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 .
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.
Notice of Amendment
In response to the amendment(s) filed on 5/19/26, amended claim(s) 1-4, 7, and 10 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
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.
Claim 10 is 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.
For claim 10, the claim language “a retention protrusion” appears to be new matter. Claim 1, from which claim 10 depends, recites “at least one protrusion.” Therefore, the retention protrusion in claim 10 is a different protrusion from the protrusion recited in claim 1, resulting in two different protrusions. However, the examiner cannot find support for two different protrusions in a single embodiment. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim.
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(s) 7 and 10 is/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.
For claim 7, the claim term “the short-range communications circuit” lacks antecedent basis. The claim is examined as depending from claim 4.
For claim 10, the claim term “a retention protrusion” (line 2) is ambiguous. Claim 1, from which claim 10 depends, already recites “at least one protrusion.” Applicant’s specification only provides support for 1 protrusion. Therefore, it is unclear whether the same protrusion is being referred to or whether these are different protrusions. The claim is examined under the former interpretation.
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.
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) 1-6 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2019/0350168 to Shi in view of U.S. Patent Application Publication No. 2020/0405233 to Sakkalis et al. (hereinafter “Sakkalis”).
For claim 1, Shi discloses a biometric monitoring device for an ear of an animal (Abstract) comprises:
a male portion (1) (Fig. 1) (para [0036]) configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed on a first side of the ear (as can be seen in Fig. 1) comprising:
a base (11) (Figs. 1 and 3) (para [0036]) having an upper surface (unlabeled, but surface that faces towards element 2 in Fig. 1) configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed towards the first side of the ear (as can be seen in Fig. 1), wherein the upper surface includes a plurality of openings (181) (Fig. 3a) (para [0036]); and
at least one protrusion (3) (Figs. 1 and 3) (para [0036]) disposed upon the upper surface of the base (as can be seen in Figs. 1 and 3), wherein an upper portion of the at least one protrusion (unlabeled, but as can be seen in Figs. 1 and 3) is configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed through the ear from the first side of the ear to a second side of the ear (para [0036]); and
a female portion (2) (Fig. 1) (para [0036]) configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed on a second side of the ear (as can be seen in Fig. 1) comprising:
a housing (21) (Fig. 2) (para [0036]) having a lower surface (unlabeled, but as can be seen in Figs 1-2) configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed towards a second side of the ear (as can be seen in Fig. 1);
an internal opening (23) (Figs 1-2) (para [0036]) in the lower surface of the housing (as can be seen in Figs. 1-2), wherein the internal opening is configured to (Examiner’s Note: functional language/intended use, i.e., capable of) receive the upper portion of the protrusion (as can be seen in Figs. 1-2) (also see para [0036]);
a retention portion (4) (Fig. 2) (para [0036]) disposed within the housing (as can be seen in Fig. 2) (also see para [0036]), wherein the retention portion is configured to (Examiner’s Note: functional language/intended use, i.e., capable of) releasably retain the upper portion of the protrusion when the first protrusion is disposed through the internal opening (para [0036]) (also see para [0035]), wherein the male portion is secured relative to the female portion when the retention portion retains the upper portion of the protrusion (para [0036]) (also see para [0035]); and
a plurality of electronic components (Examiner’s Note: made up of the elements it includes), including a battery (16) (Fig. 2) (para [0036]), a processor (13) (Fig. 2) (para [0036]), and a temperature sensor (7) (Fig. 2) (para [0036]).
Shi does not expressly disclose that the plurality of electronic components is disposed within the housing; and a thermally conductive ring disposed upon the lower surface of the housing, wherein the ring is configured to be disposed against the second side of the ear and wherein the thermally conductive ring is thermally coupled to the temperature sensor.
However, Sakkalis teaches a plurality of electronics components within a housing (para [0059] and [0065]-[0067]); and a thermally conductive ring disposed upon the lower surface of the housing (para [0058]), wherein the ring is configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed against the second side of the ear (para [0058]) and wherein the thermally conductive ring is thermally coupled to a temperature sensor (para [0058] and [0064]).
It would have been obvious to a skilled artisan to modify Shi such that the plurality of electronic components is disposed within the housing; and a thermally conductive ring disposed upon the lower surface of the housing, wherein the ring is configured to be disposed against the second side of the ear and wherein the thermally conductive ring is thermally coupled to the temperature sensor, in view of the teachings of Sakkalis, for the obvious advantage of providing a thermal conductive transfer surface to more efficiently transfer heat from the ear of the animal to the temperature sensor so that the temperature sensor gets a more accurate reading.
For claim 2, Shi further discloses wherein the temperature sensor is characterized by an electronic characteristic in response to a temperature of the temperature sensor; and wherein the electronic characteristic is selected from a group consisting of: an electronic resistance, and a voltage (“JTD503F395D12087N-8 sensors provided by Dongguan Amycom Electronics Co.,” para [0038], which are thermistor sensors1).
For claim 3, Shi further discloses wherein the housing comprises a material selected from a group consisting of: plastic, metal, and silicone (para [0036]).
For claim 4, Shi further discloses wherein the plurality of electronic components includes a short-range communications circuit selected from a group consisting of: near-field communication (NFC), ultrawide band (UWB), Radio Frequency Identification (RFID), and Bluetooth (BLE) (para [0036]).
For claim 5, Shi does not expressly disclose wherein the plurality of electronic components further includes an electronic component selected from the group consisting of: an accelerometer, a gyroscope, a humidity sensor, an IR sensor, a magnetometer, a heart rate sensor, an electrocardiogram (ECG) sensor, a photoplethysmography (PPG) sensor, a microphone and a pressure sensor.
However, Sakkalis teaches wherein the plurality of electronic components further includes an electronic component selected from the group consisting of: an accelerometer, a gyroscope, a humidity sensor, an IR sensor, a magnetometer, a heart rate sensor, an electrocardiogram (ECG) sensor, a photoplethysmography (PPG) sensor, a microphone and a pressure sensor (para [0060] and [0064]).
It would have been obvious to a skilled artisan to modify Shi wherein the plurality of electronic components further includes an electronic component selected from the group consisting of: an accelerometer, a gyroscope, a humidity sensor, an IR sensor, a magnetometer, a heart rate sensor, an electrocardiogram (ECG) sensor, a photoplethysmography (PPG) sensor, a microphone and a pressure sensor, in view of the teachings of Sakkalis, for the obvious advantage of measuring an additional variable so that multiple variables may be considered to ensure a more accurate temperature measurement in case one variable has artifacts or noise in its signal.
For claim 6, Shi, as modified, further discloses wherein a material for the thermally conductive ring is selected from a group consisting of: silver or silver alloy, copper or copper alloy, aluminum compound, gold, diamond, silicon nitride, silicon carbide, graphite, and graphene (para [0084]).
For claim 8, Shi further discloses wherein the device further comprises a spacer portion (portion of element 11, see Figs. 1 and 3) configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed between the first side of the ear and the upper surface of the base (unlabeled, the central portion of element 11 being capable of being between the ear and the surface where reference numeral “8” points to in Fig. 1, see Figs. 1 and 3), wherein the spacer portion includes a first side (unlabeled first side, see Figs. 1-3), wherein first portions (the central of 11, see Figs. 1 and 3) of the first side are configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed against the first side of the ear (see Figs. 1-3), wherein second portions (portion of 11 distanced away from the first side of 11, which can include the unlabeled rim or lip around the periphery of 11 and distances from the central portion of 11) of the first side are configured to (Examiner’s Note: functional language/intended use, i.e., capable of) be disposed a distance away from the first side of the ear (see Figs. 1 and 3); and wherein the second portions are configured to (Examiner’s Note: functional language/intended use, i.e., capable of) allow air to flow between the spacer portion and the first side of the ear (see Figs. 1 and 3).
For claim 9, Shi further discloses wherein the spacer portion is configured to (Examiner’s Note: functional language/intended use, i.e., capable of) rotate relative to the at least one protrusion (see the threads in element 3, which cause it to rotate relative to element 11).
For claim 10, Shi further discloses wherein the spacer portion or the male portion includes a retention protrusion (as can be seen in Figs. 1 and 3); and wherein the male portion or the spacer portion comprises an opening (as can be seen in Figs. 1 and 3), wherein the opening is configured to receive and physically retain the retention protrusion of the spacer portion or the male portion (as can be seen in Figs. 1 and 3).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shi in view of Sakkalis, and further in view of U.S. Patent Application Publication No. 2019/0335715 to Hicks et al. (hereinafter “Hicks”).
For claim 7, Shi and Sakkalis do not expressly disclose wherein the plurality of electronic components includes a magnetic switch configured to be activated, and wherein the short-range communications circuit is configured to output data to a remote computing device in response to an activation of the magnetic switch.
However, Hicks teaches a magnetic switch configured to be activated (para [0083], and wherein a short-range communications circuit is configured to output data to a remote computing device in response to an activation of the magnetic switch (para [0085]-[0086]).
It would have been obvious to a skilled artisan to modify Shi wherein the plurality of electronic components includes a magnetic switch configured to be activated, and wherein the short-range communications circuit is configured to output data to a remote computing device in response to an activation of the magnetic switch, in view of the teachings of Hicks, for the obvious advantage of conserving power by keeping the tag is a sleep mode until it is time to wake up and transmit data.
Response to Arguments
Applicant’s arguments filed 5/19/26 have been fully considered, but they are not persuasive.
With respect to the claim objections, Applicant’s amendments and arguments are persuasive and thus the objections are withdrawn.
With respect to the 112 rejections, Applicant’s amendments and arguments are persuasive with respect to most of the rejections. The remaining rejections are maintained for the reasoning described above.
With respect to the 103 rejections, Applicant’s arguments will be treated in the order they were presented. With respect to the first argument, art is analogous if it is in the same field or endeavor or reasonably pertinent to a problem faced by the inventor. Here, para [0005] of Applicant’s specification identifies that one of the problems faced by the inventor is more “higher consistency readings.” Applicant’s specification recognizes that thermally conductive ring achieves because it “thermally conducts heat from the [body surface] to the temperature sensor.” This is exactly what Sakkalis’ thermal ring does: it conducts heat from the body surface to the temperature sensor (see para [0058] of Sakkalis). Therefore, Sakkalis is reasonably pertinent to the problem faced by the inventor. With respect to the second argument, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection does not rely on either Shi or Sakkalis exclusively for what is argued by Applicant. Instead, the rejection relies on Shi for a female portion, that the female portion includes a housing, and for electronic components. But Shi does not disclose that the electronic components are in a housing with a thermally conductive ring disposed on a lower surface of that housing. However, Sakkalis teaches electronic components in a housing with a thermally conductive ring disposed on a lower surface of that housing. Therefore, a skilled artisan would make the modification of Shi in view of Sakkalis to arrive at the claimed subject matter for the rationale explained above. That is the position that the rejection takes. With respect to the third argument, the motivation is not that Shi doesn’t already measure temperature, it’s that is improves heat transfer (see the rejection above). Therefore, this argument is somewhat of a strawman because it doesn’t address the actual motivational statement. With respect to the fourth argument, Sakkalis actually substantiates the position take in the Office action at para [0065] of Sakkalis. With respect to the fifth argument, claims 8-10 recite a lot of “configured to” language which is examined as functional language/intended use. Therefore, if the cited structure in the prior art is capable of performing the functional language/intended use, then it anticipates the claim language. So although Applicant’s specification may describe the male housing as performing the functional language, if the prior art is capable of performing these functions with the housing(s) being cited, then the citations read on the claim language.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
1 See https://sourcing.hktdc.com/en/Product-Detail/Thermistor-Sensor-1574142; accessed 2/7/26)
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