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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/19/26 has been entered.
Response to Arguments
With regards to the spec objection for “Fig. 7B and the relevant discussion in amended [0050]” it is moot in view of removal of the elements.
With regards to the drawing objection, it is moot in view of the amendments.
With regards to the 112a for “Claim 1 has been amended to recite “at least 180 degrees between a sensor of the plurality of sensors at a first end of the semi-circular arc and the wireless module at a second end of the semi-circular”.” The rejection has been withdrawn in view of the amendments.
With regards to the 112b for “Claims 19-20 recite “magnetic engagement via thin magnetic sheets or tapes embedded”” it is withdrawn in view of the amendments.
With regards to the 112a and 112b to “Claims 19-20 recite “with each other through magnetic engagement via thin magnetic sheets or tapes embedded”” they are withdrawn in view of the amendments.
Applicants’ arguments, see Pgs. 14/20 and 18-19/20 (see further discussion below), filed 6/19/26, with respect to Claims 1 and 14 have been fully considered and are persuasive. The 103 rejections of claims 1 and 14 (and by extension their respective dependents) have been withdrawn.
To the extent Applicants may be arguing that Badinski does not recite a metal covering, Examiner disagrees (see Badinski [0194]-[0195], [0203]). However, Applicants argue for claim 1 Badinski does not recite “covering the PCB by snap fitting, screws, or magnets. Nor does Badinski disclose that such a metal shell is configured to be removed and replaced as a single piece.” This is persuasive. Furthermore, Applicants discuss Lusted and while Lusted provides relevant discussion about what they call “design considerations” for a ring housing and mention screws etc. Examiner agrees Lusted does not provide the specificity to render the claim obvious.
For clarity of the record, Examiner notes that claim 1 has been amended to recite “wherein the outer layer includes a metal shell fitted over an outer section of the resin covering the PCB by snap fitting, screws, or magnets such that the metal shell is confiqured to be removed and replaced as a single piece.” Examiner notes that Applicants have argued that they have support for this from [0049], in [0049] it recites “an outer section of the resin may be fitted into a metal shell acting as a durable outer cover of the electronic finger ring (100). The metal shell may be assembled over a solid form of resin through mechanical fitting methods, such as snap fitting, tight fitting, and using screws. Alternatively, the metal shell may be assembled over the resin using magnets. Glue may also be used to fix the metal shell on the resin.” Which while not explicitly stating “single piece” Examiner is interpreting the “metal shell” to be a single piece thus providing support. Also, with respect to the fitting element Examiner notes that those three claimed are not the only recited also providing “magnets” and “glue” which means the claimed three elements do not have criticality. With regards to the “removed and replaced”, [0049] recites “In one implementation, to fabricate the electronic finger ring (100), . . . Successively, an outer section of the resin may be fitted into a metal shell acting as a durable outer cover of the electronic finger ring (100). The metal shell may be assembled over a solid form of resin through mechanical fitting methods, such as snap fitting, tight fitting, and using screws. . . . The metal shell may be made of multiple colours and textures such that it can be replaced as per the user's choice.”, [0049] is discussing a manufacturing process of making the ring with the metal shell being snapped over and secured and at the end recites the shell may be “replaced” its not entirely clear if they mean during the manufacturing process (i.e. a dark titanium metal shell can be used instead of a gold colored metal shell etc. during manufacturing which is permanently attached) or after a final product has been released (i.e. the device can be taken apart and a different outer shell popped on). Based on the use of the term replace and use of screws etc. (reversible processes) mentioned, Examiner believes it could reasonably mean either alternative (or both) thus there is sufficient support for the claim element.
With regards to the discussion of claim 14 (and by extension its dependents), in view of the above discussion with regards to claim 1, Examiner finds Applicants arguments regarding claim 14 in their totality persuasive. Examiner notes that support for claim 14 comes from a different portion of the spec than [0049] discussed above. Examiner also notes that “having an updated feature to . . .” is an intended use of the device.
Claim Rejections - 35 USC § 112
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 3 is 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.
Claim 3 is indefinite. Claim 1 recites “the inner layer is made of a resin covering the PCB completely, wherein the outer layer includes a metal shell fitted over an outer section of the resin covering the PCB by snap fitting, screws, or magnets such that the metal shell is configured to be removed and replaced as a single piece.” (emphasis added), while claim 3 recites “wherein the inner layer is assembled over the outer layer through one or more of snap fitting, tight fitting, gushing screws, and adhesive.” (emphasis added) However, these two statements cause a clarity issue. Claim 1 is saying the “outer layer” fits over resin (the resin makes up at least a portion of the inner layer and encapsulates the PCB) or fits over the “inner layer”. While claim 3 recites the inner layer fits over the outer layer. It’s unclear if they can both be “over” the other? Or if one must be over the other mutually exclusively? Furthermore, Applicants in providing support for their amendment pointed to [0049] (using the Pg Pub for paragraph numbers) which breathes life into the claim and states “The metal shell may be assembled over a solid form of resin”. For the above reasons claim 3 does not clearly define the metes and bounds of the claim and is indefinite. Examiner notes that this could be a 112d issue for failing to further limit depending on the interpretation, but Examiner believes this is more of a clarity issue.
Claim Rejections - 35 USC § 112
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 4 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.
Claim 1 recites “the inner layer is made of a resin covering the PCB completely, wherein the outer layer includes a metal shell fitted over an outer section of the resin covering the PCB by snap fitting, screws, or magnets such that the metal shell is configured to be removed and replaced as a single piece.” (emphasis added), while claim 4 which depends from claim 1 recites “wherein the inner layer is made by solidification of the resin poured in a liquid form in a cavity of the outer layer after placement of the middle layer in the cavity.” (emphasis added) However, these two statements seem to be directly contrary. Claim 1 is saying the “outer layer” fits over resin (the resin makes up at least a portion of the inner layer and encapsulates the PCB) and is attached by “snap fitting, screws, or magnets”. While the product by process of claim 4 would create an adhesive binding between the outer layer and the solidified resin (see for example Applicants [0045] discussing the solidification of the resin in the outer layer (shell/casing), which is a different “implementation” that that of [0047]-[0048] and [0049]). Furthermore, Applicants in providing support for their amendment pointed to [0049] (using the Pg Pub for paragraph numbers) which breathes life into the claim and states “the flexible PCB (204) may first be encapsulated in centre using resin. Successively, an outer section of the resin may be fitted into a metal shell acting as a durable outer cover”, which is contrary to the product by process of claim 4. In conclusion, the result of the product by process of claim 4 would render a structurally different product than that claimed in claim 1, thus it is not further limiting claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 5-6 and 8-17 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 10855335 see Fig. 1 shows electronic components distributed across an FPCB
US 7950251 Figs. 1a-1c – ring with detachable concentric layers
US 5851178 Figs. 2-5
Bekathwia, Oura Ring Teardown (Gen 3 and 2), https://www.digikey.com/en/maker/projects/oura-ring-teardown-gen-3-and-2/2c005e01f82d429398e78f49591793cc – per TechRadar, https://www.techradar.com/reviews/oura-generation-3, the third generation Oura ring was released on November 16 2021 and the second generation was released and on sale prior to that. Includes a transparent inner layer completely covering the PCB.
Yang, Boo-Ho et al. “Development of the ring sensor for healthcare automation.” Robotics and Autonomous Systems 30.3 (2000): 273-281. https://www.sciencedirect.com/science/article/pii/S0921889099000925, viewed on 7/1/24
US 5964701 – smart ring
US 20210037932 see Fig. 2 it discloses the elements of claim 1 including a sensor on one side of a semicircle opposite wireless comm
US 20220096007 see Fig. 19
US 9711060 see Fig. 1A, 3-5B
US 11850069 see Col 7:46-58, Col 8:45-67, Col 9:53-63, Figs. 1D, 1G, 2; Recites “two or more” layers with electronic components - the battery is on a separate layer which is connected to the rest of the electronics subassembly the battery provides power to perform its functions
US 20120218184 – Figs. 1, 4-5, [0073] including “there is also an outer metal shell opening 10 serving as an RF window letting through unperturbed RF radiation.”
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/James Moss/Examiner, Art Unit 3792
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