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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 82-86, 88-91, 94 in the reply filed on 11/10/25 is acknowledged.
Claims 62-64, 66-67, 70-74 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/10/25.
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.
Claims 84-85, 90-91 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 84-85: “second” raised platform is indefinite, since no first platform is recited. Note that claim 84 does not depend from claim 83, where a first platform was recited.
Claim 90: Unclear what is being further added, since the top surface is already opposite to the skin facing surface where the heating pad is located.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 90 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 90: Does not further limit the subject matter.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 82-86, 88-91, 94 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 82 recites “wherein in a secured orientation, the electrode is positioned closer to a hand of the user than the heating pad”, which would encompass a human organism within the scope of an apparatus claim, since this limitation cannot be met without the hand of the user. Examiner suggests reciting only device structures relative to other device structures, e.g. the electrode and heating pad are aligned perpendicular to the band, or similar phrasing.
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.
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) 82, 84-86, 88, 94 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peeters (US 10,448,843) in view of Hatschek (US 5,299,570).
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Regarding claim 82, Peeters discloses substantially the same invention as claimed (Figures 1A and 3 shown above for example), including a wrist wearable physiological monitoring device (Figures 1A, 3; abstract) comprising a body comprising a skin facing surface, said skin facing surface comprising a heating pad (Figure 1A: 140; Figure 3: 380) wherein said skin facing surface further comprises an electrode (Col. 14, lines 33-61), and a band configured to secure the body to a wrist of a user (Figure 3), wherein in a secured orientation, the electrode is positioned closer to a hand of the user than the heating pad (Figures 1A-C: in light of the 101 above, although Peeters shows the heating element closer to the hand than the electrical temperature sensor, the band can be worn in either orientation, and Peeters meets the structural limitation such that the electrode and heating pad are aligned perpendicular to the band; Col. 15, lines 54+: additional upstream electrical temperature sensors also read upon the recited intended use).
Further regarding claim 82, Peeters discloses additional sensors may be included, including optical sensors (Col. 20, line 53+). Peeters does not disclose where the sensors are located, and does not specifically disclose the heating pad including a plurality of openings configured to provide access to one or more sensor components. However, Hatschek teaches sensor components arranged within a plurality of openings of a heating pad (Figures 1, 2: light emitter zone 31 and light reception zone 41), in order to perform optical sensor measurements augmented by heat. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Peeters as taught by Hatschek to include the a plurality of openings in the heating pad configured to provide access to one or more sensor components as recited, in order to perform optical sensor measurements augmented by heat.
Regarding claims 84-85, Peeters discloses the electrode is positioned on a raised platform (Col. 14, lines 55-56) separate from the heating pad (Figure 3) as recited.
Regarding claim 86, Peeters or Hatschek do not disclose a length larger than a width as recited. However, absent persuasive evidence that a particular configuration is significant, changes in shape are considered an obvious matter of design choice. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) and MPEP 2144.04(IV)(B). Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Peeters and Hatschek to include a length and width as recited, since such a modification would have amounted to merely an obvious matter of design choice.
Regarding claim 88, Peeters discloses a top surface comprising an indicator as recited (Figure 3).
Regarding claim 94, Peeters discloses an electrode housing integrated with a buckle of the band (Figure 3).
Claim(s) 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peeters (US 10,448,843) and Hatschek (US 5,299,570) in view of Li (US 2018/0256100).
Regarding claim 83, Peeters or Hatschek do not disclose the heating pad is on a raised platform as recited. However, Li teaches a heating pad on a raised platform (Figure 4: 412B; Paragraph 50), in order to better contact the patient’s skin. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Peeters as taught by Hatschek to include a raised heating platform as recited, in order to better contact the patient’s skin.
Claim(s) 89-90 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peeters (US 10,448,843) and Hatschek (US 5,299,570) in view of Matsumara (US 5,050,612).
Regarding claims 89-90, Peeters discloses tracking ambient temperature (Col. 8, lines 21-22). Peeters does not disclose an ambient temperature sensor on the top surface as recited. However, Matsumara teaches a top surface of a wrist wearable physiological monitor including an ambient temperature sensor as recited (Figure 8: second temperature sensor), in order to more accurately determine the user’s temperature on the skin side of the device. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Peeters and Hatschek as taught by Matsumara to include an ambient temperature sensor as recited, in order to more accurately determine the user’s temperature on the skin side of the device. The ambient temperature sensor on the top surface would be considered opposite to the heating pad on the skin facing surface.
Claim(s) 91 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peeters (US 10,448,843) and Hatschek (US 5,299,570) and Matsumara (US 5,050,612) in view of Tebben (US 2,169,904).
Regarding claim 91, Peeters or Hatschek or Matsumara do not disclose a spoke design to protect the temperature sensor as recited. However, Tebben teaches a spoke design for a temperature sensor (Figures 1-4), in order to protect the sensor from contact and allow air to circulate. Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Peeters and Hatschek and Matsumara as taught by Tebben to include a spoke design as recited, in order to protect the sensor from contact and allow air to circulate.
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 82-86, 88-91, 94 rejected on the ground of nonstatutory double patenting as being unpatentable over:
Claims 1-18 of U.S. Patent No. 11,134,859
Claims 1-18 of U.S. Patent No. 11,504,020
Claims 1-17 of U.S. Patent No. 12,186,064
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Patent anticipate the claims of the instant application.
Claims 82-86, 88-91, 94 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-21 of copending Application No. 18/958,780 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate the claims of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gupta (US 2020/0170521) shows a heating pad surrounding an optical sensor.
Smith (US 2020/0050248) shows a sensor with a heating pad (Figure 3C).
Smith (US 2022/0096317) shows electrodes on a heating pad and a sensor through a window on a heating pad.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eugene T Wu whose telephone number is (571)270-5053. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eugene T Wu/Primary Examiner, Art Unit 3796