Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
This is the second reissue of U.S. Patent No. 10,378,975 (hereinafter the ‘975 patent). The first reissue, issued as RE49,710 with claims 1-30.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
Specifically, the alleged error of original claim 1 that it “need not comprise both a first sensor and a second sensor” and that of original claim 9 that it “need not comprise all three sensors” were corrected by claim amendments in the previous reissue. Moreover, these errors do not apply to amended claims 1 and 9 in the instant reissue as claim 1 recites both first and second sensors and claim 9 recites three sensors.
If the same error corrected in the parent is also being corrected in the continuation reissue application, but the error is being corrected in a different way, a statement is needed to explain compliance with 37 CFR 1.175(f)(2) for a reissue application filed on or after September 16, 2012. See MPEP 1414 II.D.
Patent Owner is reminded that the same claims of the patent cannot be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim, in either its original or amended versions. As patent claims 1-16 were pursued in the previous reissue, they cannot be pursued in the instant reissue and must be canceled.
Claims 1-13, 15, and 16 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Consent
Upon filing of a new declaration, applicant must also file a new consent because the copy of the consent of the parent reissue application does not indicate that the assignee has consented to the addition of the new error correction of the continuation reissue application to the original patent.
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
The Consent was signed by Nate Sunwoo. However, the Power of Attorney filed 24 October 2023 appoints practitioners associated with Customer Number 22,852 and Mr. Sunwoo is not associated with that Customer Number.
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 1-13, 15, and 16 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 joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
MPEP 1451 I provides a discussion on how to present patent claims in a reissue divisional. Note that this discussion is wholly applicable to a continuation reissue, as stated in MPEP 1451 Il. Notably, once a claim in the patent has been reissued, it does not exist in the original patent and thus, cannot be reissued from the original patent in another reissue patent. As a result, claims 1-13, 15, and 16 present one coverage in reissue application 17/401,256 (now RE49,710) and another in the present continuation reissue application. Claims 1-13, 15, and 16 in the continuation reissue application should be canceled and introduced as new claims. Note that the physical cancellation of claims 1-13, 15, and 16 in the continuation reissue application will not prejudice applicant’s rights in the amended versions of claims 1-16 because those rights are retained via the first reissue application. Claims 1-16 continue to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 9, 11, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2014/204323 to O’Brien et al. (hereinafter O’Brien).
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With respect to claim 9, O’Brien teaches an article 54 having at least one device, the device comprising a first sensor comprising a first sensing material and a first insulating material 90c, a second sensor spaced vertically from the first sensor across the first insulating material, the second sensor comprising a second sensing material and a second insulating material 90d, and a third sensor spaced vertically from the second sensor across the second insulating material, the third sensor comprising a third sensing material. See annotated Figures 18 and 26; page 17, line 32 to page 18, line 5.
As to claim 11, the sensor “may comprise a fabric electrode and a polymer
dielectric” or “may comprise a polymer electrode and a fabric dielectric.” See page 6, lines 22-25.
With respect to claim 15, the sensor is effective in measuring pressure resulting from compression of the sensor stack. See page 18, lines 12-19.
Claim(s) 28 and 30 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US 10,405,779 to Merrell et al. (hereinafter Merrell).
Merrell teaches a wearable device 200 comprising one or more sensors 250 positioned on a flexible support material 210 (Figure 2A), and a receiver device including at least one non-transitory computer-readable medium configured to store instructions and a processor configured to execute the instructions (col.21, lines 3-23). Operations performed by the processor include converting the received voltage data to acceleration or pressure data. The system may use a transfer function that has been trained using a machine learning algorithm to find key data points related to acceleration. The system may store the acceleration or pressure data in the memory. See col.17, line 53 to col.18, line 8. The pressure data obtained in a laboratory setting can be used to evaluate human performance during various physical activity (e.g., running patterns), and diagnosis and treatment of various common pathologies (e.g., diabetic neuropathy). See col.18, lines 18-37.
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) 10, 16-18, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien.
With respect to claim 10, in the stacked embodiment illustrated in Figure 26, the top and bottom side of the article are electrodes, not insulating material. However, O’Brien additionally discloses an embodiment of stacked sensors wherein the dielectric layer 20 is positioned on a top and bottom side of the stack. See Figure 7. As this alternative arrangement is also used as a sensor and would have been effective in preventing fluids or dirt from contacting the electrodes, it would have been an obvious modification to the article of Figure 26.
As to claim 16, O’Brien discloses use of the sensors in stretch and compression measurements specifically. See page 2, lines 34-35 and page 18, lines 16-19. Additionally, O’Brien notes that deformation of the electrode causes a change in capacitance or resistance based on a change in thickness. See page 8, lines 16-24. As bending the sensor will also cause a change in thickness of the sensor, it would have been obvious to detect bending in addition to compression and stretch in the sensors of O’Brien.
With respect to claims 17-18, the sensors of O’Brien are disclosed to “provide variation to the sensing capacitance and/or resistance” according to the degree of stretching/compression. See page 8, lines 8-14. Thus, the sensors of O’Brien are capable of being used in the claimed manner. Furthermore, whether the sensors do or do not have orthogonality properties is a function of the intended use of the sensors and whether they have been placed in an orthogonal relationship. The sensors of O’Brien are capable of being placed in an orthogonal relationship.
As to claim 22, Figure 18 demonstrates sensors placed on articles of clothing for detecting deformation thereof. See page 3, lines 12-22. O’Brien further teaches interrogation electronics 81 and a software interface 82 for interaction and processing of the sensor signals (Figure 23). It would have been obvious to use a processor as a part of the interrogation electronics and software interface as providing a known and established means of interrogating signals/data.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claim 9 above, and further in view of US 2018/0085046 to Ashoori et al. (hereinafter Ashoori).
O’Brien is silent as to any of the three sensing materials comprising a dopant. Ashoori discloses position sensors comprising conductive fabric that has been coated or embedded with a conductive material, such as titanium (a group IV element), copper, gold, silver, and nickel (all transition metals). See para [0055]. As O’Brien discloses that the electrodes/sensing material are electrically conductive, it would have been obvious to use the conductive materials/dopants disclosed by Ashoori to be used in a fabric sensor like that of O’Brien.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claim 9 above, and further in view of US 2018/0116559 to Otaka et al. (hereinafter Otaka).
O’Brien does not disclose the thickness of the sensing material but does recognize that increasing overall thickness of the sensing article will increase the capacitance and sensitivity. See page 18, lines 1-5. Like O’Brien, Otaka teaches a capacitive sensor. Otaka discloses the electrode sensing layer is preferably 0.1 to 10 µm in order to optimize the conductivity of the layer and measurement accuracy (i.e. sensitivity). See paras [0158-0159]. One of ordinary skill in the art would have found it obvious to optimize the thickness of the sensing material in O’Brien for the same purpose.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claim 9 above, and further in view of US 2017/0202724 to De Rossi et al. (hereinafter De Rossi).
O’Brien is silent as to use of an inertial measurement unit and processor configured to determine motion or gait patterns. De Rossi discloses a system using a flexible suit 100 comprising conductive fabric sensors (para [0203]) in combination with an inertial measurement unit for measuring gait (para [0310]). An IMU will necessarily capture data in at least 3-dimensions. De Rossi discloses that 2-D measurements, such as tension, are integrated with data from the IMU “to ensure robust control” which also “ensures a timely delivery of assistance during only the energy-relevant phases of gait for each muscle group (e.g. forward propulsion for the ankle joint during level walking, early stance for hip extension during uphill walking, etc.). Significantly, this approach provides an appropriate level of energy injection for a patient or wearer based on the severity of their impairment (or need for assistance) and desired movement, without the need to monitor the activity of the underlying biological muscle.” See para [0118]. It would have been obvious to combine the fabric sensors of O’Brien with the robust control system of De Rossi in order to expand the utility of the sensors to assistive garments like that of De Rossi. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claim 9 above, and further in view of Merrell.
O’Brien does not teach sensing a pressure in a shoe or sock and a processor configured to detect weight distribution. Merrell teaches a flexible sensor that may be placed in a shoe to produce electrical data when compressed. The voltage data generated by the self-sensing polymeric foam is compared to a profile, and the wearer is provided with physical feedback in real time to correct gait, weight transfer, or other differences with the profile data. See col.1, lines 47-56. Thus, Merrell evidences another utility for the flexible sensors of O’Brien. One of ordinary skill in the art to further use the sensors of O’Brien in shoes, as O’Brien already discloses their use in garments for determining position. Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Brien as applied to claim 9 above, and further in view of US 2017/0261388 to Ma et al. (hereinafter Ma).
O’Brien does not disclose use of the sensor for sensing pressure from a user’s hand and a processor configured to detect grip strength or hand placement. Ma discloses a flexible sensor that may be used to measure grip/hand placement. See para [0034]. Ma further teaches a processor comprising stored instructions to monitor the output of the sensor. It would have been obvious to employ the flexible sensors of O’Brien in the manner of Ma because known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Merrell as applied to claim 28 above, and further in view of De Rossi.
Merrell discloses the wearable device is a shoe used in gait analysis but is silent as to use of an inertial measurement unit. De Rossi discloses a system comprising conductive fabric sensors (para [0203]) in combination with an inertial measurement unit for measuring gait (para [0310]). An IMU will capture data in at least 3-dimensions. De Rossi discloses that the data from the sensors 120 (e.g., strain sensors, soft joint angle sensors, footswitches, IMUS, gyros, etc.) can be used to accurately segment the gait cycle See para [0119]. It would have been obvious to combine the IMUs of De Rossi with the flexible sensors of Merrell in order to provide an improved means of gait measurement to the shoes of Merrell.
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-8 and 30 of U.S. Patent No. RE49,710 (hereinafter the reissued patent).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Each and every element of claim 1 is recited in claim 30 of the reissued patent. The instant claim recites the first and second conductive threads are “embedded” in the layers while claim 30 of the reissued patent recites that they are sewn into the layers. However, a fiber that has been sewn into a layer becomes embedded and thus, claim 1 is rendered obvious by claim 30 of the reissued patent.
Claims 2-8 are recited in full by claims 2-8 of the reissued patent.
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,605,680 (hereinafter the ‘680 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other.
Every element of claim 1 is recited by claim 1 of the ‘680 patent except for a “first sensor.” However, claim 1 of the ‘680 patent recites a device “comprising at least one sensor.” Thus, it would have been obvious to add an additional sensor to the device of the ‘680 patent as it has been held obvious to duplicate parts for a multiplied effect. St. Regis Paper Co. v. Bemis Co., Inc., 193 USPQ 8,11 (7th Cir. 1977). In this instance, adding an additional sensor would have increased sensitivity across the device.
Claims 2-8 are recited in full by claims 2-8 of the ‘680 patent.
Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to
timely apprise the Office of any prior or concurrent proceeding in which Patent No.
10,378,975 is or was involved. These proceedings would include any trial before the
Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental
examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to
timely apprise the Office of any information which is material to patentability of the
claims under consideration in this reissue application. These obligations rest with each
individual associated with the filing and prosecution of this application for reissue. See
also MPEP §§ 1404, 1442.01 and 1442.04.
Communication
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH L MCKANE whose telephone number is 571-272-1275. The examiner can normally be reached on 6:30am-4:30pm (ET) Mon-Thurs.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor Patricia Engle can be reached on 571-272-6660. The fax phone number for
the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained at
https://patentcenter.uspto.gov/. Should you have questions on access to the Patent
Center system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
free). If you would like assistance from a USPTO Customer Service Representative or
access to the automated information system, call 800-786-9199 (IN USA OR CANADA)
or 571-272-1000.
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEONARDO ANDUJAR/Primary Examiner, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991