DETAILED ACTION
Contents
I. Notice of Pre-AIA or AIA Status 5
II. Priority 5
III. Pertinent Prosecution History 6
IV. Reissue Requirements 6
V. Election/Restrictions 7
VI. Claim Status 12
VII. Information Disclosure Statement 13
VIII. Oath/Declaration 13
IX. Specification Objections 15
X. Claim Objections 15
XI. Drawing Objections 16
XII. Claim Interpretation 17
A. Lexicographic Definitions 18
B. 35 U.S.C. § 112 6th Paragraph 18
XIII. Claim Rejections – 35 U.S.C. § 112 19
A. 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 19
(1) New Matter/Written Description 19
B. 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph 23
XIV. Broadening of Examined Claims 30
A. Broadening of Examined Claims’ Limitations 30
(1) Method Claim 24 30
(2) Apparatus Claim 28 31
XV. Claim Rejections - 35 USC § 251 33
A. Oath/Declaration 33
B. New Matter 33
C. Broadening/Recapture 33
D. Original Patent Requirement 40
XVI. Claim Rejections – 35 U.S.C. § 103 43
A. Claims 1 and 12 are rejected under 35 U.S.C. 103 as obvious over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”)… 43
B. Claims 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Kim et al. (U.S. Publication No. 2008/0009685)(“Kim”). 49
C. Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Stivoric et al. (U.S. Publication No. 2005/0245839)(“Stivoric”). 52
D. Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Ungless et al. (U.S. Publication No. 2006/0235316)(“Ungless”). 53
E. Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Kortelainen (U.S. Publication No. 2010/0249628)(“ Kortelainen”). 55
F. Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Brauers et al. (U.S. Publication No. 2008/0208063)(“Brauers”). 57
G. Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Vu et al. (U.S. Publication No. 2010/0041973)(“Vu”). 59
H. Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Yeo et al. (U.S. Publication No. 2006/0009691) (“Yeo”) as applied to claims 1 and 12 above, and in further view of Meftah et al. (U.S. Publication No. 2010/0262026)(“Meftah”). 60
I. Claim 13, 16 and 19 are rejected under 35 U.S.C. 103 as obvious over Stivoric et al. (U.S. Publication No. 2005/0245839)(“Stivoric”) in view of Mazzarolo (U.S. Publication No. 2006/0155182) (“Mazzarolo”). 61
J. Claims 14, 17, 18, 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Stivoric et al. (U.S. Publication No. 2005/0245839)(“Stivoric”) in view of Mazzarolo (U.S. Publication No. 2006/0155182) (“Mazzarolo”) as applied to claims 13, 16 and 19 above, and in further view of Brauers et al. (U.S. Publication No. 2008/0208063)(“Brauers”). 65
K. Claim 24 is rejected under 35 U.S.C. 103 as obvious over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”) and Kim et al. (U.S. Publication No. 2008/0009685)(“Kim”)… 69
L. Claim 28 is rejected under 35 U.S.C. 103 as obvious over Akselrod et al. (U.S. Publication No. 2006/0235315) (“Akselrod”) in view of Shusterman (U.S. Publication No. 2011/0004110) (“Shusterman”). 73
XVII. Prior Art 76
XVIII. Conclusion 77
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Priority
Applicant filed the instant reissue application 18/220,018 (“‘018 Reissue Application”) on 10 July 2023 for U.S. Application No. 13/401,711 (“‘711 Application”), filed 21 February 2012, now U.S. Patent No. 11,331,197 (“‘197 Patent”), issued 26 April 2022, which is a continuation-in part of PCT Application No. PCT/CN2010/001252 (“‘252 PCT Application”), filed 18 August 2010, and PCT Application No. PCT/CN2009/000947 (“‘947 PCT Application”), filed 18 August 2009. However, in examination of the entirety of both the ‘252 PCT and ‘947 PCT Applications, the Examiner finds insufficient disclosure to any parameters of judgement criteria being stored in a database of body positions.
Thus, the Examiner concludes that for examination purposes: (1) claims 1-12, 24 and 28 of the instant ‘018 Reissue Application have an effective filing data of 21 February 2012, which is the filing date of the ‘711 Application; and (2) claims 13-19, 29 and 30 of the instant ‘018 Reissue Application have an effective filing data of 18 August 2009, which is the filing date of the ‘947 PCT Application.
Pertinent Prosecution History
As set forth supra, Applicant filed the application for the instant ‘018 Reissue Application on 10 July 2023. The Examiner finds that the instant ‘018 Reissue Application included a preliminary amendment (“July 2023 Preliminary Amendment”) to the claims (“July 2023 Claim Amendment”).
Reissue Requirements
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
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 ‘197 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, post-grant proceedings and litigation.
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.
The Examiner notes that Amendment practice for Reissue Applications is NOT the same as for non-provisional applications. See MPEP §§ 1413 and 1453. Reissue application amendments must comply with 37 CFR 1.173, while non-provisional application amendments must comply with 37 CFR 1.121. Particularly,
Manner of making amendments under 37 CFR 1.173:
All markings (underlining and bracketing) are made relative to the original patent text, 37 CFR 1.173(g) (and not relative to the prior amendment).
For amendments to the abstract, specification and claims, the deleted matter must be enclosed in brackets, and the added matter must be underlined. See 37 CFR 1.173(d).
For amendments to the drawings, any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings. See 37 CFR 1.173(d)(3).
The Examiner further notes that all amendments to the instant ‘018 Reissue Application must comply with 37 CFR 1.173(b)-(g).
Election/Restrictions
Applicable rules and regulations:
CFR 1.176 states (in pertinent parts):
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000].
MPEP § 1450 states (in pertinent parts):
37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims, where the added claims are directed to an invention which is separate and distinct from the invention(s) defined by the original patent claims. The criteria for making a restriction requirement in a reissue application between the newly added claims and the original claims are the same as that applied in a non-reissue application. See MPEP §§ 806 through 806.05(i). The authority to make a "restriction" requirement under 37 CFR 1.176(b) extends to and includes the authority to make an election of species.
Where a restriction requirement is made by the examiner, the original patent claims will be held to be constructively elected (except for the limited situation where a disclaimer is filed as discussed in the next paragraph). Thus, the examiner will issue an Office action in the reissue application (1) providing notification of the restriction requirement, (2) holding the added claims to be constructively non-elected and withdrawn from consideration, (3) treating the original patent claims on the merits, and (4) informing applicant that if the original claims are found allowable, and a divisional application has been filed for the non-elected claims, further action in the application will be suspended, pending resolution of the divisional application.
If a disclaimer of all the original patent claims is filed in the reissue application containing newly added claims that are separate and distinct from the original patent claims, only the newly added claims will be present for examination. In this situation, the examiner's Office action will treat the newly added claims in the reissue application on the merits. The disclaimer of all the original patent claims must be filed in the reissue application before the issuance of the examiner's Office action containing the restriction requirement, in order for the newly added claims to be treated on the merits. Once the examiner has issued the Office action providing notification of the restriction requirement and treating the patent claims on the merits, it is too late to obtain an examination on the added claims in the reissue application by filing a disclaimer of all the original patent claims, If reissue applicant wishes to have the newly added claims be treated on the merits, a divisional reissue application must be filed to obtain examination of the added claims. Reissue applicants should carefully note that once a disclaimer of the patent claims is filed, it cannot be withdrawn. It does not matter whether the reissue application is still pending, or whether the reissue application has been abandoned or issued as a reissue patent. For all these situations 37 CFR 1.176(b) states that the disclaimer cannot be withdrawn; the disclaimer will be given effect. Note that cancellation of all the original patent claims in the reissue application will not be effective as an alternative to disclaiming all the original patent claims, and 37 CFR 1.176(b) will not be waived to permit the same. This is because the patent owner can subsequently file a reissue continuation presenting the original patent claims.
Restriction between multiple inventions recited in the newly added claims will be permitted provided the added claims are drawn to several separate and distinct inventions. In such a situation, the original patent claims would be examined in the first reissue application, and applicant is permitted to file a divisional reissue application for each of the several separate and distinct inventions identified in the examiner's restriction requirement.
A situation will sometimes arise where the examiner makes an election of species requirement between the species claimed in the original patent claims and a species of claims added in the reissue application. (The filing of a reissue application to only add species claims that require all the limitations of an issued generic claim would not meet the requirements of 35 U.S.C. 251 - see MPEP § 1402; however, this situation can occur where there is another change to the patent being made, which does correct a 35 U.S.C. 251 "error." ) In such a situation, if (1) the non-elected claims to the added species depend from (or otherwise include all limitations of) a generic claim which embraces all species claims, and (2) the generic claim is found allowable, then the non- elected claims of the added species must be rejoined with the elected claims of the original patent. See MPEP § 821.04(a).
MPEP 1450.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12 and 24, drawn to a method for detecting a non-posture physiological function and or posture status of a user.
II. Claims 13, 14, 16-19, 29 and 30, drawn to an object for detecting a non-posture physiological function and or posture status of a user.
III. Claims 21-23, 26 and 27, drawn to an object for detecting a sensor function and a posture status.
IV. Claim 25, drawn to a method for detecting a non-posture physiological function and or posture status of a user.
V. Claim 28, drawn to an object for detecting a non-posture physiological function and or posture status of a user.
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the method/process as claimed can be: (1) practiced by another materially different apparatus such as either one of the products of Inventions II, III or V.
Inventions I and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the method/process as claimed can be practiced by another materially different apparatus such as either one of the products of Inventions II, III or V.
Inventions I and V are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the method/process as claimed can be practiced by another materially different apparatus such as either one of the products of Inventions II, III or IV.
Inventions I and IV are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design, mode of operation, function, or effect. Specifically, the Examiner finds that Invention I is actually providing at least two non-posture-posture physiological sensors to determine posture status of a user, whereas Invention IV is simply just providing at least electrodes, with one being a ground electrode, to determine posture status of a user. Furthermore, while the inventions in Group I and IV overlap in some aspects, the Examiner finds them distinct and further do not find any evidence in the record that shows they are obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Since no disclaimer of all the original patent claims 1-20 has been filed before the issuance of this Office action in the instant reissue application, the original patent claims 1-14 and 16-19, and new patent claims 24 and 28-30, will be held to be constructively elected by original presentation for prosecution on the merits, and the newly added claims 21-23 and 25-27 are withdrawn from consideration as being directed to a non-elected inventions. If applicant wishes to have the newly added claims be treated on the merits, a divisional reissue application must be filed to obtain examination of the added claims. Applicant is noted that if a divisional application is subsequently being filed to obtain examination of the non-elected claims, further action in the instant reissue application will be suspended, pending resolution of the divisional application. See CFR 1.176(b) and MPEP § 1450.
Claim Status
The Examiner finds that the claim status in the instant ‘018 Reissue Application is as follows:
Claim(s) 1-14 and 16-19 (Original)
Claim(s) 15 and 20 (Original and Canceled)
Claim(s) 24 and 28-30 (New)
Claim(s) 21-23 and 25-27 (New and Withdrawn)
Thus, the Examiner concludes that claims 1-14, 16-19, 24 and 28-30 are pending in the instant ‘018 Reissue Application. Claims 1-14, 16-19, 24 and 28-30 are examined (“Examined Claims”).
Information Disclosure Statement
The Applicants’ Information Disclosure Statement, filed 10 July 2023 (July 2023 IDS Statement”) has been received and entered into the record. Since the Information Disclosure Statement complies with the provisions of MPEP § 609, the references cited therein have been considered by the Examiner. See attached form PTO-1449.
Oath/Declaration
The Examiner finds that the Declaration filed by Applicant on 10 July 2023 (“July 2023 Oath/Declaration”) is defective because of the following:
The Examiner finds that the July 2023 Oath/Declaration filed by Applicant states,
Patentee believes U.S. Patent No.11,317, 197 to be wholly or partially inoperative or invalid by reasons of the patentee claiming lass than patentee had the right io claim in the patent. Patentee thus needs to broaden the claims by introducing new method claims 24 and 25 and new apparatus claims 21 and 28.
(July 2023 Oath/Declaration; emphasis added). Thus, Applicant asserts that new claims 21-28 are broadening claims. While the July 2023 Oath/Declaration states that the instant ‘018 Reissue Application is a broadening application, the July 2023 Oath/Declaration is defective because the statement does not specify a particular error within the ‘197 Patent as a basis for the instant ‘018 Reissue Application.
First, the July 2023 Oath/Declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414.
The Examiner finds that the error upon which the instant reissue is based is addressed partially by the non-elected Groups: (1) III, claims 21-23, 26 and 27; and (2) IV, claim 25, not Groups: (1) I, claims 1-12 and 24; (2) II, claims 3, 14, 16-19, 29 and 30; and (3) V, claims 28, which is constructively elected by original presentation. Thus, the Aug 2022 Oath/Declaration is incorrect because it does not correctly state an error upon which this instant ‘018 Reissue Application is based. The Examiner notes that if there is no correction made in this instant ‘018 Reissue Application and if Applicant files non-elected claims as a divisional application to correct the above note error, then this oath/declaration may be proper. (See MPEP 1451.I)
In addition, a proper error statement must identify a single word, phrase, or expression in the specification or in an original claim in the underlying patent, i.e., the ‘197 Patent, and how it renders the original patent wholly or partly inoperative or invalid. (See MPEP §1414(II)). In addition, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. (Id.)
Furthermore, the Examiner finds that the July 2023 Oath/Declaration is defective because it indicates that the ‘711Application of the ‘197 Patent was filed under 37 CFR 1.46. The Examiner finds that this is incorrect because the original ‘711 Application was filed 21 February 2012, which is not after 16 September 2012, and there was no mechanism to file the original ‘711 Application under 37 CFR 1.46 at that time.
Thus, Applicant is required to provide a new declaration with: (1) a statement of error with respect to ‘197 Patent, directed to a correction with respect to the elected claims above; (2) identifying “a single word, phrase, or expression” from the ‘197 Patent that was not included therein that rendered the ‘197 Patent invalid or inoperative; (3) identify a claim that the application seeks to broaden in the identification of the error; and (4) without the 37 CFR 1.46 box checked. (See 37 CFR 1.175 and MPEP § 1414).
Specification Objections
The disclosure is objected to because of the following informalities:
In c.1, line 40, the ‘197 Patent disclosure of “For example, ECG is a most…” should read – For example, electrocardiogram (ECG) is a most…–.
In c.26, ll.27-30, the ‘197 Patent provides disclosure to “use of some switch connected to the third electrode will enables to detect the position more accurately, that is, a switch or pressure sensor is connected to the third electrode;.” (Emphasis added). The Examiner finds it unclear to what this phrase is trying to state.
Appropriate correction is required.
Claim Objections
The disclosure is objected to because of the following informalities:
Claim 1 is objected to because of the following informalities: in lines 18-19, “… at least two of P, Q, R, S and T…” should read – … at least two points of P, Q, R, S and T… –; line 11, “ … comprise ECG electrodes …” should read – … comprise electrocardiogram (ECG) electrodes …–; and line 19, “ … on ECG .” should read – … on an ECG …– .
Claim 3 is objected to because of the following informalities: in line 3, “… receives RFID signal …” should read – … receives an RFID signal … – .
Claim 8 is objected to because of the following informalities: in lines 2-3, “… wherein the step for sensing the non-posture physiological function further comprises: …” should read – … wherein the step for sensing the non-posture physiological function of the user further comprises: … – ; and in line 4, “ … when signal from the at least one posture sensor …” should read – … when the signal from the at least one posture sensor …–.
Claim 14 is objected to because of the following informalities: in line 2, “… loosely wearable on user body …” should read – … loosely wearable on the user’s body … – ; and in line 4, “… between user body …” should read – … between the user’s body … – .
Claim 24 is objected to because of the following informalities: in lines 16-17, “… at least two of P, Q, R, S and T…” should read – … at least two points of P, Q, R, S and T… – .
Appropriate correction is required.
Drawing Objections
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 13 and 14 in Figure 3.
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.173(b)(1) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure of an amended drawing should be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be surrounded by brackets and identified as "Canceled," and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.173(b)(3). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP § 2111, MPEP § 2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP § 2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP § 2111.01(II). Therefore, unless one of the exceptions applies below, Examiners will interpret the limitations of the pending and examined claims using the broadest reasonable interpretation.
Lexicographic Definitions
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. (See MPEP § 2111.01(IV)). After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiner, the Examiner finds that he is unable to locate any lexicographic definitions (either express or implied) with reasonable clarity, deliberateness, and precision. Because the Examiner is unable to locate any lexicographic definitions with reasonable clarity, deliberateness, and precision, the Examiner concludes that Applicant is not his/her own lexicographer. (Id.)
35 U.S.C. § 112 6th Paragraph
A second exception to giving words in the claims their ordinary and customary meaning is when a claimed phrase is interpreted in accordance with 35 U.S.C. § 112 6th paragraph. See MPEP § 2181 et seq.
The Examiner finds that because the Examined Claims do not recite “step,” “means” or a claim term used as a substitution for “means” (i.e. a generic placeholder for “means”), the Examined Claims fail Prong (A) as set forth in MPEP §2181. Because the twenty-four (24) Examined Claims fail Prong (A) as set forth in MPEP §2181 I., the Examiner concludes that all Examined Claims do not invoke 35 U.S.C. §112, 6th paragraph. See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential).
Claim Rejections – 35 U.S.C. § 112
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 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.
New Matter/Written Description
Claims 1-12, 24 and 28 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Examiner finds that claims 1 and 24 recite,
wherein the step for processing the non-posture physiological function comprises: finding out a polarity of at least one point of P, Q, R, Sand T of the ECG fiction, and amplitudes of the points P, Q, R, S and T
(July 2023 Claim Amendment at claims 1 and 24; emphasis added). The Examiner finds that recitation to the “step for processing… compris[ing]: finding… amplitudes of the points P, Q, R, S and T is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that the ‘197 Patent specifically discloses “those skilled in the art can still find out the points as per the characteristics of R, P, Q, S and T, as well as amplitudes of R, S and T (defined as VR, VS, VT). (‘197 Patent at c.16, ll.3-6; also see c.16, ll.9-28 for further discussion w/r to “eight characteristics” including Amplitudes of VR, VS and VT; and Table 2). From this perspective, the Examiner finds that the ‘197 Patent utilizes the amplitudes of three points (i.e., R, S and T (defined as VR, VS, VT)), and not the amplitudes of P or Q.
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a “method” or “object” including “the step for processing the non-posture physiological function compris[ing]: finding out a polarity of at least one point of P, Q, R, Sand T of the ECG fiction, and amplitudes of the points P, Q, R, S and T” as recited.
Claims 2-12 are similarly rejected based on their dependency from independent claim 1.
In addition, the Examiner finds that claim 24 recites,
wherein the judgment criteria is difference between amplitudes of at least two of P, Q, R, S and T on ECG electrodes
(July 2023 Claim Amendment at claim 24; emphasis added). The Examiner finds that the recitation to the difference between amplitudes of points being determined on ECG electrodes is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that the points P, Q, R, S and T are on an ECG function. (See Figure 5 of the ‘197 Patent). While one of ordinary skill in the art can recognize that ECG electrodes provide information, the Examiner finds that this information is provided to generate a representative ECG function, and it is ECG function that provides amplitudes that can be compared to determine a difference.
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a “method” or “object” including “the judgment criteria [being] difference between amplitudes of at least two of P, Q, R, S and T on ECG electrodes” as recited.
Moreover, the Examiner finds that claim 24 recites,
wherein the non-posture physiological function of the user is used to determine the body position or posture of the user and whether there is external force applied to the user or not.
(July 2023 Claim Amendment at claim 24; emphasis added). The Examiner finds that the recitation to the non-posture physiological function (i.e., the ECG function) determining whether there is external force applied to the user or not is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that the ECG function is only utilized to determine the body position or posture of the user. (‘197 Patent at Figures 5-8).
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a “method” or “object” including “wherein the non-posture physiological function of the user is used to determine the body position or posture of the user and whether there is external force applied to the user or not” as recited.
Moreover, the Examiner finds that claim 24 recites,
wherein the step for processing the non-posture physiological function comprises: finding out a polarity of at least one point of P, Q, R, S and T of the ECG function, and amplitudes of the points P, Q, R, S and T
(July 2023 Claim Amendment at claim 24; emphasis added). The Examiner finds that the recitation to the step of processing not including “while reverse connecting at least one ECG electrode to produce inverse polarity” is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that analyzing of the polarity and amplitude characteristic of the ECG function to better detect posture status is only done when some electrodes of are reverse connected to produces an inverse phase ECG (‘197 Patent at c.4, ll.46-52; c.13, ll.15-31; c.15, l.41 – c.16, l.55; see Table 2). It is readily apparent that the entire point of the ‘197 Patent was to solve a problem of previous posture status determinations that inherently provided ECG measurement data issues that decrease the accuracy of performing posture status determinations on desired users. (Id. at c.13, ll.15-31; c.16, ll.36-55).
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a “method” or “object” including the step for processing without “reverse connecting at least one ECG electrode to produce inverse polarity.”
Moreover, the Examiner finds that claim 28 recites,
a signal processor processing the non-posture physiological function to determine the posture status of the user by comparing amplitudes and polarity of the non-posture physiological function with posture characteristics and parameters of judgment criteria stored in a database of body positions
(July 2023 Claim Amendment at claim 28; emphasis added). The Examiner finds that the recitation to the step of processing not including “finding out a polarity of at least one point of P, Q, R, S and T of the ECG function, and amplitudes of the points P, Q, R, S and T, while reverse connecting at least one ECG electrode to produce inverse polarity; and the judgment criteria being difference between amplitudes of at least two [points] of P, Q, R, S and T on [an] ECG” is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that analyzing of the polarity and amplitude characteristic of the ECG function to better detect posture status is only done by finding out a polarity of at least one point of P, Q, R, S and T of the ECG function, and amplitudes of the points P, Q, R, S and T, while reverse connecting at least one ECG electrode to produce inverse polarity; and the judgment criteria being difference between amplitudes of at least two [points] of P, Q, R, S and T on [an] ECG. (‘197 Patent at c.4, ll.46-52; c.13, ll.15-31; c.15, l.41 – c.16, l.55; see Table 2). It is readily apparent that the entire point of the ‘197 Patent was to solve a problem of previous posture status determinations that inherently provided ECG measurement data issues that decrease the accuracy of performing posture status determinations on desired users. (Id. at c.13, ll.15-31; c.16, ll.36-55).
Thus, as such, the Examiner concludes that there is insufficient indication in the specification that Applicant had possession of a “method” or “object” including the step for processing without “finding out a polarity of at least one point of P, Q, R, S and T of the ECG function, and amplitudes of the points P, Q, R, S and T, while reverse connecting at least one ECG electrode to produce inverse polarity; and the judgment criteria being difference between amplitudes of at least two [points] of P, Q, R, S and T on [an] ECG” is not sufficiently described in the ‘197 Patent. To support the Examiner’s position, the Examiner finds that analyzing of the polarity and amplitude characteristic of the ECG function to better detect posture status is only done by finding out a polarity of at least one point of P, Q, R, S and T of the ECG function, and amplitudes of the points P, Q, R, S and T, while reverse connecting at least one ECG electrode to produce inverse polarity; and the judgment criteria being difference between amplitudes of at least two [points] of P, Q, R, S and T on [an] ECG.”
35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 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.
Claims 2, 4, 8, 11, 12, 19, 24, 28 and 29 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.
With respect to the limitations of claim 2, the Examiner finds that claim 2 recites the limitations,
wherein the deepness of sleep or consciousness status is deduced by the changing of a noise level of the non-pasture physiological function acquired by the at least two non-posture physiological sensors;…
wherein an increase of noise represents an increase of conciseness or light sleep, while a decrease of noise represents a decrease of consciousness or deep sleep;
wherein the noise is caused by separation…
(July 2023 Claim Amendment at claim 2; emphasis added). It is unclear and indefinite to what the exact relationship is between “a noise level,” “noise” and “the noise” recited in the claims. Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements.
With respect to the limitations of claim 4, the Examiner finds that claim 4 recites the limitations,
wherein the parameters of judgment criteria are data acquired by a motion sensor when the user is prompted by a guide to take different postures
(July 2023 Claim Amendment at claim 4; emphasis added). It is unclear and indefinite to what a guide is. The Examiner queries Applicant to whether this is a person, a document, or anything. Further clarification is required to provide the required specificity of what a “guide” actually is.
With respect to the limitations of claim 8, the Examiner finds that claim 8 recites the limitations,
stopping the processing non-posture physiological signal to prevent wrong judgment
(July 2023 Claim Amendment at claim 8; emphasis added). The preceding claim recites the limitation “a signal processor processing the non-posture physiological function to determine….” It is unclear and indefinite to how the processing can be stopped with respect to a “non-posture physiological signal” when the “processing” was performed on “the non-posture physiological function.” (Emphasis added). Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements.
With respect to the limitations of claim 19, the Examiner finds that claim 19 recites the limitations,
wherein the other one of the at least two non-posture physiological sensors is…
(July 2023 Claim Amendment at claim 19; emphasis added). The preceding claim recites the limitation “wherein at least one of the at least two non-posture physiological sensors is a temperature sensor….” It is unclear and indefinite to how the claim can recite “the other one” when the claim requirement of “at least two” includes two or more. Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements.
In addition, the Examiner finds that claim 24 recites,
wherein the judgment criteria is difference between amplitudes of at least two of P, Q, R, S and T on ECG electrodes wherein the other one of the at least two non-posture physiological sensors is
(July 2023 Claim Amendment at claim 24; emphasis added). It is unclear and indefinite to how the difference being various amplitudes can be determined on ECG electrodes. To support the Examiner’s position, the Examiner finds that the points P, Q, R, S and T are on an ECG function. (See Figure 5 of the ‘197 Patent). While one of ordinary skill in the art can recognize that ECG electrodes provide information, the Examiner finds that this information is provided to generate a representative ECG function, and it is ECG function that provides amplitudes that can be compared to determine a difference. Further clarification is required to what is utilized to determine the difference between the amplitudes of points.
Moreover, the Examiner finds that claim 24 recites,
wherein the non-posture physiological function of the user is used to determine the body position or posture of the user and whether there is external force applied to the user or not.
(July 2023 Claim Amendment at claim 24; emphasis added). It is unclear and indefinite to how the non-posture physiological function (i.e., the ECG function) can determine whether there is external force applied to the user or not when the ‘197 Patent measures external forces via different sensors, and not via the EXCG function. To support the Examiner’s position, the Examiner finds that that the ECG function is only utilized to determine the body position or posture of the user. (‘197 Patent at Figures 5-8). Similarly, from this perspective, it is unclear and indefinite to what exactly an “external force” is. Further clarification is required to either further differentiate or provide proper antecedent basis for the claim requirements.
From this perspective, and in order to expedite prosecution, the Examiner construes an “external force” is something that is happening to a user when the non-posture physiological function is generated and used to determine the body position or posture of the user. The claims will be examined as such.
With respect to the limitations of claim 28, the Examiner finds that claim 28 recites the limitations,
An object… comprising:
at least two non-posture physiological sensors…
a signal processor processing the non-posture physiological function to determine the posture status of the user by comparing amplitudes and polarity of the non-posture physiological function with posture characteristics and parameters of judgment criteria stored in a database of body position
(July 2023 Claim Amendment at claim 28; emphasis added). Claim 28 is indefinite because the claimed structure cannot be reasonably determined. In particular, it is unclear to a person of ordinary skill in the art if Applicant intends claim 28 to be drawn to the structure of the subcombination (i.e. “object”) alone, or alternatively, Applicant intends claim 28 to be drawn to the structure of the “object” in combination with the “a database oof body positions.”
Claim 28 begins: “an object ....” From this evidence, a person of ordinary skill in the art could reasonably interpret claim 28 as being drawn to an “object” alone. In addition, the Examiner finds that the “object” further positively recite at least two non-posture physiological sensors and a signal processor.
However claim 28 recites “a signal processor processing the non-posture physiological function to determine the posture status of the user by comparing amplitudes and polarity of the non-posture physiological function with posture characteristics and parameters of judgment criteria stored in a database of body positions.” From this evidence, a person of ordinary skill in the art could reasonably interpret claims 28 as being drawn to an “object” in combination with an “a database of body positions.”
Because a potential infringer of claim 28 would not know if direct infringement required creation or importation (i.e. possession) of the subcombination “object” alone, or if direct infringement required possession of the combination “object” and “a database of body positions,” claim 28 is indefinite under 35 U.S.C. §112 2nd paragraph.
To overcome this particular 35 U.S.C. §112, 2nd paragraph rejection and assuming Applicants’ original specification supports such an amendment under 35 U.S.C. § 112 1st paragraph, the Examiner recommends (by way of example only) that if its Applicants desire to claim only the subcombination “object,” the body of claim 28 must be amended to include (or positively recite) only structure from the claimed object. Alternatively, if its Applicants desire to claim the combination “object” in addition to the “a database of body positions” the preambles of claim 28 must be amended to reflect Applicants’ intent (e.g. claim 18 could be amended to recite --A system comprising--).
With respect to the limitations of claim 29, the Examiner finds that claim 29 recites the limitations,
wherein generation of characteristics of the physiological signal features that, capturing the signal from the posture sensor at the same time: when the signal from the posture sensor is stronger than specific critical value, stopping analyzing physiological signal to prevent wrong judgment.
(July 2023 Claim Amendment at claim 28; emphasis added). It is unclear and indefinite to the metes and bounds of the claim requirements. First, the preceding claim recites “generating posture characteristics from the non-posture physiological signals.” From this perspective, it is unclear and indefinite to whether the “wherein generation of characteristics of the physiological signal features” is the same “generating” step or a different one. Moreover, the Examiner finds it unclear and indefinite to whether the “characteristics” are same as “posture characteristics,” and whether the “physiological signal” is the same as the “non-posture physiological signals.” In addition, the Examiner finds that claim language narrative as incomprehensible. Further clarification is required to eith