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 with traverse of Species I, sub-species B3 in the reply filed on 6/19/2026 is acknowledged. The traversal is on the ground(s) that the claims define a single inventive concept; the claims are generic to all sub-species; and the sub-species are not patentable distinct. This is found persuasive and the restriction requirement has been withdraw. Claims 1-20 are all currently pending and are under examination. Claim 20 is no longer withdrawn.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,589,793 in view of Hwang 2020/0315480. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of instant application and patented claim 1 of US 11,589,793 recite same limitations of an electrocardiogram measurement apparatus/device comprising a first and second electrodes, two amplifiers, and a third electrode, an AD converter, a microcontroller, a communication means, a battery, two amplifiers receive and amplify electrocardiogram voltages simultaneously. The patent does not disclose a fourth electrode. However, Hwang disclose utilizing a fourth electrode connected to an electrode driver (claim 17) for the purpose of removing power line interference from the detected signals (par. [0076]). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the Patent to include a fourth electrode connected to the electrode driver, as taught and suggested by Hwang, for the purpose of removing power line interference from the detected signals.
Claim 20 contains all of the same limitations as addressed with claim 1 above but adds one more electrode for detection. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include four sensing electrodes instead of three, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,642,066 in view of Hwang 2020/0315480. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of instant application and patented claim 1 of US 11,642,066 recite same limitations of an electrocardiogram measurement apparatus/device comprising a first and second electrodes, two amplifiers, and a third electrode, an AD converter, a microcontroller, a communication means, a battery, two amplifiers receive and amplify electrocardiogram voltages simultaneously. The patent does not disclose a fourth electrode. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the Patent to include a fourth electrode connected to the electrode driver, as taught and suggested by Hwang, for the purpose of removing power line interference from the detected signals.
Claim 20 contains all of the same limitations as addressed with claim 1 above but adds one more electrode for detection. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include four sensing electrodes instead of three, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,931,156 Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of instant application and patented claim 1 of US 11,931,156 recite same limitations of an electrocardiogram measurement apparatus/device comprising a first and second electrodes, two amplifiers, and a third electrode and fourth electrode, an AD converter, a microcontroller, a communication means, a battery, two amplifiers receive and amplify electrocardiogram voltages simultaneously.
Claim 20 contains all of the same limitations as addressed with claim 1 above but adds one more electrode for detection. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include four sensing electrodes instead of three, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,414,724. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of instant application and patented claim 1 of US 12,414,724 recite same limitations of an electrocardiogram measurement apparatus/device comprising a first and second electrodes, two amplifiers, and a third electrode and fourth electrode, an AD converter, a microcontroller, a communication means, a battery, two amplifiers receive and amplify electrocardiogram voltages simultaneously.
Claim 20 contains all of the same limitations as addressed with claim 1 above but adds one more electrode for detection. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include four sensing electrodes instead of three, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,414,723 in view of Hwang 2020/0315480. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of instant application and patented claim 1 of US 11,642,066 recite same limitations of an electrocardiogram measurement apparatus/device comprising a first and second electrodes, two amplifiers, and a third electrode, an AD converter, a microcontroller, a communication means, a battery, two amplifiers receive and amplify electrocardiogram voltages simultaneously. The patent does not disclose a fourth electrode. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the Patent to include a fourth electrode connected to the electrode driver, as taught and suggested by Hwang, for the purpose of removing power line interference from the detected signals.
Claim 20 contains all of the same limitations as addressed with claim 1 above but adds one more electrode for detection. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include four sensing electrodes instead of three, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
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 1-20 are 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 1 states “…of a first and a second body parts in contact therewith” which effectively claims the human body by positively reciting the connection to the human body. To overcome the rejection, the Examiner suggests amending Claim 1 to read “a first and second electrode adapted to be in contact with a first and a second body part, respectively, the first and second electrodes configured to receive respective first and second electrocardiogram voltages from the first and second body parts” or some variant thereof.
Claim 2 recites “…the electrode driver and the electrode connected to the output of the electrode driver contact the same body part of a user” which positively recites the connection to the human body. The Examiner suggests amending the claim to read “the electrode driver and the electrode connected to the output of the electrode driver are adapted to contact the same body part of a user.”
The same issues exists in Claims 3, 17 and 20. Appropriate correction is respectfully requested.
Allowable Subject Matter
None of the claims have been rejected with prior art. They are not currently in condition for allowance due to the applied 35 USC 101 rejections and double patenting rejections. Correcting the 35 USC 101 issues and filing the appropriate Terminal Disclaimers would place the claims in condition for allowance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Saldivar (2018/0271392) has a three electrode ECG embodiment on a smartwatch.
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/ALLEN PORTER/Primary Examiner, Art Unit 3796
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