DETAILED ACTION
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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a) “light source module configured to irradiate” in claim 76.
b) “processing module configured to determine” in claim 76.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
a) The specification does not ever explicitly defines nor even clearly exemplifies the structure of the module at any point; however the specification at [0452]-[0454] (citing paragraph numbers from PGPUB US20240130620A1; hereafter merely the specification) states that an optical fiber can be the structure which performs this same function of irradiating the tissue and therefore there is implicit disclosure for the light source module to be or comprise an optical fiber and/or any related structure capable of the function.
b) The specification states that all modules including the processing module may be a processor or memory, or other hardware, or software or similar structures in [0656]-[0657]. Therefore, the processing module is being interpreted as any processor, memory, hardware, software, or combination thereof that could perform the claimed functions.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” or an analog thereto such as “module” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
a) “acquisition module … to obtain T output light intensities” in claim 76 because this is declared to comprise a structure of “M photosensitive surfaces” and because a photosensitive surface could perform the function of “obtain … light intensities”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 76, and 163 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.
In this instance the examiner notes that claims 1 and 76 that the photosensitive surfaces acquire the light intensity value “within a predetermined anti-jitter range corresponding to the photosensitive surface”. In this instance the examiner notes that an “anti-jitter range” is not a known term with an ordinary meaning, is not defined in the specification or claims, and is not subject to adequate disclosure to allow one of ordinary skill in the art to make or use an invention such that it would be “within a predetermined anti-jitter range corresponding to the photosensitive surface”.
More specifically, the specification never states what this range is (e.g. there are no numeric examples, no general definition, no clear requirement that the range corresponds to any particular physical attribute of the photosensitive surface nor how or if other things should be understood to correspond thereto). This is simply absent from the specification. That is and anti-jitter range is referenced by the examiner in [0007], [0008], [0075], [0095], [0096], [0110], [0131], [0460], and [0462]; however, none of these citations define the term of give any clear standard which one of ordinary skill in the art could apply to allow them to make or use an invention commensurate with the scope of the claim. Likewise, and in a more generalized discussion of jitter the applicant states various ways to reduce it which do not have any clear applicability to the claim limitations that would remedy the foregoing identified deficiency because they do not set forth any standard against which the applicant could use to ensure this was within the claimed predetermined range (e.g. making the photosensitive surface “as large as possible” as per [0096] which is relative, increasing the stability of the photosensitive surface as per [0110] which appears to relate to unclaimed structures which cannot be read into the claims such as those which retain the photosensitive surface with respect to the skin or otherwise to intended uses, reducing movement of the apparatus relative to the skin as per [0666], increasing the mass of the apparatus as per [0668], etc.).
Therefore, there is not adequate disclosure to allow one of ordinary skill in the art to make or use an invention such that it would be “within a predetermined anti-jitter range corresponding to the photosensitive surface” as required by the claims.
Claim 163 is similarly affected, at least by virtue of incorporation of the subject matter of claim 76, addressed above.
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 1, 76, and 163 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 76 both recite the broad recitation “a predetermined anti-jitter range”, and the claim also recites “a ratio threshold … greater than or equal to 0.04 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 163 is similarly affected, at least by virtue of incorporation of the subject matter of claim 76, addressed above.
Claim Rejections - 35 USC § 102 & 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 76, and 163 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 20160091496 A1 by Xu et al. (Hereafter Xu, previously of record).
Regarding claim 1, Xu teaches: 1. A method of measuring a tissue element (see either Xu’s Abstract and [0002]-[0005] which cover measuring tissues and elements such as glucose thereof or simply see the citations in the body of the claim below), comprising:
irradiating a measurement region with incident light having a single predetermined wavelength, wherein each beam of the incident light passes through the measurement region to form at least one beam of exit light exited from at least one exit position, and a number of incident positions of the incident light is at least one (see Xu’s Figs. 9 and 10 noting at least delivery fiber 1001 and regions A-C irradiated thereby. In this instance the examiner notes that the claims are not limited to be only/to consist of a single wavelength at the current juncture, but given the contents of the specification the examiner notes that it may compact prosecution to see Xu’s [0056] which addresses using “one or more wavelengths” inclusive of one in general and/or to note that the same section states “For example, a wavelength at which the scattering and/or absorption characteristics of the particular component are susceptible and/or a wavelength at which the scattering and/or absorption characteristics of the background medium are insusceptible may be selected” in specific. As such it is noted for compact prosecution purposes that Xu is capable of selecting and operating at only a single wavelength corresponding to the chosen medium (e.g. a single wavelength of 1300 nm to measure glucose in the blood/media as is done in Fig. 9d at [0156]));
obtaining a light intensity value corresponding to each beam of the exit light acquired by M photosensitive surfaces, so as to obtain T output light intensities, wherein each of the T output light intensities is obtained by processing the light intensity value of the exit light acquired by one or more of the M photosensitive surfaces, and each of the M photosensitive surfaces is configured to acquire the light intensity value of the exit light exited from the exit position within a predetermined anti-jitter range corresponding to the photosensitive surface (this is not a known or ordinary term nor is it subject to a special definition, and after consulting the applicant’s specification and review by primary examiner Katherine Fernandez it appears that this can relate to a wide variety of factors only some of which are properties of the photosensitive surface including: meeting 1<T<M as iterated in the claim, making the photosensitive surface “as large as possible” as per [0096], increasing the stability of the photosensitive surface as per [0110], reducing movement of the apparatus relative to the skin as per [0666], increasing the mass of the apparatus as per [0668], etc. In any event this is examined as being inherent as there is no limitation on what the predetermined range is and Xu and all other apparatuses will have e.g., some mass, or some source-distance separation, or some surface area to the sensor, or some stability metric, etc. and therefore Xu and all other physically existing apparatuses would necessarily read on the claim limitation as currently drafted), … where 1<=T<=M (see Xu’s Figs. 9 and 10 noting at the various reception fibers, e.g. 1003, 1005, 1007 are the M photosensitive surfaces which can measure the same number (e.g. Fig. 9c) or less than the same number (e.g. Fig. 9d) of output intensities T. See also Xu’s [0057] in brief or [0156]-[0167] which explain in detail not only that, but how, light intensity measures at these surfaces can be used to accomplish the method/determine concentrations of glucose or another analyte); and
determining a concentration of a detected tissue element according to at least one output light intensity corresponding to the predetermined wavelength (this is the core purpose of Xu’s invention and can be seen in myriad sections including Xu’s Abstract, [0020], [0053], [0057] etc. which address both a concentration of a general analyte and the concentration of glucose in specific).
In the foregoing the examiner omitted a limitation, as indicated by ellipsis, because it bore more particular analysis and in particular is best rejected under both 102 and 103. Specifically, the examiner notes that from a first perspective Xu teaches that: a ratio of an area of each photosensitive surface to a circumference of the photosensitive surface is greater than or equal to a ratio threshold, wherein the ratio threshold is greater than or equal to 0.04 mm (Xu sets forth an invention which generally has a large surface area of the detector as given above, e.g. wherein Fig. 10b is referenced and which shows, e.g. an outer ring beyond the reference position given by numeral 1007. One cannot teach the limitations of the claim directly from Fig. 10b alone because the figure is not necessarily to scale; however the text of Xu at [1068] gives an example wherein when using 1300 nm light the radial position of this outer ring is 1.8 mm to 2.0 mm. Simply plugging these values into the equations for an area of a ring and the surface area of a ring (i.e. circumference in light of the applicant’s specification at [0075] explaining how they are using the term circumference to refer to the surface area of any shape including e.g. a square and where, if read literally by the examiner the examiner could use the outer surface area only which would make the ratio higher not lower so this is an interpretation narrowed by the applicant’s specification without specifically reading in any limitation thereof) the examiner is left with: (PI*(2.0 mm)^2 - PI*(1.8 mm)^2) / (2*PI*(1.8 mm) + 2*PI*(2.0 mm)) = 0.1 mm for this example or more generally (r2^2 - r1^2) / (2 * (r1 + r2)) after term cancellation. As such Xu’s [0168] teaches that the ratio should be 0.1 mm which is > 0.04 mm and thus teaches the claim limitation), the circumference of the photosensitive surface represents an edge portion of the photosensitive surface (in the foregoing the examiner uses the perimeter (i.e. sum of outer and inner perimeter) of part 1007 as this edge-portion), the area of the photosensitive surface represents a non-edge portion of the photosensitive surface (in the foregoing the examiner uses the surface area of part 1007 as this non-edge portion),
However, and after consultation with primary examiner Katherine Fernandez it was agreed that prosecution could be compacted by providing an additional or alternative grounds of rejection that was clearly applicable to any and all citations from Xu which is to note that the surface area of the detector is a result effective variable and therefore can be optimized. To that end, see MPEP 2144.05(II) where simply increasing the surface area of the detector would increase the ratio in question and where it is self-evident that increasing the surface area of a detector would inherently increase its ability to detect light but nevertheless the examiner has also placed references of record (see previous OA, conclusion section) to establish that it was known in the art the surface area of a detector in fact affected the ability of the detector to gather light and thus was result effective and improved by enlarging the detector surface area.
Therefore and in the alternative, it would have been obvious to one of ordinary skill in the art prior to the date of invention to optimize the surface area of the detector and thereby to ensure that the ratio was greater than 0.04 mm. See MPEP 2144.05.
Regarding claim 76, Xu teaches: 76. A device of measuring a tissue element (see either Xu’s Abstract and [0002]-[0005] which cover measuring tissues and elements such as glucose thereof or simply see the citations in the body of the claim below), comprising:
a light source module configured to irradiate a measurement region with incident light having a single predetermined wavelength, wherein each beam of the incident light passes through the measurement region to form at least one beam of exit light exited from at least one exit position, and a number of incident positions of the incident light is at least one (see Xu’s Figs. 9 and 10 noting at least delivery fiber 1001 constitutes a light source module and see regions A-C irradiated thereby. While the applicant’s source module does not have to contain any light generating means, the examiner notes for compact prosecution purposes that the fiber can irradiate the measurement region because it is connected to light generation means such as 2201 in Fig. 22. In this instance the examiner additionally notes that the claims are not limited to a module that irradiates only/consist of a single wavelength at the current juncture, but given the contents of the specification the examiner notes that it may compact prosecution to see Xu’s [0056] which addresses using “one or more wavelengths” inclusive of one in general and/or to note that the same section states “For example, a wavelength at which the scattering and/or absorption characteristics of the particular component are susceptible and/or a wavelength at which the scattering and/or absorption characteristics of the background medium are insusceptible may be selected” in specific. As such it is noted for compact prosecution purposes that Xu is capable of selecting and operating at only a single wavelength corresponding to the chosen medium (e.g. a single wavelength of 1300 nm to measure glucose in the blood/media as is done in Fig. 9d at [0156]));
an acquisition module comprising M photosensitive surfaces, wherein each of the M photosensitive surfaces is configured to acquire a light intensity value of the exit light exited from the exit position within a predetermined anti-jitter range corresponding to the photosensitive surface (this is not a known or ordinary term nor is it subject to a special definition, and after consulting the applicant’s specification and review by primary examiner Katherine Fernandez it appears that this can relate to a wide variety of factors only some of which are properties of the photosensitive surface including: meeting 1<T<M as iterated in the claim, making the photosensitive surface “as large as possible” as per [0096], increasing the stability of the photosensitive surface as per [0110], reducing movement of the apparatus relative to the skin as per [0666], increasing the mass of the apparatus as per [0668], etc. In any event this is examined as being inherent as there is no limitation on what the predetermined range is and Xu and all other apparatuses will have e.g., some mass, or some source-distance separation, or some surface area to the sensor, or some stability metric, etc. and therefore Xu and all other physically existing apparatuses would necessarily read on the claim limitation as currently drafted), the acquisition module is configured to obtain a light intensity value corresponding to each beam of the exit light acquired by the M photosensitive surfaces, so as to obtain T output light intensities, and each of the T output light intensities is obtained by processing the light intensity value of the exit light acquired by one or more of the M photosensitive surfaces, … and wherein 1≤T≤M (see Xu’s Figs. 9 and 10 noting at the various reception fibers, e.g. 1003, 1005, 1007 are the M photosensitive surfaces which can measure the same number (e.g. Fig. 9c) or less than the same number (e.g. Fig. 9d) of output intensities T. See also Xu’s [0057] in brief or [0156]-[0167] which explain in detail not only that, but how, light intensity measures at these surfaces can be used to accomplish the method/determine concentrations of glucose or another analyte); and
a processing module (see Xu’s [0002] which on its own sets forth that the steps can be performed on a “processing apparatus” which alone is enough to read on the broad limitation herein. For compact prosecution purposes the examiner notes that Xu’s [0210]-[0215] specifies the exact same sort of processing module as is found in the applicant’s specification (i.e. one or more of a processor, memory, or other hardware, or other software that can accomplish the claimed function)) configured to determine a concentration of a detected tissue element according to at least one output light intensity corresponding to the predetermined wavelength (this is the core purpose of Xu’s invention and can be seen in myriad sections including Xu’s Abstract, [0020], [0053], [0057] etc. which address both a concentration of a general analyte and the concentration of glucose in specific).
In the foregoing the examiner omitted a limitation, as indicated by ellipsis, because it bore more particular analysis and in particular is best rejected under both 102 and 103. Specifically, the examiner notes that from a first perspective Xu teaches that: a ratio of an area of each photosensitive surface to a circumference of the photosensitive surface is greater than or equal to a ratio threshold, wherein the ratio threshold is greater than or equal to 0.04 mm (Xu sets forth an invention which generally has a large surface area of the detector as given above, e.g. wherein Fig. 10b is referenced and which shows, e.g. an outer ring beyond the reference position given by numeral 1007. One cannot teach the limitations of the claim directly from Fig. 10b alone because the figure is not necessarily to scale; however the text of Xu at [1068] gives an example wherein when using 1300 nm light the radial position of this outer ring is 1.8 mm to 2.0 mm. Simply plugging these values into the equations for an area of a ring and the surface area of a ring (i.e. circumference in light of the applicant’s specification at [0075] explaining how they are using the term circumference to refer to the surface area of any shape including e.g. a square and where, if read literally by the examiner the examiner could use the outer surface area only which would make the ratio higher not lower so this is an interpretation narrowed by the applicant’s specification without specifically reading in any limitation thereof) the examiner is left with: (PI*(2.0 mm)^2 - PI*(1.8 mm)^2) / (2*PI*(1.8 mm) + 2*PI*(2.0 mm)) = 0.1 mm for this example or more generally (r2^2 - r1^2) / (2 * (r1 + r2)) after term cancellation. As such Xu’s [0168] teaches that the ratio should be 0.1 mm which is > 0.04 mm and thus teaches the claim limitation), the circumference of the photosensitive surface represents an edge portion of the photosensitive surface (in the foregoing the examiner uses the perimeter (i.e. sum of outer and inner perimeter) of part 1007 as this edge-portion), the area of the photosensitive surface represents a non-edge portion of the photosensitive surface (in the foregoing the examiner uses the surface area of part 1007 as this non-edge portion),
However, and after consultation with primary examiner Katherine Fernandez it was agreed that prosecution could be compacted by providing an additional or alternative grounds of rejection that was clearly applicable to any and all citations from Xu which is to note that the surface area of the detector is a result effective variable and therefore can be optimized. To that end, see MPEP 2144.05(II) where simply increasing the surface area of the detector would increase the ratio in question and where it is self-evident that increasing the surface area of a detector would inherently increase its ability to detect light but nevertheless the examiner has also placed references of record (see previous OA, conclusion section) to establish that it was known in the art the surface area of a detector in fact affected the ability of the detector to gather light and thus was result effective and improved by enlarging the detector surface area.
Therefore and in the alternative, it would have been obvious to one of ordinary skill in the art prior to the date of invention to optimize the surface area of the detector and thereby to ensure that the ratio was greater than 0.04 mm. See MPEP 2144.05.
Regarding claim 163, Xu teaches: 163. A wearable apparatus (the examiner notes that it is inherent that things can be worn thus the invention of Xu is fully capable of as much. Likewise the examiner notes at least that: this does not recite any structure to effectuate being wearable, that structures such as a strap (never mentioned in the specification but seemingly depicted in applicant's Fig. 30) cannot be read into the claims as per 2111.01(II), and that even if the mention of such a structure was made explicit in a later amendment it would likely be proper to do so only in the body of the claims as per MPEP 2111.02 as currently being "wearable" only relates to the intended use as per MPEP 2111.02(II). As such and for compact prosecution purposes the applicant is urged to amend the claim to recite structure limitations in the body of the claim if they are of the opinion that the claim is intended to confer any additional limitation on the structure of the invention set forth in Claim 76), comprising the device of measuring the tissue element according to claim 76 (see the rejection of claim 76 which is incorporated herein to teach or obviate the only limitation in the body of the claim)
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive, with each argument being responded to in the order presented as follows:
The applicant’s initial remarks on pages 22-23 describing what amendment has been made is acknowledged as useful background but does not specifically set forth any allegations that the rejection is deficient in any way and thus will not be responded to further.
On pages 23-24 the applicant addresses the 112(a) rejection and opines that the description in [0073], [0076], and [0078] provides adequate description such that one of ordinary skill in the art, in possession of such description, would understand how to make an invention where the photosensitive surface adhered to the predetermined anti-jitter range of the claim. The examiner notes that these sections have been reviewed and do not provide adequate support and that the applicants citations do not even contain a predetermined anti-jitter range or even use the term jitter. Moreover, there is again no meaningful disclosure of what the range is or how it should be determined. As such the argument is not convincing.
The applicant further then concludes with a statement that the amendment to the claim also renders the rejection moot by way of including the ratio of the area to circumference being >= 0.04 mm. The examiner notes that the claim does not specific that the predetermined anti-jitter range is a ratio of >=0.04 mm, rather the claim introduces a second separate “a ratio threshold” that is not linked to the term anti-jitter range. As such the argument cannot be convincing. However, the fact that this argument is being raised leads to a secondary issue under 112(b) and a talking point that may significantly compact prosecution. Specifically, if the applicant is of the opinion that the predetermined anti-jitter range could be a variety of things, one of which is meeting the ratio criteria of area/perimeter >= 0.04 mm, then they are encouraged to simply claim that numerical ratio without the reference to a broader “predetermined anti-jitter range”. These cannot both be claimed as they represent a broad and narrow limitation in the same claim and the broader term “predetermined anti-jitter range” has issues of proper disclosure whereas the narrower limitation of the ratio being “>= 0.04 mm” is a clear numeric limitation that would not on its own require any rejection under 112. Thus prosecution may be compacted significantly by removing reference to the predetermined anti-jitter range and simply claiming the limitations on the physical properties of the photosensitive surface.
On pages 25-44 the applicant engages in a long and verbose review of the technology, the meaning and purpose of innovations of the applicant’s specification, differences between these specified structures and the structures of Xu, and a variety of other contributions to the field; however, the examiner notes that at no point does the applicant raise a single argument that highlights how any claimed feature is not taught by Xu. As such the argument is both unconvincing and fundamentally spurious as it does not address the actual claim language and actual rejection provided.
For compact prosecution purposes, despite not meeting the criteria of being non-spurious, the examiner notes that one feature of the applicant’s arguments is interesting. Specifically, the applicant’s inclusion of their Fig. 15 on page 28 and the applicant’s inclusion of Xu’s Fig. 2 on page 29. The examiner notes that these remain entirely spurious given that the applicant never iterates in the claim that the detection surface must be a contiguous item nor that it cannot use optical fibers nor that the perimeter must be judged for any fiber sub-portions, etc. However, it at least addresses a potential structural difference between the art of Xu and invention, even if it is an unclaimed difference. To that end and for compact prosecution purposes the applicant appears to opine that each fiber of Xu should be a detection surface. This is not how Xu (nor the examiner) regard the detection surfaces. See Xu’s Fig. 10b and note that 1007 itself (not each fiber thereof) is used as a single detection surface. If the applicant wishes for their argument here to have merit/to not be spurious then they are welcome and invited further limit the structure of the invention. If the applicant does preclude fibers from being a portion of the detection surface then the examiner will either utilize a different 102 reference, as they are currently legion given the broad claim drafting, or will refer to Wang (of record) as Wang teaches as much. As such the examiner both strongly urges the applicant to redraft the claim such that the points they wish to argue are reflected in the claim language and to additionally further limit the claim because the points they wish to argue would not lead to patentability with at least one further reference of record and with myriad other references still available to teach the breadth of the claim.
While the foregoing covers pages 38-41, On pages 38-41 the applicant opines that Wang does not remedy the deficiencies of the claim rejection and it may compact prosecution to provide further details here. As a first point the examiner is not convinced that any such deficiency exists at the current juncture, see the rebuttal above. However, as a second point the examiner notes that Wang clearly teaches that the use of a single unbroken photosensitive surface is more advantageous than plural smaller/a piecemeal photosensitive surface. As such the applicant is requested to re-review Wang and note that the examiner has no interest in looking at or discussing general purposes or solution of the applicant’s specification and that it is irrelevant whether or not hemoglobin concentration is to be calculated etc. as these are not under examination. Rather, the examiner wishes to emphasize that only difference between the structure of the applicant’s specification and the structure of Xu is provided by Wang. Regardless, the examiner notes that no rejection actually features Wang at the current juncture so these arguments are also moot/spurious for not relating to any rejection of rerecord.
On pages 43-46 the applicant concludes with a brief rehash of their foregoing arguments raised in greater detail above. In this instance the examiner incorporates their foregoing reply as these issues have already been addressed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael S Kellogg whose telephone number is (571)270-7278. The examiner can normally be reached M-F 9am-1pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL S KELLOGG/Examiner, Art Unit 3798
/KEITH M RAYMOND/Supervisory Patent Examiner, Art Unit 3798