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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/28/2026 has been entered.
Response to Amendment
This Office Action is responsive to the amendment filed 04/28/2026 (“Amendment”). Claims 1 and 3-10 are currently under consideration. The Office acknowledges the amendments to claim 1.
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under 35 USC 112(f), and/or the rejection(s) under 35 USC 101 and/or 35 USC 112 not reproduced below has/have been withdrawn in view of the corresponding amendments.
Information Disclosure Statement
Applicant is reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this application.
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: “surrounding device” in claim 1, “measuring portion” in claims 1, 5, and 9, “fixing structure” in claim 4, “fixing element” in claims 4 and 5, and “measurement device” in claim 8.
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 § 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 and 3-10 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 1, there is no support for the second segment not overlapping the first segment. The specification does not describe this, Fig. 4 actually shows overlap, and if a user’s arm were small (or if the ring were made with no arm inside), there would be even more overlap.
Claims 3-10 are rejected because they depend on rejected claims.
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 1 and 3-10 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 1, the use of “non-elastic or inelastic” is unclear because the terms appear to mean the same thing. What is the difference?
Claims 3-10 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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 6,245,024 (“Montagnino”) in view of US Patent Application Publication 2009/0062843 (“Heston”) and US Patent Application Publication 2019/0374112 (“Kuo”).
Regarding claim 1, Montagnino teaches [a cuff] (Abstract), comprising: a covering bag (Fig. 1, blood pressure cuff 1 generally) including a surrounding device (Fig. 1, D-ring 26), a measuring portion (Fig. 1, non-stretchable bag 50 (accommodating an inflatable bladder 30 – col. 2, line 57 to col. 3, line 10)), and an elastic band portion (Fig. 1, a portion of tension sensor 70, constructed of a stretchable or expandable material – col. 2, lines 15-18; col. 3, lines 46-48, etc.), the measuring portion and the elastic band portion being connected in series (as shown in Fig. 1) to form a ring structure to locate the measuring portion at a pulse position to be measured (Figs. 2 and 3, via the D-ring 26 – also see col. 3, lines 26-42, col. 4, lines 21-28, etc.), the measuring portion constituting a first circumferential segment of the ring structure, and the elastic band portion constituting a second circumferential segment of the ring structure circumferentially extending from the first circumferential segment and not overlapping the first circumferential segment (Fig. 1 shows the two portions forming first and second segments and not overlapping each other. When forming a ring structure as in Figs. 2 and 3, the segments do not overlap at least when the user’s arm is large and/or based on the length of the elastic band portion (which need not be e.g. the entire length of tension sensor 70)), wherein the measuring portion defines an accommodating space and is made of a non-elastic or inelastic material (as above, bag 50 is non-stretchable and accommodates an inflatable bladder therein), and the elastic band portion is made of an elastic material (as above, stretchable vs non-stretchable); and an air bag device having an elastic air bag, the air bag device being put into the accommodating space such that the elastic air bag and the measuring portion overlap (as above, the inflatable bladder 30 (col. 3, lines 1-3, elastic) which is accommodated in the non-stretchable bag 50 (and the bladder 30 has associated components such as e.g. a connection to tube 18)), … .
Montagnino is not explicit that its cuff is a tourniquet.
Heston teaches a tourniquet that is structured essentially like the device of Montagnino (Heston: Title, Abstract, Fig. 1 – including a surrounding device 28, an inflatable portion 14, and an elastic band 52).
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 the cuff of Montagnino as a tourniquet cuff, as in Heston, for the purpose of facilitating arterial and venous occlusion (Heston: ¶ 0002), including in a manner that does not occlude the limb in an unpressurized state (Heston: Abstract).
Montagnino-Heston does not appear to explicitly teach wherein the ring structure forms a radial resonant ring at the pulse position to be measured, so as to undulate with relaxation and contraction of a pulse.
Kuo teaches a pulse-holding device 120, which is a tourniquet, that secures a sensing device at the position of the pulse and resonates with the pulse (Fig. 1, ¶¶s 0018, 0019, 0023, 0028, 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 configure the structure of the combination to form a radial resonant ring, as in Kuo, for the purpose of achieving resonance to thereby obtain more accurate measurements (Kuo: ¶ 0023).
Regarding claim 3, Montagnino-Heston-Kuo teaches all the features with respect to claim 1, as outlined above. Montagnino-Heston-Kuo further teaches wherein the ring structure has a radial elasticity coefficient, and the radial elasticity coefficient is determined according to a frequency of a harmonic of a blood pressure wave to be measured (the pulse-holding device of Kuo has an elasticity coefficient corresponding to a frequency of a harmonic of a blood pressure wave (Kuo: Abstract). 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 tailor the radial elasticity coefficient of the tourniquet of the combination according to a harmonic of a blood pressure wave, as in Kuo, for the purpose of increasing accuracy of pulse-based measurements (Kuo: ¶ 0019)).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Montagnino-Heston-Kuo in view of US Patent Application Publication 2015/0105676 (“Uesaka”).
Regarding claim 4, Montagnino-Heston-Kuo teaches all the features with respect to claim 1, as outlined above. Montagnino-Heston-Kuo does not appear to explicitly teach wherein the covering bag further includes a fixing structure, the air bag device includes a fixing element, and the fixing element is coupled with the fixing structure to fix the covering bag and the air bag device.
Uesaka teaches a covering bag including a fixing structure (the holes in outer cloth 122 shown in Fig. 3 as accommodating tubes 132 and 133 and hook 134 of connecting member 103) and an air bag device including a fixing element (Figs. 4 and 5 show the tubes 132 and 133 and hook 134 that are part of the air bag) coupled with the fixing structure to fix the bag and device together (as shown in Figs. 2 and 3).
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 incorporate fixing structure and elements into the combination as in Uesaka, for the purpose of integrating the bag with the cuff (Uesaka: ¶ 0051, via connecting member 103), for the purpose of ensuring that the elements did not slip with respect to each other, and for providing external access to the air bag.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Montagnino-Heston-Kuo-Uesaka in view of US Patent Application Publication 2010/0212671 (“Miller”).
Regarding claim 5, Montagnino-Heston-Kuo-Uesaka teaches all the features with respect to claim 4, as outlined above. Montagnino-Heston-Kuo-Uesaka does not appear to explicitly teach wherein a surface of the accommodating space of the measuring portion has a non-slip material part, and the non-slip material part is in contact with the fixing element to prevent displacement of the air bag device.
Miller teaches adding a non-slip material to a surface through which a tube passes (¶ 0077, inner surface 103 coated with an anti-slip agent).
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 incorporate a non-slip material with the holes of combination, through which the tubes protrude, as in Miller, for the purpose of preventing movement and slippage between the elements (Miller: ¶ 0077).
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Montagnino-Heston-Kuo-Uesaka-Miller in view of US Patent Application Publication 2006/0178584 (“Karo”).
Regarding claim 6, Montagnino-Heston-Kuo-Uesaka-Miller teaches all the features with respect to claim 5, as outlined above. Montagnino-Heston-Kuo-Uesaka-Miller further teaches wherein the fixing structure of the covering bag has a plurality of holes (Uesaka: Fig. 3, a hole for each of tubes 132 and 133 – see ¶ 0054, describing each of the tubes as protruding from the cloth), but does not appear to explicitly teach that it has a plurality of fixing holes (at least because there is only one hook portion 134 in Uesaka).
Karo teaches using multiple hook portions to secure a bag to a measurement device (Fig. 2).
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 plurality of fixing holes and associated hooks in the combination as in Karo, for the purpose of better securing the cuff to the measurement device (Karo: Fig. 2), and as a mere duplication of parts. A mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 7, Montagnino-Heston-Kuo-Uesaka-Miller-Karo teaches all the features with respect to claim 6, as outlined above. Montagnino-Heston-Kuo-Uesaka-Miller-Karo further teaches wherein the fixing element of the air bag device includes an air inlet pipe (Heston: Fig. 1, one of the ports 32 (¶ 0015); Uesaka: e.g. tube 132 of Fig. 3), an air outlet pipe (Heston: Fig. 1, the other of the ports 32 (¶ 0015). It would have been obvious to use separate ports for air inlet and outlet, as in Heston, for the purpose of achieving tourniquet cuff bladder air supply control as described in ¶ 0015), and a plurality of fixation pillars (based on the duplication of hooks as above), and the air inlet pipe and the air outlet pipe communicate with the elastic air bag (Heston: ¶ 0015).
Regarding claim 8, Montagnino-Heston-Kuo-Uesaka-Miller-Karo teaches all the features with respect to claim 7, as outlined above. Montagnino-Heston-Kuo-Uesaka-Miller-Karo further teaches wherein after the air bag device is put into the accommodating space, the air inlet pipe, the air outlet pipe, and the plurality of fixation pillars respectively pass through corresponding holes and fixing holes, so that the tourniquet is coupled to a measurement device by the plurality of fixation pillars (as shown in e.g. Figs. 1-3 of Uesaka).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Montagnino-Heston-Kuo in view of US Patent 3,960,096 (“Zobel”).
Regarding claims 9 and 10, Montagnino-Heston-Kuo teaches all the features with respect to claim 1, as outlined above. Montagnino-Heston-Kuo does not appear to explicitly teach wherein the measuring portion and the elastic band portion are connected in series using elastomeric stitching, wherein the elastomeric stitching includes jump stitching or stitching with an elastic thread (although Montagnino: col. 3, lines 52-54 describe connecting the measuring portion and the elastic band portion using sewing).
Zobel teaches using elastic threads to stitch a more elastic material (an elastic cord) to a less elastic material (a mask, col. 3, lines 34-46).
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 connect the measuring portion and elastic band portion of the combination using an elastic thread, as in Zobel, as the application of a known technique for the purpose (Zobel: stitching to perform the sewing already described in Montagnino, which also involved joining a more elastic material to a less elastic material).
Response to Arguments
Applicant’s arguments filed 04/28/2026 have been fully considered, but they are not persuasive. In response to the arguments regarding the interpretations under 35 USC 112(f), it is unclear why Applicant thinks “device,” “portion,” and “element” are not generic placeholders. Further, a specific circumferential arrangement does not necessarily provide sufficient structure for the function of e.g. measuring.
In response to the arguments regarding the rejections under 35 USC 103, they are not persuasive. The entirety of tension sensor 70 need not be considered the claimed elastic band portion. Thus, the elastic and inelastic portions of Montagnino do not necessarily overlap. This is especially true when the ring is not tightened, or when the user’s arm is large. Applicant has not claimed a reduced resonance in non-radial directions, and has not addressed the teachings of Kuo, which describe using a cuff to form a resonant ring. Therefore, the claims remain rejected in light of the prior art.
Conclusion
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, 7am-3pm PT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson, can be reached at telephone number (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREY SHOSTAK/Primary Examiner, Art Unit 3791
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