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 .
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 1-8 and 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 and 11, 15, 17-19 and 20-22 of U.S. Patent No. 11,410,765 in view of Terumoto US 2012/0150047. Claim 1 of ‘765 discloses all the features of the current claim 1 and 14 except the multi-function watch. The multi-function watch is only really defined by having a visual display device. Terumoto discloses a similar wrist mounted physiological monitoring device that can display watch information and has multiple functions ([¶109]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to combine the device of ‘765 with the teachings of Terumoto in order to display more useful information to the user.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,410,765 in view of Terumoto US 2012/0150047 and Al-Ali et al. US 2013025334. The multi-function watch is only really defined by having a visual display device. Terumoto discloses a similar wrist mounted physiological monitoring device that can display watch information and has multiple functions ([¶109]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to combine the device of ‘765 with the teachings of Terumoto in order to display more useful information to the user. The combination does not specifically disclose a processor in the modular unit. Al-Ali teaches a similar monitoring system that has a battery in its modular battery unit ([¶139]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to combine the device of ‘765 with the teachings of Al-Ali in order to improve the quality of the signal transferred to the based unit ([¶139]). See the following table to claim concordance.
Current Application
11,410,765
1
1 in view of Terumoto
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
1 in view of Terumoto and Al-Ali
10
11
11
15
12
23
13
17
14
1, 2 or 18 in view of Terumoto
15
19
16
20. claim recites PPG data which is inclusive of heart rate data.
17
21
18
22
19
17
20
8
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Terumoto 2012/0150047 in view of Defant et al. 2007/0046258 and Al-Ali et al. US 2013/0253334.
Regarding claim 1, 2 and 14, Terumoto discloses a wearable physiological measurement system, comprising:
a wearable strap configured to be couplable to an appendage of a user, the wearable strap comprising ([FIG. 3, 7] device 1):
a bracelet ([FIG. 3, 7] housing 50 is a bracelet/band);
a head portion of the bracelet ([FIG3,4] head portion 61), the head portion including;
a screen on the bracelet for displaying physiological data ([¶109] display portion 62);
a physiological sensor including one or more light emitters for emitting light toward a skin of the user ([¶35,46,101] one or more emitters can be used in the sensor) and one or more light detectors for receiving reflected light from the skin of the user ([¶35,46,101][FIG. 16] multiple detectors or receivers can be used with the emitters);
an electronic circuit board including a processor configured by instructions stored in a memory ([¶26] processing unit) to analyze data corresponding to the reflected light for automatically and continually determining a heart rate of the user ([¶121,195] the processor determines heart rate) wherein the physiological sensor is position on the electronic circuit board proximal to the skin of the user when the bracelet is placed for use on the user ([FIG4]); and
a first set of one or more batteries for supplying electrical power to the one or more light emitters, the one or more light detectors, and the electronic circuit board ([¶122,123] power source 20 can have a battery); and
Terumoto does not specifically disclose a modular housing comprising a second battery. Defant teaches a similar wearable device that has a modular housing removably couplable to the head portion of the wearable strap, the modular housing comprising a second set of one or more batteries chargeable by an external power source ([FIG. 2, 5, 7][¶26-28] battery pack 30 is a modular housing containing a battery cell charged by AC power), and the modular housing comprising the second set of one or more batteries configured to recharge the first set of one or more batteries in the wearable strap ([FIG. 5, 7][¶27,30-31] the detachable battery 30 charges the internal battery 112) and wherein the first and second set of one or more batteries are configured to cooperatively facilitate continuous monitoring of the heart rate of the user by the wearable strap by recording data from the user under power of the first set of one or more batteries when the modular housing is removed from the wearable strap for recharging of the second set of one or more batteries, and recharging the first set of one or more batteries from the second set of one or more batteries while the wearable strap continues to determine the heart rate of the user when the modular housing is coupled to the wearable strap, wherein the modular housing provides a recharging power source including the second set of one or more batteries for recharging the first set of one or more batteries while the physiological sensor of the head portion continuously monitors the user ([¶27-31] the second battery provides power to charge the main battery for continued operation. ¶31 shows the device operates as normal without the secondary battery attached). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to combine the device of Terumoto with the teachings of Defant in order to allow the device to charge with connecting the main housing to an outlet ([¶22]).
Terumoto as modified does not disclose the modular housing covers a display device of the bracelet when removably coupled thereto, and wherein the modular housing provides a multi-function watch including a visual display device. Al-Ali teaches a similar body worn device that has a screen on the battery module that is attached directly to the housing on the band ([FIG. 12, 16][¶166-168,178] the battery modules have screens for displaying the measured physiological parameters and other information making them multi-functional). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing combine the device of Terumoto with the teachings of Al-Ali in order to allow for touch controls ([¶166-169,178]).
Regarding claim 3, Terumoto discloses the first set of one or more batteries is structurally configured to power the one or more light emitters, the one or more light detectors, and the electronic circuit board during at least one sleep interval of the user ([¶102,201,220] the battery can run the monitoring all day and monitor sleep).
Regarding claim 4, Terumoto discloses the first set of one or more batteries is structurally configured to power the one or more light emitters, the one or more light detectors, and the electronic circuit board for at least one day ([¶201] the battery can run the monitoring all day).
Regarding claim 5, Defant teaches a combination of the first set of one or more batteries and the second set of one or more batteries is configured to enable continuous monitoring of the heart rate of the user by the head portion ([¶27,30] the second battery charges the first to maintain operation).
Regarding claim 6, Terumoto discloses the electronic circuit board includes a storage device for storing data corresponding to the light reflected from the wrist of the user ([¶129] memory 32).
Regarding claim 7, Terumoto discloses the electronic circuit board includes a wireless transmitter for transmitting data corresponding to the light reflected from the wrist of the user to an external computational device ([¶129,130] communication circuit 33 transmits the collected data).
Regarding claims 8 and 20, Defant teaches the modular housing includes a global positioning system (GPS) sensor ([¶30]).
Regarding claim 9, Al-Ali teaches the modular housing includes a processor ([¶139] the battery or the wireless monitor unit can have a processor).
Regarding claim 10, Defant teaches a press-fit mechanism configured to removably couple the modular housing to the wearable strap ([¶23] detent 56 engages with hole 36 resulting in a press-fit).
Regarding claim 11, Terumoto discloses the head portion with a display ([¶142,143] bracelet can have a display or not). Defant teaches the secondary battery housing covering or attaching to the face of the worn device, either of which having indicator LEDs ([FIG2][¶32]) and Al-Ali teaches the battery housing having a display itself ([FIG. 12, 16][¶166-168,178] the battery modules have screens for displaying the measured physiological parameters).
Regarding claims 12 and 19, Al-Ali teaches the visual display device of the modular housing includes a user interface for the wearable physiological measurement system ([¶167] screen on the modular housing is a touch screen to allow interaction).
Regarding claim 13, Terumoto discloses the visual display device of the modular housing includes a user interface configured to display an indication of the heart rate of the user ([¶121,195] the processor determines heart rate).
Regarding claim 15, Terumoto discloses the electronic system is configured to acquire physiological data from the user ([¶121,195] the processor determines heart rate).
Regarding claim 16, Terumoto discloses the electronic system is configured to acquire heart rate data from the user ([¶121,195] the processor determines heart rate).
Regarding claim 17, Defant teaches the processor is configured to be powered by the first battery to continue collecting and processing data from the user while the modular housing is removed ([FIG. 7][¶27,30] the second battery charges the first to maintain operation).
Regarding claim 18, Defant teaches the modular housing couples to the head portion on a surface away from the wrist of the user to permit continued contact of the one or more sensors with the wrist of the user when the modular housing is coupled to the head portion ([FIG. 2] the battery housing couples on the outside).
Response to Arguments
Applicant's arguments filed 4/6/26 have been fully considered but they are not persuasive.
Regarding Applicant’s argument the 103 rejection, specifically that the combination of references do not disclose “the modular housing provides a combination of a multi-function watch including a visual display device and a recharging power source for the first set of one or more batteries for supplying electrical power to components of the bracelet while continuously monitoring the user,” Examiner respectfully disagrees. Terumoto disclose the wrist worn physiological monitor with sensors and a display but not a separate modular housing with a second set of batteries. Defant teaches an ankle worn monitor with a removable secondary battery module and shows in ¶31 that the wearable device still functions normally when the secondary battery is not attached for recharging the primary battery of the ankle device. Thus in combination with Terumoto the device would continue sensing the pulse signals and the modular housing includes the recharging power source.
Regarding Applicant’s arguments that the combination of references do not teach a multi-function display, Examiner respectfully disagrees. Terumoto discloses a monitoring device that has a multifunction display and is worn on the wrist like a watch ([¶109]). Terumoto does not disclose the modular housing with additional batteries and a display of its own. Defant is relied on for the second battery module Al-Ali teaches a similar physiological monitoring device that has a display on its removable modular housing where the screen can show multiple parameters or configurations of information so it is considered multi-function ([¶166-170]).
Regarding Applicant’s argument that the Al-Ali is not analogous art, Examiner respectfully disagrees. Like Terumoto, Al-Ali is directed to a limb worn health monitoring device that allows for freedom of movement ([¶52,59]). Applicant argues that Al-Ali does not teach a wrist worn device that has integrated sensors but Al-Ali is not relied on to teach this aspect and not having this particular configuration does not make it non-analogous to Terumoto. Terumoto discloses the multi-function wristwatch like monitoring device with integrated sensors. Al-Ali is relied on to teach a display on the modular housing that holds the second set of batteries.
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 ANTHONY CATINA whose telephone number is (571)270-5951. The examiner can normally be reached 10-6pm.
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, Robert Chen can be reached on 5712723672. 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.
/MICHAEL A CATINA/Examiner, Art Unit 3791 /TSE CHEN/Supervisory Patent Examiner, Art Unit 3791
Prosecution Insights