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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-13 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The claim recites that the ear attachment portion is attached to a human ear thus also claiming the ear and the human body.
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.
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: “a band member” in claim 1 which is interpreted as a belt-like band of material (¶59-64). “conformance assisting portion” in claim 1 which is interpreted as the adjustment portion indicated by numeral 30 that connects the band to the ear attachment portion (¶237). “an ear attachment portion “in claim 1 which is interpreted as any of the ear bud shaped member, the ear clip or the wrap around segment shown in FIGs 17-20 (¶238-250). “an attachment portion “in claim 1 which is interpreted as the band and locking mechanism (¶251-258). “a connection portion “in claim 1 which is interpreted as a polymer member connection the ear portion to the main band (¶259-260). “an adjustment portion “in claim 2 which is interpreted as the attachment portion (¶279). “a lock portion “in claim 4 which is interpreted as the claw and release mechanism (¶254).
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.
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 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 2-4 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. It is unclear if the adjustment portion is the same component as the attachment portion as both seem to be made up of the plate shaped portion and the lock portion.
Claim 5 is 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. It is unclear if the adjustment portion is the same component as the attachment portion as both seem to be made up of the plate shaped portion and the lock portion. It is unclear if the connection member is an elastic member or if it just contains as elastic member. The specification at ¶260 does not clarify the claim language.
Claim 7 is 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. It is unclear how the through holes connect the inside and out of the concha as concha is just a surface in the external ear canal. It is assumed that the this means the ear attachment portion has through holes that allow sound to pass into the ear canal.
Claim 10 is 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. The claim recites that the band member is configured with a rubber-like elastic member. It is unclear what bounds of “rubber-like” are and what materials would be considered rubber-like. The specification provides some examples in ¶126 but it is not clear if this is just referring to elastomers.
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) 1-4 and 6-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aimone et al. US 2016/0367189.
Regarding claim 1, Aimone discloses a brain wave measuring device comprising:
a band member that is worn on a human head by conforming to a shape of the human head ([¶50,51] the headset is composed of an outer layer and an inner band that is flexible and can be made of rubber);
a plurality of electrode portions that is provided on one surface of the band member ([¶37,38] electrodes are on the inner surface of the band); and
conformance assisting portions that assist the band member in conforming to the shape of the head ([¶110,117] the band has spring elements to conform to the shape of the head),
wherein each of the conformance assisting portions has an ear attachment portion that is attached to a human ear, an attachment portion that is attached to the band member, and a connection member that spans between the ear attachment portion and the attachment portion ([FIG70,74][¶110] the end portion 280 is the ear attachment portion, the attachment portion is the toothed section and the connection member is the PCB connection 282).
Regarding claim 2, Aimone discloses that each of the conformance assisting portions has an adjustment portion that adjusts the way the band member conforms to the shape of the head ([¶110,113] the tooth and ratchet attachment mechanism).
Regarding claim 3, Aimone discloses the adjustment portion has a mechanism that adjusts a distance between the ear attachment portion and the attachment portion ([¶110,113] the tooth and ratchet attachment mechanism controls the distance).
Regarding claim 4, Aimone discloses the adjustment portion has a plate-shaped member and a lock portion that locks the plate-shaped member at a predetermined position ([¶110,113] the tooth and ratchet attachment mechanism).
Regarding claim 6, Aimone discloses the ear attachment portion is attached to concha by being fitted to the concha ([¶42] the earpiece rest on top of the user’s ear and is deformable so it would contact the concha).
Regarding claim 7, Aimone discloses the device when in a state of being attached to the concha, the ear attachment portion has through-holes that connect inside and outside of the concha ([¶46,48,105] the ear piece has openings).
Regarding claim 8, Aimone discloses the ear attachment portion is attached by sandwiching an external ear portion ([¶42] the earpiece portion overlays the ear and is biased against it so in a broadest reasonable interpretation it sandwiches the ear by pressing on it).
Regarding claim 9, Aimone discloses the ear attachment portion is attached by being hooked around an external ear portion ([¶42] the ear portion hooks behind the ear).
Regarding claim 10, Aimone discloses the band member is configured with a rubber-like elastic material ([¶50,51] the headset is composed of an outer layer and an inner band that is flexible and can be made of rubber).
Regarding claim 11, Aimone discloses a plurality of elastic protrusion portions integrated with the band member, wherein the electrode portions are provided on the protrusion portions ([¶39] the electrodes sit atop element 16 which is an elastomer).
Regarding claim 12, Aimone discloses that each of the electrode portions has a conductive member provided on at least a tip portion of each of the protrusion portions ([¶39,76] the electrodes sit atop element 16 which is an elastomer).
Regarding claim 13, Aimone discloses the brain wave measuring method for measuring brain waves by putting the brain wave measuring device according to claim 1 on a subject's head ([¶44]).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aimone in view of Machon et al. US 2014/0257073.
Regarding claim 5, Aimone does not specifically disclose the connection member has an elastic member. Machon teaches a similar EEG measuring device that has an elastic connection member to its ear attachment portion ([¶78] the connection can be rubber). Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to combine the device of Aimone with the elastic member of Machon in order to allow for a flexible connection ([¶78]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ANTHONY CATINA whose telephone number is (571)270-5951. The examiner can normally be reached 10-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Chen can be reached at 5712723672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A CATINA/Examiner, Art Unit 3791 /TSE W CHEN/Supervisory Patent Examiner, Art Unit 3791