NON-FINAL OFFICE ACTION
Claims 1-20 are pending in this broadening reissue of U.S. Patent No. 11,029,757 (hereinafter “the '757 patent” issued from application no. 16/729,929.
Non-Compliance with 37 C.F.R. 1.173
The amendment to the claims fails to comply with CFR 1.173 (c) which states:
(c) Status of claims and support for claim changes. Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.
Status identifiers for claims 2, 3, 5, 6, 8, 10, 11, 13, 14, 17, 18, and 20 have not been provided.
Additionally, Applicant provides the following explanation of support for the changes made to the claims:
Amended Claims 1, 4, 7, 9, 12, 15-16, and 19: Figure 4: Col. 9: 35-67, Col. 10: 1-67, and Col. 11: 1-7
However, this explanation provides insufficient support for the amended claims and needs additional explanation, as further discussed below. Applicant’s subsequent response must include an explanation of support for the claim amendments including limitations that have been omitted.
Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘757 patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Preliminary Amendment
Preliminary amendment filed 6/7/2023 has been entered and considered. Claims 1, 4, 7, 9, 12, 15-16, and 19 have been amended. Claims 1-20 are currently pending.
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.
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:
Regarding claim 1:
a magnetic field generator located at a predetermined position on the device, the magnetic field generator configured to generate a magnetic field that is fixed in relation to the device
a plurality of magnetic flux sensors located at particular locations on the device, the particular locations on different fingers of a user of the device, each magnetic flux sensor configured to detect a strength and a direction of a signal
one or more inertial measurement units (IMUs) each IMU being configured to generate a signal for an angular orientation of a particular magnetic flux sensor of the plurality of magnetic flux sensors…
a position analyzer configured to determine an indication of a position of each magnetic flux sensor relative to the magnetic field generator
the position analyzer configured to determine further positional information for at least some of the magnetic flux sensors located on the fingers of the user based on the signal generated by the one or more IMUs.
Regarding claim 9:
a magnetic field generator located at a predetermined position on the device, the magnetic field generator configured to generate a magnetic field that is fixed in relation to the device
a plurality of magnetic flux sensors located at particular locations on the device, the particular locations on a body of a user of the device, each magnetic flux sensor configured to detect a strength and a direction of a signal
one or more inertial measurement units (IMUs) each IMU being configured to generate a signal for an angular orientation of a particular magnetic flux sensor of the plurality of magnetic flux sensors…
a position analyzer configured to determine an indication of a position of each magnetic flux sensor relative to the magnetic field generator
the position analyzer configured to determine further positional information for at least some of the magnetic flux sensors located on the particular locations on the body of the user based on the signal generated by the one or more IMUs.
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.
The corresponding structure for inertial measurement units is described as “The additional sensors 425 may include inertial sensors such as accelerometers and gyroscopes” ‘757 patent Col. 9:49-50.
Figure 4 of the ‘757 patent illustrates the corresponding structure of the claimed components: magnetic field generator, plurality of magnetic flux sensors, inertial measurement unis, and position analyzer (see also corresponding flow chart in Fig 5) for performing their corresponding claimed functions:
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Figure 4 of the ‘757 patent shows the corresponding structure, but does not support the embodiment recited in claims 1 and 9. Figure 4 shows a magnetic flux sensor 410 located at a predetermined fixed position (on the wrist); a plurality of magnetic field generators (MG 420-1, 420-2, 420-n) located at on the user’s fingers; a position analyzer configured to determine an indication of a position of each magnetic field generator relative to the magnetic flux sensor 410.
Claims 1 and 9 recite an alternate embodiment where the magnetic field generator (MG 220) is at a fixed position (on the wrist) and the magnetic flux sensors (MS 210-1, 210-2, 210-3) are on the fingers; a position analyzer configured to determine an indication of a position of each magnetic flux sensor relative to the magnetic field generator. This embodiment is not supported in Figure 4, but is partially illustrated in Fig 2 shown below:
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While Figure 2 shows corresponding support for this configuration of sensors and generator recited in claims 1 and 9, this embodiment is not shown or supported with the structural components illustrated in Figure 4. Essentially, the embodiments discussed in the specification of the ‘757 in Figs 2 and 4 have been intermingled and combined as currently recited in claims 1 and 9, therefore resulting in an indefinite corresponding structure since it is unclear how the circuity shown in Figure 4 and flowchart in Fig. 5 would be modified to work with the glove sensor/generator configuration shown in Fig. 2.
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 first paragraph
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 1-20 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. Applicant points to Figure 4 as an explanation of support for the claims. However, Figure 4 of the ‘757 patent shows the corresponding structure of a magnetic flux sensor, and a plurality of magnetic field generators whereas the claims recite a magnetic field generator, and a plurality of magnetic flux sensors (embodiment of Fig. 2).
Figure 4 shows a magnetic flux sensor 410 located at a predetermined fixed position (on the wrist); a plurality of magnetic field generators (MG 420-1, 420-2, 420-n) located at on the user’s fingers; a position analyzer configured to determine an indication of a position of each magnetic field generator relative to the magnetic flux sensor 410.
Claims 1 and 9 recite an alternate embodiment where the magnetic field generator (MG 220) is at a fixed position (on the wrist) and the magnetic flux sensors (MS 210-1, 210-2, 210-3) are on the fingers; a position analyzer configured to determine an indication of a position of each magnetic flux sensor relative to the magnetic field generator. This embodiment is not supported in Figure 4, but is illustrated in Fig 2 shown below:
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While Figure 2 shows corresponding support for this configuration of sensors and generator recited in claims 1 and 9, this embodiment is not shown or supported with the structural components illustrated in Figure 4. The two separate embodiments discussed in the specification of the ‘757 in Figs 2 and 4 have been intermingled and combined as currently recited in claims 1 and 9, therefore resulting in new matter.
Additionally, with respect to independent claims 1, 9 and 16, the omission of a limitations directed to: generating a demodulated signal based on detecting the modulated magnetic field at the particular location, and generating an output signal based on the detected strength and the detected direction of the demodulated signal, and determining spatial vectors, raises the issue of new matter since the ‘757 patent specification does not show an embodiment that omits these steps.
Specifically with respect to method claim 16, the steps recited in the claim do not correspond with the flowchart in Figure 5 of the ‘757 patent.
Claim Rejections - 35 USC § 112 second paragraph
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.
The claim limitations of independent claims 1 and 9 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function as discussed above. Therefore, claims 1-15 are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Rejection Based on Original Patent Requirement
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP §1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
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(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
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(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362.1
Claims 1-20 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original patent.
Independent claim 1, 9, and 16 in this reissue application have been broadened by removing the requirement of generating a demodulated signal based on detecting the modulated magnetic field at the particular location, and generating an output signal based on the detected strength and the detected direction of the demodulated signal; and determining spatial vectors. However, the Examiner does not find an unequivocal disclosure in the ‘757 patent for this new invention that does not require the steps of generating signals and determining spatial vectors. For instance, the flowchart in Fig. 5 of the ‘757 patent requires these steps/functions. Thus, the Examiner is unable to find any unequivocal support for omitting these steps/functions.
Additionally, with respect to apparatus claims 1 and 9, as discussed above, the two separate embodiments discussed in the specification of the ‘757 in Figs 2 and 4 have been intermingled and combined as currently recited in claims 1 and 9. However, there is no unequivocal disclosure to combine the glove sensor/generator configuration of Figure 2 with the system shown in Figure 4 since the disclosure does not discuss how the circuity in Figure 4 would be modified to work with the alternate glove sensor/generator configuration of Figure 2.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,551,916. Although the conflicting claims are not identical, they are not patentably distinct from each other for the following reasons. The subject matter claimed in the instant application is merely broader and is fully disclosed in the more specific claims of patent No. 10,551,916. Since the more specific patented claims anticipate the broad claims of this instant application, the claims are not patentably distinct. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Cameron Saadat whose telephone number is (571)272-4443. The examiner can normally be reached M-F 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hetul Patel can be reached at (571) 272-4184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Cameron Saadat/Primary Examiner, Art Unit 3992
Conferees:
/Woo H Choi/
Primary Examiner, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).
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