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 .
Election/Restrictions
Applicant's election with traverse of species A1, B1, C1, D1, E1, and F1 and claims 1-3, 10, 18, 29-30, and 32 in the reply filed on 02/23/2026 is acknowledged. The traversal is on the ground(s) that “though different, are nonetheless sufficiently similar to merit examination in the same application, as they share dominant elements” that Applicant does not name, enumerate or further explain. Than Applicant cites MPEP §803 and states “including claims 4-9, 11-20, 22, 31, and 33-35, with consideration of the elected Species and claims, would not pose a serious burden under M.P.E.P. § 803 because there is commonality of dominant elements between or among them” and again does not name, enumerate or further explain. This is not found persuasive because Applicant provides conclusory statements.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, the claims 4-9, 11-17, 19-20, 22, 31, and 33-35 have been withdrawn. It should be noted claim 10 depends on presently withdrawn claims and, therefore, will be similarly withdrawn. Finally species A1, B1, C1, D1, E1, and F1 and claims 1-3, 18, 29-30, and 32 will be examined and searched.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used.
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Claims 1-3, 18, 29-30, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 11,382,563. Although the claims at issue are not identical, they are not patentably distinct from each other because the encompass the same essential invention.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Al-Ali (U.S. Patent Application Publication 2010/0069725).
Regarding claim 1, Al-Ali discloses a system comprising:
at least one breath sensor (“sensor 106,” see [0030] and figure 1) configured to attach to a patient, and configured detect to breathing of a patient and to generate breath sensor data indicative of the patient's breathing (see [0030], [0034], and [0036] for example);
a breath prompting protocol system activated if the breath sensor data indicates that the patient is not sufficiently breathing, the breath prompting protocol system configured to:
generate an audible prompt (see [0044]-[0045], [0048]) for the patient to breath, the audible prompt being in the form of using a recorded voice instructing the patient to breathe (see [0048]),
determine from the breath sensor data if the patient responded to the audible prompt by the at least one breath sensor detecting that the patient took at least one breath in response to the audible prompt (see [0044]), and
repeat the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to the audible prompt (see [0048]); and
increase a sound level of the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to at least one audible prompt (see [0045]).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Tzvieli et al. (U.S. Patent Application Publication 2017/0367651) in view of Al-Ali (U.S. Patent Application Publication 2010/0069725).
Regarding claims 1-3, Tzvieli et al. disclose
at least one breath sensor (“thermopile or microbolometer based sensor,” see abstract, and/or [0089] and figure [0030] and figures 1-20) configured to attach to a patient, and configured detect to breathing of a patient and to generate breath sensor data indicative of the patient's breathing (see abstract, [0005], for example);
wherein the at least one breath sensor is configured to measure at least one of intranasal pressure (see abstract, [0005], and [0095] for example);
at least one motion sensor (e.g., “accelerometer” sensor 461, see [0330]) to detect movement of at least one body part of the patient, and
a prompting/warning/alerting system in order to monitor physiological parameters and alert the user ([0356], [0390] for example).
However, Tzvieli et al. fail to explicitly recite
a breath prompting protocol system activated if the breath sensor data indicates that the patient is not sufficiently breathing, the breath prompting protocol system configured to:
generate an audible prompt for the patient to breath, the audible prompt being in the form of using a recorded voice instructing the patient to breathe,
determine from the breath sensor data if the patient responded to the audible prompt by the at least one breath sensor detecting that the patient took at least one breath in response to the audible prompt;
repeat the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to the audible prompt; and
increase a sound level of the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to at least one audible prompt.
Like Tzvieli et al., Al-Ali discloses a system for measuring the user’s/patient’s breath using a sensor attached to the user/patient and teach providing the system with
a breath prompting protocol system activated if the breath sensor data indicates that the patient is not sufficiently breathing, the breath prompting protocol system configured to:
generate an audible prompt (see [0044]-[0045], [0048]) for the patient to breath, the audible prompt being in the form of using a recorded voice instructing the patient to breathe (see [0048]),
determine from the breath sensor data if the patient responded to the audible prompt by the at least one breath sensor detecting that the patient took at least one breath in response to the audible prompt (see [0044]), and
repeat the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to the audible prompt (see [0048]); and
increase a sound level of the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to at least one audible prompt (see [0045]),
in order to provide a known and workable manner of providing “a caregiver with more easily identifiable indications of the state of multiple physiological parameters in order to give the caregiver an indication of the patient's overall wellness in an efficient manner” (see abstract).
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Tzvieli et al., as taught by Al-Ali, to providing the system with a breath prompting protocol system activated if the breath sensor data indicates that the patient is not sufficiently breathing, the breath prompting protocol system configured to: 1) generate an audible prompt for the patient to breath, the audible prompt being in the form of using a recorded voice instructing the patient to breathe, 2) determine from the breath sensor data if the patient responded to the audible prompt by the at least one breath sensor detecting that the patient took at least one breath in response to the audible prompt, 3) repeat the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to the audible prompt; and 4) increase a sound level of the audible prompt if the at least one breath sensor fails to detect that the patient took a breath in response to at least one audible prompt in order to provide a known and workable manner of providing “a caregiver with more easily identifiable indications of the state of multiple physiological parameters in order to give the caregiver an indication of the patient's overall wellness in an efficient manner.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON F ROANE/Primary Examiner, Art Unit 3792
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