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 .
Response to Amendment
The amendment filed 03/21/2026 has been entered. Claims 1-12 & 16-20 remain pending in the application. Applicant’s amendments to the claims have overcome the objections and rejections previously set forth in the Non-Final Office Action mailed 12/31/2025.
Response to Arguments
Applicant's arguments with respect to claims 1-12 & 16-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The claim amendments changed the scope of the claimed invention. See new grounds for rejection below.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-4 & 16 are provisionally rejected on the grounds of non-statutory double patenting as being unpatentable over claims 1-3 and 9 of U.S. Applicant No. 18/342,864. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of co pending U.S. Applicant No. 18/342,864 are obvious over the claims of the application as shown in the table below.
Current Application
No. 17/687,749
U.S. Application
No. 18/342,864
Claim 1: A measuring system for measuring bioelectrical signals of a patient, the measuring system comprising: a sensor electrode; and a mechanical mounting for the sensor electrode, the mechanical mounting being at least partially compressible and comprising a frame structure and a supporting structure, wherein the mechanical mounting is fastened to a substrate of the measuring system and supports the sensor electrode against the substrate, the supporting structure is disposed between the sensor electrode and an intermediate layer of the mechanical mounting such that the sensor electrode, the supporting structure and the intermediate layer are in a stacked configuration,, the frame structure at least partially surrounds the supporting structure, and the supporting structure is configured higher than the frame structure.
Claim 1: A measurement system for measuring bio-electric signals from a patient, comprising: a sensor electrode; and a mechanical mounting for the sensor electrode, the mechanical mounting being compressible at least partially by a weight of the patient, the mechanical mounting including a frame structure and a compressible supporting structure, wherein the mechanical mounting is attachable to a substrate of the measurement system to support the sensor electrode against the substrate, the compressible supporting structure is beneath the sensor electrode, the frame structure at least partially surrounds the compressible supporting structure, and in an unloaded state, the compressible supporting structure protrudes beyond the frame structure, wherein the compressible supporting structure is conductive, the compressible supporting structure is covered in a direction of the sensor electrode and in a direction of the substrate by a first upper conductive layer and a first lower conductive layer, respectively, the first upper conductive layer and the first lower conductive layer form first conductive layers, and the first conductive layers are configured to generate a voltage drop across the compressible supporting structure.
Claim 3: The measuring system as claimed in claim 1, wherein the supporting structure has a lower hardness than the frame structure.
Claim 2: The measurement system as claimed in claim 1, wherein the compressible supporting structure has a lower hardness than the frame structure.
Claim 4: The measuring system as claimed in claim 1, wherein the mechanical mounting comprises a carrier structure which extends beneath the supporting structure and the frame structure.
Claim 9: The measurement system of claim 1, wherein the mechanical mounting further comprises: a carrier structure, the carrier structure being compressible by the weight of the patient and extending beneath the compressible supporting structure and the frame structure, the carrier structure being conductive and covered in the direction of the sensor electrode and in the direction of the substrate by second conductive layers, respectively, to acquire a voltage drop across the carrier structure.
Claim 16: The measuring system as claimed in claim 2, wherein the supporting structure has a lower hardness than the frame structure.
Claim 2: The measurement system as claimed in claim 1, wherein the compressible supporting structure has a lower hardness than the frame structure.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1-6, 10, 12, 16-17 & 20 is rejected under 35 U.S.C 103 as being unpatentable over Boege et al. (US 20130211272) in view of Hurley (US 3868946) herein referred to as Hurley.
Regarding Claim 1, Boege discloses a measuring system for measuring bioelectrical signals of a patient (Figure 1), the measuring system comprising: a sensor electrode (Figure 1, 5); and a mechanical mounting for the sensor electrode (Figure 4), the mechanical mounting being at least partially compressible (Figure 5 & 6, 40; wherein figure 5 is seen as a compressed state and Figure 6 is seen as an expanded state) and comprising a frame structure (Figure 6, 40) and a supporting structure (Figure 4, 33), wherein the mechanical mounting is fastened to a substrate of the measuring system and supports the sensor electrode against the substrate (Figure 1 & Figure 4; wherein 30 is the bottom of electrode 5 shown in figure 1 in which is attached the substrate 6 seen in figure 1), the supporting structure is disposed between the sensor electrode and an intermediate layer of the mechanical mounting such that the sensor electrode, the supporting structure, and the intermediate layer are in a stacked configuration (Figure 5; wherein the intermediate layer is 58 and the electrode is stacked into 50 is stacked on top of supporting structure 33 which is stacked on top of the intermediate layer 58), the frame structure at least partially surrounds the supporting structure (Figure 6; wherein 40 surrounds the edges of the support structure 33). However, Boege does not explicitly disclose wherein the supporting structure is configured to protrude past the frame structure.
Hurley discloses a medical electrode for measuring bioelectrical signal (Figure 1) wherein the supporting structure protrudes past the frame structure (Figure 3; wherein foam supporting structure 30 protrudes past frame structure which consist of 16 & 22). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure taught by Buisson to protrude past the frame structure as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15).
Regarding Claim 2, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Hurley also discloses wherein the mechanical mounting is formed at least partially of foam material (Figure 3, 30). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the mechanical mounting taught by Boege to include foam as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15).
Regarding claim 3, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Hurley also discloses wherein the supporting structure has a lower hardness than the frame structure (Figure 2, 30 & 22; Column 3, lines 54-60; wherein frame structure 22 can be made of plastic which is harder than foam) Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure and frame structure taught by Boege to be the materials as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15).
Regarding claim 4, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Boege also discloses wherein the mechanical mounting comprises a carrier structure which extends beneath the supporting structure and the frame structure (Figure 4, 31).
Regarding claim 5, Boege in view of Hurley discloses the measuring system as claimed in claim 4. Boege also discloses wherein the intermediate layer connects the carrier structure to the frame structure and the supporting structure (Figure 4 & 6; wherein intermediate layer 58 connects to the carrier structure 31 and is connected to frame structure 40 and supporting structure 33).
Regarding claim 6, Boege in view of Hurley discloses the measuring system as claimed in claim 5. Boege also discloses wherein the intermediate layer structure is configured integrally with the frame structure (Figure 6; wherein 58 is configured integrally with frame structure 40).
Regarding claim 10, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Hurley also discloses wherein the supporting structure is formed from a foam material (Figure 3, 30), the foam material configured to create a substantially constant counterforce based on a compression change (Figure 2 & 3; wherein foam material configured to be compressed therefore would have a constant counterforce based on material structure of the foam wanting to go back to its original shape after being compressed). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure taught by Boege to be the materials as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15).
Regarding claim 12, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Hurley also discloses a compression film (Figure 2, 18), the compression film being arranged to pre-compress the supporting structure (Figure 2, 18). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Boege in view of Hurley to have a compression film, the compression film being arranged to pre-compress the supporting structure by approximately 30% to 40% since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Buisson in view of Killion would not operate differently with the claimed pre-compression percentage since the supporting structure is still able to be properly compressed. Further, applicant places no criticality on the range claimed, indicating simply that the pre-compression is “approximately” be within the claimed ranges (see Specification [00102]).
Regarding claim 16, Boege in view of Hurley discloses the measuring system as claimed in claim 2. Hurley also discloses wherein the supporting structure has a lower hardness than the frame structure (Figure 2, 30 & 22; Column 3, lines 54-60; wherein frame structure 22 can be made of plastic which is harder than foam) Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure and frame structure taught by Boege to be the materials as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15).
Regarding claim 17, Boege in view of Hurley discloses the measuring system as claimed in claim 2. Hurley also discloses wherein the supporting structure is formed from a foam material (Figure 3, 30), the foam material configured to create a substantially constant counterforce based on a compression change (Figure 2 & 3; wherein foam material configured to be compressed therefore would have a constant counterforce based on material structure of the foam wanting to go back to its original shape after being compressed). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure taught by Boege to be the materials as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15)
Regarding claim 20, Boege in view of Hurley discloses the measuring system as claimed in claim 1. Hurley also discloses wherein the supporting structure is configured to be compressible within the frame structure (Figure 2). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the supporting structure taught by Boege to be compressible within the frame as taught by Hurley. The motivation being when the support structure compresses, it forms a complete electrical path from the skin of the patient to the electrical conductor (Hurley, Column 3, lines 13-15)
Claim 7-9,11 & 18-19 is rejected under 35 U.S.C 103 as being unpatentable over Boege and Hurley in view of Buisson et al. (US 20190350476) herein referred to as Buisson.
Regarding Claim 7, Boege in view of Hurley discloses the measuring system as claimed in claim 1. However, Boege in view of Hurley does not explicitly disclose. However, Smith does not explicitly disclose wherein the mechanical mounting comprises a comfort structure arranged above the frame structure, wherein the supporting structure is higher than the frame structure and the comfort structure together.
Buisson discloses A measuring system for measuring bioelectrical signals of a patient (Figure 5) wherein the mechanical mounting comprises a comfort structure arranged above the frame structure (Figure 2, 22), wherein the supporting structure is higher than the frame structure and the comfort structure together (Figure 2: 22; when put together support structure 4 is higher than the frame structure 12 and the comfort structure 22). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the system as taught by Boege and Hurley to include a comfort structure as taught by Buisson. The motivation being to allow compression of the supporting structure (Buisson, Paragraph [0052]).
Regarding Claim 8, Boege and Hurley in further view of Buisson discloses the measuring system as claimed in claim 7. Buisson also discloses wherein the supporting structure has a lower hardness than at least one of the comfort structure or the carrier structure (Paragraph [0041]; wherein comfort structure 22 is made out of conductive metal therefore is harder than foam). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of the comfort structure as taught by Buisson. The motivation being to allow compression of the supporting structure against the comfort structure (Buisson, Paragraph [0052]).
Regarding claim 9, Boege and Hurley in further view of Buisson discloses the measuring system as claimed in claim 7. Hurley also discloses wherein the frame structure, or the frame structure and the comfort structure, have a recess facing in a direction of the sensor electrode (Figure 3, 20), in which the supporting structure can give way depending upon a compression (Figure 2).
Regarding claim 11, Boege and Hurley in further view of Buisson discloses the measuring system as claimed in claim 7. However, Boege and Hurley in further view of Buisson does not explicitly disclose wherein a height of the supporting structure is approximately 1.4 to 1.6 times a height of the frame structure or the frame structure and the comfort structure together. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Boege and Hurley in further view of Buisson to have a height of the supporting structure is approximately 1.4 to 1.6 times a height of the frame structure since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Boege and Hurley in further view of Buisson would not operate differently with the claimed height difference since the supporting structure is still able to be properly compressed. Further, applicant places no criticality on the range claimed, indicating simply that the height “should be approximately” be within the claimed ranges (see Specification [00123]).
Regarding claim 18, Boege and Hurley in further view of Buisson discloses the measuring system as claimed in claim 8. Hurley also discloses wherein the supporting structure is formed from a foam material (Figure 3, 30), the foam material configured to create a substantially constant counterforce based on a compression change (Figure 2 & 3; wherein foam material configured to be compressed therefore would have a constant counterforce based on material structure of the foam wanting to go back to its original shape after being compressed).
Regarding claim 19, Boege and Hurley in further view of Buisson discloses the measuring system as claimed in claim 9. Hurley also discloses wherein the supporting structure is formed from a foam material (Figure 3, 30), the foam material configured to create a substantially constant counterforce based on a compression change (Figure 2 & 3; wherein foam material configured to be compressed therefore would have a constant counterforce based on material structure of the foam wanting to go back to its original shape after being compressed).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA M PAPE whose telephone number is (703)756-5947. The examiner can normally be reached M-F 7:30-5:00.
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ALYSSA M. PAPE
Examiner
Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights