DETAILED ACTION
Applicant’s arguments, filed on 07/14/2025, have been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Applicants have amended their claims, filed on 07/14/2025, and therefore rejections newly made in the instant office action have been necessitated by amendment.
Claims 1-14 are the current claims hereby under examination.
Claim Objections
Claims 11-13 are objected to because of the following informalities:
In claim 11, line 12, “A method” should read “The method”
In claim 12, line 16, “A method” should read “The method”
In claim 13, line 22, “A method” should read “The method”
Appropriate correction is required.
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.
Claim 14 is 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 14, Applicant has added the limitation “generating an output signal in response to the detected proximity; and initiating for measurement of micturition parameters in the toilet device based on the output signal” in lines 3-6, which is not described in the originally filed claims, specification, or drawings to support this newly added limitation. Thus, the newly added limitation is deemed to be new matter. In particular, the limitation of the separate step of initiating measurement of micturition parameters based on the output signal is not described in the claim or the specification. Therefore, the claim fails the new matter requirement and is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 11, the claim depends on both independent claim 10 and independent claim 1. This is an improper form, as the dependent claim should only depend from one independent claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuruoka (WO 2018207711) in further view of JP ‘804 (JP 2016520804) and Han (EP 3073715). Citations to WO 2018207711 and JP 2016520804 will refer to the English Machine Translations that accompany this Office Action.
Regarding independent claim 1, Tsuruoka teaches a toilet device for measuring micturition parameters ([0001]: “The present invention relates to a health monitoring system, a health monitoring method, and a health monitoring program, and more particularly to a health monitoring system, a health monitoring method, and a health monitoring program that are installed on a toilet bowl to analyze urination and infer disease”), comprising:
a housing having a housing opening for receiving urine (the toilet in Fig. 6; [0023]: “the health monitoring system of the present invention can be installed in an existing toilet”);
the toilet device is selected from a group consisting of a toilet, urinal, commode chair, squat toilet, and chamber pot (the toilet in Fig. 6; [0023]: “the health monitoring system of the present invention can be installed in an existing toilet”).
However, Tsuruoka does not teach the toilet device comprising a capacitive sensor for time-dependent measurement of micturition parameters, wherein the capacitive sensor is a capacitive proximity sensor which reacts to the approach of liquids in a contact-free manner.
JP 804 teaches a urine monitoring device for monitoring fluid with a capacitive sensor. Specifically, JP 804 teaches a capacitive sensor for time-dependent measurement of micturition parameters (Abstract: “One high resolution, low cost electronic urine monitoring device and system collects urine and includes a capacitive sensor”), wherein the capacitive sensor reacts to the approach of liquids in a contact-free manner ([0064]: “Capacitance sensor 6 does not need to be in physical contact with urine so that capacitance sensor 6 detects urine or other fluids through a non-conductive material, for example through the plastic side of the container”), wherein the capacitive sensor is further configured to function as a binary switch by providing an output signal upon detection of proximity ([0096]: “the basic capacitance must be considered before measuring fluid output and before fluid enters the fluid metering device. The term “basic capacitance” refers to the measurement result of an unaffected sensor element or “empty” container (i.e., the capacitance without any of the fluid being measured being introduced into the capacitance sensor). . The basic capacitance may be set to a zero value for measurement purposes, i.e. only the increase or change in capacitance due to fluid collection is therefore measured”. Since only the increase or a change in capacitance due to fluid collection is measured, the sensor only outputs a signal upon detection of proximity and therefore functions as the claimed binary switch”.). Tsuruoka and JP 804 are analogous arts as they are both devices that are used to measure health parameters in urine.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to include the capacitive sensor from JP 804 into the device from Tsuruoka, because it adds another sensor to the device and allows the urine to be measured through non-contact methods. The capacitive sensor can measure different features that the sensors of Tsuruoka cannot, therefore it allows the device to collect more information for a larger, more comprehensive analysis for the user.
However, the Tsuruoka/JP 804 combination does not specify that the capacitive sensor is a capacitive proximity sensor.
Han discloses an electronic device for measuring health parameters that is attached to a toilet. Specifically, Han discloses where the capacitive sensor is a capacitive proximity sensor ([0132]: “The proximity sensor 141 may include … a capacitive proximity sensor”). Tsuruoka, JP 804, and Han are all analogous arts, as they all are devices used in connection to a toilet to measure health parameters of the user.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a capacitive proximity sensor from Han as the capacitive sensor in the Tsuruoka/JP 804 combination, as the Tsuruoka/JP 804 combination is silent on the type of capacitive sensor used, and Han discloses the specific type of sensor that can be used in an analogous device.
Regarding claim 2, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein the measured micturition parameters are selected from a group consisting of a urine flow rate, micturition volume (Tsuruoka, [0011]: “the analysis unit may analyze the urine volume or urine flow rate of urination based on the acquired temperature distribution and a fluid model”), micturition duration (Tsuruoka, [0060]: “the prediction unit 124 may predict the user's illness from a urination curve obtained by plotting the analyzed urine volume and urine flow rate on a graph with the horizontal axis being urination time [seconds] and the vertical axis being urine flow rate [ml/second], for example, as a urophthometry test”) micturition frequency, micturition velocity, bladder pressure, pelvic floor pressure, urethral width and one or more micturition characteristics.
Regarding claim 3, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein the capacitive sensor is mounted in the toilet device at one or more of the following positions: at the housing inner wall, at the housing outer wall, inside the housing wall, at the housing opening (Tsuruoka, Fig. 6).
Regarding claim 4, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein the capacitive sensor has one or more of the following properties: sensor thickness between 1 nm and 20 mm, - the sensor comprises a lower carrier layer, a middle layer comprising the electrode and the lead, and an upper mounting layer for connecting the sensor to the housing or the housing opening, the carrier layer and the mounting layer consisting of an electrically insulating material; the sensor is mounted in an insulating support matrix, a surface of the support matrix having at least partially an adhesive layer; the sensor comprises a connection means for electronic or electrical connection, selected from a group comprising metallic push buttons, adhesive connection, cable (Tsuruoka, [0091]: “The user identification unit 220 is connected to the measurement unit 210 via a wire such as a cable”. The sensor is in the measurement unit.) and plug part of a connector; the sensor comprises a data transmission module for wired or wireless data transmission (Tsuruoka, [0062]: “the measuring unit … may be connected to the measuring apparatus 200 by wire or wirelessly”; [0042]: “The communication may be wired or wireless, and any communication protocol maybe used as long as mutual communication can be performed”); the sensor is designed as a foil; the sensor is directly vapor-deposited on the housing or burned into the housing material; the sensor comprises electrodes made of a thin metal foil deposited on an electrically insulating layer made of rubber or a flexible plastic.
Regarding claim 5, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein several capacitive sensors are mounted in the toilet device in such a way that they allow a two-dimensional or three-dimensional measurement of micturition (Tsuruoka, [0085]: “the detection unit 215 may, for example, detect the temperature of urine or urine-containing water at multiple points arranged two-dimensionally”), and in this case are arranged in or on the housing as a 2D array or 3D array (Tsuruoka, [0087]: “the detection unit may include a plurality of infrared detection elements in a two-dimensional array”).
Regarding claim 6, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein the capacitive sensor is connected to the housing in a fixed, conditionally detachable or a reversibly detachable manner, a reversibly detachable connection and reversibly detachable connection being selected from a group consisting of: suction cup, adhesive connection, adhesive-free adhesion connection, magnetic connection, fastener, zipper fastener, screw connection, clamp connection, plug connection, snap connection and belt connection (Tsuruoka, [0091]: “The user identification unit 220 is connected to the measurement unit 210 via a wire such as a cable as shown in Figure 4, and may be equipped with an adsorption means for attaching to a ceramic device such as a tank for storing cleaning water, or may be equipped with other attachment means”).
Regarding claim 7, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, wherein the capacitive sensor allows the measurement of parameters present outside the housing, the measurement of parameters present outside the house including information on the localization of a user of the toilet device and their temporal and spatial variation (Tsuruoka, [0097]: “The change in body weight may be calculated by multiplying the measurement value of the pressure sensor 800 by a predetermined weight depending on the number of pressure sensors 800 attached to the toilet seat and their positions. For example, if there is only one pressure sensor 800 provided on the toilet seat and the toilet seat is supported at four points, the change in the user's weight is taken to be four times the measured value. The predetermined weight may also be determined taking into consideration the position of the center of gravity of the user when the user is sitting on the toilet seat”).
Regarding claim 8, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 1, further comprising a temperature sensor (Tsuruoka, [0063]: “The measurement unit includes … a temperature measuring unit”) and/or an acceleration sensor.
Regarding claim 9, the Tsuruoka/JP 804/Han combination teaches the toilet device according to claim 8, wherein the temperature sensor is set up for contactless measurement of urine temperature (Tsuruoka, [0022]: “a detection function for non-contact detection of electromagnetic waves emitted by urination by a toilet bowl user or accumulated water into which the urination of the toilet bowl user has flowed, a temperature measurement function for measuring the temperature of the urination or accumulated water based on the detected electromagnetic waves”), and has one or more of the following properties: the temperature sensor is arranged to allow measurement of a urine temperature during urination; the temperature sensor is adapted to allow measurement of the surface temperature of the inside of the housing and its variation over time (Tsuruoka, [0086]: “The temperature measurement unit 216 measures the intensity of the received infrared light and colors it according to the measured intensity, thereby making it possible to obtain the temperature distribution of the entire surface of the pooled water or urine-containing water”); the temperature sensor is an infrared sensor (Tsuruoka, [0086]: “The temperature measurement unit 216 measures the intensity of the received infrared light and colors it according to the measured intensity, thereby making it possible to obtain the temperature distribution of the entire surface of the pooled water or urine-containing water”); and the temperature sensor is a 1D, 2D or 3D sensor (Tsuruoka, [0085]: “the detection unit 215 may, for example, detect the temperature of urine or urine-containing water at multiple points arranged two-dimensionally”).
Regarding independent claim 14, Tsuruoka teaches a method ([0001]: “The present invention relates to a health monitoring system, a health monitoring method, and a health monitoring program, and more particularly to a health monitoring system, a health monitoring method, and a health monitoring program that are installed on a toilet bowl to analyze urination and infer disease”) of using a capacitive proximity sensor as a binary switch in a toilet device, the method comprising:
detecting a proximity of a liquid in a non-contact manner ([0009]: “a detection unit that non-contactly detects electromagnetic waves emitted by urination by a toilet bowl user or accumulated water into which the urination of the toilet bowl user has flowed”).
However, Tsuruoka does not teach using a capacitive proximity sensor to measure the liquid and generating an output signal in response to the detected proximity.
JP ‘804 teaches using a capacitive sensor ([0064]: “Capacitance sensor 6 does not need to be in physical contact with urine so that capacitance sensor 6 detects urine or other fluids through a non-conductive material, for example through the plastic side of the container”); and generating an output signal in response to the detected proximity ([0096]: “the basic capacitance must be considered before measuring fluid output and before fluid enters the fluid metering device. The term “basic capacitance” refers to the measurement result of an unaffected sensor element or “empty” container (i.e., the capacitance without any of the fluid being measured being introduced into the capacitance sensor).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to include the capacitive sensor from JP 804 into the device from Tsuruoka, because it adds another sensor to the device and allows the urine to be measured through non-contact methods. The capacitive sensor can measure different features that the sensors of Tsuruoka cannot, therefore it allows the device to collect more information for a larger, more comprehensive analysis for the user.
However, the Tsuruoka/JP 804 combination does not specify that the capacitive sensor is a capacitive proximity sensor.
Han discloses an electronic device for measuring health parameters that is attached to a toilet. Specifically, Han discloses where the capacitive sensor is a capacitive proximity sensor ([0132]: “The proximity sensor 141 may include … a capacitive proximity sensor”). Tsuruoka, JP 804, and Han are all analogous arts, as they all are devices used in connection to a toilet to measure health parameters of the user.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a capacitive proximity sensor from Han as the capacitive sensor in the Tsuruoka/JP 804 combination, as the Tsuruoka/JP 804 combination is silent on the type of capacitive sensor used, and Han discloses the specific type of sensor that can be used in an analogous device.
The Tsuruoka/JP ‘804/Han combination teaches the step of initiating for measurement of micturition parameters in the toilet devices based on said output signal (Tsuruoka, [0009]: “a temperature measurement unit that measures the temperature of the urination or accumulated water into which the urination has flowed based on the detected electromagnetic waves”).
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuruoka in further view of JP 804, Han, and Sageder (WO 2017036952).
Regarding independent claim 10, Tsuruoka teaches a method for measuring micturition parameters in a toilet device ([0001]: “The present invention relates to a health monitoring system, a health monitoring method, and a health monitoring program, and more particularly to a health monitoring system, a health monitoring method, and a health monitoring program that are installed on a toilet bowl to analyze urination and infer disease”) comprising a housing having a housing opening (the toilet in Fig. 6; [0023]: “the health monitoring system of the present invention can be installed in an existing toilet”) the method comprising the following steps:
(b) optional measurement of a urine temperature during urination by means of a temperature sensor incorporated in the toilet device ([0063]: “The measuring unit includes … a temperature measuring unit”);
(d) wired or wireless transmission of the measurement data collected in steps to an evaluation unit ([0062]: “the measuring unit … may be connected to the measuring apparatus 200 by wire or wirelessly”; [0042]: “The communication may be wired or wireless, and any communication protocol maybe used as long as mutual communication can be performed”);
(e) evaluation of the measurement data in the evaluation unit ([0011]: “the analysis unit may analyze the urine volume or urine flow rate of urination based on the acquired temperature distribution and a fluid model”).
However, Tsuruoka does not teach wherein the toilet device comprises a capacitive proximity sensor, or the method contains the steps a) non-contact measurement of micturition parameters during urination by the capacitive proximity sensor; b) optional measurement of the urine temperature during urination by means of an additional temperature sensor incorporated in the toilet device; c) optional measurement of the user's movement data, vibrations and structure-borne sound during urination via an acceleration sensor additionally incorporated in the toilet device.
JP 804 discloses the methods step of (a) non-contact measurement of micturition parameters during urination by the capacitive sensor (Abstract: “One high resolution, low cost electronic urine monitoring device and system collects urine and includes a capacitive sensor”; [0064]: “Capacitance sensor 6 does not need to be in physical contact with urine so that capacitance sensor 6 detects urine or other fluids through a non-conductive material, for example through the plastic side of the container”).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to include the capacitive sensor from JP 804 into the method from Tsuruoka, because it adds another sensor to the device and allows the urine to be measured through non-contact methods. The capacitive sensor can measure different features that the sensors of Tsuruoka cannot, therefore it allows the device to collect more information for a larger, more comprehensive analysis for the user.
However, the Tsuruoka/JP 804 combination does not specify that the capacitive sensor is a capacitive proximity sensor.
Han discloses where the capacitive sensor is a capacitive proximity sensor ([0132]: “The proximity sensor 141 may include … a capacitive proximity sensor”).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to use a capacitive proximity sensor from Han as the capacitive sensor in the Tsuruoka/JP 804 combination, as the Tsuruoka/JP 804 combination is silent on the type of capacitive sensor used, and Han discloses the specific type of sensor that can be used in an analogous device.
However, the Tsuruoka/JP 804/Han combination does not teach the method step of c) optional measurement of the user's movement data, vibrations and structure-borne sound during urination via an acceleration sensor additionally incorporated in the toilet device.
Sageder discloses a device, system, and method used in uroflowmetry to measure health parameters during urination. Specifically, Sageder discloses the method step of (c) optional measurement of a user's movement data, vibrations and structure-borne sound during urination via an acceleration sensor additionally incorporated in the toilet device (Page 7, lines 28-34: “the one or more sensors comprise an accelerometer, preferably a 3D accelerometer. The accelerometer detects the direction of gravity and accordingly allows the detection of the orientation. Preferably, the accelerometer is configured for detecting the orientation of the core unit and/or the receptacle, a horizontal position of the core unit and/or the receptacle being desirable in order to obtain reliable uroflowmetry measurements. Preferably, the accelerometer is configured for cancelling out movement- related artefacts caused by movement of the receptacle during urination”.).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to include the accelerometer from Sageder into the method from the Tsuruoka/JP 804/Han combination as it allows for more measurements to be taken, making the method more accurate and more informative. Also, as states in Sageder, incorporating the accelerometer increases the reliability of the device, aids in minimizing the number of steps users have to perform to make the device successful, and makes the device suitable for home use.
Regarding claim 11, the Tsuruoka/JP 804/Han/Sageder combination teaches the method according to claim 10, wherein the method is carried out with the toilet device according to claim 10 (Tsuruoka, [0001]: “The present invention relates to a health monitoring system, a health monitoring method, and a health monitoring program, and more particularly to a health monitoring system, a health monitoring method, and a health monitoring program that are installed on a toilet bowl to analyze urination and infer disease”).
Regarding claim 12, the Tsuruoka/JP 804/Han/Sageder combination teaches the method according to claim 10, wherein the evaluation of the measurement data in the evaluation unit is carried out model-based or via calibration curves, the model-based evaluation is based on a mathematical, physical, physiological or medical model or running via pattern recognition algorithms (Tsuruoka, [0047]-[0048]: “the analysis unit 121 analyzes urination by analyzing the fluid around the measurement unit 210 and calculating the urine volume based on a fluid model that models the fluid flowing around the measurement unit 210, based on at least one of, for example, information on the shape of the toilet bowl, information on the amount of water accumulated in the toilet bowl, or information on the water temperature, etc. In addition to information about the shape of the toilet bowl, information about the amount of water stored in the toilet bowl, and information about the water temperature, the analysis unit 121 may also add at least one of information about the toilet environment, such as information about the amount of detergent or other ingredients, and based on this, model the fluid to analyze the urination information … Modeling of the fluid can be done, for example, by using regression analysis such as SVM (Support Vector Machine) to construct and analyze a predictive model of how the temperature of the pooled water and urine-containing water will change and ultimately converge, based on water temperature information generated from the measured water temperatures of the pooled water and urine-containing water. In addition, in the regression analysis, the SVM may be combined with a data structure derived by the kernel method for analysis. As another example, it is possible to construct and analyze a regression model using regression analysis using the MCMC (Markov Chain Monte Carlo) method. In addition to these, other examples of using fluid simulation to model fluid regions include the finite element method and CFD (Computational Fluid Dynamics)”).
Regarding claim 13, the Tsuruoka/JP 804/Han/Sageder combination teaches the method according to claim 10, wherein the toilet device has a toilet flush, the characteristics of which, such as flush water quantity and/or flush water duration and/or flush water temperature, are used as reference values for the evaluation (Tsuruoka, [0138]: “the toilet information DB is a DB that stores information related to toilets, and includes, for example, information such as the toilet model number, water volume (water level, mass, volume, etc. of the accumulated water), water temperature (water temperature information of the accumulated water), whether it has been flushed or not, installation location (latitude and longitude information, address, building name, etc.), and start date of use (when the toilet began to be used)”).
Response to Arguments
All of applicant’s argument regarding the rejections and objections previously set forth have been fully considered and are persuasive unless directly addressed subsequently.
Applicant’s arguments with respect to claim 14 has been considered but is 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.
Applicant's arguments filed 07/14/2025 have been fully considered but they are not persuasive. Applicant states that the Tsuruoka/JP ‘804/Han combination does not teach the capacitive sensor functioning as a binary switch where the sensor only outputs a signal when liquid is detected. However, as stated in JP ‘804, the device only measures capacitance when there is a change from the baseline, only outputting the measured signal when fluid is detected, therefore teaching on this limitation ([0096]: “the basic capacitance must be considered before measuring fluid output and before fluid enters the fluid metering device. The term “basic capacitance” refers to the measurement result of an unaffected sensor element or “empty” container (i.e., the capacitance without any of the fluid being measured being introduced into the capacitance sensor). The basic capacitance may be set to a zero value for measurement purposes, i.e. only the increase or change in capacitance due to fluid collection is therefore measured”. Since only the increase or a change in capacitance due to fluid collection is measured, the sensor only outputs a signal upon detection of proximity and therefore functions as the claimed binary switch”).
In response to applicant's arguments against the references individually regarding the rejection of claims 10-13, 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). The combination of references is what teaches the claimed limitations, as shown in the 103 rejection of the claims above.
In response to applicant's argument that the sensors from JP ‘804 could not be added into the device from Tsuruoka, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Adding additional sensors to a device is possible, would not detract from the functions of Tsuruoka, and would have been obvious to detect the presence of fluid before measuring micturition parameters.
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.
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/E.K.M./Examiner, Art Unit 3791
/MATTHEW KREMER/Primary Examiner, Art Unit 3791