FINAL OFFICE ACTION
Claims 1-20 were pending in this broadening reissue of U.S. Patent No. 11,029,757 (hereinafter “the '757 patent” issued from application no. 16/729,929. In response to non-final action mailed 4/30/2026 applicant submitted a response on 7/16/2026 amending claims 1, 3, 7, 9, 11, 15-16, and 18 and cancelling claims 4, 12, and 19. Accordingly, claims 1-3, 5-11, 13-18, and 20 are currently pending.
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.
Response to Arguments
Applicant has amended independent claims 1 and 9, and the means plus function claim elements are now consistent with the configuration shown in Fig. 4 of the ‘757 patent. Additionally, the previously omitted limitations: 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 with respect to claims 1, 9, and 16 have been reverted back in the claims. Accordingly, the rejections of claims 1-20 under 112 1st, 2nd and 251 (original patent) is hereby withdrawn. However, new 112 2nd paragraph rejections are included below.
Additionally, the double patenting rejection has not been rebutted and therefore maintained.
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 recited in independent claims 1 and 9:
a magnetic field generator…configured to generate a magnetic field that is fixed in relation to the device
a magnetic flux sensor…configured to (1) generate a demodulated signal based on detecting the modulated magnetic field at the particular location, (2) detect a strength and a direction of the demodulated signal, and (3) generate an output signal based on the detected strength and the detected direction of the demodulated signal.
an inertial measurement unit (IMU)…configured to generate a signal for an angular orientation of the magnetic flux sensor
hy
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 the magnetic flux sensor…
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.
Figure 4 of the ‘757 patent illustrates the corresponding structure of the claimed components: magnetic field generator, plurality of magnetic flux sensor, inertial measurement unit, and position analyzer. See also corresponding flow chart in Fig 5 which illustrates additional corresponding structure for performing the corresponding claimed functions:
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(Figure 4 of the ‘757 patent)
Additionally, the corresponding structure for inertial measurement unit is described as “The additional sensors 425 may include inertial sensors such as accelerometers and gyroscopes” (‘757 patent Col. 9:49-50).
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 9-20 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 claim 9, in the amendment submitted 7/16/2026, “a plurality of magnetic flux sensors” was amended to recite the singular “a magnetic flux sensor”. However, claim 9 line 5, recites “sensors” and should be amended to recite “sensor” to fix the antecedent basis issues.
Additionally, the last line of claim 9 was amended as follows:
…generated by the [one or more IMU[s]. There appears to be a missing bracket and should be recited as …generated by the [one or more] IMU[s].
Regarding independent claim 16, in line 11 “magnetic flux sensors” should be recited as “magnetic flux sensor” to fix antecedent basis issues.
Additionally with respect to claim 16, the claim recites:
detecting by a magnetic flux sensor located at a particular location on the device that corresponds to a portion of a body of a user of the device located at a predetermined position relative to the device, the modulated magnetic field…
determining further positional information for the magnetic flux sensor located on the particular location on the body of the user based on the generated signal by the IMU.
These sections of claim 16 appear to be contradictory as to the location of the magnetic flux sensor. First, the magnetic flux sensor is at a location on the device that corresponds to body part of a user, whereas the determining step indicates that the magnetic flux sensor is located on the particular location on the body of the user. There is no antecedent basis for on the particular location on the body of the user. Appropriate correction is required.
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).
Allowable Subject Matter
Independent claims 1, 9, and 16 are rejected under 112 and double patenting, but would be allowable upon overcoming these rejections. The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to disclose, teach, or suggest, generating by an inertial measurement unit IMU, a signal for an angular orientation of the magnetic flux sensor and determining further positional information for the magnetic flux sensor based on the generated signal by the IMU. Additionally, independent claims 1 and 9 recite means-plus-function limitations with corresponding structure/configuration shown in figures 4 and 5 of the ‘757 patent, which the prior art fails to teach.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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/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
Prosecution Insights