting a photoacoustic signal detected by the detection unit 102 immediately after the above-described predetermined period of time is equal to the concentration value measured through the analysis of the blood”, the Specification fails to teach in sufficient specificity how that is done and how the correction coefficient corrects the concentration value (what algorithms or mathematical process/formulas are used), and essentially serves as a black box designed to perform the recited function. As such claim 7, and claims dependent thereof, fail to meet the 35 USC 112(a) written description requirement. (see MPEP 2181 (II)(B)).
As such, Applicant’s arguments are found to be unpersuasive.
Conclusion
Claims 7 and 13, and claims dependent thereof, is rejected under 35 USC 112(a) and (b) but provides subject matter not found in the prior art search.
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 ABID A MUSTANSIR whose telephone number is (408)918-7647. The examiner can normally be reached M-F 10 am to 6 pm Pacific Time.
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/ABID A MUSTANSIR/Examiner, Art Unit 3791
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