DETAILED ACTION
Notice of Pre-AIA or AIA Status
Note: 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 (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.
Response to Amendment
This Office Action is responsive to the amendment filed 11/28/2025 (“Amendment”). Claims 15-29 are currently under consideration. The Office acknowledges the amendments to claim 15, as well as the cancellation of claims 1, 2, and 5-14 and the addition of new claims 21-29.
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under 35 USC 112(f), and/or the rejection(s) under 35 USC 101 and/or 35 USC 112 not reproduced below has/have been withdrawn in view of the corresponding amendments.
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: “energizing member” in claims 15, 17, 18, 20, and 24-29, and “fixing member” in claims 26-29.
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.
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 § 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 15-29 are rejected under 35 U.S.C. 103 as being unpatentable over various teachings of US Patent Application Publication 2018/0348048 (“Fei").
Regarding claim 15, Fei teaches a detection device 100 (see Par 0031) comprising:
an exterior member (See Figs. 2, 3, and 6, caseback 220, including e.g. ring 620) that defines a through hole (Fig. 3, openings 320 and 350);
a light transmissive transparent portion provided on the exterior member (234, 244) (see Fig. 2, ¶ 0042, etc.);
a holder 535 attached to the exterior member and positioned opposing the light transmissive transparent portion (234, 244) (see Figs. 5A, 6, and 7);
a circuit board 510 arranged between the exterior member and the holder 535 (see Figs. 5A, 6, and 7);
an optical sensor 210 configured to detect light, wherein the optical sensor is provided on one surface of the circuit board 510 opposing the light transmissive transparent portion (234, 244) and at least a portion of the optical sensor is arranged in the through hole (see Figs. 2, 5A, 6, and 7, and ¶¶s 0058, 0064, etc., describing the openings as used for passing LEDs and a photodiode therethrough); and
an energizing member 630 arranged between the holder 535 and the circuit board 510, and configured to force the circuit board 510 toward the light transmissive transparent portion (234, 244) to press the optical sensor against the light transmissive transparent portion (¶¶s 0008 and 0009, the transparent lenses are installed in the caseback, as shown in Fig. 2; ¶¶s 0083 and 0084 describe resilient members/springs configured to urge the circuit board 510, sensor 210, and/or central portion 610 towards the body. This means that in one configuration, the circuit board 510 and sensor 210 are urged, but the central portion 610 which receives the lenses is not, leading to a pressing of the sensor against the transparent portion/lens. ¶ 0043 describes a configuration in which the caseback is configured such that the optical sensor is in contact with, or urged firmly against, the skin. ¶¶s 0045 and 0046 describe recesses 310 and 340 being arranged in the caseback, and e.g. Figs. 5A, 6, and 7 show a lens 244 arranged in such a recess. Notably, this is part of the central/raised portion 610/260. 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 push the sensor against the light transmissive transparent portion using the resilient members/springs, for the purpose of bringing the sensor as close to the skin as possible (¶ 0043)),
wherein a surface perpendicular to the one surface of the circuit board is positioned opposing the exterior member (Fig. 6, the end of circuit board 510), and
wherein in a state where the energizing member presses the optical sensor against the light transmissive transparent portion, there is a space in which no other member exists between an outermost surface from a center of the circuit board in the surface perpendicular thereto and the exterior member opposing the surface perpendicular thereto (Figs. 5A and 6, there is a space between circuit board 530 and caseback 220, and 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 also include a similar space between circuit board 510 and portions 260 or 610, for the purpose of accounting for manufacturing variability (e.g., being able to accommodate circuit boards made slightly larger than the specification)).
Regarding claim 16, Fei teaches the detection device according to claim 15. Fei further teaches wherein the optical sensor 210 has a light emitting area (230, 232) (see Figs. 2 and 7) and a light receiving area (240, 242) (see Fig. 2 and 7).
Regarding claim 17, Fei teaches the detection device according to claim 15. Fei further teaches wherein the energizing member 630 comprises a cushioning material (P.0084 “one or more resilient members 630 may be a spring”), and is arranged on an outer circumferential area of another surface of the circuit board, opposite to the one surface of the circuit board 510 on which the optical sensor is provided, and the outer circumferential area does not include an area corresponding the optical sensor 210 (as seen in Figs. 6, 7, 8, etc., resilient members 630 are arranged on an outer circumferential area on the surface opposite to the optical sensor).
Regarding claim 18, Fei teaches the detection device according to claim 17. Fei further teaches wherein the energizing member 630 is in a compressed state when arranged between the holder 535 and the circuit board 510 (the resilient members 630 are in a compressed state when the device is worn as disclosed in P.0105 “For example, as the user secures apparatus 100 to the targeted area of the user, one or more discrete components of optical sensor 210 may come into contact with the user's body and compress corresponding resilient members 630 . The resilient members' spring urging of the associated discrete component of optical sensor 210 against the user may result in the respective discrete component maintaining a desirable level of contact or pressure between the inner surface of optical sensor 210 and the targeted area”).
Regarding claim 19, Fei teaches the detection device according to claim 15. Fei further teaches wherein the holder 535 defines an opening portion (i.e., central gap portion formed by a rectangular pattern of the placement posts 535) provided corresponding to the optical sensor 210 (as seen in Fig. 7, and par 0069).
Regarding claim 20, Fei teaches the detection device according to claim 19. Fei further teaches wherein an electronic component 540 provided on another surface of the circuit board 510 while avoiding the energizing member 630 is arranged in the opening (as seen in Figs. 6, 7, 8, etc., elements 540 pogo pins are electronic components provided on another surface of the circuit board and avoid the resilient members 630, and are arranged in the open portion of placement posts 535, see par 0070 & 0074).
Regarding claim 21, Fei teaches the detection device according to claim 15. Fei further teaches wherein light of a specific wavelength (i.e., all wavelengths of ambient light but a portion thereof that can affect the operation and/or accuracy of the physiological parameter monitor) passes through the transparent portion (234, 244) (the transparent portions of Fei may filter ambient light as disclosed in P.0042 for the purpose of increasing accuracy/reducing noise - “it may be possible to form lens 234 and 244 from material that imparts a filtering effect to the lenses. For example, ambient light that reaches photodiode 242 may be noise that can affect the operation and/or accuracy of a physiological parameter monitor. In embodiments in which LEDs 232 emit light sufficiently removed from the infrared region, apparatus 100 may comprise lenses that block a portion of incident infrared energy to thereby decrease the effect of any ambient light that may pass between caseback 220 and the user's tissue”).
Regarding claim 22, Fei teaches the detection device of claim 15. Fei further teaches a body-worn device comprising the detection device 100 according to claim 15 (P.0031 “apparatus 100 may comprise a wrist watch. In alternative embodiments, apparatus 100 may be a bracelet or an arm band. In further embodiments, apparatus 100 may be any wearable monitor device configured for positioning at a user's wrist, arm, another extremity of the user, or some other area of the user's body”).
Regarding claim 23, Fei teaches the detection device of claim 15. Fei further teaches wherein: the through hole of the exterior member extends along an axial direction (Figs. 5A, 6, 7, etc., show e.g. photodiode 242 extending through the through hole, which is the portion that the lens 244 sits on (not the portion surrounding the lens). The hole extends axially.); and a thickness of the optical sensor in the axial direction is greater than an axial length of the through hole in the axial direction such that when the optical sensor contacts an inner surface of the light transmissive transparent portion, a surface of the circuit board opposing the inner surface of the exterior member does not come in contact with the inner surface of the exterior member (as shown in the figures, the components 232 and 242 are thicker than the through hole in the axial direction, and abut the lenses 234 and 244 with minimal movement of the board 510, such that the board 510 does not contact many inner surfaces of the exterior member).
Regarding claim 24, Fei teaches the detection device of claim 15. Fei further teaches wherein in a state where the energizing member presses the optical sensor against the light transmissive transparent portion and where the optical sensor and the light transmissive transparent portion are in contact with each other, the circuit board is supported by the optical sensor and the energizing member (the energizing member/springs support the circuit board as shown in Fig. 6, and e.g. by pushing the sensor into contact with the lens. The sensor supports the circuit board when the device is e.g. flipped upside down).
Regarding claim 25, Fei teaches the detection device of claim 15. Fei further teaches wherein the one surface of the circuit board includes a first area on which the optical sensor is provided and a second area on which the optical sensor is not provided (Fig. 6, the area under the sensor is the first area, and the areas immediately around the sensor are the second area, which includes a space between the circuit board 510 and the exterior member (thus, the one surface of the circuit board is contacted only with the optical sensor)), and wherein in a state where the energizing member presses the optical sensor against the light transmissive transparent portion, there is a space between the second area and the exterior member opposing the second area (as shown in Fig. 6).
Regarding claim 26, Fei teaches the detection device of claim 15. Fei further teaches wherein, the holder is fixed to the exterior member by a fixing member (Figs. 5A and 6, fixed via the substrate supporting posts 535), and the energizing member is in a compressed state when arranged between the holder which is fixed to the exterior member and the circuit board (¶¶s 0084 and 0085, a compression spring that is able to move the board up when adjustment ring 620 is turned).
Regarding claim 27, Fei teaches the detection device of claim 26. Fei further teaches wherein, a protruding section that protrudes toward the exterior member is provided in the holder (Figs. 5A and 6, the post 535 includes a protruding section that protrudes towards e.g. ring 620), the energizing member is arranged in a position other than the protruding section (Fig. 6, a position other than the position of the post 535), and the protruding section is fixed to the exterior member by the fixing member provided in the protruding section (Figs. 5A and 6, via the substrate).
Regarding claim 28, Fei teaches a detection device 100 (see Par 0031) comprising:
an exterior member (See Figs. 2, 3, and 6, caseback 220, including e.g. ring 620) that defines a through hole (Fig. 3, openings 320 and 350);
a light transmissive transparent portion provided on the exterior member (234, 244) (see Fig. 2, ¶ 0042, etc.);
a holder 535 attached to the exterior member and positioned opposing the light transmissive transparent portion (234, 244) (see Figs. 5A, 6, and 7);
a circuit board 510 arranged between the exterior member and the holder 535 (see Figs. 5A, 6, and 7);
an optical sensor 210 configured to detect light, wherein the optical sensor is provided on one surface of the circuit board 510 opposing the light transmissive transparent portion (234, 244) and at least a portion of the optical sensor is arranged in the through hole (see Figs. 2, 5A, 6, and 7, and ¶¶s 0058, 0064, etc., describing the openings as used for passing LEDs and a photodiode therethrough); and
an energizing member 630 arranged between the holder 535 and the circuit board 510, and configured to force the circuit board 510 toward the light transmissive transparent portion (234, 244) to press the optical sensor against the light transmissive transparent portion (¶¶s 0008 and 0009, the transparent lenses are installed in the caseback, as shown in Fig. 2; ¶¶s 0083 and 0084 describe resilient members/springs configured to urge the circuit board 510, sensor 210, and/or central portion 610 towards the body. This means that in one configuration, the circuit board 510 and sensor 210 are urged, but the central portion 610 which receives the lenses is not, leading to a pressing of the sensor against the transparent portion/lens. ¶ 0043 describes a configuration in which the caseback is configured such that the optical sensor is in contact with, or urged firmly against, the skin. ¶¶s 0045 and 0046 describe recesses 310 and 340 being arranged in the caseback, and e.g. Figs. 5A, 6, and 7 show a lens 244 arranged in such a recess. Notably, this is part of the central/raised portion 610/260. 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 push the sensor against the light transmissive transparent portion using the resilient members/springs, for the purpose of bringing the sensor as close to the skin as possible (¶ 0043)),
wherein the holder is fixed to the exterior member by a fixing member (Figs. 5A and 6, fixed via the substrate supporting posts 535), and
wherein the energizing member is in a compressed state between the holder fixed to the exterior member and the circuit board (¶¶s 0084 and 0085, a compression spring that is able to move the board up when adjustment ring 620 is turned).
Regarding claim 29, Fei teaches the detection device of claim 28. Fei further teaches wherein a protruding section that protrudes toward the exterior member is provided in the holder (Figs. 5A and 6, the post 535 includes a protruding section that protrudes towards e.g. ring 620), the energizing member is arranged in a position other than the protruding section (Fig. 6, a position other than the position of the post 535), and the protruding section is fixed to the exterior member by the fixing member provided in the protruding section (Figs. 5A and 6, via the substrate).
Response to Arguments
Applicant’s arguments filed 11/28/2025 have been fully considered.
In response to the amendments and arguments regarding the rejections under 35 USC 103, they are only persuasive to the extent that Fei does not explicitly show a space between the end of circuit board 510 and e.g. raised portion 260. However, it does show a space around the other circuit board, and it would have been obvious to create a space for board 510 as explained above. Regarding the features of e.g. new claims 26 and 27, the substrate for the posts 535 of Fei can be considered a fixing member. Therefore, all claims remain rejected.
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