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 Arguments
With regards to the claim objection for claim 20 it is withdrawn in view of the amendment.
With regards to the drawing objection, it is maintained see spec objection below.
With regards to the 112b for “Claims 1 and 14 recite components “are distantly spread over”” it is withdrawn in view of the amendments.
With regards to the 112b to claims 1 and 14 for “It is unclear if the “one sensor” is a sensor which is included in “the plurality of sensors” or a sensor which is in addition to the “plurality of sensors”.” it is withdrawn in view of the amendments.
Applicant's arguments filed 10/10/25 have been fully considered but they are not persuasive.
Applicants’ argument is directed to the new amendment which applicants discuss as “specify[ing] a specific spatial arrangement of components over a "semi-circular arc of at least 180 degrees."” and then argue the feature is evident from multiple figures of the present application.
Starting with the discussion of the support from the specification, Examiner disagrees. The specification does not recite specific “degrees” for positioning of elements and drawings are not considered drawn to scale when the original specification does not disclose, they are to scale. In the present case the there is no discussion of them being “to scale”. Thus, the argument of 180 degrees, does not appear to have support. Even in arguendo, if they were to scale original figs. 3 (see annotated below), 5a, 6a do not even appear to provide a relative distance of 180 degrees between element 310 and 302, it would appear to be closer to about 140-170 degrees or if measured clockwise -190 - -230 degrees. As such there is a 112a rejection included for this element. Examiner also notes that the discussion of heat is an attorney argument (Attorney arguments are not facts on the record, MPEP 2145(I)) and this statement and the arguments relying on this are not persuasive.
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Applicants argue neither the Bad nor Lus disclose the specifical structural arrangement, Examiner disagrees. Applicants first specifically point to a limited portion of the specification and one figure while disregarding the entirety of the elements taught by recited portion of the rejection of the reference and attack that limited portion and then imply that because the single citation discusses the element in broad terms the entire disclosure does not disclose it, this is not persuasive. It is improper to limit the disclosure of the reference only to Applicants preferred reading, a reference is disclosed for all it contains see MPEP 2123. Applicants next seemingly concede that their own first broader argument may not be persuasive by stating “even where . . .” the more specific example from Lus of disclosing the wireless module on the top of a finger with the sensors on the bottom of the finger the specific distribution (i.e. the 180 degrees) is not disclosed. These arguments are not persuasive.
In response to applicant's arguments against the references individually, 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 presently discussed rejection is based on Bad in view of Lus. With regards to the arguments Bad discloses sensors distributed over a semicircular region of the ring. Lus is being relied on for the respective positioning of the wireless and sensor elements; one of skill in the art would recognize that if you put them directly on top center and bottom center of the finger, they would be 180 degrees apart. Furthermore, per MPEP 2144.05(I)-(II) which includes discussion such as “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. . . . Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”. The claim is reciting the relative positioning of the wireless and sensor elements in degrees; the prior art reference recites an equivalent positioning of the elements respectively based on a finger (i.e. on the top and bottom). The claims range recitation when taken in view of the discussion the prior art is “close to”, “overlaps” or “lies inside” the range recited by the prior art. As such Applicants argument is not persuasive.
Applicants next argue the “problems”, as noted above these are not disclosed in the originally filed specification and Applicants’ arguments are not facts on the record thus these are not persuasive.
Next Applicants mention “distinct” PCBs, which is not persuasive. As discussed above the rejection is based on Bad in view of Lus, Bad discloses a semicircular PCB board which extends around at least a portion of the finger as claimed and the Lus reference discloses the claimed relative placements of the wireless and sensors on the ring. Additionally, the reference discloses more than Applicants are arguing it does for example see for example Fig. 2A. Thus, this is not persuasive.
Applicants next improperly limit the disclosure of Bad reference, in stating that Bad “includes a window or opening” in the inner housing. Examiner disagrees. Bad discloses having the inner layer of potting (such as resin) which fulfills the claim element, see the cited portions in the rejection below including Fig. 13, [0203]. As such this is not persuasive.
Applicants next argue that the amendment of claim 14. The first argument parallels the discussion of the argument against claim 1 for the positioning of the wireless and sensor element being 180 degrees apart this is not persuasive for the reasons recited above. Applicants next argue multiple detachable concentric middle layers but as recited in the rejection there is an electronics layer between the inner and outer layer which can have sub layers or “middle layers”, thus this is not persuasive. Applicants next mention Hav, Hav recites a two part cover which seals or “attaches” the inner elements together and fulfills the claim language. Finally, applicants state there is mention of “re-attachable” however, there seems to a be a typo in the claims or in the argument because there is no mention of “re-attachable” in the claim. To that end, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., re-attachable) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicants next argue that the combination of claim 12. Arguing that it would not be obvious to include an open side (c shape) in the ring. In response to applicant's argument directed “to enable . . .”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The structural element is the gap, how it can be used is an intended use. Applicants recite “First, we note that adding an adjustment gap to a rigid multi-layer ring (as in Bad) is not a trivial change. . . . Introducing a gap could undermine the structural integrity of Bad's internal/external housing configuration.” this is an applicant argument and is not evidence on the record and is not persuasive. Furthermore, Work is not limited to the “flexible material” it recites that one embodiment but does not recite it must be so. Work however does recite sensor rings with a processor, wireless elements and sensors in various alternative rings with a gap. Examiner also notes that while not currently applied for this element, but for clarity of the record and to get an understanding of the knowledge of a PHOSITA Examiner notes open sided sensor rings disclosed by other discloses including Lus Fig. 19, US 20230225676 see [0007], Fig. 4 and US 20190008396 Figs. 3d, 16 among others. Applicants again make another argument treating it as evidence discussing “doing so would complicate . . .”, which is not persuasive. Examiner also notes that this is not a process of manufacturing claim and assuming there is potting after it is manufactured what holds things in place based on Bad seems to the potting (or resin).
Applicants next discussion “Moreover, the purpose of the gap recited in claim 12 is for enabling adjustability without comprising the layered structure . . .” this argument is directed to an intended use (see discussion above) and further is merely Applicants argument as there does not appear to be any discussion of the purpose in the originally filed specification thus Applicants remarks are merely argument and not evidence on the record. Therefore, they are not persuasive. Applicants in this portion go on to argue there is not motivation because while there may be a motivation “one skilled in the art would be cautious, as adding a gap could interfere with electrical continuity (e.g., if antennas or sensors run around the circumference) and waterproofing . . .”, just considering applicants argument on its face, being “cautious” or “could” does not mean there is not a motivation to combine the elements. Additionally, this is merely Applicant argument and not evidence on the record and not persuasive. Thus, the argument is not persuasive for that alone. The Work reference is a smart sensor device with a plurality of electrical components in the same field and provides a motivation to combine the Bad/Lus reference with the teachings of the Work reference and Examiner found it had a reasonable expectation of success. As such these arguments are not persuasive.
Additionally, with regards to Applicants discussion of claim 12. Applicants state “In Applicant's design, the gap is likely implemented in the outer rigid layer, allowing the ring to flex open slightly. The inner resin layer being segmented can facilitate this adjustability as well.”, there is not support for this in the specification to the extent this is being read into the arguments this is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim recites a gap in the ring not a gap in a layer, the ring includes multiple layers. Thus, the gap is in all layers and this interpretation is supported when reading the claim in view of the specification see fig. 9.
Furthermore, setting aside the art for arguments sake and just examining the argument on its face in view of claim 1 which recites “outer layer made of rigid material” and 12 which recites “gap is present between the two ends . . . to enable adjustment . . .”; Applicants argue that the Work reference is not appropriate in part because one embodiment (see more discussion above) says a material is “flexible”. Examiner notes that all materials have some “flexibility” and/or “rigidity”, without specific discussions one could argue that these terms are relative. Based on applicant’s own argument about “rigid” they seem to contradict themselves, because if it is as rigid as Applicants appear to argue to discount the reference then how is their device adjustable to “enable” different finger sizes? Thus, this argument comes close to walking applicants into a 112b issue by seemingly arguing that while the material is rigid and not flexible at all it can somehow also “adjust” (i.e. flex to give more space) which lacks clarity and also there is limited written description on material properties and widths of the materials to determine the extent of the “rigidity”. Put differently it seems an argument about a degree of rigidity and there is not sufficient support to go too specific from the specification and without that additional support there would be a 112b issue for relative language. Alternatively, applicants may be implying that it’s the finger of the user which “adjusts” and that would be a 101 issue.
Applicants next discuss claim 13 arguing that it overcomes the rejection for the same reasons discussed above which are not persuasive see discussion above. Additionally, Applicant argues Bad recites external potting with the internal housing. This argument is similar to Applicants discussion of windows above for claim 1 and is improperly limiting the disclosure of the reference. While the Bad reference in one embodiment discloses an outer potting with an internal housing it also, as pointed to in the citations for the rejection below, recites the reverse outer housing with the internal potting (as well as one with external housing or potting with internal housing or potting covering all alternatives; see citations for the rejection below including Figs. 13, 14e and [0203]). Also, as noted in the rejection Bad discloses both NFC and windows in the outer layer. Thus, Applicants argument arguments are not persuasive.
Applicants next discussion claim 18 applicants argue that “Contrary to the Examiner's assertion, however, it would not have been obvious to modify the Bad/Lus ring to include such pogo pin connections between layers, as neither Bad nor Lus disclose any comparable modular ring design.” There are multiple layers claimed in claim 1 and shown by the Bad reference; Examiner is unsure what the “modular ring design” is referring to from claims 1/18. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., modularity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Bad recites various electrical elements between the inner and outer layers different electrical components are electrically connected and one form of such connection is a pogo pin. As such this is not persuasive.
For the above reasons Applicants arguments are not persuasive. Applicants remaining discussion relies on the arguments discussed above and are not persuasive for the same reasons.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “pogo pins” of claim 18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The amendment filed 10/10/25 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Fig. 7B and the relevant discussion in amended [0050]. New Fig. 7B is an amendment of original figure 3. Fig. 3 is based on a different embodiment than original fig. 7. Furthermore, per the discussion of originally filed [0050] and original Fig. 7 it recites “concentric layers”, which in view of original fig 7 and original [0050] had a plurality of inner layers between the “outer layer” and the hole through which a finger would go at varying distances from the center of the respective circles. Further it recites connectors between the concentric layers. New fig. 7b and the accompanying amendment disclose the “pogo pin” attachment between elements on the same “layer” as there is only one middle layer. Phrased differently Applicants appear to be adding new matter by amending the spec to add elements from the embodiment of fig. 7 multiple middle layers and the discussed attachments between layers with the embodiment of fig. 3 having one middle layer.
Applicant is required to cancel the new matter in the reply to this Office Action.
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, 3-6, 8-20 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.
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 underlined section does not have support from the originally filed specification. The specification does not recite specific “degrees” for positioning of elements and drawings are not considered drawn to scale when the original specification does not disclose, they are to scale. In the present case the there is no discussion of them being “to scale”. Thus, the amendment of at least 180 degrees, does not have support and the element is new matter. The claims depending from claim 1 share this issue and are likewise rejected.
Claims 19-20 recite “magnetic engagement via thin magnetic sheets or tapes embedded” however there is not support for the underlined portions in the specification. There is support for broader recitations of magnets or glue between the metal shell and resin for the first embodiment (original figs. 1-6b) see [0049]; and, there is support “mechanical fitting methods, magnetic coupling, or using adhesives” for the second embodiment (multiple concentric layers embodiment original Fig. 7) see [0050]. Based on the disclosure there is not support for the specificity of “thin magnetic sheets” or “tapes” recited by the claims.
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 19-20 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.
Claims 19-20 recite “all layers of the electronic ring are attached with each other through magnetic engagement via thin magnetic sheets or tapes embedded on the backside of the PCB and within the shell.” This causes a clarity issue. It recites “all layers . . are attached with each other” and recites of the ring for claim 19 this is the inner, middle and outer while for the claim 20 this is inner, outer, and plurality of middle layers. It is unclear how all layers of the ring can be attacked based on what on one side/the backside of the PCB. Examiner notes that this could be a 112a issue but Examiner believes that there is typographical error as opposed to this actually being meant as such it is being recited as a clarity issue. For the above reasons the claims do not clearly define the metes and bounds and are indefinite.
Claims 19-20 recite “with each other through magnetic engagement via thin magnetic sheets or tapes embedded” The “or” also causes a clarity issue. Is this reciting “sheets or tapes” as the magnetic engagement? Or is it “magnetic engagement via thin magnetic sheets” or “tapes” (like adhesive tapes)”? As such it is unclear what the metes and bounds of the claim are and the claim is indefinite.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3-6, 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Badinski (Curt Badinski et al., US 20150220109) hereinafter Bad in view of Lusted (Hugh Lusted et al., US 9711060) hereinafter Lus.
Regarding Claim 1, Bad discloses an electronic ring for monitoring fitness and health parameters of a user ([0004], [0159]-[0160], Fig. 2), the electronic ring comprising:
an outer layer made of a rigid material ([0011] including “an internal housing portion configured to be disposed near a finger of a user; a flexible printed circuit board arranged around a portion of a circumference of an interior surface of the internal housing; at least one component disposed on the flexible printed circuit board; and an external housing”, [0194] including “such as aluminum, titanium, or stainless steel”, [0203] including “the external housing 1312 can be formed of the same materials as the internal housing 1212 described above”, [0210]-[0211], Figs. 3b, 8, 13-15B see also [0156], [0162]-[0163]; Examiner notes that “rigid” is a material property all properties have some degree of being rigid. Titanium is an example of what Applicant’s deem to be “rigid” per their spec [0010] this material among others is recited by the Bad reference);
a middle layer including a Printed Circuit Board (PCB) housing ([0011], [0179] including “PCB”, [0202] including “The PCB 1340 and components 1350 can extend along an inner circumference of the internal surface”, [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 4-6, 8, 13-15B, see also [0156], [0162]-[0163], [0181], [0200]):
a plurality of sensors for capturing fitness and health parameters of the user ([0162] including “a plurality of sensor modules 220,”, [0167]-[0169] including “the sensor modules 220 can include various sub-modules for the WCD 110 to perform different monitoring or sensing activities.”, [0187], [0202], [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156], [0162]-[0163], [0189]);
a microcontroller ([0162] including “a processor module 210", [0164], [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156], [0162]-[0163]), and
a wireless module ([0162]-[0163] including “a communication module 250", [0174] including “communication module 250 for wireless data transmission”, [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156], [0162]-[0163], [0264]),
wherein the plurality of sensors, the microcontroller, and the wireless module are distributed across a semi-circular arc ([0162], [0187] including “the modules 210-270 (of FIG. 2) are formed on a flexible or rigid-flex printed circuit (FPC) board, an example 500 of which is shown as FPC 515 in FIG. 5”, [0199]-[0200], Figs. 4-6, 8, 12F, 13-15B see also [0156], [0162]-[0163]; the Figures show circuit boards with electronics modules as discussed in [0162] spread out across the semicircular shaped PCB see for example Fig. 5 and 12F),
a battery to power the plurality of sensors, the microcontroller, and the wireless module ([0162] including “a battery module 280 that provides electrical power for the WCD”, [0182] including “The battery can provide power to any of the components described above.”, [0187], [0202], Figs. 4, 6, 8, 13-14E see also [0156], [0162]-[0163]); and
an inner layer, at least a portion of which is made up of a transparent or translucent material, wherein the inner layer is configured to be in contact with skin of the user ([0195]-[0196], [0202]-[0203], [0207], [0210]-[0211], Figs. 3b, 8, 12-15B), and the inner layer is made of a resin covering the PCB completely ([0189], [0194] including “epoxy, polyester resin or any other polymer.”, [0202]-[0203] see also [0195], [0210]-[0211]; the internal housing (or layer) covers the middle layer/PCB etc. and the external housing (or layer) are attached to each enclosing the electronic components).
An interpretation of Bad may not explicitly disclose the electronic devices spread such that there is a semi-circular arc of 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.
However, in the same field of endeavor (diagnostic medical devices), Lus teaches wherein the plurality of sensors, the microcontroller, and the wireless module are distantly spread over a semi-circular region of the electronic ring (Col 5:5-30 including “components are all preferably distributed along the board”, Col 10:31-40 including “The biometric sensor ring of the disclosure utilizes a distributed arrangement of sensors and/or circuitry interconnected”, Col 10:41-Col 11:3, Figs. 1A-4, 18) such that there is a semi-circular arc of 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 (Col 10:41-63, Col 10:64-Col 11:3 including “the design was formulated to position the BLE module on the top surface of the finger to optimize signal transmission without possible RF scattering effects caused by finger tissue. In addition, this embodiment places the EDA and PPG sensor elements on the bottom surface (palm side) of the finger for optimal biometric data acquisition”, Fig. 1A, 2A-4, 18; Examiner also notes MPEP 2144.05(I)-(II) which includes discussion such as “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. . . . Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”. The claim is reciting the relative positioning of the wireless and sensor elements in degrees; the prior art reference recites an equivalent positioning of the elements respectively based on a finger (i.e. on the top and bottom). The claims range recitation when taken in view of the discussion the prior art is “close to”, “overlaps” or “lies inside” the range recited by the prior art).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a PCB with associated sensors and electronic components enclosed within the outermost layers, the attached internal and external housing elements, of the ring device as recited by Bad to include the distribution of the communications module on the top of the finger on the opposite end of the semicircular region from a sensor on the bottom of the finger as recited by Lus because optimizes the positioning of the wireless communication element and the sensor element (Col 10:42-Col 11:3).
Regarding Claim 3, an interpretation of Bad further discloses wherein the inner layer is assembled over the outer layer through adhesive ([0194] including “epoxy, polyester resin or any other polymer.”, [0202]-[0203] including “internal potting 1314 can be formed of the same materials as the external potting 1214 described above”, [0210]-[0211] see also [0163], [0189]).
Regarding Claim 4, an interpretation of Bad further discloses 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 ([0194] including “epoxy, polyester resin or any other polymer.”, [0202]-[0203] including “internal potting 1314 can be formed of the same materials as the external potting 1214 described above”; Examiner notes “layer is made by solidification of a resin poured in a liquid form in a cavity of the outer layer after placement of the middle layer in the cavity” appears to fall under MPEP 2113 Product-by-Process Claims).
Regarding Claim 5, an interpretation of Bad further discloses wherein the plurality of sensors remain in contact of least one of the inner layer and the outer layer for accurately capturing readings of the fitness and health parameters ([0167]-[0169] discloses various sensors, [0176] discloses various EM sensing, [0202]-[0203], Figs. 2, 13-14E see also [0016]-[0018], [[0158], [0162]-[0163], [0171]; To the extent “for accurately capturing readings of the fitness and health parameters” is an intended use the elements disclosed by the prior art are structurally capable of performing the intended use).
Regarding claim 6, an interpretation of Bad further discloses wherein the resin is an infrared and visible light-transparent epoxy ([0195] including “the transparent external potting can allow electromagnetic radiation, such as visible, IR, or UV light sources”, [0202]-[0203] including “internal potting 1314 can be formed of the same materials as the external potting 1214 described above”, Figs. 13-14E see also [0016]-[0018]).
Regarding claim 8, an interpretation of Bad further discloses wherein a microcontroller and a memory are mounted on the PCB ([0011]-[0016], [0162], [0164]-[0165], Figs. 2, 13-14e; memory, processor, wireless communication, sensor modules etc. are recited as components the other portion recites pcb with components), wherein the microcontroller is configured to obtain values of the fitness and health parameters detected by the plurality sensors including a heart rate sensor ([0167]-[0169]), a temperature sensor ([0167]-[0169]), a light sensor ([0167]-[0169]; Pulse ox uses a light sensor or the temp sensor can use light sensor), an NFC transducer ([0170], [0282]), and a motion sensor ([0167]-[0169]), in real-time and store the values in the memory ([0167]-[0169], [0174]).
Regarding Claim 9, an interpretation of Bad further discloses wherein the wireless module mounted on the PCB wirelessly communicates the fitness and health parameters to an external device ([0011]-[0016], [0162], [0174], [0270], Fig. 2 see also [0163]; To the extent “wirelessly communicates the fitness and health parameters to an external device” is an intended use the elements disclosed by the prior art are structurally capable of performing the intended use).
Regarding Claim 10, an interpretation of Bad further discloses wherein a wireless charging coil is positioned in vicinity of the middle layer and connected with the battery to enable wireless charging of the battery ([0162], [0173], [0179], Figs. 2, 6).
Regarding Claim 11, an interpretation of Bad further discloses wherein the electronic ring is configured to be worn on a finger of a user (abstract, [0004], [0011], [0160] see also [0163]).
Claim Rejections - 35 USC § 103
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bad in view of Lus as applied to clams 1 and 11 above, and in further view of Workman (Kurt Workman et al, US 20160066827) hereinafter Work.
Regarding Claim 12, an interpretation of Bad in view of Lus teaches the above in claim 11.
An interpretation of Bad may not explicitly disclose wherein a gap is present between two ends of the electronic ring to enable adjustment of the electronic ring over the finger of the user.
However, in the same field of endeavor (medical devices), Work teaches wherein a gap is present between two ends of the electronic ring to enable adjustment of the electronic ring over the finger of the user ([0027] including “Various adjustable designs are depicted within FIGS. 1-3 For example, one implementation can include a circular “ring” with an open area in the circle, built with flexible material so as to be able to stretch and fit over different sizes of fingers.” See Figs. 1-3; Examiner notes to the extent “to enable adjustment of the electronic ring over the finger of the user” is an intended use of the claimed device the device recited by reference is structurally capable of performing the same function).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a PCB with associated sensors and electronic components enclosed within the outermost layers of ring device as taught by Bad in view of Lus to include a gap in the band as recited by Work because an open area allows for the device to stretch and fit over different sizes of fingers ([0027]) which then requires fewer variations to manufacturing, reducing cost and complexity as you don’t need to make various sizes and simplifies the process of picking a proper sized device in hospitals and stores where the device would be chosen ([0027]).
Claim Rejections - 35 USC § 103
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bad in view of Lus as applied to claim 1 above, and in further view of Keats (Jason Keats et al., US 20190007816) hereinafter Keats.
Regarding Claim 13, an interpretation of Bad further discloses NFC communication transceiver ([0170], Fig. 2 see also [0163]) as well as a windows in the outer layer for transfer of data etc. for communication with external devices ([0160] including “the WCD 110 can include the exterior window 120 on its exterior wall for input/output data transmission and reception, battery recharge, or status indication.” see also [0163]; to the extent “for communication . . .” is an intended use of the claimed device the device recited by the prior is structurally capable of performing the claimed function).
An interpretation of Bad may not explicitly disclose wherein a window to house wireless transmission elements.
However, in the same field of endeavor (medical devices), Keats teaches a window to house wireless transmission elements ([0075] including “While antennas are unable to transmit through metal, PEO technology can be used to convert a portion of a metal housing (e.g., comprised of titanium) into a radio frequency-transparent (RF-transparent) segment comprised of, for example, titanium dioxide.”).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a titanium or metal exterior (away from the finger) layer, a PCB with associated sensors and electronic components enclosed within the outermost layers of ring device as taught by Bad in view of Lus to include a window housing the wireless elements in order to transmit data externally as recited by Keats because without a window through the metal they have a difficult transmitting/receiving signals ([0075]).
Claim Rejections - 35 USC § 103
Claim 17 is/are rejected under 35 U.S.C. 103 as being obvious over Bad in view of Lus as applied to claim 1 above, and in further view of Yang (Bruce Yang et al., US 20160166161) hereinafter Yang.
Regarding Claim 17, an interpretation of Bad in view of Lus discloses the above in claim 1, Bad further discloses the inner layer and outer layer are attached ([0202]-[0203] see also [0194]-[0195], [0210]-[0211]; the internal housing (or layer) and the external housing (or layer) are attached to each enclosing the electronic components).
An interpretation of Bad may not explicitly disclose wherein the inner layer is made up of two or more detachable parts configured to snap together.
However, in the same field of endeavor (medical devices), Yang teaches wherein the inner layer is made up of two or more detachable parts configured to snap together ([0043] including “For example, two halves of a ring can be joined together through a snap mechanism, a screw mechanism, using an elastic band, etc. This allows for the ability to take apart the ring to access different parts for possible modification or repair. It may also allow for finer adjustment of ring fit than a typical rigid ring” see also [0030]; Yang recites snapping together two halves of ring housing (or circular object such as an internal circular ring housing) to make a whole ring/circle. Examiner notes that MPEP 2144.04(V) is relevant to this element. Furthermore, Examiner also notes that any element is detachable once. For clarity of the record this Claim element is being interpreted in view of the specification, namely Applicants (PG Pub) [0047] including “may be made of two different transparent plastic based parts which may snap together to form a single piece”.).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a PCB with associated sensors and electronic components enclosed within the outermost layers, the attached internal and external housing elements, of the ring device as recited by Bad in view of Lus to include wherein the inner housing ring halves are configured to snap together as recited by Yang because it provides the ability to take the ring apart and access different parts for modification or repair ([0043]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the ring as disclosed by Bad in view of Lus using snaps as recited by Yang because it is merely combining prior art elements according to known methods to yield predictable results which is joining the housing elements to enclose or seal the components inside it.
Claim Rejections - 35 USC § 103
Claim 18 is/are rejected under 35 U.S.C. 103 as being obvious over Bad in view of Lus as applied to claim 1 above, and in further view of Beyhs (Michael Beyhs et al., US 20220091683) hereinafter Bey.
Regarding Claim 18, an interpretation of Bad in view of Lus discloses the above in claim 1.
An interpretation of Bad may not explicitly disclose wherein electrical connections are provided between the layers using pogo pins.
However, in the same field of endeavor (medical diagnostic devices), Bey teaches wherein electrical connections are provided between the layers using pogo pins ([0042]-[0043], [0102], Figs. 1D-2; electronic components on different layers of the band are electrically connected by “pogo pins”).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a PCB with associated sensors and electronic components enclosed within the outermost layers, the attached internal and external housing elements, of the ring device as recited by Bad in view of Lus to include pogo pins for electrical connectors between layers as recited by Bey because it is merely combining prior art elements (the pogo pins of Bey with the layers disclosed by Bad) according to known methods to yield predictable results.
Claim Rejections - 35 USC § 102/103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bad in view of Lus or, in the alternative, under 35 U.S.C. 103 as obvious over Bad in view of Lus in further view of Haverinen (Teemu Haverinen et al., US 20180103902 - cited in PTO-892 dated 7/10/24) hereinafter Hav.
Regarding Claim 14, an interpretation of Bad discloses an electronic ring for monitoring fitness and health parameters of a user ([0004], [0159]-[0160], Fig. 2), the electronic ring comprising:
an outer layer made of a rigid material ([0194] including “such as aluminum, titanium, or stainless steel”, [0203] including “the external housing 1312 can be formed of the same materials as the internal housing 1212 described above”, [0210]-[0211], Figs. 3b, 8, 13-15B; Examiner notes that “rigid” is a material property all properties have some degree of being rigid. Titanium is an example of what Applicant’s deem to be “rigid” per their spec [0010] this material among others is recited by the Bad reference);
an inner layer ([0195]-[0196], [0202]-[0203], [0207], [0210]-[0211], Figs. 3b, 8, 12-15B) made up of resin ([0189], [0194] including “epoxy, polyester resin or any other polymer.”, [0202]-[0203] see also [0195], [0210]-[0211]; the internal housing (or layer) covers the middle layer/PCB etc. and the external housing (or layer) are attached to each enclosing the electronic components); and
multiple detachable concentric middle layers stacked over each other and positioned between the outer layer and the inner layer ([0179], [0181], [0202], [0210]-[0211], Figs. 4, 6, 8, 13-15B; Examiner notes that layers are detachable once. The pcb/electronics layer can have multiple sub layers or “middle layers” which are stacked over each other and positioned between the outer/external layer and internal housing/inner layer), wherein at least one layer of the multiple detachable concentric layers includes a Printed Circuit Board (PCB) housing ([0179], [0181], [0202], [0210]-[0211], Figs. 4, 6, 8, 13-15B; Examiner notes that layers are detachable once. Figs. 13 and 14a show a cross sectional with electronic components on two layers, namely the battery and PCB w/attached components. The battery is on a separate layer which is connected to the electronics PCB w/attached components. Also, to the extent “for capturing . . .” is an intended use of the device the structural elements recited by the prior art are functionally capable of performing the intended use),
a plurality of sensors for capturing fitness and health parameters of the user ([0162] including “a plurality of sensor modules 220,”, [0167]-[0169] including “the sensor modules 220 can include various sub-modules for the WCD 110 to perform different monitoring or sensing activities.”, [0187], [0202], [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156], [0189])
a microcontroller ([0162] including “a processor module 210", [0164], [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156]), and
a wireless module ([0162]-[0163] including “a communication module 250", [0174] including “communication module 250 for wireless data transmission”, [0204]-[0205] including “a flexible circuit 1440, and one or more components 1450”, [0210]-[0211], Figs. 2, 4, 6, 8, 13-15B see also [0156], [0264]),
wherein the plurality of sensors, the microcontroller, and the wireless module are distributed across a semi-circular arc ([0162], [0187] including “the modules 210-270 (of FIG. 2) are formed on a flexible or rigid-flex printed circuit (FPC) board, an example 500 of which is shown as FPC 515 in FIG. 5”, [0199]-[0200], Figs. 4-6, 8, 12F, 13-15B see also [0156]; the Figures show circuit boards with electronics modules as discussed in [0162] spread out across the semicircular shaped PCB see for example Fig. 5 and 12F); and
wherein an the resin of the inner layer covers the plurality of sensors ([0189], [0194] including “epoxy, polyester resin or any other polymer.”, [0202]-[0203] see also [0195], [0210]-[0211]; the internal housing (or layer) covers the middle layer/PCB etc. and the external housing (or layer) are attached to each enclosing the electronic components) and is configured to be in contact with skin of the user ([0195]-[0196], [0202]-[0203], Figs. 3b, 8, 13-15B see also [0210]-[0211]).
An interpretation of Bad may not explicitly disclose the electronic devices spread such that there is a semi-circular arc of 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
However, in the same field of endeavor (diagnostic medical devices), Lus teaches wherein the plurality of sensors, the microcontroller, and the wireless module are distantly spread over a semi-circular region of the electronic ring (Col 5:5-30 including “components are all preferably distributed along the board”, Col 10:31-40 including “The biometric sensor ring of the disclosure utilizes a distributed arrangement of sensors and/or circuitry interconnected”, Col 10:41-Col 11:3, Figs. 1A-4, 18) such that there is a semi-circular arc of 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 (Col 10:41-63, Col 10:64-Col 11:3 including “the design was formulated to position the BLE module on the top surface of the finger to optimize signal transmission without possible RF scattering effects caused by finger tissue. In addition, this embodiment places the EDA and PPG sensor elements on the bottom surface (palm side) of the finger for optimal biometric data acquisition”, Fig. 1A, 2A-4, 18; Examiner also notes MPEP 2144.05(I)-(II) which includes discussion such as “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. . . . Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.”. The claim is reciting the relative positioning of the wireless and sensor elements in degrees; the prior art reference recites an equivalent positioning of the elements respectively based on a finger (i.e. on the top and bottom). The claims range recitation when taken in view of the discussion the prior art is “close to”, “overlaps” or “lies inside” the range recited by the prior art).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with at least three layers including a PCB with associated sensors and electronic components enclosed within the outermost layers, the attached internal and external housing elements, of the ring device as recited by Bad to include the distribution of the communications module on the top of the finger on the opposite end of the semicircular region from a sensor on the bottom of the finger as recited by Lus because optimizes the positioning of the wireless communication element and the sensor element (Col 10:42-Col 11:3).
For purposes of compact prosecution, in the alternative, an interpretation of Bad may not explicitly disclose detachable concentric layers.
However, in the same field of endeavor (medical devices), Hav teaches detachable concentric layers ([0004] recites “a known way” to make these devices is using screws or clips to seal the elements in a housing; Examiner notes MPEP 2144.04 is relevant to this discussion and that while not relied for this rejection currently the Yang reference also points out the alternative approaches based on “design considerations” see [0042]).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the smart ring with multiple layers including two layers with associated sensors and electronic components enclosed within the outermost layers of ring device as recited by Bad to include the electronic components which are configured to be housed in a case joined by screws, clips etc. as recited by Hav in order for the device elements to be detachable as recited by Hav because it is a simple substitution of one known attachment/combining element (molding with resin, epoxy etc.) for another (the elements attached together through mechanical means sealing them inside a housing using screws, clips etc.) to obtain predictable results; a waterproof device with mechanical attachments that can be taken apart.
Regarding Claim 15, an interpretation of Bad further discloses an NFC transducer ([0170], [0282]), a battery ([0160], [0162], [0175], [0182] see also [0156]), wherein the plurality of sensors include a heart rate sensor ([0167]-[0169]), a temperature sensor ([0167]-[0169]), a light sensor ([0167]-[0169]; Pulse ox uses a light sensor or the temp sensor can use light sensor) and a motion sensor ([0167]-[0169]).
Regarding Claim 16, an interpretation of Bad further discloses wherein the multiple concentric layers are attached with each other using adhesives ([0195], [0202]-[0203] see also [0163], [0189]).
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.”
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.
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/James Moss/ Examiner, Art Unit 3792
/UNSU JUNG/ Supervisory Patent Examiner, Art Unit 3792