DETAILED ACTION
Applicant has canceled claim 11 and added claims 16-20. Claims 8-10 and 12-20 are pending and hereby under examination.
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 without traverse of Invention II in the reply filed on 02/03/2026 is acknowledged.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/03/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“switching element” first recited in claim 8;
“electronic device” first recited in claim 16; and
“load element” first recited in claim 16;
The identified structure for the corresponding claim limitations are as follows:
“switching element” is identified as “switch 1.4” (Paragraph 0045).
“electronic device” is identified as “In one form of the invention there is provided an electronic device that must consume very low power when in a sleep mode compared to when it is operational … In a preferred application the device includes a blood glucose monitoring unit (Paragraphs 0032-0033).
“load element” is identified as “load 1.3 may be a microcontroller circuit used to control the one or other product. Or it may be a power processing circuit such as a boosting or bucking DC-to-DC converter, as is known in the art” (Paragraph 0042).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8-10, 12-14, and 16-20 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.
Regarding claims 8 and 16, the phrase "substantially" renders the claim indefinite because it is unclear how much light is allowed to reach the second photodiode. How “substantially” is the second photodiode masked? Is any light allowed to reach the second photodiode, or any mix between 0 to 100% light? For examination purposes, “masked to substantially prevent reception of light” will be interpreted to mean as a range from some amount of light to no light. Claims 9-10, 12-14, and 16-20 are also rejected due to their dependence on claims 8 and 16.
Claim Rejections - 35 USC § 102
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 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Deng (CN 114166343).
Regarding claim 8, Deng teaches an optical wake-up circuit comprising a first photodiode (Fig. 2, photodiode 1), a second photodiode (Fig. 2, photodiode 2) and a switching element (Fig. 2, switch array 7), wherein said first photodiode receives light incident on the circuit and said second photodiode is masked to substantially prevent its reception of said light (Page 4, paragraph 5, “the photosensitive surface of the second photodiode (2) performs metal covering process to make it not receive the ambient light”), and wherein the switching element is controlled according to a metric related to the differential between the current of the said first photodiode and the current of the second photodiode (Page 4, paragraph 5, “The output current of the second photodiode (2) is only dark current. the ratio of the cross-resistance gain of the first transimpedance amplifier (41) and the cross-resistance gain of the second transimpedance amplifier (42) is equal to the ratio of the photosensitive area of the first photodiode (1) and the photosensitive area of the second photodiode (2)”; Page 4, paragraph 5, “the differential amplifier (5) amplifies the difference value of the output voltage of the first transimpedance amplifier (41) and the second transimpedance amplifier (42) as the voltage signal, the voltage signal is used for controlling the switch array (7)”).
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.
The factual inquiries 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.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) as applied to claim 8 above, and further in view of Shimizu (US 20100218204).
Regarding claim 9, Deng discloses wherein the switch is controlled by a change/differential between two voltage values. Deng fails to disclose a capacitor.
However, Shimizu teaches a light receiving device wherein a capacitor is arranged with one terminal set to a fixed electric potential and is charged by a photocurrent generated by the light receiving device (Paragraph 0049) such that when the capacitor reaches a threshold voltage between both terminals (Paragraph 0021), a switch is controlled (Paragraph 0062). A method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been motivated to apply measuring a threshold voltage across a capacitor to the base circuit with two photodiodes of Deng in the prior art and the results of controlling a switch with said threshold voltage would have been predictable to one of ordinary skill in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to incorporate the capacitor of Shimizu and the results of controlling a switch with a threshold voltage would have been predictable to one of ordinary skill in the art.
Claims 10 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) as applied to claim 8 above, and further in view of Shelton (US 20220313874).
Regarding claims 10 and 14, Deng discloses controlling the switching element based on the amount of light falling on the photodiodes as described above. With regard to the limitations of claims 10 and 14, Deng fails to teach switching to connect a battery to another circuit and wherein the battery is disconnected from said another circuit while said packaging remains intact.
However, Shelton teaches a method for treating tissue wherein, when a photosensor is exposed to light, it triggers a power source to begin providing power to a packaging unit’s communications interface. The photosensor is disposed in the packaging unit and is not exposed to light with the packaging unit unopened. This process helps the unit move from a low power mode to a high power mode when the packaging is opened (Paragraph 0502). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to connect a power source to the rest of the unit as taught by Shelton to move the unit from a low power mode to a high power mode.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) as applied to claim 8 above, and further in view of Biederman (US 20180042538).
Regarding claim 11, Deng fails to disclose the wake-up circuit used in a blood glucose monitoring unit.
However, Biederman teaches a biosensor for measuring glucose having a wake-up circuit (Fig. 4) wherein, when the wake-up circuit is activated, the battery is connected to a sensor element (Paragraph 0034). Including such a circuit is useful to save battery while in a package on a shelf (Paragraph 0002). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to be used in a glucose monitor as taught by Biederman to save battery of the glucose monitor prior to use.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) and Shelton (US 20220313874) as applied to claim 10 above, and further in view of Yoshida (US 8514165).
Regarding claim 13, Deng as modified discloses the circuit used in a product with packaging as described above. Deng as modified fails to disclose manipulating the current with current mirrors.
However, Yoshida teaches a photoelectric conversion device 101 with a photoelectric conversion element 115 used for an optical sensor which includes current mirror circuit 114 (Fig. 1A), which are useful for amplifying the current obtained from the photoelectric conversion element (Col 30, lines 17-29). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng as modified by Shelton to incorporate the current mirror circuit of Yoshida to amplify the current obtained from the photoelectric conversion element.
Claims 15, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) and Biederman (US 20180042538).
Regarding claim 15, Deng discloses a wake-up circuit which includes a switch (Fig. 2, switch array 7) and a detector which (Fig. 2, photodiode 1), responsive to incident light above a threshold level (Page 4, paragraph 5, “The output current of the second photodiode (2) is only dark current. the ratio of the cross-resistance gain of the first transimpedance amplifier (41) and the cross-resistance gain of the second transimpedance amplifier (42) is equal to the ratio of the photosensitive area of the first photodiode (1) and the photosensitive area of the second photodiode (2)”), closes the switch (Page 4, paragraph 5, “the differential amplifier (5) amplifies the difference value of the output voltage of the first transimpedance amplifier (41) and the second transimpedance amplifier (42) as the voltage signal, the voltage signal is used for controlling the switch array (7)”).
Deng fails to disclose wherein the switch connects a battery to an additional circuit.
However, Biederman teaches a biosensor for measuring glucose having a wake-up circuit (Fig. 4) wherein, when the wake-up circuit is activated, the battery is connected to a sensor element (Paragraph 0034) through an activator such as a DC-DC converter or a processor (Paragraph 0037). Including such a circuit is useful to save battery while in a package on a shelf (Paragraph 0002). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to be used in a glucose monitor as taught by Biederman to save battery of the glucose monitor prior to use.
Regarding claims 16 and 20, Deng discloses a method for implementing an optical wake-up circuit comprising the steps of receiving light incident on a first photodiode of said wake-up circuit (Fig. 2, photodiode 1), masking a second photodiode of said wake-up circuit to substantially prevent reception of light thereon (Page 4, paragraph 5, “the photosensitive surface of the second photodiode (2) performs metal covering process to make it not receive the ambient light”), determining a differential between the current of the first photodiode and the current of the second photodiode, a switching element, wherein said first photodiode receives light incident on the circuit and said second photodiode is masked to substantially prevent its reception of said light (Page 4, paragraph 5, “The output current of the second photodiode (2) is only dark current. the ratio of the cross-resistance gain of the first transimpedance amplifier (41) and the cross-resistance gain of the second transimpedance amplifier (42) is equal to the ratio of the photosensitive area of the first photodiode (1) and the photosensitive area of the second photodiode (2)”), and controlling a switching element based on the differential to (Page 4, paragraph 5, “the differential amplifier (5) amplifies the difference value of the output voltage of the first transimpedance amplifier (41) and the second transimpedance amplifier (42) as the voltage signal, the voltage signal is used for controlling the switch array (7)”).
Deng fails to disclose controlling a power supply in a blood glucose monitoring unit to power the load element.
However, Biederman teaches a biosensor for measuring glucose having a wake-up circuit (Fig. 4) wherein, when the wake-up circuit is activated, the battery is connected to a sensor element (Paragraph 0034) through an activator such as a DC-DC converter or a processor (Paragraph 0037). Including such a circuit is useful to save battery while in a package on a shelf (Paragraph 0002). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to be used in a glucose monitor as taught by Biederman to save battery of the glucose monitor prior to use.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) and Biederman (US 20180042538) as applied to claim 16 above, and further in view of Shimizu (US 20100218204).
Regarding claim 17, Deng as modified discloses wherein the switch is controlled by a change/differential between two voltage values. Deng fails to disclose a capacitor.
However, Shimizu teaches a light receiving device wherein a capacitor is arranged with one terminal set to a fixed electric potential and is charged by a photocurrent generated by the light receiving device (Paragraph 0049) such that when the capacitor reaches a threshold voltage between both terminals (Paragraph 0021), a switch is controlled (Paragraph 0062). A method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been motivated to apply measuring a threshold voltage across a capacitor to the base circuit with two photodiodes of Deng in the prior art and the results of controlling a switch with said threshold voltage would have been predictable to one of ordinary skill in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng modified by Biederman to incorporate the capacitor of Shimizu and the results of controlling a switch with a threshold voltage would have been predictable to one of ordinary skill in the art.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) and Biederman (US 20180042538) as applied to claim 16 above, and further in view of Yoshida (US 8514165).
Regarding claim 18, Deng as modified discloses the circuit used as described above. Deng as modified fails to disclose manipulating the current with current mirrors.
However, Yoshida teaches a photoelectric conversion device 101 with a photoelectric conversion element 115 used for an optical sensor which includes current mirror circuit 114 (Fig. 1A), which are useful for amplifying the current obtained from the photoelectric conversion element (Col 30, lines 17-29). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng and Biederman to incorporate the current mirror circuit of Yoshida to amplify the current obtained from the photoelectric conversion element.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Deng (CN 114166343) and Biederman (US 20180042538) as applied to claim 16 above, and further in view of Shelton (US 20220313874).
Regarding claim 19, Deng discloses controlling the switching element based on the amount of light falling on the photodiodes as described above. With regard to the limitations of claims 10 and 14, Deng fails to teach switching to connect a battery to another circuit and wherein the battery is disconnected from said another circuit while said packaging remains intact.
However, Shelton teaches a method for treating tissue wherein, when a photosensor is exposed to light, it triggers a power source to begin providing power to a packaging unit’s communications interface. The photosensor is disposed in the packaging unit and is not exposed to light with the packaging unit unopened. This process helps the unit move from a low power mode to a high power mode when the packaging is opened (Paragraph 0502). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of Deng to connect a power source to the rest of the unit as taught by Shelton to move the unit from a low power mode to a high power mode.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH MICHAEL HEALY whose telephone number is (703)756-5534. The examiner can normally be reached Monday - Friday 8:30am - 5:30pm ET.
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/NOAH M HEALY/Examiner, Art Unit 3791
/JASON M SIMS/Supervisory Patent Examiner, Art Unit 3791
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