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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
The examiner notes that this statement is merely to indicate that the certified foreign copy was received in the record on file, and that the applicant will receive a separate Petition Decision to decide if the petition to restore the foreign priority filed on 6/24/2026 is approved or denied.
Response to Amendments and Arguments/Remarks
Applicant's amendments and arguments/remarks filed 6/15/2026 with regards to the 35 USC 112(f) interpretation and 35 USC 112(a) and (b) rejections of claims 1 and 7-10 and have been fully considered but they are not persuasive.
The applicant has amended the claims to remove functional language regarding the grip sensing module and the determining module and argues that such removal of the limitations renders the indefinite and written description rejections moot. The examiner finds this to be non-persuasive because the claims still recite the limitations of a grip sensing module and determining module which are still only defined functionally. These limitations still receive a 112(f) interpretation because there is no structure to modify them, they use the nonce term “module” and are only described functionally. In this instance “the grip sensing module” and “determining module” can be interpreted as a “module for sensing grip” and “a module for receiving the pressing time and the gripping strength signal for determining”. As they invoke a 35 USC 112(f) means plus function interpretation, we go to the specification to determines the corresponding structure that provides the claimed function. As previously noted, paragraphs [0035] and [0037] correspond to the grip sensing module and the determining module, respectively, but merely recite the functions performed by the module without any corresponding structure. As there is no corresponding structure for the means plus function limitations, the claims are still rejected under 35 USC 112(a) written description and 35 USC 112(b) as indefinite. The written description rejection stemming from there not being sufficient written description to show that the applicant had possession of the claimed modules at the time of filing since it is silent to the structure which performs the claimed functions. The indefinite issue stemming from the limitations being indefinite because it is unclear in view of the applicant’s specification what the metes and bounds of these limitations are (said another way, it is unclear what is required from the prior art to meet the limitations of a grip sensing module and/or a determining module as there is no corresponding structure as to what they comprise/composed of). Accordingly, these claims are still rejected as outlined in the office action below.
The examiner encourages the applicant to remove the grip sensing module from the claims and instead rely on the control unit being connected to the sensing member for receiving the sensing signal which represents a gripping strength. The examiner further encourages the applicant to cancel the determining module and instead recite that the control system is configured to determine an assessment result based on the received pressing time and sensing signal representing grip strength, or similar.
Applicant’s amendments and arguments/remarks with respect to the 35 USC 103 rejection of claims 1 and 7-10 have been fully considered but are moot in view of the new grounds of rejection presented below. Specifically, the applicant has amended claim 1 to incorporate further specifying limitations of the gripping portion that were previously recited in claim 2 (now cancelled). The examiner has updated the rejection to include the DeBeliso et al (US 7,631,557 B2) and Yamada et al (US 2020/0386632 A1) references which were previously cited in the non-final rejection mailed 3/17/2026 (see page 13 of the office action). The updated rejection is provided below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“control unit”, “sensing member”, “grip sensing module” and “determining module” in claims 1, 2 and 7-10;
“communication module” in claims 9 and 10
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The corresponding structure from the specification for these limitations are identified as follows:
“control unit” is described in paragraph [0032] as MCU, RAM, or ROM provided to execute all the processing and operation, or equivalents thereof.
“sensing member” is described in paragraph [0030] as buttons and sensors for generating signals when the subject exerts a hold on the buttons, or equivalents thereof.
“grip sensing module” corresponding structure does not appear to be recited within specification, see the 35 USC 112 rejections below.
“determining module” corresponding structure does not appear to be recited within the specification, see the 35 USC 112 rejections below.
“communication module” is described in paragraph [0038] as a wireless communication module to transmit the assessing result in a wireless way, or equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1 and 7-10 are 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.
Specifically, independent claim 1 invokes 35 USC 112(f) interpretation in the recitation of the “grip sensing module” and the “determining module”, however the specification fails to provide corresponding structure to the 112(f) means plus function invocation. The limitations can be read as a module for sensing grip and a module for determining. As such, the claims lack written description support as to what structure provides the claimed functions of “sensing grip” for the grip sensing module; and “generates an assessing result by comparing the gripping strength with a gripping strength threshold and comparing the pressing time with a time threshold, and assessing result is shown on the screen” for the determining module. In the absence of any structure as to what provides the claimed functional limitations, the specification fails to show written description support to show the applicant had possession at the time of filing. See MPEP 2181 II.
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 and 7-10 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.
Claim limitations “grip sensing module” and “determining module” are recited in independent claim 1 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the specification fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. A review of the specification in paragraphs [0031]-[0038] appears to merely reiterate the function of the respective modules without providing any corresponding structure, thus making the metes and bounds of the claims indefinite as it is unclear as to what structure is required to provide said functions (e.g. is the grip sensing module and the determining module a piece of software, a piece of hardware, or combinations thereof configured to provide the claimed function?). Therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
For the purpose of advancing prosecution and providing compact prosecution, the examiner will interpret the grip sensing module and the determining module as any structure capable of providing said function.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer et al (US 2013/0345524 A1) in view of Dromerick et al (US 2015/0245789 A1), DeBeliso et al (US 7,631,557 B2) and Yamada et al (US 2020/0386632 A1).
Regarding claims 1 and 7-10; Meyer discloses a device for assessing early dementia (paragraph [0003] and [0019]) by testing gripping strength (paragraph [0076], [0094]; figure 12), comprising:
a main member (elements 101, 201, 701) having a display portion (elements 110, 207) and a gripping portion (handle elements 211, 212, 702) wherein the display portion has a screen to show information, and the gripping portion is connected to the display portion (paragraphs [0058]-[0059],[0061],[0071]; figures 1, 2a and 7);
a sensing member (elements 112, 213, and 703) connected to the gripping portion (elements 211, 212 and 702) to be pressed by a subject to generate a sensing signal (wherein pressure sensors are pressed when gripping to generate a grip force signal; paragraphs [0058]-[0061],[0071]);
a control system (figure 1) provided in the main member and having a control unit (element 104), a timer (inherent as it is recited that it performs tests for predetermined amounts of time via the processor and thus must have something which can measure time, paragraph [0093]), a grip sensing module (combined 104 and 105), and a determining module (combined 104 and 105) (wherein the examiner notes that the processing unit and memory include software to perform tests which receive signals from pressure sensor elements 112, 213, 703 and assess neurological function; paragraph [0064]-[0067]; figures 1, 2a, 3 and 7);
wherein the timer is electrically connected to the control unit to record a time period of the subject pressing the sensing member (wherein the CPU and memory provide a time period to press the pressure sensors and record the corresponding signals; paragraphs [0076] and [0093]-[0094]; figure 12);
wherein the grip sensing module is electrically connected to the control unit and the sensing member (wherein CPU and corresponding programming on memory cause device to receive force signals from pressure sensor element 112, 213 and 703 to determine grip strength; paragraph [0076] and [0093]-[0094]; figures 1, 2a, 7 and 12);
wherein the determining module is electrically connected to the control unit to receive the pressing time and the gripping strength signal (Wherein CPU and corresponding programming on memory receive the gripping strength signal for the predetermined amount of time; paragraphs [0076] and [0093]-[0094]);
wherein the gripping portion (handle elements 211) is provided with grooves (element 214) and the sensing member (pressure sensors, elements 213) mounted in the gripping portion (soft grip, element 212) and in the sidewalls of the grooves (wherein the pressure sensing elements 213 are provided in the soft gripping portion 212 which extends into groove elements 214; see figure 2a).
However, Meyer differs from the instant invention in that it does not explicitly disclose the timer is configured to record a pressing time of the subject pressing the sensing member and the determining module comparing the pressing time with a time threshold when making the assessment; or that the gripping portion is provided with four grooves on a lateral side and two grooves on an opposite lateral side, and the sensing member has six buttons mounted on sidewalls of the grooves respectively to be pressed by fingers of the subject.
Dromerick teaches a similar system (figure 1) for assessing cognitive impairment through grip strength using a grip sensing device (hand dynamometer element 2) (paragraphs [0026]-[0029]; figure 1 and 2) which includes a timer to record a pressing time of the subject pressing the sensing member and provides a determining module which generates an assessing result by comparing the grip strength signal with a gripping strength threshold and comparing the pressing time with a pressing time threshold (wherein system receives grip strength and compares to normalized ranges and further records reaction times and error correction phase times to generates metrics to assess if cognitive ability is indicative of dementia ; paragraphs [0031]-[0037]; [0052]; figures 1-7).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Meyer to further record a pressing time of the subject pressing the sensing member and comparing the pressing time to a time threshold in addition to gripping strength and gripping strength thresholds as taught by Dromerick in order to provide additional metrics to assess the cognitive state/dementia screening of the user.
Further regarding claims 1 and 7-10; the Meyer/Dromerick combination discloses a gripping portion (element 211, 702) which measures gripping strength using pressure sensors (elements 213, 703) within soft grips (element 212, 703) to be pressed by fingers/hands of the subject (figures 2a, 7). However, it does not explicitly disclose the gripping portion is provided with 4 grooves on a lateral side and two grooves on an opposite lateral side, the sensing member has six buttons mounted on sidewalls of the grooves respectively.
DeBeliso teaches a known ergonomic grip (element 310; figure 7) for a grip force measurement device (element 10, 310), wherein the gripping portion is provided with 4 grooves on a lateral side and two grooves on an opposite lateral side with sensing member for measuring grip strength (tactile array, element 20 disposed around grip; column 5, lines 15-45; figures 3 and 7).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the gripping portions of the Meyer/Dromerick combination to have 4 grooves on a lateral side and two grooves on an opposite lateral side, the sensing member on sidewalls of the grooves as taught by DeBeliso as simple substitution of one known element for another to yield a predictable result (in this case, Meyer’s gripping portion utilizing pressure sensors with DeBeliso’s ergonomic gripping portion) in order to provide a more ergonomic gripping portion for the subject.
Further regarding claims 1 and 7-10; the Meyer/Dromerick/DeBeliso combination described above discloses grooves with sensing means within the grooves. However, the combination does not explicitly disclose that the sensing means are buttons mounted to the sidewalls of the grooves to be pressed by fingers.
Yamada teaches another known gripping force measurement device which utilizes individual buttons (elements 41) which interact with sensor (pressure sensors, elements 21) which are pressed by fingers in order to measure grip force of the user (figures 2a-2d; paragraphs [0037]-[0055]).
Therefore it would have been obvious to one of ordinary skill in the art at the time of filing to substitute the gripping sensors of Meyer/Dromerick/DeBeliso combination with buttons for individual fingers as taught by Yamada as simple substitution of one known element (pressure sensor array grip sensing member of Meyer and DeBeliso) with another (pressure sensing setup comprising buttons in communication with pressure sensitive sensor(s) of Yamada) to yield a predictable result (in this case the wherein Yamada’s buttons are placed on sidewalls in each of the 6 grooves of the ergonomic grips where fingers are placed in the Meyer/Dromerick/DeBeliso combination in order to provide the same function of measure grip strength from the force applied to the gripping portion by the subject when gripping).
Further regarding claim 7; Meyer further discloses the control system further includes a setting module (input elements 119, 209, 210) mounted on the display portion (figures 1 and 2a) and has at least two setting buttons (any of the input elements on the virtual keyboard act as buttons for setting/configuring the device) and that the device can be customized by the user to provide various settings via control by the display and/or buttons (paragraphs [0101]-[0108]). However, the Meyer/Dromerick/DeBeliso/Yamada combination does not explicitly disclose a power button. The examiner takes official notice power buttons are well known and conventional on handheld devices. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide a specific power button on the Meyer/Dromerick/DeBeliso/Yamada combination in order to power the device on and off when in use and not in use, respectively.
Further regarding claim 8; the Meyer discloses the control system further includes a storage unit (memory element 105) in which personal information, the gripping strength threshold, the gripping strength signal are stored, the storage unit electrically connected to the control unit (figure 1; paragraph [0023],[0112], claim 15). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that the Meyer/Dromerick/DeBeliso/Yamada combination would also further store the time threshold and pressing time in order to store the information for use by the device.
Further regarding claims 9-10; Meyer further discloses the control system further includes a communications module to transmit the assessing result out (elements 103 and 116; paragraph [0058]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that the Meyer/Dromerick/DeBeliso/Yamada combination would include the same feature in order to transmit the information to central monitoring computer.
Further regarding claim 10; Meyer discloses the communications modules transmits the assessing result in a wireless way (paragraph [0058]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that the Meyer/Dromerick/DeBeliso/Yamada combination would include the same feature in order to transmit the information to central monitoring computer.
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 ADAM J EISEMAN whose telephone number is (571)270-3818. The examiner can normally be reached Monday - Friday (7:00 AM - 4:00 PM).
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, Jacqueline Cheng can be reached at 571-272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J EISEMAN/Primary Examiner, Art Unit 3791
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