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 without traverse of claims 1-4, 8-9 and 12-16 in the reply filed on 11/17/2025 is acknowledged.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2 and 8 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by Matsumoto et al. (US 8,647,283, hereinafter “Matsumoto”).
In regards to claim 1, Matsumoto discloses a system (Fig. 1), comprising:
a first wearable instrument (element 30);
a second wearable instrument comprising a biometric sensor (element 40; col. 4, lines 37-43);
an electrical connection between the first wearable instrument and the second wearable instrument (element 50; col. 4, line 34);
and a strap, sized and dimensioned to be disposed about a wrist (element 20; col. 4, lines 27-32),
the electrical connection being capable of:
connecting the first wearable instrument to the second wearable instrument when the second wearable instrument is at a first position on the strap relative to the first wearable instrument; and
connecting the first wearable instrument to the second wearable instrument when the second wearable instrument is at a second position on the strap relative to the first wearable instrument (col. 5, lines 22-29; col. 3, lines 5-10; “the pulse sensor is provided so as to be movable in the circumferential direction and axial direction of the band”).
In regards to claim 2, the electrical connection comprises a cable (col. 4, lines 34-36; “a connection line 50 for establishing an electric connection between the main body 30 and a pulse sensor 43 of the sensor means 40”).
In regards to claim 8, the system is configured, when a separation between the first wearable instrument and the second wearable instrument is less than a length of the cable, to accommodate a surplus section of the cable on a roller (col. 5, lines 22-29; “[n]ote that the main body 30 may be provided with an extending/retracting means having, for example, a structure in which a rotation means of a retrieving roll for retrieving the connection line 50 is controlled by a switch, thereby allowing the connection line 50 to be extensible and retractable”).
Claims 1, 2 and 16 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by Saponas et al. (US 2016/0287103, hereinafter “Saponas”).
In regards to claim 1, Saponas discloses a system (Fig. 2A), comprising:
a first wearable instrument (element 201);
a second wearable instrument comprising a biometric sensor (element 202; par. 0043);
an electrical connection between the first wearable instrument and the second wearable instrument (elements 217; par. 0042);
and a strap, sized and dimensioned to be disposed about a wrist (element 205; abstract),
the electrical connection being capable of:
connecting the first wearable instrument to the second wearable instrument when the second wearable instrument is at a first position on the strap relative to the first wearable instrument; and
connecting the first wearable instrument to the second wearable instrument when the second wearable instrument is at a second position on the strap relative to the first wearable instrument (par. 0046; “satellite device 202 may be clamped to either first strap 205 or second strap 210, allowing the positioning of flexible cap 221 over the wearer's radial artery when wearable pressure sensing device 200 is worn on either arm”).
In regards to claim 2, the electrical connection comprises a cable (elements 217, par. 0045; “conductive wires”).
In regards to claim 16, second wearable instrument is configured, when a separation between the first wearable instrument and the second wearable instrument is less than a length of the cable, to connect to the cable at a point on the cable, the point on the cable being less distant from the first wearable instrument than the length of the cable (Fig. 2B, par. 0045; “[f]irst strap 205 may be of sufficient length to allow satellite device 202 to be placed at a distance from primary device 201 so as to accommodate positioning of flexible cap 221 above the wearer's radial artery without interference from primary fastening componentry 215 or secondary fastening componentry 216. A plurality of possible sensing locations may thus be defined by regions of first strap 205 wherein conductive contacts 230 may engage with conductive wires 217”).
Claim Rejections - 35 USC § 103
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.
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.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto in view of Baranski et al. (US 2016/0255944, hereinafter “Baranski”). Matsumoto discloses the essential features of the claimed invention, including that the system is configured, when a separation between the first wearable instrument and the second wearable instrument is less than a length of the cable, accommodating a surplus section of the cable on a roller (col. 5, lines 22-29), but does not expressly disclose that the adjustment is carried out by a loop or in an enclosure of the first wearable instrument; or further comprising a slider, in the enclosure of the first wearable instrument, for adjusting the size of the loop. However, Baranski in the same field of endeavor of wrist-wearable electronic devices teaches providing an adjustment system wherein adjustment is carried out by a loop in an enclosure of the first wearable instrument (par. 0225; “the housing of the wearable electronic device 1000 can be configured to insert through about an aperture within the housing through which the complaint [sic] loop-style band 1002 can be inserted, and folded back on itself”); and further comprising a slider, in the enclosure of the first wearable instrument, for adjusting the size of the loop (par. 0225; “the actuator may be a…linear actuator”; the examiner is considering a linear actuator to be a “slider” because it comprises two elements sliding with respect to each other to provide actuation) to provide the predictable results of automatic adjustment of fit with an electronic actuator (par. 0228). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto by providing an adjustment system wherein adjustment is carried out by a loop in an enclosure of the first wearable instrument; and further comprising a slider, in the enclosure of the first wearable instrument, for adjusting the size of the loop to provide the predictable results of automatic adjustment of fit with an electronic actuator.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto in view of Lee (US 2018/0279889, hereinafter “Lee”). Matsumoto discloses the essential features of the claimed invention except for expressly disclosing that the roller is in an enclosure of the first wearable instrument. However, Lee in same field of endeavor of wrist-wearable electronic devices teaches providing an adjustment roller that is in an enclosure of the first wearable instrument (Figs. 1 and 4, element 220) to provide the predictable results of being connected to a motor, which allows the battery within the housing to provide automatic actuation (par. 0115). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto by providing an adjustment roller that is in an enclosure of the first wearable instrument to provide the predictable results of being connected to a motor, which allows the battery within the housing to provide automatic actuation.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto in view of Bailey (US 2015/0065840, hereinafter “Bailey”). Matsumoto discloses the essential features of the claimed invention, including wherein the system is configured, when a separation between the first wearable instrument and the second wearable instrument is less than a length of the cable, to accommodate a surplus section of the cable in a loop or on a roller (col. 5, lines 22-29), but does not expressly disclose wherein the cable comprises a flexible printed circuit board, wherein a portion of the cable is covered by an overmold, or wherein the surplus section is not covered by the overmold. However, Bailey in the same field of endeavor of wrist-wearable electronic devices teaches providing a cable comprising a flexible printed circuit board (abstract, “[t]he improved stretchable printed circuit boards include a serpentine conductive trace”), wherein a portion of the cable is covered by an overmold (Fig. 7, pars. 0058, 0078; larger “pods” 701-708 and thinner communicative pathways (720) can be molded with a single piece construction, the larger “pod” molding being considered the “overmold”), and wherein the surplus section (720) is not covered by the overmold (Fig. 7) to provide the predictable results of providing all of the communicative pathways providing communicative coupling between modules and further providing the elastic/adaptive physical coupling between pod structures (par. 0078). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Matsumoto by providing a cable comprising a flexible printed circuit board, wherein a portion of the cable is covered by an overmold, and wherein the surplus section is not covered by the overmold to provide the predictable results of providing all of the communicative pathways providing communicative coupling between modules and further providing the elastic/adaptive physical coupling between pod structures.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/480,492 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application is narrower than (i.e., anticipates) the instant application, except for specifying that the system is capable of securing the first wearable instrument and the second instrument in a first and second position (rather than the conductor being capable of “connecting” as in the instant application). However, it is well known in the art of multi-module systems to provide all components (in this case a conductor) to have the capability of maintaining functionality during reconfiguration to provide the predictable results of a functional and reconfigurable system. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the reference application by making all elements, including the electrical connection, capable securing and still operating to provide the predictable results of a functional and reconfigurable system.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Williams et al. (US 11,890,083) is another example of a modular wrist-worn device with reconfigurable sensors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL W KAHELIN whose telephone number is (571)272-8688. The examiner can normally be reached M-F, 8-5.
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, Benjamin Klein can be reached at (571)270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792