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 .
Response to Arguments
Applicant's arguments filed 07 January 2026 have been fully considered but they are not persuasive.
Regarding to double patenting rejection, applicant argues that amended limitation of claims 1 and 17 include comparing steps that the claims of patent 11,925,441 do not recite a comparing step, thus the double patenting rejection should be withdrawn (pages 8-9).
However, the examiner respectfully disagrees.
Patented claim 1 recites “Determine a blood pressure metric based on at least in part on a comparison of the first set of morphological featured and second set of morphological features.” Patented claim 1 further recites peak of second derivative of the first and second PPG waveform as first and second set of morphological features, which are equivalent to the limitation of claim 1.
As set forth in previous office action, the examiner has established that claim 1 of instant application is similar to patented claims 1 and 3-4 of US 11,925,441 and patented claim 1 further recites determining a second derivative of the PPG waveform and a peak of the second derivative. In view of amendment, claim 1 now recite a second derivative and peak of the second derivative and comparison between the peak of the second derivatives to determine a blood pressure metric. In addition, claim 1 recites one or more processors while patented claim 1 recites a controller. Thus, the entire scope of the patented claim still falls within the scope of the examined claim.
Applicant’s arguments, see pages 10-15, filed 07 January 2026, with respect to 103 rejections for claims 1, 3-17, and 19-20 have been fully considered and are persuasive in view of amendment. The 103 rejection of 08 September 2025 has been withdrawn.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 and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 8, 10-13, 15, and 17 of U.S. Patent No. 11, 925,441. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons set forth below.
Claim 1 of instant application is similar to patented claims 1 and 3-4 of US 11,925,441 and patented claim 1 further recites determining a second derivative of the PPG waveform and a peak of the second derivative corresponding to a systolic peak. Moreover, claim 1 recites one or more processors while patented claim 1 recites a controller. Thus, the entire scope of the patented claim falls within the scope of the examined claim.
Claim 13 of instant application is essentially similar to patented claim 8.
Claim 14 of instant application is essentially similar to patented claim 10.
Claim 15 of instant application is essentially similar to patented claim 11.
Claim 16 of instant application is essentially similar to patented claim 12.
Claim 17 of instant application is similar to patented claims 13, 15, and 17 of US 11,925,441 and patented claim 13 further recites determining a second derivative of the PPG waveform and a peak of the second derivative corresponding to a systolic peak. Thus, the entire scope of the patented claim falls within the scope of the examined claim.
Thus, claims 1, 3-4, 8, 10-13, 15, and 17 of U.S. Patent No. 11, 925, 441 in essence is a “species” of the generic invention of claims 1, and 13-17 of the instant application. It has been held that the generic invention is “anticipated” by the “species” of the patent claims.
In such a situation, a later patent to a genus would, necessarily, extend the right to exclude granted by an earlier patent directed to a species or sub-genus. The limitations above (species) claimed in the conflicting patent anticipates the claimed genus in the instant application and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus.
Allowable Subject Matter
Claims 1 and 17 are allowable when amended and/or file a terminal disclaimer to overcome double patenting rejection.
Claims 3-12 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if independent claims 1 and 17 overcomes the double patenting rejection or file a terminal disclaimer.
Reasons for Indicating Allowable Subject Matter
Claims 1 and 17 are allowable when amended or file a terminal disclaimer to overcome double patenting rejection.
The following is an examiner’s statement of reasons for allowance:
The following prior art previously made of record is considered pertinent to the reasons of allowance:
Newberry (US2020/0237317) teaches obtaining PPG signals at the plurality of wavelength, and measuring a delay between the PPG signals at different wavelengths, examining PPG parameters of the waveforms including a systolic peak, diastolic peak, and further teaches characteristics can be determined from second derivative of the PPG waveforms ([0384]).
However, the prior art previously and currently made of record fails to disclose or make obvious the limitation “determine a blood pressure metric from correlation coefficient and also on comparison between the peak of second derivative of the first and second PPG waveforms” in combination with the rest of the limitations of independent claim(s) 1 and 17. There is no reason absent hindsight to have combined and modified teachings of the cited references before the effective filing date of the claimed invention for a user to combine and/or modify with prior arts in order to produce the claimed invention. Furthermore, such a configuration allows identification of accurate blood metrics for the user ([0126]) advantages claimed by present invention.
Therefore, claim(s) 1 and 17 overcome(s) previously and currently cited prior art and is/are found to be allowable.
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 PATRICIA J PARK whose telephone number is (571)270-1788. The examiner can normally be reached Monday-Thursday 8 am - 3 pm.
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/PATRICIA J PARK/Primary Examiner, Art Unit 3798