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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on March 6, 2026 are acknowledged. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Amendment
The amendment filed March 2, 2026 has been entered. Claims 1-19 remain pending in the application. Applicant’s amendments to the Specification and Claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed January 9, 2026.
Response to Arguments
Applicant's arguments filed March 2, 2026, have been fully considered but they are not persuasive.
Applicant submits that Tan and Stern, whether taken alone or in combination, fail to teach or suggest each of the recitations of independent claim 1. To support this argument, Applicant relies on their assertion that Tan and Stern each fail to teach or suggest “a through-hole extending through the electrode and configured to receive at least a portion of the frame”, and further argues that Stern does not discuss what the Office Action labelled as [TH].
Examiner disagrees with Applicant’s assertion that Stern does not discuss what the Office Action has labelled as [TH]. Given the context of paragraph 0091 (see para. 0091, “In some cases, the PCB 418 may be a disk to affix (e.g., via a first retention member) the circle sector electrodes 422 once inserted through the holes in the bottom 420”) it can be readily understood that Fig. 4C discloses a hole that goes through at least the end portion of the electrode and may be used to receive a first retention member to affix the circle electrodes to the frame and PCB, each of which have corresponding through-holes of their own for this purpose.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Tan discloses several through-holes (e.g., [Q3]) which extend through the frame [14] and are configured to receive at least a portion of the electrode (jointly [12], [26], and [28]), essentially disclosing a reversal (between the frame and the electrode) of the claimed limitation. Stern serves to provide the additional suggestion of using through-holes in the electrode itself to secure the two together using retention members. It would have been obvious before the effective date of the claimed invention for a person having ordinary skill in the art, in view of the disclosures of both Tan and Stern, to modify the device of Stern by providing a through-hole extending through the electrode and configured to receive at least a portion of the frame. Doing so would secure the frame and electrode together by providing additional mechanical support between the frame and electrode at that location.
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US 20240245355 A1) in view of Stern et al. (US 20230019413 A1).
Regarding Claim 1, as illustrated in annotated Fig. 7 below, Tan discloses a wearable device configured to perform physiological measurements, the wearable device comprising: a frame [14], an electrode (jointly [12], [26], and [28]) secured to the frame (by inserting via through-hole [Q3]) and configured to conduct electrical signals originating from a user of the wearable device (see para. 0089, “the first contact electrode 12 … form[s] the bioelectrical signal acquisition circuit”), the electrode comprising a first portion having a surface configured to contact a skin of the user [12a], a second portion having a surface configured to contact the skin of the user [12b] (see para. 0075, “The first contact electrode 12 … [is] used for contacting with the skin of the wearer”); and a third portion (jointly [26] and [28]) disposed between the first portion and the second portion, the third portion comprising a surface that extends away from the surface of the first portion [26a] and the surface of the second portion [26b] and is separated from the skin of the user when the first portion or the second portion contacts the skin of the user. Tan also discloses a cover portion [24] of the frame that occludes the third portion from contacting the skin of the user and further discloses a substrate [25] in electrical connection with the electrode and responsive to the electrical signals originating from the user (see para. 0097, “the first contact electrode 12 … receive[s] a bioelectrical signal from the skin of the wearer and can transmit the bioelectrical signal to the printed circuit board 25”). Tan does not disclose a through-hole extending through the electrode and configured to receive at least a portion of the frame nor does it disclose an end portion adjacent to the first portion and extending away from the first portion at an angle.
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As illustrated in annotated Fig. 4C below, Stern discloses a through-hole [TH] extending through an electrode [422] and configured to receive at least a portion of a frame [420] and the electrode having a first portion [420F] and an end portion [420E] adjacent to the first portion and extending away from the first portion at an angle (extending away orthogonally). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the wearable device of Tan to incorporate the teachings of Stern to provide a through-hole extending through the electrode and configured to receive a portion of the frame and an end portion adjacent to the first portion of the electrode extending away from the first portion at an angle. For example, a new opening at the end of surface [Q2] opposite to the side of existing through-hole [Q3] could be configured to receive this new end portion (which would extend orthogonally like that of Stern), and a through-hole could be configured at any of the electrode portions to receive a portion of the frame. These modifications would provide mechanical support to further secure the electrode to the frame.
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Regarding Claim 2, the device of Tan modified in view of Stern as with Claim 1 above would result in the end portion of the electrode being enclosed by the frame.
Regarding Claim 3, the device of Tan modified in view of Stern as with Claim 1 above would have the frame occluding the end portion of the electrode from contacting the skin of the user.
Regarding Claim 4, the device of Tan modified in view of Stern as with Claim 1 above would have a surface of the end portion of the electrode not contacting the skin of the user.
Regarding Claim 5, the device of Tan modified in view of Stern as with Claim 1 above would have an end portion that is substantially orthogonal to the first portion of the electrode.
Regarding Claim 6, the device of Tan modified in view of Stern as with Claim 1 above would have an electrode with an end portion that comprises a through-opening extending through the end portion. Although Stern does not specifically disclose the through-opening being configured to receive a protrusion of the frame to secure the electrode to the frame, protrusions as a fixation element are well-known in the art and a person having ordinary skill in the art would be motivated to provide a protrusion in the frame as opposed to a separate fixation element such as a screw in order to secure the electrode to the frame without the need for a fastener.
Regarding Claim 7, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the wearable device of Tan in view of Stern as with Claim 1 above and further so as to have the electrode comprise a fourth portion comprising a surface that is continuous with the surface of the second portion, wherein the surface of the fourth portion extends away from the surface of the second portion and is separated from the skin of the user when the second portion contacts the skin of the user; and a second through-hole extending through the electrode and configured to receive an electrically conductive material configured to conduct the electrical signals originating from the user to the substrate. This fourth portion with a through-hole that extends away from the surface of the second portion and is separated from the skin of the user when the second portion contacts the skin of the user is essentially a duplication of the third portion of the modified device as with Claim 1 but extending from the second portion instead of the first portion of the electrode (the second portion being analogous to the first portion itself). It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (see St. Regis Paper Co. v. Bemis Co., 193 USPQ 8). Tan also teaches conductive members [26] that penetrate a through hole [Q3] (in the frame as opposed to in the electrode) to conduct electrical signals originating from the user to the substrate [25] (see annotated Fig. 7 above). It would have been obvious to similarly provide conductive members penetrating a through-hole in the electrode to electrically connect the electrode to the substrate since it has been held that rearranging parts of an invention involves only routine skill in the art (see In re Japikse, 86 USPQ 70).
Regarding Claim 8, the device of Tan modified in view of Stern as with Claim 7 above would have a second cover portion of the frame that occludes the fourth portion from contacting the skin of the user in the same way that the first cover portion [24] occludes the third portion (jointly [26] and [28]) (see annotated Fig. 7 above).
Regarding Claim 9, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the wearable device of Tan in view of Stern as with Claim 7 above further so as to have the electrode comprise a fifth portion comprising a surface that is continuous with the surface of the fourth portion and configured to contact the skin of the user and another end portion adjacent to the fifth portion, the another end portion having a surface that is continuous with the surface of the fifth portion, the another end portion extending from the fifth portion at an angle. This fifth portion and another end portion are essentially a duplication of the first portion and end portion respectively of the modified device as with Claim 7 but connected to the fourth portion instead, and it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (see St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Regarding Claim 10, the device of Tan modified in view of Stern as with Claim 9 above would have another end portion that comprises another through-opening extending through the another end portion, the another through-opening configured to receive another protrusion of the frame to secure the electrode to the frame. Although Stern does not specifically disclose the through-opening being configured to receive a protrusion of the frame to secure the electrode to the frame, protrusions as a fixation element are well-known in the art and a person having ordinary skill in the art would be motivated to provide a protrusion in the frame as opposed to a separate fixation element such as a screw in order to secure the electrode to the frame without the need for a fastener.
Regarding Claim 11, Tan teaches the first portion [12a] being substantially semi-annular (see annotated Fig. 7 above).
Regarding Claim 12, Tan teaches the first portion [12a] and the second portion [12b] forming at least a portion of a semi-annulus (see annotated Fig. 7 above).
Regarding Claims 13-14, It would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to provide that the surface of the third portion is continuous with the surface of the first portion and the surface of the second portion, as well as to provide that the end portion comprise a surface that is continuous with the surface of the first portion, since applicant has not disclosed that having these surfaces be continuous solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with noncontinuous surfaces.
Regarding Claim 15, Tan teaches a hardware processor coupled to the substrate and configured to access the electrical signals conducted via the electrode (see para. 0036, “the printed circuit board includes an analog front-end (AFE) chip, and the AFE chip is electrically connected to the first contact electrode and the second contact electrode respectively to acquire and/or process electrical signals”).
Regarding Claims 16-18, Tan teaches the hardware processor being configured to perform one or more electrocardiography techniques with the electrical signals conducted via the electrode and particularly to generate an electrocardiography (ECG) waveform from the electrical signals conducted via the electrode as well as to determine one or more cardiac conditions of the user based on at least the electrical signals conducted via the electrode (see para. 0075, “the acquired electrocardiogram signal may be processed to generate an electrocardiograph (ECG), which is used for recording the electrical activity of the heart and assisting in diagnosing heart diseases”).
Regarding Claim 19, Tan teaches the electrode being configured to secure to the frame without an adhesive, being secured to the frame instead via conductive members [26] of the third portion penetrating through-hole [Q3] (see annotated Fig. 7 above).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.S./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794