DETAILED ACTION
This action is pursuant to the claims filed on March 10, 2023. Claims 21-40 are pending. Claims 1-20 are canceled. A first action on the merits of claims 21-40 is as follows.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Kegasawa (U.S. PGPub. No. 2016/0338598, ses IDS) and further in view of Rothkopf (U.S. PGPub. No. 2016/0058375, see IDS).
In regards to independent claim 21 and claims 22 & 24, Kegasawa teaches an electronic watch (watch 1E in Figs. 13A-13B) comprising:
a touch-sensitive display ([0076]: touch panel arranged on the display section 61 as shown best in Fig. 1A);
a housing at least partially enclosing the touch-sensitive display (main body 21A in Fig. 1A, [0065]);
a cover coupled to the housing and positioned over the touch-sensitive display (cover 22 covers as shown in Fig. 1A);
a processor positioned in the housing (Fig. 3 shows a controller 9 is disposed in the main body 21A, [0065]);
a carrier connected to a housing and defining a perimeter (protrusion 531 forms a gentle convex surface/perimeter on a rear surface of the smartwatch 212 as shown in Figs. 15 and 17);
a light emitter positioned below the carrier and configured to emit light through the carrier and toward a body (the pulse wave sensor 531 comprises a light transmissive member in Figs. 15 and 17);
a light receiver positioned below the carrier and configured to receive light reflected from the body (pulse wave sensor 531/detection window is disposed along the portion of the 5321 in Fig. 15 to determine a user’s pulse wave/rate, [0034],[0064]).
a first electrode positioned on the carrier and configured to contact the body, the first electrode operably coupled to the processor (electrode 542 (5421) overlaps with lateral protrusions as shown in Figs. 15 and 17; note that the electrode is arc-shaped, thus meeting, in part, claim 22; [0120]: electrode 5421 induces ECG signal; see Figs. 12-13B; the surface of sensor 531 contacts the user’s wrist ‘LW’, thus meeting in part claim 24); and
a third electrode (electrode 541A which is configured to contact a surface of the body which is different from the surface on which the first electrode is provided (e.g. engage the user’s finger, thus meeting claim 24).
However, Kasawaga does not disclose a battery at least partially within the housing and configured to provide power to the processor.
Rothkopf teaches a wearable electric device including similar features including a battery (battery 114 in Fig. 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the electronic watch of Kegasawa and incorporate a battery to provide powering the watch ([0034]).
In regard to claims 23 & 25-26, Kegasawa/Ruthkopf combination further discloses the electronic watch is configured to: determine a first biological parameter of using a first signal received from the light receiver (pulse wave sensor 531/detection window is disposed along the portion of the 5321 in Fig. 15 to determine a user’s pulse wave/rate, [0034],[0064]); and determine a second biological parameter of the user using a second signal received from the first electrode and the second electrode ([0083]-[0085]: an electrocardiogram detector 547 under the control of a controller 9 is configured to detect ECG of the user from the measurement of the first, second and third electrodes; note that the signals from the two electrodes may be configured for two-lead ECG).
In regards to claim 27, Kegasawa/Ruthkopf combination further discloses wherein: the housing comprises: a first component defining a first portion of a rear exterior surface of the housing (a rear surface of the watch in which region 531 is disposed on); and a second component defining a first portion of a front exterior surface of the housing (the portion of the housing cover 22 is disposed on); the carrier defines a second portion of the rear exterior surface of the housing (region 531 extends from a rear surface 212 of the smartwatch as shown in exemplary Fig. 14A and 14B); and the cover defines a second portion of the front exterior surface of the housing (cover 22 disposed on the upper surface of the watch as shown in Figs. 13A-13B).
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. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 25 & 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, & 6 are of U.S. Patent No. 10, 610, 157 in view of Rothkopf (U.S. PGPub. No. 2016/0058375).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21, 25 & 27 are obvious over claims 1, 5 and 6 of the reference patent.
In regards to claim 21, Patent ‘157 claims an electronic watch (claim 1) comprising: a touch-sensitive display (claim 1: touch-sensitive display); a housing at least partially enclosing the touch-sensitive display (claim 1: a housing; [the] touch-sensitive display at least partially within the housing); a cover (claim 1: a transparent cover; the touch-sensitive display is viewable through the transparent cover which inherently requires the cover to be positioned over the touch-sensitive display); a processor (claim 1: a processor) at least partially within the housing; a carrier formed from a transparent material and positioned at a rear end of the housing (claim 1: carrier connected to the housing and formed from a transparent material); a light emitter positioned below the carrier and configured to emit light through the carrier toward a body and a light receiver positioned below the carrier and configured to receive light reflected from the body (claim 1: an optical sensor positioned below the central window region of the carrier; note that the optical sensor inherently requires a light emitter and a light detector for optical detection); a first electrode positioned below the carrier and configured to contact the body, the first electrode operably coupled to the processor (claim 1: first electrode positioned directly on the carrier and the processor operationally connected to the first electrode); a second electrode positioned on the housing and operably coupled to the processor (claim 1: second electrode directly on the carrier and the processor operationally connected to the second electrode).
However, Patent ‘157 does not claim a battery at least partially within the housing and configured to provide power to the processor.
Rothkopf teaches a wearable electric device including various components including sensors, biosensors, battery for powering the wearable device (battery 114 in Fig. 2), a touch sensitive display (touch sensor/force sensor disposed within a housing 601), a cover disposed over the touch sensitive display (cover 609). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the claimed invention and incorporate known features such as touch-sensitive display, battery, cover and so forth as taught by Rothkopf to provide functionalities such as powering the watch, gather data from the touch display.
In regards to claim 25, Patent ‘157 claims the electronic watch is configured to determine an electrocardiogram of a user based at least in part on electrical measurements at the first electrode and the second electrode (see claim 1: the processor is configured to determine an electrocardiogram using the first voltage [of the first electrode], the second voltage [of the second electrode]).
In regards to claim 27, Patent ‘157 claims the housing comprises different components as claimed (claim 1: transparent cover is attached to a front exterior surface of the housing; claim 5: carrier is attached to a rear of the housing).
Claims 21, 25 & 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 8 are of U.S. Patent No. 10, 987,054610, 157 in view of Rothkopf. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21, 25 & 27 are obvious over claims 1, 5 and 6 of the reference patent.
In regards to claim 21, Patent ‘054 claims an electronic watch (claim 1) comprising: a display (claim 1: display); a housing at least partially enclosing the display (claim 1: housing member); a processor positioned in the housing (claim 1: the processor positioned within the electronic watch); a carrier formed from a transparent material and positioned at a rear of the housing (claim 1: a carrier member formed from a transparent material; claim 8: the carrier member protrudes outward from an external surface of the housing member); a light emitter positioned below the carrier and configured to emit light through the carrier toward a body (claim 1: a light emitter positioned below the carrier member); a light receiver positioned on the carrier and configured to receive light reflected from the body (claim 1: a light receiver configured to receive light reflected from a wrist); a first electrode positioned on the carrier and configured to contact the body, the first electrode operably coupled to the processor (claim 1: a first electrode positioned on the carrier member and coupled to a processor); and a second electrode positioned on the housing and operably coupled to the processor (claim 1: a third electrode coupled to a housing member and operably coupled to the processor).
However, Patent ‘054 does not claim that the display is a touch-sensitive display, a cover coupled to the housing and positioned over the display and a battery.
Rothkopf teaches a wearable electric device including various components including sensors, biosensors, battery for powering the wearable device (battery 114 in Fig. 2), a touch sensitive display (touch sensor/force sensor disposed within a housing 601), a cover disposed over the touch sensitive display (cover 609). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the claimed invention and incorporate known features such as touch-sensitive display, battery, cover and so forth as taught by Rothkopf to provide functionalities such as powering the watch, gather data from the touch display.
In regards to claim 25, Patent ‘054 claims the electronic watch is configured to determine an electrocardiogram of a user based at least in part on electrical measurements at the first electrode and the second electrode (see claim 1: the processor is configured to determine an electrocardiogram using the first, second and third voltages).
Claim 21 & 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 & 26 of copending Application No. 17/210,348 in view of Rothkopf.
This is a provisional nonstatutory double patenting rejection.
In regards to claim 21, Application ‘348 claims an electronic watch (claim 21: a watch) comprising: a display (claim 21: a display); a housing at least partially enclosing the display (claim 21: a housing member); a processor positioned in the housing (claim 21: a processor); a carrier formed from a transparent material and positioned at a rear of the housing (claim 21: a carrier member formed from a transparent material); a light receiver positioned below the carrier and configured to receive light reflected from the body (claim 26: a light emitter); a light receiver positioned below the carrier and configured to receive light reflected from the body (claim 26: a light receiver); a first electrode positioned on the carrier and configured to contact the body, the first electrode operably coupled to the processor (claim 21: a first electrode positioned on the carrier member); and a second electrode positioned on the housing and operably coupled to the processor (claim 21: a third electrode coupled to the housing member).
However, Application ‘348 does not disclose the display is a touch-sensitive display, a battery at least partially within the housing and configured to provide power to the processor; and a cover coupled to the housing and positioned over the display.
Rothkopf teaches a wearable electric device including various components including sensors, biosensors, battery for powering the wearable device (battery 114 in Fig. 2), a touch sensitive display (touch sensor/force sensor disposed within a housing 601), a cover disposed over the touch sensitive display (cover 609). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the claimed invention and incorporate known features such as touch-sensitive display, battery, cover and so forth as taught by Rothkopf to provide functionalities such as powering the watch, gather data from the touch display.
In regards to claim 25, Application ‘348 claims the electronic watch is configured to determine an electrocardiogram of a user based at least in part on electrical measurements at the first electrode and the second electrode (see claim 21: the processor is configured to determine an electrocardiogram using the first, second and third voltages).
Claims 21, 26-31,35 & 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21, 24, 26, 27, 31 & 32 of copending Application No. 18/075,212.
This is a provisional nonstatutory double patenting rejection.
In regards to claim 21, Application ‘212 claims an electronic watch (claim 21: a watch) comprising: a touch-sensitive display (claim 21: a touch-sensitive display); a housing at least partially enclosing the display (claim 21: a housing); a cover coupled to the housing and positioned over the touch-sensitive display (claim 21: a transparent cover); a processor positioned in the housing (claim 21: a processor); a battery positioned within the housing and configured to provide power to the processor (claim 21: battery); a carrier formed from a transparent material and positioned at a rear of the housing (claim 21: a transparent carrier); a light receiver positioned below the carrier and configured to receive light reflected from the body (claim 21: a light emitter); a light receiver positioned below the carrier and configured to receive light reflected from the body (claim 21: a light receiver); a first electrode positioned on the carrier and configured to contact the body, the first electrode operably coupled to the processor (claim 21: a second electrode positioned on the transparent carrier); and a second electrode positioned on the housing and operably coupled to the processor (claim 21: a first electrode coupled to the housing).
In regards to claim 26, Claim 21 of Application ‘212 claims determining electrocardiogram.
In regards to claim 27, claim 27 of Application ‘212 claims the same elements of claim 27.
In regards to claim 28, claim 21 of Application ‘212 claims all the features of claim 28 except that the wearable electronic device is an electronic watch. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the wearable electronic device as an electronic watch so that it can be worn around the wrist of the user during use.
In regards to claim 29, claim 24 of Application ‘212 anticipates claim 29.
In regards to claim 30, claim 26 of Application ‘212 anticipates claim 30.
In regards to claim 31, claim 27 of Application ‘212 anticipates claim 31.
In regards to claim 35, claim 31 of Application ‘212 anticipated claim 35. Note that the carrier comprising a transparent material reads on claim 35 transparent carrier.
In regards to claim 36, claim 32 of Application ‘212 anticipates claim 36.
Allowable Subject Matter
Claims 21-40 would be allowable once appropriate terminal disclaimer is filed overcoming the double patenting rejection above.
During the search of the prior art, Kegasawa (U.S. PGPub. No. 2016/0338598) was found to be the closest to the claimed invention. However, Kegasawa fails to disclose, teach, and/or suggest all the limitations as claimed in amended independent claims 28 and 35. Specifically, Kegasawa discloses a carrier member (Fig. 16) comprising a transparent carrier/monolithic transparent element (raised transmissive member 53) and (first/second) electrode(s) (electrodes 542). Kegasawa’s electrodes (542) are disposed on a separate component (2G) from the transparent carrier/monolithic transparent element (53 in Fig. 16). There would be no motivation to modify the size of the carrier assembly (53 in Fig. 16) of Kegasawa so that the entire carrier member as shown in Fig. 16 is formed from a transparent material of member 531. Furthermore, there would be no motivation to modify the position of electrodes to be directly on the transparent carrier/monolithic transparent element as doing so prevents the transparent carrier to be used for transmitting and receiving light for pulse wave detection.
Rothkopf (U.S. PGPub. No. 2016/0058375) discloses a watch (wearable electronic device in Fig. 6) comprising a housing member (housing 600 shown in Fig. 7); a display (display disposed within the housing 601, [0120]); a carrier assembly (biosensor module 710 in Fig. 7) coupled to the housing member and comprising a transparent carrier ([0201]: rear cover 608 as best shown in Fig. 16 formed from an optically transparent material and is configured to be positioned within the opening in the house 601, [0201]); and a processor (processing unit 102, [0198]). While Rothkopf discloses providing two electrodes on a rear surface of the watch (electrodes 1601 and 1602 as shown in Fig. 16), it does not disclose that these electrodes are positioned on the transparent carrier as they are disposed on the rear surface of the housing member.
While Rothkopf is clear that 1611-1613 in Fig. 16 are array of light sources and 1614 in Fig. 16 is a detector configured for optical transmission and detection to estimate or compute a health metric or other physiological phenomena ([0191]), Rothkopf is even more clear that the electrodes (1601 and 1602 in Fig. 16) are disposed on the rear surface of the device and not along the transparent carrier (rear cover 608, [0196]). Rothkopf contemplates that the electrodes may be placed on locations other than the rear surface of the watch such as the top surface of the watch ([0197]) but does not mention being disposed on the transparent carrier. Taken together, there would be no motivation from Rothkopf to provide the electrodes on the transparent carrier.
Masimo (WO 2005/092182) discloses a watch (1 in Fig. 1) comprising a housing member (housing 2); a display (display 10); a carrier assembly (4a as shown in exemplary rear surface of the device 1 in Fig. 5) coupled to the housing member and comprising a transparent carrier (a cover glass 23, [0055]); and a processor (data processing part 9, [0059]). While Masimo discloses providing two electrodes on a rear surface of the watch (electrodes 7a & 7b disposed on element 4a as shown in Fig. 5), it does not disclose that these electrodes are positioned on the transparent carrier (23) of the carrier assembly (4a). In light of the carrier assembly of Fig. 5, there would be no motivation to provide electrodes 7a and 7b along the surface of the transparent carrier (23) or for the transparent carrier to extend below the surface of the electrodes.
Similarly, Paulke et al. (WO 2017/165532) discloses biosensor module (biosensor module 100 in Fig. 1F) comprising electrodes (120). However, Paulke does not disclose a transparent carrier as claimed.
Accordingly, claims 29-34 and 36-40 are allowed as being dependent on independent claims 28 and 35 once the DP rejections have been addressed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUNHWA KIM whose telephone number is (571)270-1265. The examiner can normally be reached 9AM-5:30PM.
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/EUN HWA KIM/Primary Examiner, Art Unit 3794 1/9/2025
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