DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 58-59, 62-63, 65-66, and 68-75 are pending and under examination.
Claims 58-59, 62-63, 65-66, and 68-75 are rejected.
Claims 58, 65, and 69 are objected to.
Claims 1-57, 60-61, 64, and 67 are canceled.
No claims are allowed or withdrawn.
Claim 58 is independent.
Claims 58 and 66 are amended.
Office Action Outline
Rejections applied
Abbreviations
x
112/b Indefiniteness
PHOSITA
"a Person Having Ordinary Skill In The Art before the effective filing date of the claimed invention"
112/b "Means for"
BRI
Broadest Reasonable Interpretation
x
112/a Enablement,
Written description
CRM
"Computer-Readable Media" and equivalent language
112 Other
IDS
Information Disclosure Statement
102, 103
JE
Judicial Exception
101 JE(s)
112/a
35 USC 112(a) and similarly for 112/b, etc.
101 Other
N:N
page:line
x
Double Patenting
MM/DD/YYYY
date format
Priority
As detailed on the 09/19/2023 filing receipt, this application claims priority to as early as 08/27/2008. At this point in examination, all claims have been interpreted as being accorded this priority date.
Specification citations are to US PGPUB
Citations to the instant Specification refer to US PGPUB 2023/0414102 Al.
Withdrawal/Revision of Objections/Rejections
In view of the 06/04/2026 amendment and remarks:
• New claim objections are asserted below.
• New 112(a) and 112(b) rejections are asserted below.
• The 103 rejection is withdrawn (reasoning below).
• The Non-Statutory Double Patenting rejection in the 12/04/2025 Office action is revised to include application 19/728,159, filed 07/01/2026, as well as four related patents (8,130,095; 8,284,046; 8,125,331; and 8,094,009). Additionally, application 16/827,366 is now abandoned, and is no longer included in the double patenting rejection.
Claim Objections
Claims 58, 65, and 69 are objected to because of the following informalities:
Claims 58, 65, and 69 each recite "the first device" (twice in claim 58, once in claims 65 and 69) which should be amended to "the first wearable device" to recite consistent claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 58-59, 62-63, 65-66, and 68-75 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. Claims depending from rejected claims are rejected similarly, unless otherwise noted, and any amendments in response to the following rejections should be applied throughout the claims, as appropriate.
Claims 58, 68, and 70-72 recite the following limitations, listed below, which have no corresponding specification paragraphs which disclose the limitations. The specification does not provide adequate detail to describe the limitations, and therefore, the written description provided is not clearly commensurate with the recited limitations.
• the color-coded indication... (claims 58, 68, and 70-71)
• a plurality of colors corresponding to respective ranges of the level of the physiological component. (claims 71)
• the plurality of colors comprises a first color corresponding to a first range of the level of the physiological component and a second color corresponding to a second range of the level of the physiological component (claim 72)
As appropriate, these rejections may be overcome, for example, (i) by narrowing to clearly supported embodiments and/or (ii) by clarifying on the record where support can be found and how that support relates to the recitations.
For examination purposes, these particular limitations will not be examined with respect to the prior art (regarding both 103 considerations and double patenting considerations).
Claim Rejections - 35 USC § 112(b)
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 58-59, 62-63, 65-66, and 68-75 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. Claims depending from rejected claims are rejected similarly, unless otherwise noted, and any amendments in response to the following rejections should be applied throughout the claims, as appropriate.
In the element beginning with "a transmitter supported", claim 58 recites "the positioning structure" which requires but lack clear antecedent. It is not clear if "the positioning structure" is meant to refer to "the first positioning structure" or "the second positioning structure" of claim 58. If it is Applicant's intention, then amending to recite "the first positioning structure" would likely overcome the rejection; the claim will be interpreted as suggested to amend.
Response to Applicant Arguments - 35 USC § 103
The rejection of claims 48, 49, 52-60, 62, 63, and 65-67 in the 12/04/2025 non-final Office action under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Magar in view of Tierney 2001 in view of Stafford is withdrawn in view of Applicant's remarks and amendment.
Applicant's arguments filed 06/04/2026 have been fully considered and they are persuasive.
Applicant asserts (remarks, p.5-10) the following regarding the 103 rejection:
• "Even under the interpretation that Magar's external analog sensors 220 correspond to the claimed first wearable device and that patch 102/patch-ASIC 120 corresponds to the claimed second wearable device, Magar fails to teach or suggest the arrangement now recited in claim 58." (Remarks, p. 7, ¶ 2.)
• "Magar is silent as to the external analog sensors 220 comprising a transmitter configured to wirelessly transmit data, and the patch-ASIC 120 does not receive wirelessly transmitted data from the external analog sensors 220. (Remarks, p. 8, ¶ 1.)
•... "a skilled artisan would have had no reason to modify Magar to arrive at the
invention of amended claim 58, at least because the necessary modifications would contradict Magar's stated design objectives and would serve no function within Magar's system." (Remarks, p. 9, ¶ 3.)
• "Tierney and Stafford, each directed to a single body-worn sensing
device, supply no teaching curing these deficiencies." (Remarks, p. 10, ¶ 1.)
The above arguments are persuasive and the 103 rejection is withdrawn.
It is noted the arguments which included details regarding the limitation for the "color-coded indication" were not considered because there does not appear to be support for the "color-coded indication" limitations in the disclosure (see accompanying 112(a) written description rejection). If proper support is shown, these arguments concerning the "color-coded indication" might possibly also be persuasive.
Double Patenting
Note about the Double Patenting rejection (repeated from the "Withdrawal/Revision of Objections/Rejections" section above): The Non-Statutory Double Patenting rejection in the 12/04/2025 Office action is revised to include application 19/728,159, filed 07/01/2026, as well as four related patents (8,130,095; 8,284,046; 8,125,331; and 8,094,009). Additionally, application 16/827,366 is now abandoned, and is no longer included in the double patenting rejection.
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.
NSDP-1 (of 2) rejection:
Claims 58-59, 62-63, 65-66, and 68-75 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over one or more claims of reference Application No. 19/728,159 (the '159 application) in view of Magar (U.S. Patent Pub 2009/0054737; as cited on the 12/10/2024 IDS).
Although the instant claims recite limitations for an adhesive and a light emitting diode, these elements are shown by Magar (wearable patches with an adhesive (Magar, [0110], and fig. 1A and 1B), and light emitting diodes Magar, [0114]), such that this narrowing versus the claims of the '159 reference application is now interpreted as obvious, and as such, the instant invention would have been prima facie obvious in view of the cited art.
This is a provisional nonstatutory double patenting rejection.
NSDP-2 (of 2) rejection:
Claims 58-59, 62-63, 65-66, and 68-75 are rejected on the ground of nonstatutory double patenting as being unpatentable over one or more claims of U.S. Patent Nos. 8,130,095 (the '095 patent, from application 12/231,049), 8,284,046 (the '046 patent, from application 12/231,050), 8,125,331 (the '331 patent, from application 12/231,053), and 8,094,009 (the '009 patent, from application 12/231,061) in view of Magar (U.S. Patent Pub 2009/0054737; as cited on the 12/10/2024 IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because the '095 patent, the '046 patent, the '331 patent, and the '009 patent, as well as the instant application recite claims which involve first and second wearable devices which comprise sensors and displays (output devices) positioned on the body for transmitting and receiving information.
While the instant claims recite limitations for an adhesive and a light emitting diode, these elements are shown by Magar (wearable patches with an adhesive (Magar, [0110], and fig. 1A and 1B), and light emitting diodes Magar, [0114]), such that this narrowing versus the '095 patent, the '046 patent, the '331 patent, and the '009 patent claims is now interpreted as obvious, and as such, the instant invention would have been prima facie obvious in view of the cited art.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.A.V./Examiner, Art Unit 1687
/G. STEVEN VANNI/Primary patents examiner, Art Unit 1686
Prosecution Insights