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 .
DETAILED ACTION
The amendment filed on October 24, 2025 in response to the Office action dated June 25, 2025 is acknowledged and entered. Claim 1 is amended. Claims 1-20 are pending and under examination in this Office action.
Response to Amendment
The objection to the drawings is now withdrawn after reconsideration in view of Applicant’s arguments.
New ground of rejections under 35 U.S.C. 112(a), written description support are now made in view of the claim amendment.
The rejection to claims 1 and 7-10 under 35 U.S.C. 102(a)(1) is now withdrawn in view of the claim amendment.
The rejections to claims 1-20 under 35 U.S.C. 103 are now withdrawn in view of the claim amendment.
After reconsideration in view of the claim amendment, a new ground of rejection to claims 1-20 under 35 U.S.C.103 is now made.
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:
Claims 1 and 11: “a/the control component is configured to drive the first coil” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “component” coupled with functional language “to drive” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “component”.
Claims 1 and 11: “a/the shielding component shields at least a portion of the first emitting EM signal” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “component” coupled with functional language “shields” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “component”.
Claims 6 and 16: “a/the matching component positioned at a second side of the first coil” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “component” coupled with functional language “matching” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “component”.
Claims 7 and 17: “the emitting unit is configured to drive the first coil” and “the receiving unit is configured to receive the first induction signal” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to drive/receive” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”.
Claims 8 and 18: “a frequency adjustment unit is configured to adjust a frequency” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to adjust” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”.
Claims 10 and 20: “a/the computing unit is configured to calculate physiological information” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “unit” coupled with functional language “to calculate” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier that has a known structural meaning before the phrase “unit”.
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.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Claims 1 and 11: “a control component” refers to [0032] to include an emitting unit and a receiving unit, [0033]: further include a frequency adjustment unit, [0034]: further include at least a computing unit. Each of the sub-units has structure disclosure as noted below.
Claims 1 and 11: “a shielding component” refers claims 2-5 and 12-15 and their corresponding disclosure in the specification for the structural disclosure.
Claims 6 and 16: “a matching component” refers to [0040] as a material selected for improving EM wave transmission efficiency and reduce transmission losses.
Claims 7 and 17: “the emitting unit” refers to the specification [0032]: the emitting unit 1331 may be an AC emitting unit composed of active components (e.g., oscillator, timer) and/or passive components (e.g., resistors, capacitors, inductors); and “the receiving unit” refers to the specification [0034]: the receiving unit sample or convert the induction signal SS from analog to digital and then perform calculation or measurement. The receiving unit is considered 8 analog to digital signal converter along with a circuitry.
Claims 8 and 18: “a frequency adjustment unit” refers to claims 9 and 19 and their corresponding disclosure in the specification for the structure disclosure.
Claims 10 and 20: “a computing unit” refers to the specification (PG Pub US 2025/0107722 A1) [0034]: the computing unit 1334 can be an individual or integrated chip, such as an ASIC, a FPGC, a CPU, a microprocessor and other components with computing function.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 1-20 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.
Claim 1, lines 7-8 recites “a shielding component…disposed only outside the wearing portion”. A limitation reciting an “only” condition is a negative limitation that requires explicit disclosure support by the specification. The mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i). “Any negative limitation or exclusionary provision must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977)”.
The limitation recited in claim 1, lines 7-8: “a shielding component…disposed only outside the wearing portion” lacks proper written description support. In the specification, [0022] discloses that the wearable device 10 including a wearable structure 11, a body 12, and a sensing module 13. In [0023]: The body 12 of the wearable device 10 is defined as the part that implements specific functions of the wearable device….Taking a smart watch as an example, the main body 12 may be a display or a motherboard, etc. After the main body 12 is combined with the wearing structure 11, it can be placed at the part where the user wants to wear it though the wearing structure 11. The main body 12 is positioned on the first side S1 of the sensing module 13. Specifically, the sensing module 13 can be positioned at a location closer to the user’s skin than the main body 12. In other words, the first side S1 of the sensing module 13 is the side relatively far away from the user’s skin…The shielding component 132 of the sensing module 13 is positioned between the body 12 and the coil (e.g. 1311) of the sensing module 13.
Hence, (1), as the entirety of the wearable device is worn on the user, the claimed “wearing portion of the wearable device” is considered the entire wearable device; and (2) accordingly, as the shielding component 132 is part of the sensing module 13 that is positioned between the main body 12 and the wearing structure 11 (as illustrated in FIG.1 and the above disclosure), proper written description cannot be identified for the shielding component 132 to be disposed outside the wearing potion, i.e., the most outer payer of the wearable device.
The dependent claims of the above rejected claim are rejected due to their dependency.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4, 7-10, 11-14 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sweeney et al., US 2021/0401305 A1, hereinafter Sweeney, in view of Cimochowski et al., US 5,967,986, hereinafter Cimochowski.
Claim 1. Sweeney teaches in FIG.1A a sensing module for a wearable device (antenna module 16, RC-WVM implant 12 and the accessories), including:
a first coil (claim 1: a wearable antenna configure to be wrapped around a patient to form a second coil; [0072]: antenna module 17, transmit coil 32 and receive coil 34; and [0071]: the transmit and receive functionality are performed by a single antenna…[or]…separate antenna);
a control component (14) coupled to the first coil ([0071]: Antenna module 16 is connected to control system 14 by power and communication link 24), wherein the control component is configured
to drive the first coil to transmit a first emitting electromagnetic signal to a wearable portion of the wearable device ([0071]: Antenna module 16 creates an appropriately shaped and oriented magnetic field around RC-WVM implant 12 based on signals provided by the EFM circuitry of control system 14; and claim 1: a wearable antenna configured to be wrapped around a patient to form a second coil…the second coil producing an electromagnetic field; and [0090]: RF coil antenna system) – since both the antenna module and the RC0WVM implant are worn on the user, the first emitted EM signal that is driven from the antenna to the implant is considered being emitted to the wearable portion of the wearable device, and
to receive a first induction signal generated from the first coil in response to a first feedback electromagnetic signal ([0071]: The magnetic field generated based on the signals provided by the EFM circuitry of control system energizes the L-C circuit of RC-WVM implant causing it to produce a ring-back signal…[that] can be interpreted by control system 14 to provide information as to the IVC geometry and therefore fluid state. Antenna module 16 thus also provides a receive function/antenna as well as transmit function/antenna; and claim 1:…producing a current in said first coil resulting in a signal produced by the first coil being receivable by the second coil of the wearable antenna).
Sweeney does not teach a shielding component positioned at least on a first side of the first coil and disposed only outside the wearable potion, wherein the shielding component shields at least a portion of the first emitting electromagnetic signal transmitting toward a first direction.
However, in an analogous fluid-flow sensing coil configuration field of endeavor, Cimochowski teaches such a feature in Col.13, ll.8-14: Housing 96 on external coil 90 provides RF shielding against electromagnetic interference (EMI); FIG.7.
In FIG.7, the housing 96 shields all the sides of the coil, hence including “a first side of the first coil”. The direction of the EM signal shielded by the housing is considered the “first direction” as claimed.
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the sensing module of Sweeney employ such a feature of further comprising a shielding component positioned at least on a first side of the first coil, wherein the shielding component shields at least a portion of the first emitting electromagnetic signal transmitting toward a first direction, as taught in Cimochowski for the advantage of “providing RF shielding against electromagnetic interference (EMI)”, as suggested in Cimochowski, Col.13, ll.8-9.
Claim 11. Sweeney and Cimochowski combined teaches all the limitations of the sensing module of claim 1.
Sweeney further teaches
a wearing structure ([0072]: planar-type antenna modules also may be configured in wearable configurations, e.g., wherein the antenna coil is integrated into a wearable garment such as a backpack or vest. Antenna module 16 may also comprise a coil adapter to be fastened directly to the patient’s skin by type, glue or other means, e.g., over the abdomen or back; [0084]: antenna belt 16b; and FIG.38: antenna belt module 16s; and [[0068]: RC-WVM implant 12 configured for placement in a patient’s IVC) – the belt, the backpack, the vest the type, or the glue is considered the wearing structure; and an implanted device is also considered in the field of clinical practice as being worn by a user;
a body combined with the wearable structure, wherein the body is positioned on the first side of the sensing module ([0245]: belt antenna 16s employs a loop antenna wire 82s mounted on or within base layer 76s) – the base layer is considered the “body” as claimed.
In regard to the feature that the body is positioned on the first side of the sensing module, the “first side”, as recited in claim 1, refers to a side that is shielded by the shielding component. As applied to claim 1, Cimochowski teaches the housing 96 in FIG.7 being the shielding component that is positioned around all sides of the sensing module. Hence, when Sweeney and Cimochowski are combined, the shielding housing of Cimochowski is placed around the sensing module, i.e., the antenna wire 82s of Sweeney. Either the antenna wire is mounted on or within the base layer 76s, it reads on this limitation that the body (i.e., the base layer 76s of Sweeney) is positioned on the first side of the sensing module (i.e., the antenna wire 82s of Sweeney) since the shieling component (i.e., the housing 96 of Cimochowski) is posited around the antenna wire 82s. antenna the buckle 74 of Sweeney, which comprises “being positioned the first side of the sensing module”.
With the above configurational arrangement of Sweeney and Cimochowski are combined, it also reads on the feature of the shielding component being positioned at least between the body and the first coil of the sensing module, when the sensing module, i.e., the antenna wire 82s of Sweeney is surrounded by the housing 96 of Cimochowski then is mounted on or within the base layer 76s, and such a configuration results in one side of the housing would be positioned between the body (the base layer) and the coil of the sensing module (the antenna wire).
Claims 2 and 12. Sweeney and Cimochowski combined teaches all the limitations of claims 1 and 11, respectively, including the shielding component (Cimochowski: Col.13, ll.8-14: No.96).
Cimochowski further teaches that the shielding component includes
a shielding surface and a shielding wall surrounding the shielding surface, and the first coil is positioned at an accommodating space formed by the shielding surface and the shielding wall (FIG.7: the housing 96 comprises the shielding surface shown as the top flat surface, and two side walls shown as the vertical sides. The three sides of the housing formed a space for the first coil to be positioned within).
Claims 3 and 13. Sweeney and Cimochowski combined teaches all the limitations of claims 2 and 12, respectively, including the shielding wall (Cimochowski: Col.13, ll.8-14: No.96).
Cimochowski further teaches that
the shielding wall has a contraction structure configured to partially shield a second side of the first coil (FIG.7: the housing 96 confines the coil within, hence is considered a contraction structure. It shields the top and two sides of the first coil, hence including a first side and a second side of the first coil).
Claims 4 and 14. Sweeney and Cimochowski combined teaches all the limitations of claims 1 and 11, respectively.
Sweeney further teaches
A second coil disposed adjacent to the first coil ([0147]: FIG.22A: figure-eight transmit coil 258 and receive coil 260 are positioned side by side; and [0151]: In an antenna module 16 with this configuration in FIG.25A, TX coil transmits the excitation signal to RC-WVM implant 12 and RX coils receives the ring-back signal from the implant).
In regard to the claimed feature of the sensing module further including a second coil, since the function and configuration of the second coil is not specified, To encompass a second coil is considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to obtain a suitable number of coils depending on the design of the system through routine experimentation with reasonable expectation of success. Such a configuration is considered merely duplication of parts, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). MPEP 2144.04.VI.B.
To have the second coil disposed adjacent to the first coil is also considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the second coil to a location that is adjacent to the first coil through routine experimentation with reasonable expectation of success. Such a configuration is considered merely rearrangement of parts, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). MPEP 2144.04.VI.C.
Claims 7 and 17. Sweeney and Cimochowski combined teaches all the limitations of claims 1 and 11, respectively.
Sweeney further teaches that
the control component includes an emitting unit and a receiving unit ([0147]: FIG.22A, control system 14 generates input waveforms and receives signals back from RC-WVM implant), wherein
the emitting unit is configured to drive the first coil to transmit the first emitting electromagnetic signal ([0071]: Antenna module 16 creates an appropriately shaped and oriented magnetic field around RC-WVM implant 12 based on signals provided by the EFM circuitry of control system 14), and
the receiving unit is configured to receive the first induction signal generated from the first coil due to the first feedback electromagnetic signal ([0071]: The magnetic field generated based on the signals provided by the EFM circuitry of control system energizes the L-C circuit of RC-WVM implant causing it to produce a ring-back signal indicative of its inductance value at that moment…[that] can be interpreted by control system 14 to provide information as to the IVC geometry and therefore fluid state; and [0147]: the magnetic fields produced by RC-WVM implant can then be measured using receive coil 260).
Claims 8 and 18. Sweeney and Cimochowski combined teaches all the limitations of claims 7 and 17, respectively.
Sweeney further teaches that
the control component further includes a frequency adjustment unit coupled between the first coil and the emitting unit, wherein the frequency adjustment unit is configured to adjust a frequency of the first emitting electromagnetic signal ([0095]: Control system 14 then adjusts the excitation frequency to match the natural frequency of the paired implant and continues to excite at this frequency for a complete reading cycle. As will be appreciated by persons of ordinary skill, frequency determination and adjustment as described for this embodiment may be implemented via software using digital signal processing and analysis).
Claims 9 and 19. Sweeney and Cimochowski combined teaches all the limitations of claims 8 and 18, respectively.
Sweeney further teaches that
the frequency adjustment unit includes at least a capacitor array configured to adjust an impedance value of the first coil ([0132]: coils of different geometry, or capacitors of different capacitance, could be used to produce different resonant frequencies for a given input waveform; and [0092]: a target resonance frequency was computed at 2.6 MHz based on the inductance and capacitance).
Claims 10 and 20. Sweeney and Cimochowski combined teaches all the limitations of claims 7 and 17.
Sweeney further teaches that the control component further includes
a computing unit connected at least to the receiving unit, wherein the computing unit is configured to calculate physiological information based on the first induction signal ([0071]: The magnetic field generated based on the signals provided by the EFM circuitry of control system energizes the L-C circuit of RC-WVM implant causing it to produce a ring-back signal indicative of its inductance value at that moment. Because the inductance value is dependent on the geometry of the implant, which changes as mentioned above based on dimensional changes of the IVC in response to fluid state heart rate etc., the ring-back signal can be interpreted by control system 14 to provide information as to the IVC geometry and therefore fluid state).
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sweeney in view of Cimochowski, as applied to claims 4 and 14, respectively, further in view of Trequattrini et al., US 2008/0197845 A1, hereinafter Trequattrini.
Claims 5 and 15. Sweeney and Cimochowski combined teaches all the limitations of claims 4 and 14, respectively.
Neither of Sweeney and Cimochowski teaches that the shielding component includes an isolation wall positioned between the first coil and the second coil.
However, in an analogous RF coil shielding field of endeavor, Trequattrini teach that
the shielding component includes an isolation wall positioned between the first coil and the second coil ([0090]: possible electromagnetic shields separating the transmitting coil or coils from gradient coil).
Therefore, it would have been obvious to one of the ordinary skilled in the art before the effective filing date of the claimed invention to have the shielding component of Sweeney and Cimochowski combined employ such a feature of further including an isolation wall positioned between the first coil and the second coil, as taught in Trequattrini for the advantage of providing proper RF shielding between the coils as a known function of a conventional electromagnetic shield that is of known construction to the person skill in the art, as suggested in Trequattrini, [0090].
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sweeney in view of Cimochowski, as applied to claims 1 and 11, respectively, further in view of Katzer et al., US 7,925,606 B1, hereinafter Katzer.
Claims 6 and 16. Sweeney and Cimochowski combined teaches all the limitations of claims 1 and 11, respectively.
Neither of Sweeney and Cimochowski teaches a matching component positioned at a second side of the first coil.
However, in an analogous RF antenna-based monitoring system field of endeavor, Katzer teaches
a matching component positioned at a second side of the first coil (Col.15, ll.18-20: the antenna and front-end unit 506 may include antenna tuning and/or impedance matching components, RF power amplifiers, and/or low noise amplifiers).
In regard to the claimed feature of the matching component being positioned at a second side of the first coil, since the function of the matching component is to bring close the characteristic of two components closer, the location to place the matching component would depend on the particular characteristic and the relative location of the two components.
Therefore, to have the matching component positioned at a second side of the coil is also considered among various common practices that normally requires only ordinary skill in the art and hence are considered routine expedients. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the matching component at the second side of the coil through routine experimentation with reasonable expectation of success. Such a configuration is considered merely rearrangement of parts, which the court has held normally require only ordinary skill in the art and hence is considered routine expedients. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). MPEP 2144.04.VI.C.
Response to Arguments
Applicant’s arguments in regard to the rejection to the claims under 35 U.S.C. 102(a)(1) and/or 103 have been fully considered but they are moot in view of the claim amendment. As the amended feature of the shielding component being disposed only outside the wearing portion has changed the scope of the claim, the previous rejections are now withdrawn and new grounds of rejections are now made. Both Sweeney and Liu are considered not providing appropriate and sufficient teaching to this amended feature. However, Cimochowski is considered still teaching this amended feature.
In regard to the amended feature of the wearable device has a wearing portion, as considered in the rejection under 35 U.S.C. 112(a), written description support, the entirety of the wearable device is worn on the user, the claimed “wearing portion of the wearable device” is considered the entire wearable device. As considered in the rejection under 35 U.S.C. 103 to claim 1, both the antenna 16 and the implant 12 are considered part of the wearable device and both are worn by a user when being operated. Though the implant 12 is implanted inside the body, in clinical practice it is still considered being worn by a user. Examples of a similar context are “wearing a pacemaker” or “wearing contact lenses”. Based on the above consideration, the wearable portion of the wearable device is considered the entirety of the wearable device.
Secondly, Cimochowski teaches a housing that carries the function of shielding in Col.13, ll.8-14: Housing 96 on external coil 90 provides RF shielding against electromagnetic interference (EMI). Specifically in FIG.7, it illustrates that the housing covers the coil and is disposed outside the wearing portion and it shields the EM signal. In regard to the direction of the EM signal, A shielding component would reasonably shield the EM signal in a direction that the shielding component covers, and this direction is considered the “first direction” recited in the claim.
Based on the above considerations, claims 1-20 remain rejected.
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 YI-SHAN YANG whose telephone number is (408) 918-7628. The examiner can normally be reached Monday-Friday 8am-4pm PST.
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, Pascal M Bui-Pho can be reached at 571-272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YI-SHAN YANG/Primary Examiner, Art Unit 3798