DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Species A, encompassing claims 1-14 in the reply filed on 10/06/2025 is acknowledged.
Claims 15-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/06/2025.
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 1 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 1 recites a band comprising “a generally cylindrical outer body portion and a generally cylindrical inner body portion” in lines 4-5. The term “generally” covers broad sense rather than specific detail. Claim further recites a layer of cladding material “near” the inner body portion inner surface. The term inner is a relative term and the specification does not teach its extent/range.
The term “near” in claim 1 is a relative term which renders the claim indefinite. Moreover, the term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, this term renders claims 1-14 indefinite.
Appropriate correction is required.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,886,269. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to analogous monitoring. Regarding claim 1 of the instant application, claim 1 of the U.S. patent teaches a monitoring device comprising:
a band configured to at least partially encircle a portion of the body of a subject, the band comprising:
a generally cylindrical outer body portion and a generally cylindrical inner body portion secured together in concentric relationship, the inner body portion comprising light transmissive material, and having outer and inner surfaces; a layer of cladding material near the inner body portion inner surface; and at least one window formed in the cladding material that serves as a light- guiding interface to the body of the subject; and at least one optical emitter and at least one optical detector attached to the band; wherein the light transmissive material is in optical communication with the at least one optical emitter and the at least one optical detector and is configured to deliver light from the at least one optical emitter to one or more locations of the body of the subject via the at least one window and to collect light from one or more locations of the body of the subject via the at least one window and deliver the collected light to the at least one optical detector.
Regarding claim 7 of the application, claim 2 of the patent teaches “The monitoring device of Claim 1, wherein the portion of the body comprises a limb, a nose, an earlobe, and/or a digit.”
Regarding claim 8 of the instant application, claim 3 of the patent teaches “The monitoring device of Claim 1, wherein the band comprises a lens region in optical communication with the at least one optical emitter that focuses light emitted by the at least one optical emitter.
Regarding claim 9 of the application, claim 4 of the patent teaches “The monitoring device of Claim 1, further comprising a light reflective material on at least a portion of one or both of the inner and outer surfaces.”
Regarding claim 10 of the application, claim 5 of the patent teaches “The monitoring device of Claim 9, wherein the at least one optical detector comprises first and second optical detectors, and further comprising a signal processor, and wherein at least a portion of light reflected by the light reflective material and detected by the second optical detector is processed by the signal processor as a noise reference for attenuating motion noise from signals produced by the first optical detector.”
Regarding claim 11 of the application, claim 6 of the patent teaches “The monitoring device of Claim 1, further comprising a signal processor configured to receive and process signals produced by the at least one optical detector.”
Regarding claim 12 of the application, claim 9 of the patent teaches “The monitoring device of Claim 1, wherein the band further comprises at least one optical filter configured to selectively pass at least one optical wavelength.”
Regarding claim 13 of the application, claim 10 of the patent teaches “The monitoring device of Claim 1, wherein the band further comprises at least one optical filter configured to selectively pass at least one optical wavelength for transmission into the body of the subject.”
Regarding claim 14 of the application, Claim 11 of the patent teaches “The monitoring device of Claim 13, wherein the at least one optical detector comprises first and second optical detectors, and further comprising a signal processor, and wherein at least a portion of light blocked by the optical filter and detected by the second optical detector is processed by the signal processor as a noise reference for attenuating motion noise from signals produced by the first optical detector.”
Claims 2-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AHMED M FARAH/Primary Examiner, Art Unit 3792