Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
Applicant is reminded of the continuing obligation under 37 CFR § 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which US Pat. No. 11,253,203 (“the ‘203 patent”) is or was involved. These proceedings would include interferences, reissues, reexaminations and litigations.
Applicant is further reminded of the continuing obligation under 37 CFR § 1.56 to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
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.
Maintenance Fees
Review of the file indicates that applicant’s window for the 3.5 year maintenance fee without surcharge opened 22 February 2025 and will close 22 August 2025. Payment of the maintenance fee with surcharge begins 23 August 2025 and will close 22 February 2026. If the last day for paying a maintenance fee with or without surcharge falls on a Saturday, Sunday, or a federal holiday within the District of Columbia, the fee plus surcharge if applicable may be paid on the next succeeding day which is not a Saturday, Sunday or federal holiday. Applicant is encouraged to ensure all payments are current and proper. See 37 CFR §1.362(d) and (e).
Non-Elected Invention(s) or Non-Claimed Subject Matter
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). See also MPEP 1412.01 II.
In this case, in the original 14/288,259 application (“the ‘259 application”) resulting in the ‘203 patent, the examiner mailed a restriction requirement (05/18/2017) requiring a selection of invention and a further selection of species as shown below.
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See Requirement for Restriction/Election mailed 05/18/2017, pp. 2-4. Applicant in their response filed 07/18/2017 elected Invention I and species A to the wire connection. At the time, claims 1, 6 and 13 were deemed to be generic. See Id., p. 5 and Response to Election/Restriction filed 07/18/2017, p. 1.
Now in this reissue proceeding, applicant has added new claim 34 which is directed to an object having a grid fabric which is not the originally elected species. Instead, the grid fabric is included as part of the embodiment of the crack or opening separating structure. See Fig. 7(h) and col. 17, l. 35 through col. 18, l. 48.
Accordingly, claim 34 is rejected under 35 USC 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent.
Recapture
Claims 1-33, 35-36 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
As stated in M.P.E.P. § 1412.02,
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
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We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
In North American Container, the court cited Pannu, 258 F.3d at 1371, 59 USPQ2d at 1600; Hester, 142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and Clement, 131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that lead to, and explain the language in, the North American Container recapture test.
Claims: 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36
Step 1: Independent claim 1 and thereby dependent claims 2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36 are broader than original patent claims 1-2, 4-5, 8-10, 12-13 and 16-18. Amended claim 1 now includes “at least one of” said at least two electrodes thereby changing the electrodes separated from the textile from two to one. Additionally, amended claim 1 no longer includes the claim term “fabric” and no longer includes the claim term “non-conductive” both of which were part of original patent claim 1.
Therefore step 1 of the three-step test is met for claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36.
Step 2: “at least two electrodes being separated electrodes”
In the prosecution of the ‘259 application, independent claim 21 (resulting in patented claim 1) had throughout prosecution included the claim limitation of “at least two electrodes” and language indicating that at least one of the two is separated from the textile. See amendments to the claims filed 03/15/2018; 09/18/2018; 10/18/2018; 04/11/2019; 06/05/2020 and 03/01/2021. Additionally, this limitation was included in the after-final amendment filed 09/03/2021. In the Notice of Allowance (NOA) mailed 10/04/2021, the examiner dropped the limitation of “at least one separated electrode” in the examiner’s amendment; however, the interview summary indicated that the claims were “allowable as per the previous rejection (Final Rejection on 06/09/2021).” Additionally, the NOA indicated that the examiner’s amendment included the claims under the AFCP submission. Nothing on the record indicates why the “at least one separated electrode” was dropped from claim 21. Therefore, applicant did not rely upon at least two electrodes being separated electrodes from the textile in order to gain allowance of the claims. Therefore, “at least two electrodes are separated electrodes” is not considered a subject matter surrendering limitation and does not provoke impermissible recapture.
Step 2: “fabric” and “non-conductive”
In the prosecution of the ‘259 application, applicant relied upon “fabric” in order to gain allowance of the claims; this limitation is not included or partially included in the amended or new claims submitted for reissue.
In this case, the examiner had indicated that dependent claim 28 contained allowable subject matter and stated in the 11/27/2020 non-final office action,
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Applicant in their response filed 03/01/2021, relied upon the claim term “fabric” in order to overcome the prior art rejection over US Pat. No. 5,445,149 to Rotolo. Specifically, applicant stated,
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Additionally, in the interview conducted on 02/09/2021, the examiner indicated that including “non-conductive wire” would overcome the prior art rejection of record. In their response filed 03/01/2021, applicant incorporated “non-conductive wire” into claim 21.
Subsequent to this amendment, the previous prior art rejections were withdrawn. As stated in the final office action mailed 06/09/2021 on page 13,
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The claim language removed from claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36 which resulted in the broadening of claims 1-2, 4-5, 8-10, 12-13 and 16-18 is the exact claim language or related claim language of the surrendered subject matter by applicant.
Therefore, step 2 of the three-step test is met for claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36.
Step 3: It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. It must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
With respect to the claim term “fabric”, claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36 have been amended to instead recite the term “material.”
During the prosecution of the ‘203 patent, the Applicant specifically argued that the prior art did not disclose smooth fabric. Therefore, the Applicant is not permitted to remove this limitation without invoking impermissible recapture.
With respect to the claim term “non-conductive,” this limitation has been entirely removed from the claim.
Therefore, step 3 of the three-step test is met for claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36.
The omission of both “fabric” and “non-conductive” from claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36 invokes impermissible recapture of surrendered subject matter as detailed above by the three step test. Therefore, claims 1-2, 4-5, 8-10, 12-13, 16-18, 23-26, 28-29, 31 and 35-36 are rejected under 35 U.S.C. 251 as indicated above.
Claims: 11, 19, 22 and 32-33
Step 1: Independent claim 11 and thereby dependent claims 19, 22 and 32-33 are broader than original patent claim 11. Amended claim 11 no longer includes the claim terms “arranged at a position between the textile and a skin surface;” “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface;” and “when the first surface of the at least one separated electrode is not in contact with the skin surface” which was part of original patent claim 11. Additionally, amended claim 11 now includes the alternate claim term “or beside” which was not part of original patent claim 11 and results in a broadening of the claim.
Therefore step 1 of the three-step test is met for claims 11, 19, 22 and 32-33.
Step 2: “arranged at a position between the textile and a skin surface”
In the prosecution of the ‘259 application, applicant did not rely upon “arranged at a position between the textile and a skin surface” directly in order to gain allowance of the claims. Therefore, “arranged at a position between the textile and a skin surface” is not considered a subject matter surrendering limitation and does not provoke impermissible recapture.
Step 2: “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface”
In the prosecution of the ‘259 application, applicant relied upon “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface” in order to gain allowance of the claims; this limitation is not included or partially included in the amended or new claims submitted for reissue. In the amendment filed by applicant on 03/15/2018, applicant presented new claim 21 with this limitation and argued on pages 9-12 of their response stating,
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Hence, the claim limitation of “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface;” removed from claims 11, 19, 22 and 32-33 which resulted in the broadening of claims 11, 19, 22 and 32-33 is the exact claim language or related claim language of the surrendered subject matter by applicant.
Step Two: “when the first surface of the at least one separated electrode is not in contact with the skin surface”
In the prosecution of the ‘259 application, applicant did not rely upon “when the first surface of the at least one separated electrode is not in contact with the skin surface” directly in order to gain allowance of the claims. Therefore, “when the first surface of the at least one separated electrode is not in contact with the skin surface” is not considered a subject matter surrendering limitation and does not provoke impermissible recapture.
Step Two: “or besides”
In the prosecution of the ‘259 application, applicant did not rely upon the location of the permanent magnetic substance in order to gain allowance of the claims. Therefore, adding “or besides” does not provoke impermissible recapture.
Therefore, step 2 of the three-step test is met for claims 11, 19, 22 and 32-33 regarding the limitation of “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface.”
Step 3: It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. It must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
During the prosecution of the ‘203 patent, applicant specifically argued that the prior art did not disclose “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface.” Therefore, applicant is not permitted to remove this limitation without invoking impermissible recapture.
Therefore, step 3 of the three-step test is met for claims 11, 19, 22 and 32-33.
Claims: 20-21, 27 and 30
Step 1: New independent claim 20 and thereby dependent claims 21, 27 and 30 are broader than either of original patent claims 1 or 11. New claim 20 does not include the claim terms of either patent claim 1 or 11 as indicated below.
Limitations missing from new claim 20 that occur in patented claim 1:
“and constructed with a first surface and a second surface;”
“a smooth fabric arranged between a first surface of the textile and the second surface of the separated electrode;”
“a first non-conductive wire connecting the at least one separated electrode and the smooth fabric, and a second non-conductive wire connecting the smooth fabric and the textile, wherein said first non-conductive wire is configured to suspend the at least one separated electrode from the first surface of the textile;” and
“when the at least one separated electrode is pressed by the wearer’s body.”
Limitations missing from new claim 20 that occur in patented claim 11:
“arranged at a position between the textile and a skin surface;”
“and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface;”
“and configured to suspend the at least one separated electrode from the first surface of the textile when the first surface of the at least one separated electrode is not in contact with the skin surface;” and
“wherein the at least one separated electrode itself is of permanent magnetic substance or permanent magnetic substance is installed outside the at least one separated electrode; the textile opposite to the at least one separated electrode is also provided with the permanent magnetic substance, where magnetic poles of the permanent magnetic substance of the at least one separated electrode and the permanent magnetic substance of the textile are same such that the at least one separated electrode is repelled by magnetic force to move toward skin.”
Therefore step 1 of the three-step test is met for claims 20-21, 27 and 30.
Step 2: “and constructed with a first surface and a second surface” (claim1) or “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface” (claim 11)
Regarding the limitations of “and constructed with a first surface and a second surface” (claim1) or “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface” (claim 11), applicant relied upon these limitations in order to gain allowance of the claims; this limitation is not included or partially included in the amended or new claims submitted for reissue. In the amendment filed by applicant on 03/15/2018, applicant presented new claim 21 with this limitation and argued on pages 9-12 of their response stating,
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Hence, the claim limitations of “and constructed with a first surface and a second surface” (claim1) or “and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface” (claim 11) removed from claims 20-21, 27 and 30 which resulted in the broadening of claims 20-21, 27 and 30 is the exact claim language or related claim language of the surrendered subject matter by applicant.
Step 2: “a smooth fabric arranged between a first surface of the textile and the second surface of the separated electrode” (claim 1); “a first non-conductive wire connecting the at least one separated electrode and the smooth fabric, and a second non-conductive wire connecting the smooth fabric and the textile, wherein said first non-conductive wire is configured to suspend the at least one separated electrode from the first surface of the textile” (claim 1); and “and configured to suspend the at least one separated electrode from the first surface of the textile when the first surface of the at least one separated electrode is not in contact with the skin surface” (claim 11)
In the prosecution of the ‘259 application, applicant relied upon both “a smooth fabric arranged between a first surface of the textile and the second surface of the separated electrode” (claim 1); “a first non-conductive wire connecting the at least one separated electrode and the smooth fabric, and a second non-conductive wire connecting the smooth fabric and the textile, wherein said first non-conductive wire is configured to suspend the at least one separated electrode from the first surface of the textile” (claim 1); and “and configured to suspend the at least one separated electrode from the first surface of the textile when the first surface of the at least one separated electrode is not in contact with the skin surface” (claim 11) in order to gain allowance of the claims; this limitation is not included or partially included in the amended or new claims submitted for reissue.
In this case, the examiner had indicated that dependent claim 28 contained allowable subject matter and stated in the 11/27/2020 non-final office action,
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Applicant in their response filed 03/01/2021, relied upon the claim term “a smooth fabric arranged between a first surface of the textile and the second surface of the separated electrode” in order to overcome the prior art rejection over US Pat. No. 5,445,149 to Rotolo. Specifically, applicant stated,
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In the response filed 09/18/2018, applicant amended claim 21 to include “a connecting wire between the textile and the at least one separated electrode, and configured to suspend the at least one separated electrode from the first surface of the textile.” Applicant further stated,
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Additionally, in the after final amendment filed 09/03/2021, applicant amended claim 21 to include: “a first non-conductive wire connecting the at least one separated electrode and the smooth fabric, and a second non-conductive wire connecting the smooth fabric and the textile.” Applicant relied upon the examiner’s indication of allowable subject matter and stated,
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Step 2: “when the at least one separated electrode is pressed by the wearer’s body” (claim 1)
In the prosecution of the ‘259 application, applicant did not rely upon “when the at least one separated electrode is pressed by the wearer’s body” (claim 1) directly in order to gain allowance of the claims. Therefore, “when the at least one separated electrode is pressed by the wearer’s body” is not considered a subject matter surrendering limitation and does not provoke impermissible recapture.
Step 2: “arranged at a position between the textile and a skin surface” (claim 11)
In the prosecution of the ‘259 application, applicant did not rely upon “arranged at a position between the textile and a skin surface” (claim 11) directly in order to gain allowance of the claims. Therefore, “arranged at a position between the textile and a skin surface” is not considered a subject matter surrendering limitation and does not provoke impermissible recapture.
Step 2: “wherein the at least one separated electrode itself is of permanent magnetic substance or permanent magnetic substance is installed outside the at least one separated electrode; the textile opposite to the at least one separated electrode is also provided with the permanent magnetic substance, where magnetic poles of the permanent magnetic substance of the at least one separated electrode and the permanent magnetic substance of the textile are same such that the at least one separated electrode is repelled by magnetic force to move toward skin” (claim 11)
Regarding the limitations of “wherein the at least one separated electrode itself is of permanent magnetic substance or permanent magnetic substance is installed outside the at least one separated electrode; the textile opposite to the at least one separated electrode is also provided with the permanent magnetic substance, where magnetic poles of the permanent magnetic substance of the at least one separated electrode and the permanent magnetic substance of the textile are same such that the at least one separated electrode is repelled by magnetic force to move toward skin” (claim 11), applicant relied upon these limitations in order to gain allowance of the claims; this limitation is not included or partially included in the amended or new claims submitted for reissue.
In the amendment filed 04/11/2019, applicant presented new claim 47,
47. (New) The object of claim 21, wherein the at least one separated electrode itself is of permanent magnetic substance or permanent magnetic substance is installed outside the at least one separated electrode the textile opposite to the at least one separated electrode is also provided with the permanent magnetic substance, where magnetic poles of the permanent magnetic substance of the at least one separated electrode and the permanent magnetic substance of the textile are same such that the at least one separated electrode is repelled by magnetic force to move toward skin.
The examiner then stated in an interview summary (05/01/2020) that
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In the subsequent amendment filed 06/05/2020, applicant then made dependent claim 47 independent. Claim 47 resulted in patented independent claim 11.
Therefore, step 2 of the three-step test is met for claims 20-21, 27 and 30.
Step 3: It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. It must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
During the prosecution of the ‘203 patent, applicant specifically argued that the prior art did not disclose the limitations as listed below.
Limitations missing from new claim 20 that occur in patented claim 1:
“and constructed with a first surface and a second surface;”
“a smooth fabric arranged between a first surface of the textile and the second surface of the separated electrode;”
“a first non-conductive wire connecting the at least one separated electrode and the smooth fabric, and a second non-conductive wire connecting the smooth fabric and the textile, wherein said first non-conductive wire is configured to suspend the at least one separated electrode from the first surface of the textile;” and
Limitations missing from new claim 20 that occur in patented claim 11:
“and constructed with a first surface, the at least one separated electrode is also constructed with a second surface opposite to the first surface;”
“and configured to suspend the at least one separated electrode from the first surface of the textile when the first surface of the at least one separated electrode is not in contact with the skin surface;” and
“wherein the at least one separated electrode itself is of permanent magnetic substance or permanent magnetic substance is installed outside the at least one separated electrode; the textile opposite to the at least one separated electrode is also provided with the permanent magnetic substance, where magnetic poles of the permanent magnetic substance of the at least one separated electrode and the permanent magnetic substance of the textile are same such that the at least one separated electrode is repelled by magnetic force to move toward skin.”
Therefore, applicant is not permitted to remove these limitations from original claim 1 or original claim 11 without invoking impermissible recapture.
Therefore, step 3 of the three-step test is met for claims 11, 19, 22 and 32-33.
Claim Objections
Claim 20 is objected to because of the following informalities: the claim recites “wherein at least one of said at least two one electrodes.” The occurrence of “two one electrodes” seems to be a typographical error. Appropriate correction is required.
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 25 is 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. The original patent disclosure at col. 43, ll. 16-52 does not disclose that “the body movement can be estimated by analyzing the signals or the noise of the sensor.”
Claims 28-29 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. The original patent disclosure does not include passage through the smooth material in the same embodiment as the wire connection embodiment that was originally elected. Therefore, dependent claim 28 combines these embodiments which is not supported by the original patent disclosure.
Claims 32-33 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. The original patent disclosure at col. 37, ll. 30-57 does not disclose a second textile.
Claim 35 is 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. The original patent disclosure at col. 33, l. 64 through col. 34, l. 26 does not disclose that “the electrode accounting for 1% to 100 % of the conductive area.” Rather the disclosure states that “the conductive material accounts for 1% to 100 % of the conductive area.”
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 1-2, 4-5, 8-13, 16-33 and 35-36 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.
The limitations of “the electrode can contact the human body still and be fixed” (claim 20) and “the control box is promoted the electrode or the temperature of the around textile by the heating element or heat the electrode or the around textile, said control box can promote the electrode or the temperature of the around textile by the heating element or heat the electrode or the around textile, so that the human body or the electrode surface temperature rises to reduce the impedance between the electrode and the human body” (claim 27) are generally narrative and indefinite, failing to conform with current U.S. practice. These phrases appear to be a literal translation into English from a foreign document and contain grammatical and idiomatic errors.
The term “good” in claims 1, 11, 20 and 25 is a relative term which renders the claims indefinite. The term “good” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The terms “parallel or vertical” in claim 2are relative terms which render the claim indefinite. The term “parallel or vertical” cannot be with respect to the smooth material since the braid “passes through the smooth material,” the specification does not provide how the braid can be parallel or vertical when it passes through the material.
Regarding claim 36, the phrase "and the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "and the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claims 21-22 and 35, the claims recite the trade name “Velcro.” The use of the trade name in the claim renders the claim scope uncertain since the trade name cannot be used to describe any particular material or product and constitutes an improper use of the trade name. It is suggested the claim be amended to recite “hook and loop.”
Regarding claim 36, the claim recites the trade name “Teflon.” The use of the trade name in the claim renders the claim scope uncertain since the trade name cannot be used to describe any particular material or product and constitutes an improper use of the trade name. It is suggested the claim be amended to delete “Teflon” or recite amended to incorporate a generic term used in the specification.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 22 recites the removal of the electrode of independent claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 28 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 28 recites the removal of the first wire of independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 31 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 31 recites the removal of “picking up ECG (electrocardiogram)” of independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 20-21 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pub. No. 2009/0227856 A1 to Russell et al. (“Russell”) in view of US Pub. No. 2008/0287770 A1 to Kurzweil et al. (“Kurzweil”).
Regarding claim 20, Russell teaches an object for detecting heartbeat (see para. [0001] stating, “The present invention relates generally to a sensor for detecting electrocardiogram signals, and particularly, although not exclusively, to electrocardiogram sensors integrated into a garment.”), comprising: a textile (see para. [0036] stating, “The garment may be any suitable item of clothing or exercise accessory such as a t-shirt, shirt, singlet, tank-top, or band but is preferably worn on the user's torso.”), at least two electrodes for picking up ECG signals (see para. [0037 stating, “at least two electrodes may be provided and placed against a user's skin in order to detect an ECG signal. A pair of electrodes, with one on each side of the heart, may measure the activity of different parts of the heart muscle.”), wherein at least one of said at least two electrodes is a separated electrode that is separated from the textile (see Fig. 1a) and at least one connecting wire connected with the textile and the separated electrode (see Fig. 1b), and wherein when the human body and the textile move relatively (see para. 0038 stating, “As the garment 2 moves relative to the skin 10, the shear movement allowed by the resilient compressible filler 6, in combination with the compression provided by the resilient compressible filler 6, may hold the electrode 8 in one place against the user's skin 10. The electrode 8 has shear isolation from the movement of the garment 2. The friction between the electrode 8 and the skin 10 also help to avoid electrode-skin relative movement.”), the separated electrode can slide or roll on the textile (see para. 0038 stating, “The top of the springs 12 may be able to move horizontally relative to the bottom of the springs 12, for example if a sideways force is placed on the electrode 8.”); or wherein the electrode can contact with the human body still and be fixed so as to receive the signals rather than generating noise (claimed in the alternate therefore already met by the previous limitation).
Russell meets the claim limitations as described above but does not explicitly disclose “wherein a non-slip bar or non-slip fabric is selectively added on the electrode or the textile so as to reduce the relative movement between the electrode and the skin.” However, Russell does state in para. [0038] that, “[t]he friction between the electrode 8 and the skin 10 also help to avoid electrode-skin relative movement;” and at para. [0040],
[0040] Referring to FIG. 3, a third preferred embodiment ECG sensor comprises a resilient compressible filler 6 with a castellated cross-section with many independent surfaces 6a. A single electrode 8 may cover the entire surface of the resilient compressible filler 6. Alternatively, many independent electrodes 8 may be provided on the independent surfaces 6a of the resilient compressible filler 6. As there are many independent surfaces 6a of resilient compressible filler 6 compressed into the skin 10, there is a higher chance that at least one independent surface 6a will be in good contact with the skin 10 at all times. In this third preferred embodiment, the sharp edges of the independent surfaces 6a may dig into the skin 10 in a similar manner as described for the second preferred embodiment. As there are more surfaces 6a abutting the skin 10, more friction may be provided between the electrode 8 and the skin 10 to prevent electrode-skin relative movement further. Any suitable resilient compressible filler 6 shape may be used. (emphasis added)
Additionally, Kurzweil teaches an object for detecting heartbeat (Harness with Sensors), comprising: a textile (harness), at least two electrodes (sensors 30a-30e) for picking up ECG signals (see para. [0018]), wherein at least one of said at least two one electrodes is a separated electrode that is separated from the textile (see embodiments of Figs. 11 and 12),wherein a non-slip fabric (see 159a in Fig. 14B) is selectively added on the electrode or the textile so as to reduce the relative movement between the electrode and the skin (see para. [0087] stating, “Referring to FIGS. 14A, 14B, a ring of material 159a could be placed around the sensing material 156 to provide one or two functions: to prevent the sensor from sliding by providing a high-friction material”).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to incorporate the non-slip fabric of Kurzweil into the invention of Russell. Both references are directed to wearable sensors for detecting ECG signals of a user; therefore, the combination is proper. Additionally, both references have the same objective of providing an electrode that has low relative movement with respect to the skin. Incorporating the non-slip fabric of Kurzweil into the invention of Russell would also achieve predictable results in that the electrode would continue to functions as described by Russell and the incorporation would result in enhancing the contact between the electrode and the skin as taught by Kurzweil.
Regarding claim 21, Kurzweil teaches that the object of claim 20 further includes wherein the non-slip fabric can be rubber (see para. [0087]) and the non-slip fabric can be used as the electrode (see the embodiments of Figs. 13A-13D).
Claims 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Russell in view of Kurzweil in further view of US Pub. No. 2013/0066168 A1 to Yang et al. (“Yang”).
Russell in view of Kurzweil meet the claim limitations as described above for claim 20. Russell also teaches that the separated electrode (8) is in connection with a control box (electronics module 18).
Yang teaches “the conductive cloth can be used as treatment electrodes to generate TENS, heat or reduce temperature.” See Yang para. [0206].
At the time of the invention, it would have been obvious to one of ordinary skill in the art to incorporate the teaching of using the electrodes to heat as a treatment as taught by Yang. All three of Russell, Kurzweil and Yang are related in the field of electrodes and garments/cloth; therefore, a combination is proper. Additionally, the motivation to make the incorporation would have been in order to expand the application of the object as taught by Russell in view of Kurzweil thereby enhancing the functionality of the device.
Claim 30 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Russell in view of Kurzweil in further view of US Pat. No. 6,265,978 to Atlas (“Atlas”).
Russell in view of Kurzweil meet the claim limitations as described above for claim 20 but fails to teach a thermistor arranged within the electrode to detect temperature.
Atlas teaches a thermistor for detecting changes in temperature of a user’s skin. See claims 7 and 8.
At the time of the invention, it would have been obvious to incorporate the thermistor into the invention of Russell in view of Kurzweil. The motivation to make the incorporation would have been in order to expand the applica