DETAILED ACTION
This action is pursuant to claims filed on 3/19/2026. Claims 1-10 and 14-19 are pending. A first action on the merits of claims 1-10 and 14-19 is as follows.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 11-13 and 20have been cancelled by the applicant, as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/13/2023.
Applicant's election with traverse of the restriction requirement in the reply filed on 3/19/2026 is acknowledged. The first traversal is on the ground(s) that claim 1 is directed to a single generic concept. This is not found persuasive because claim 1 specifically claims a watch comprising 4 electrodes. This is not generic as it is a specific structure and a specific number of electrodes. Thus, this argument is not persuasive.
Applicant’s argument that the three electrode embodiments are not reflected in the claims is fully understood. However, the restriction requirement still stands because the disclosure discusses 3, 4, and 5 electrode embodiments that were present in the previous claims and it would be improper to add these embodiments in future amendments.
Applicant’s arguments stating that the claims are directed toward the electrode topology and driver configurations are persuasive. The applicant states that the differences between the physical mounting or enclosure configurations do not amount to patentably distinct inventions. Thus, the restriction requirement is partially withdrawn. The restriction between the 3, 4, and 5 electrode embodiments remains. However, the restriction between the chest patch, watch, and ring of the four electrode embodiment is withdrawn.
Applicant’s arguments regarding there being a lack of substantial search burden is not persuasive. The search between 3, 4, and 5 electrode embodiments requires substantially different search strategies and queries due to their differing circuit configurations. Therefore, a search burden still remains.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: electrode 832. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. 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 1.121(d). 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.
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: 2300 in Fig. 23. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 1.121(d). 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 Objections
Claim 4 is objected to because of the following informalities:
Claim 4 does not start with a capital letter. It should be corrected to --The electrocardiogram device--.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 19 is 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.
Claim 19 recites “the smartphone display” in line 3. “The smartphone display” lacks antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-19 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 1 recites “exactly one of the first, second, and third body parts is in contact” and “the two electrodes contacting the one body part.” These statements directly claim the body parts of the user. Language such as --configured to contact-- or --adapted to contact-- should be used to avoid directly claiming the body of a user.
Similar instances are in the following claims:
Claim 2: “contact a same body part.”
Claim 3 : “contact two different body parts.”
Claims 9, 10: “to contact the user’s left leg.”
Claim 16 “contact together on one arm or both arms.”
Claim 17: “detects contact between both hands.”
These should be corrected to --configured to-- or --adapted to-- contact the respective body parts.
Claims 2-10 and 14-19 are rejected due to their dependence on claim 1.
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 6, 8-10, 15-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO2019108044A1).
Regarding independent claim 1, Hwang discloses an electrocardiogram measuring ([Page 18: electrocardiogram measuring apparatus) device, the device comprising:
a first electrode (electrode 111) and a second electrode (electrode 114) configured to receive a first and a second electrocardiogram voltages of a first and a second body parts in contact therewith, respectively ([Page 18]: a first electrode, a second electrode […] that respectively receive electrocardiographic voltages of a human body region in contact);
two amplifiers configured to receive the first and second electrocardiogram voltages from the first and second electrodes ([Page 19]: amplifiers each receiving electrocardiogram voltages from the first and second electrodes – three amplifiers inherently includes two amplifiers);
a third electrode (electrode 113 Fig. 8) configured to contact a third body part and transfer a third electrocardiogram voltage of the third body part ([Page 18]: third electrode that receives an electrocardiogram voltage of a human body region in contact);
an electrode driver ([Page 19]: electrode driver) configured to receive the third electrocardiogram voltage and output a driving voltage (Fig. 8: the input of the electrode driver is connected to one electrode 113, which is mapped to the third electrode; [Page 16]: the method of using the electrocardiogram measuring apparatus including the four electrodes according to the present invention is almost the same as the method of using the apparatus 100 for measuring electrocardiogram according to the present invention including the three electrodes; thus, the input of the driver is the output of the third electrode since first, second, and third are arbitrary numerical designations)
a fourth electrode (electrode 112) placed adjacent to one of the three electrodes (112 placed adjacent to 111 in Fig. 22) and configured to receive and transmit the output of the electrode driver to one of the three body parts in contact therewith ([Page 19]: fourth electrode receives the output of the electrode driver and applied it to a portion of the human body in contact with the electrode);
an AD converter connected to an output terminal of each of the two amplifiers to convert output signals of the two amplifiers into two digital signals ([Page 19]: AD converters connected to output terminals of the amplifiers to convert the signals into digital signals – the prior art discloses the AD converter connected to three amplifiers which inherently means it is connected to two amplifiers);
a microcontroller configured to receive the two digital signals of the AD converter ([Page 19]: microcontroller for receiving the digital signals from the AD converter); and
a communication means configured to transmit the two digital signals ([Page 19]: communication means for transmitting the digital signals) to a smartphone ([Page 10]: the electrocardiogram can be wirelessly communicated with a smartphone), wherein:
the microcontroller is supplied with power from a battery ([Page 19]: the microcontroller receives power from the battery);
the microcontroller controls the AD converter and the communication means ([Page 19]: the microcontroller controls the AD converter and the communication means);
the two amplifiers each receive and amplify one electrocardiogram voltage
simultaneously ([Page 19]: the amplifiers simultaneously receive and amplify one electrocardiogram voltage);
exactly one of the first, second, and third body parts is contacted by two of the four electrodes (this is a functional limitation and is simply a matter of how the user chooses to hold the device – i.e. the user can contact any two electrodes to the same body part); and
among the two electrodes contacting the one body part, one electrode is the fourth electrode connected to the output of the electrode driver (the user can hold electrode 112, which is the fourth electrode, and another electrode at the same time).
Hwang further states that the electrocardiogram apparatus including four electrodes can be easily implemented by the above description, which includes the watch embodiment ([Page 16]). Hwang further shows a watch embodiment in Fig. 16 that has more than three separate electrodes 1610, 111, 112, 1640, and 113. However, the description only describes using three of those electrodes at a time. Thus, Hwang does not explicitly state that the 4 electrode embodiment is implemented into a watch.
It would have been an obvious matter of design choice to make the electrocardiogram measurement apparatus of whatever form or shape was desired or expedient, in this case into a watch. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. Hwang clearly shows that there are multiple possible embodiments, including a chest patch, ring, and watch. Hwang further states that the electrocardiogram apparatus including four electrodes can be easily implemented by the above description ([Page 16]) and even shows a watch with four possible electrodes in Fig. 16. Utilizing a four electrode watch for an ECG device would be an obvious modification to one of ordinary skill in the art. Furthermore, the instant application does not provide criticality to the form of the device. The applicant states in the response filed 3/19/2026 that differences in physical mounting or enclosure do not create patentably distinct inventions. Therefore, a change of shape from a chest band to a watch, where two electrodes contact the wrist of the user, would be well within the level of ordinary skill in the art.
Regarding claim 2, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the electrode connected to the input of the electrode driver and the electrode connected to the output of the electrode driver contact a same body part of a user (this is a functional limitation and electrodes 112 and 113 of Fig. 16 can be brought into contact with the same body part of the user – for instance the finger and thumb of the hand not wearing the watch device).
Regarding claim 3, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the electrode connected to the input of the electrode driver and the electrode connected to the output of the electrode driver contact two different body parts of a user (this is a functional limitation and electrodes 112 and 113 of Fig. 16 can be brought into contact with different body parts of the user – for instance a finger of the hand not wearing the watch device and the leg or abdomen of the user).
Regarding claim 4, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the input of the electrode driver is received from two electrodes among the first, second, and third electrodes (in Fig. 8, the outputs of both electrodes 111 and 113 are connected to the input of electrode driver 813).
Regarding claim 6, Hwang discloses the electrocardiogram measuring device of claim 1, wherein at least one of the two amplifiers of the electrocardiogram measuring device is a single-ended input amplifier ([Page 17]: one of the two amplifiers is a single-ended amplifier).
Regarding claim 8, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the electrocardiogram measuring device and the four electrodes are installed in a watch body and a watch band of the watch (as seen in Fig. 16, which is used to show the general watch structure of the combination, the ECG measuring device and the electrodes are all installed on a watch body and watch band; also see [Page 18]: ECG measuring apparatus and electrodes installed in a watch or watch band).
Regarding claim 9, Hwang discloses the electrocardiogram measuring device of claim 8 as described above. Hwang further discloses that one electrode is installed on the watch band that can be brought into contact with the left leg of the user (electrodes 112 and 113 in Fig. 16).
However, as the claim is mapped, the electrode for the input of the electrode driver is placed on the watch band and not the underside of the watch body.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to place the input of the electrode driver on the underside of the watch body, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Furthermore, the instant application does not provide criticality to this location. While the instant application states that the electrode driver input could be installed on the bottom of the watch body (instant application [355]), it also states that it could be electrodes 4010 and 4020 which are on the upper surface of the watch body for contact with the fingers as seen in Fig. 40 (instant application [357]). Therefore, since the instant application provides no criticality to the location of the electrode driver input electrodes, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to simply rearrange the locations of the electrodes.
Regarding claim 10, Hwang discloses the electrocardiogram measuring device of claim 8 as described above. Hwang further discloses that one electrode is installed on the watch band that can be brought into contact with the left leg of the user (electrodes 112 and 113 in Fig. 16).
However, as the claim is mapped, the electrode for the output of the electrode driver is placed on the watch band and not the underside of the watch body.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to place the output of the electrode driver on the underside of the watch body, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Furthermore, the instant application does not provide criticality to this location. While the instant application states that the electrode driver output could be installed on the bottom of the watch body (instant application [357]), it also states that it could be electrodes 4010 and 4020 which are on the upper surface of the watch body for contact with the fingers as seen in Fig. 40 (instant application [355]). Therefore, since the instant application provides no criticality to the location of the electrode driver output electrode, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to simply rearrange the locations of the electrodes.
Regarding claim 15, Hwang discloses the electrocardiogram measuring device of claim 1, wherein additional electrocardiogram lead signals are calculated at the smartphone by selecting calculation formulas according to a parameter representing a hand wearing the device ([Page 4]: the electrodes 111, 112, and 113 are contacted to hands and to the body which measures two leads and four leads can be additionally calculated using formulas; [Page 13]: the two measured leads are sent to the smartphone; [Page 13]: the user can select either 6-channel or MCL mode for the ECG calculations; the calculations are inherently done at the smartphone because only the measured data is transmitted to the smartphone as disclosed; “parameter representing a hand wearing the device” is extremely broad, this can be the measured lead of the hand wearing the device or the 6-channel/MCL mode selection made by the hand wearing the device – either way, a calculation formula is selected which requires a parameter of the hand wearing the device and the additional lead signals are inherently calculated at the smartphone; furthermore, as recited, this is simply a functional limitation that is not provided with any specific structure for performing the function and Hwang is capable of performing the function because Hwang teaches a smartphone with an application that calculates and displays multiple forms of ECG data and the ECG measurement device can detect hand contact and measure leads representative of the hand wearing the device).
Regarding claim 16, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the electrode connected to the input of the electrode driver and the electrode connected to the output of the electrode driver contact together on one arm or each of both arms (electrodes 112 and 113, which are mapped to the driver input and output, can both contact one arm as they are on the watchband and can be contacted by the same hand).
Regarding claim 17, Hwang discloses the electrocardiogram measuring device of claim 1, wherein the device further comprises a current sensor which detects contact between both hands and starts an electrocardiogram measurement ([Page 13]: the current sensor confirms whether the electrodes are touched with both hands to start the ECG measurement).
Regarding claim 19, Hwang discloses the electrocardiogram measuring device of claim 15, wherein the two digital signals and calculated electrocardiogram leads are displayed on the smartphone display ([Page 12]: the smartphone displays the 6 total leads – this includes the two measured and 4 calculated leads).
However, Hwang is silent to a tolerance of the two digital signals being smaller than a tolerance of the calculated electrocardiogram leads.
Having an optimal tolerance or error rate is obvious in the art for any signals that are being measured and calculated based upon the measured signal. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the tolerance of the measured digital signals smaller than the tolerance of the calculated leads, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Based on the specification of the instant application, the tolerances are simply the acceptable error ranges/values (instant application [517]). Finding the smallest, optimal tolerance/error range for the measured leads is well within the ordinary level of skill in the art and this error would inherently be smaller than that of the calculated leads because the calculated leads depend upon the measured leads, thus any error in the measured leads would simply be increased through calculations.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 and described above, in view of Szumanski (US 20200155072 A1).
(Currently Amended) Regarding claim 5, Hwang discloses the electrocardiogram measuring device of claim 1 as described above.
However, Hwang is silent to the input of the electrode driver is received from the first, second, and third, three electrodes.
Szumanski teaches an ECG system configured to produce an ECG output signal of a patient which includes a plurality of electrodes and a drive circuit configured to deliver a current to the electrodes based on a measured voltage of the electrodes ([Abstract]). Szumanski further teaches that the system comprises three leg electrodes and one driven electrode, as seen in Fig. 2. The circuit includes a Wilson terminal 212 which is calculated as an average voltage of the three leg electrodes. This voltage is then fed into the drive circuit and output to a fourth electrode. The output of the drive circuit amplifier offsets the common mode AC noise such that the circuit is able to produce accurate ECG measurements in the target frequency band ([0025]). Thus, the configuration taught by Szumanski teaches the input of the electrode driver being received from the three leg electrodes. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the circuitry of Szumanski that teaches the input of the electrode driver being received from all three leg electrodes into the device of Hwang such that noise is reduced and accurate ECG measurements can be performed.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 and described above, in view of Gray (US 20070038257 A1).
Regarding claim 7, Hwang discloses the electrocardiogram measuring device of claim 1 as described above. Hwang further teaches that one amplifier can be a differential amplifier ([Page 17]) and the input of the differential amplifier is connected to the input of the electrode driver as seen in Figs. 8 and 9.
However, Hwang does not discuss whether the device can include two differential amplifiers in the four electrode embodiments and one of two input terminals of each of the two differential amplifiers is connected to the input terminal of the electrode driver.
Gray teaches a system utilizing electrodes to measure electrocardiographic lead signals ([Abstract]). The signal processing circuit comprises a pre-amplifier circuit as well as an electrode driver as seen in Fig. 1. As seen in Fig. 1, there are 3 limb leads and a driven electrode. The limb leads feed into differential amplifiers 26. Additionally, the inputs to the amplifier feed into the lead selector 40 and into the electrode driver 60. The utilization of the differential amplifiers produces the desired ECG signals ([0032]). Furthermore, inputting the inputs of the differential amplifiers into the input lead selector and electrode driver aids in reducing noise in the collection of ECG signal data ([0036]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize multiple differential amplifiers where the inputs of the amplifiers are connected to the input of the electrode driver such that the desired leads can be calculated and noise can be reduced in the system.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 and described above, in view of Hwang (hereinafter Hwang ‘027, WO 2020005027 A1).
Regarding claim 14, Hwang discloses the electrocardiogram measuring device of claim 1 as described above. Hwang further discloses the watch measures a parameter of the hand wearing the watch ([Page 14]: electrode 111 is brought into contact with the user’s wrist; [Page 4]: when electrode 111, 112, and 113 are brought into contact with the body, ECG leads are measured; measured ECG leads are a parameter representative of the hand touching the device; the claim does not specify what the parameter is and a lead measured from the hand of a user is a parameter representative of that hand).
However, Hwang states that these measurements are stored in a memory on a smartphone, rather than in a memory on the device itself.
Hwang ‘027 teaches an electrocardiogram measurement system using a wearable device, extremely similar to the device of Hwang ([Abstract]). Similar to Hwang, Hwang ‘027 teaches that the ECG data can be transmitted to a smartphone ([Page 14]). Hwang ‘027 further states that the ECG data can be stored on a memory embedded in the smart watch ([Page 14]). Configuring either the smartphone or the watch or both to store data sensed by the ECG device involves routine skill in the art, as taught by Hwang ‘027. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a memory into the watch ECG device to store the measured signals.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 and described above, in view of Cano (US 5341811 A).
Regarding claim 18, Hwang discloses the electrocardiogram measuring device of claim 1.
However, Hwang is silent to the magnitudes of gain of the two amplifiers being the same within a tolerance range required for an amplifier.
Cano teaches an apparatus for enhancing high resolution ECG signals acquired on the surface of a patient ([Abstract]). The system of Cano can utilize two differential amplifiers where both amplifiers have the same gain ([Col 5, lines 56-64]). The utilization of at least two high-gain amplifiers aids is necessary for the implementation of the high resolution ECG apparatus ([Col 5, lines 27-34]). Setting the gains of the amplifiers is well within the level of ordinary skill in the art. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize differential amplifiers that have equal, high gains in order to produce high-resolution ECG signals. Furthermore, establishing a tolerance range for the amplifiers is obvious to one of ordinary skill in the art. Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to find the optimal tolerance range of the amplifiers, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12, 15-19, of copending Application No. 18380632 (reference application).
Claim 1 of the instant application and claim 1 of the reference application are nearly identical. The instant application additionally claims the device is a watch and one of the body parts is contacted by two of the four electrodes and one of them being the electrode connected to the electrode driver.
These additional limitations are taught by Hwang as described above. Modifying the shape of the device is simply a change in form as taught by Hwang and contacting two electrodes, one being the driving electrode, is simply a functional limitation that the reference application and Hwang both disclose.
Claims 2-10 are identical to claims 2-10 of the reference application. Claim 14 is identical to claim 12 of the reference application. Claims 15-19 of both applications are identical.
Conclusion
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/W.M./Examiner, Art Unit 3794
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