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 (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.
Notice of Amendment
In response to the amendment(s) filed on 8/27/26, amended claim(s) 10-26. The following new and/or reiterated ground(s) of rejection is/are set forth:
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 16 and 21 is/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.
For claim 16, the claim language “sending a signal to turn the oximeter device on or off when a change in orientation in the second direction meets a threshold value” appears to be new matter. The examiner could not find this exact claim language in the specification and, although the same language used in the claims does not need to be used in the specification, the examiner could not find any corollaries either. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 21, the claim language “wherein a pair of accelerometers each have at least two axes for use in detecting a change in orientation of the oximeter device” appears to be new matter. The examiner could not find this exact claim language in the specification and, although the same language used in the claims does not need to be used in the specification, the examiner could not find any corollaries either. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
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.
Claim(s) 13, 17, 20, and 24 is/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.
For claim 13, the claim term “the distal end and the proximal end of the housing” (line 3) lacks antecedent basis. The claim is examined as this referring back to the “proximal end” and “distal end” of the “oximeter” recited in claim 10.
For claim 17, the claim term “the distal and proximal ends of the housing” (line 3) lacks antecedent basis. The claim is examined as this referring back to the “proximal end” and “distal end” of the “oximeter” recited in claim 10.
For claim 20, the claim term “about 160 degrees” is ambiguous. What degrees are included in “about” 160 degrees? Is 159 included? 161? 158? 162? 150? 170? The claim is examined as meaning “160 degrees.”
Dependent claim 24 fails to cure the ambiguity of claim 17, thus claim(s) 13, 17, 20, and 24 is/are rejected under 35 U.S.C. 112(b).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) and 10-11, 13-17, and 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0212612 to Hohl et al. (hereinafter “Hohl”) in view of U.S. Patent Application Publication No. 2017/0347899 to Bhushan et al. (hereinafter “Bhushan”) and U.S. Patent Application Publication No. 2014/0067305 to Oliver et al. (hereinafter “Oliver”).
For claim 10, Hohl discloses a method (Abstract) comprising:
providing an oximeter device (“oximeter,” para [0010]) having a proximal end (proximal end of the “oximeter”) and a distal end (distal end of the “oximeter”), the oximeter device comprising
a housing (103) (Fig. 1) (para [0043]) and printed circuit board (“printed circuit board (PCB),” para [0053]) (also see para [0055], [0085]-[0086], and [0088]) enclosed within the housing (see “connector 336” in Fig. 3 and para [0088]),
a sensor tip (338) (Fig. 7) (para [0054]) at the distal end of the oximeter device (as can be seen in Fig. 7);
coupling an accelerometer (“one or more accelerometers,” para [0064]) (as can be seen in Fig. 3, the accelerometer being part of element 319) to the printed circuit board (as can be seen in Figs. 1 and 3) (also see para [0053] and [0085]-[0086]) to facilitate detection (Examiner’s Note: functional language/intended use, i.e., capable of) of at least one of a plurality of movements of the oximeter device (para [0065]),
positioning the printed circuit board with the accelerometer to facilitate the detection of the at least one of the plurality of movements of the oximeter device with respect to at least a first direction or a second direction (para [0064]-[0067] and [0069]).
Hohl does not expressly disclose at least by mounting the accelerometer on a planar surface defined by the printed circuit board.
However, Bhushan teaches at least by mounting the accelerometer on a planar surface defined by the printed circuit board (see either of 102 in Fig. 2) (also see “printed circuit board,” para [0025] and para [0096]).
It would have been obvious to a skilled artisan to modify Hohl to include at least by mounting the accelerometer on a planar surface defined by the printed circuit board, in view of the teachings of Bhushan, because such a configuration is a suitable way to couple the accelerometer to printed circuit board, which is what Hohl already wants to do.
Hohl does not expressly disclose positioning the printed circuit board with the accelerometer within the housing so that the accelerometer is located closer to the proximal end of the oximeter device than to the distal end of the oximeter device.
However, Bhushan teaches positioning the printed circuit board (“printed circuit board,” para [0025]) with the accelerometer (either of 102) (Fig. 2) (para [0096]) within the housing (“casing,” para [0027] or [0030]) so that the accelerometer is located closer to the proximal end of the oximeter device than to the distal end of the oximeter device (as can be seen in Fig. 2).
It would have been obvious to a skilled artisan to modify Hohl to include positioning the printed circuit board with the accelerometer within the housing so that the accelerometer is located closer to the proximal end of the oximeter device than to the distal end of the oximeter device, in view of the teachings of Bhushan, because such an arrangement of parts is a suitable arrangement of the different components that would lead to the predictable result of being able to sense the acceleration of the PCB.
Hohl does not expressly disclose detecting at least one of the plurality of movements of the oximeter device including a change in orientation in at least the first direction or the second direction; and storing a value in a memory location of a memory of the oximeter device.
However, Oliver teaches detecting at least one of the plurality of movements of the oximeter device including a change in orientation in at least the first direction or the second direction; and storing a value in a memory location of a memory of the oximeter device (para [0047] and [0062]).
It would have been obvious to a skilled artisan to modify Hohl to include detecting at least one of the plurality of movements of the oximeter device including a change in orientation in at least the first direction or the second direction; and storing a value in a memory location of a memory of the oximeter device, in view of the teachings of Oliver, for the obvious advantage of creating a log of orientations of the device over time so that movement of an individual can be tracked.
For claim 11, Hohl, as modified, further discloses sending a first signal that activates a first function of the oximeter device in response to the detection by the accelerometer of a first movement in the first direction (para [0064]-[0067] and [0069] of Hohl); and sending a second signal that activates a second function of the oximeter device in response to the detection by the accelerometer of a second movement in the second direction (para [0064]-[0067] and [0069] of Hohl), wherein the first function is different from the second function (para [0064]-[0067] and [0069] of Hohl), and the first direction and the second direction are parallel to a plane of the printed circuit board upon which the accelerometer is mounted (para [0064]-[0067] and [0069] of Hohl).
For claim 13, Hohl further discloses measuring changes in orientation about a longitudinal axis which extends through the distal end and the proximal end of the housing and passes through the sensor tip of the oximeter device (para [0064]-[0067] and [0069]) to detect rotation about the longitudinal axis as movement in a first direction (para [0065] and [0069]).
For claim 14, Hohl further discloses measuring changes in orientation about a horizontal axis which extends parallel with the planar surface of the PCB bur perpendicular to the longitudinal axis, to detect rotation about the horizontal axis as movement in the second direction (para [0064]-[0067] and [0069]).
For claim 15, Hohl, as modified, further discloses mounting a second accelerometer (“one or more accelerometers,” para [0064] of Hohl) (as can be seen in Fig. 3, the accelerometer being part of element 319 of Hohl) on the planar surface defined by the printed circuit board (see either of 102 in Fig. 2 of Bhushan) (also see “printed circuit board,” para [0025] and para [0096] of Bhushan) to facilitate detection (Examiner’s Note: functional language/intended use, i.e., capable of) of at least one of the plurality of movements of the oximeter device (para [0064]-[0067] and [0069] of Hohl).
For claim 16, Hohl further discloses sending a signal to turn the oximeter device on or off when a change in orientation in the second direction meets a threshold value (para [0066]).
For claim 17, Hohl further discloses measuring changes in orientation about a rotational axis perpendicular to the planar surface of the PCB to detect rotation of the distal and proximal ends of the housing about the rotational axis as movement in a third direction (para [0064]-[0067] and [0069]).
For claim 21, Hohl, as modified, further discloses wherein a pair of accelerometers (“one or more accelerometers,” para [0064] of Hohl) (as can be seen in Fig. 3, the accelerometer being part of element 319 of Hohl) each have at least two axes for use in detecting a change in orientation of the oximeter device (para [0064]-[0065] and [0069] of Hohl).
For claim 22, Hohl, as modified, further discloses wherein the accelerometer is located off-center on the printed circuit board (as can be seen in Fig. 2 of Bhushan).
For claim 23, Hohl further discloses sending a signal identifying a shock event when a change in orientation meets a threshold value (para [0070]).
For claim 24, Hohl further discloses sending a signal to open a menu of the oximeter device when a change in orientation in the third direction meets a threshold value (para [0067]-[0068]).
For claim 25, Hohl further discloses wherein the printed circuit board extends in a direction that is from the proximal end to the distal end of the oximeter device (as can be seen in Fig. 10).
For claim 26, Hohl further discloses wherein a first function or a second function comprises one or more of turning the oximeter device on, turning the oximeter device off, notifying the user that the oximeter device requires recalibration, resetting an average value, and navigating a menu of the oximeter device (para [0064]-[0067] and [0069]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohl in view of Bhushan and Oliver, and further in view of U.S. Patent Application Publication No. 2007/0043271 to Mannheimer et al. (hereinafter “Mannheimer”).
For claim 12, Hohl, Bhushan, and Oliver do not expressly disclose wherein storing a value in the memory location of a memory of the oximeter device comprises resetting a counter to an initial value; and initializing the memory to store a sum of a plurality of oxygen saturation measurements made by the oximeter device.
However, Mannheimer teaches wherein storing a value in the memory location of a memory of the oximeter device comprises resetting a counter to an initial value; and initializing the memory to store a sum of a plurality of oxygen saturation measurements made by the oximeter device (para [0031]).
It would have been obvious to a skilled artisan to modify Hohl wherein storing a value in the memory location of a memory of the oximeter device comprises resetting a counter to an initial value; and initializing the memory to store a sum of a plurality of oxygen saturation measurements made by the oximeter device, in view of the teachings of Mannheimer, for the obvious advantage of time stamping the data as it is being recorded.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hohl in view of Bhushan and Oliver, and further in view of U.S. Patent Application Publication No. 2021/0338153 to Barrera et al. (hereinafter “Barrera”).
For claim 18, Hohl, Bhushan, and Oliver do not expressly disclose wherein a detected change in orientation in at least the first direction or the second direction comprises a value that changes from a positive value to a negative value at a first output of the accelerometer.
However, Barrera teaches wherein a detected change in orientation in at least the first direction or the second direction comprises a value that changes from a positive value to a negative value at a first output of the accelerometer (para [0083]).
It would have been obvious to a skilled artisan to modify Hohl wherein a detected change in orientation in at least the first direction or the second direction comprises a value that changes from a positive value to a negative value at a first output of the accelerometer, in view of the teachings of Barrera, for the obvious advantage of performing posture detection based on the indicated orientation derived from the value of the signal (para [0083]).
For claim 19, Hohl, Bhushan, and Oliver do not expressly disclose sending a signal when a detected change in orientation about the longitudinal axis indicates the oximeter device is inverted.
However, Barrera teaches sending a signal when a detected change in orientation about the longitudinal axis indicates the oximeter device is inverted (para [0083]).
It would have been obvious to a skilled artisan to modify Hohl to include sending a signal when a detected change in orientation about the longitudinal axis indicates the oximeter device is inverted, in view of the teachings of Barrera, for the obvious advantage of performing posture detection based on the indicated orientation derived from the value of the signal (para [0083]).
For claim 20, Hohl, Bhushan, and Oliver do not expressly disclose sending a signal when a detected change in orientation about the longitudinal axis changes at least by about 160 degrees from an initial orientation of the axis.
Hohl does disclose an initial orientation of an axis that passes through the housing and the sensor tip (para [0064]-[0067] and [0069]).
Additionally, Barrera teaches wherein a detected orientation change in at least the first direction or second direction comprises a value changing sign when an axis changes at least 160 degrees from an initial orientation (para [0083]).
It would have been obvious to a skilled artisan to modify Hohl to include sending a signal when a detected change in orientation about the longitudinal axis changes at least by about 160 degrees from an initial orientation of the axis, in view of the teachings of Hohl and Barrera, for the obvious advantage of performing posture detection based on the indicated orientation derived from the value of the signal (para [0083]).
Response to Arguments
Applicant's arguments filed 8/27/26 have been fully considered.
With respect to the claim objection(s), Applicant’s amendments and arguments are persuasive and thus the previous objections are withdrawn.
With respect to the 112 rejection(s), Applicant’s amendments and arguments are persuasive and thus the previous rejections are withdrawn. New rejections have been necessitated by amendment.
With respect to the 103 rejection(s), Hohl qualifies as prior art under 102(a)(1) because Hohl has a prior public availability date. The public availability date of Hohl is 7/15/21, which is before 10/18/21. Therefore, the 102(b)(2)(C) exception does not apply because Hohl is prior art under 102(a)(1).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (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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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
