DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,048,547. Although the claims at issue are not identical, they are not patentably distinct from each other because US 12,048,547 has been found to anticipate each and every element of the present invention, for instance both provide:
18/600,430 (claim 21)
12,048,547 (claim 1)
An electronic device for detecting a user's cardiac signal, comprising:
An electronic device for detecting a user's cardiac signal, comprising:
an enclosure comprising:
an enclosure comprising:
a display; and
a display; and
a bezel extending around the display and defining an exterior surface;
a bezel extending around the display and defining an exterior surface;
an input mechanism positioned at least partially within the enclosure;
a second conductive pad positioned on an inner surface of a portion of the enclosure (by being placed “on the inner surface of the enclosure”, it would thus be “positioned at least partially within the enclosure” on an interior or inner surface)
a first lead
a first lead
comprising a conductive pad that is contained within the enclosure,
comprising a first conductive pad positioned on an inner surface of the bezel (and thus contained within the enclosure)
positioned on an inner surface of the bezel
positioned on an inner surface of the bezel
and configured to detect a first electrical signal associated with the user's cardiac activity through a portion of the bezel;
and configured to detect a first electrical signal of the user's cardiac signal through the bezel;
a second lead
a second lead
coupled to the input mechanism
comprising a second conductive pad
and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism;
and configured to detect a second electrical signal of the user's cardiac signal at the portion of the enclosure (via user contact with the conductive pad)
and a processor enclosed by the enclosure and configured to process the detected first and second electrical signals.
and a processor enclosed by the enclosure and configured to: process the detected first and second electrical signals of the user's cardiac signal;
As set forth above, the present invention is not viewed to be patentably distinct from US 12,048,547.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,406,306. Although the claims at issue are not identical, they are not patentably distinct from each other because US 11,406,306 has been found to anticipate each and every element of the present invention, for instance both provide:
18/600,430 (claim 21)
11,406,306 (claim 1)
An electronic device for detecting a user's cardiac signal, comprising:
An electronic device for detecting a user's cardiac signal, comprising:
an enclosure comprising:
an enclosure comprising:
a display; and
a display;
a bezel extending around the display and defining an exterior surface;
and a bezel extending around the display and defining an exterior surface;
an input mechanism positioned at least partially within the enclosure;
“a second conductive pad that contacts the bezel …. at a second portion of the bezel different from the first portion”; Therefore, since “the first portion and the second portion encompass an entirety of the bezel's exterior surface“, the input mechanism (second conductive pad) is thus positioned at least partially within the enclosure.
a first lead
a first lead
comprising a conductive pad that is contained within the enclosure,
comprising a first conductive pad that is contained within the enclosure,
positioned on an inner surface of the bezel
positioned on an inner surface of the bezel
and configured to detect a first electrical signal associated with the user's cardiac activity through a portion of the bezel;
and configured to detect a first electrical signal of the user's cardiac signal through a first portion of the bezel;
a second lead
a second lead
coupled to the input mechanism and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism;
comprising a second conductive pad that contacts the bezel and is configured to detect a second electrical signal of the user's cardiac signal at a second portion of the bezel different from the first portion;
and a processor enclosed by the enclosure and configured to process the detected first and second electrical signals.
and a processor enclosed by the enclosure and configured to process the detected first and second electrical signals of the user's cardiac signal;
As set forth above, the present invention is not viewed to be patentably distinct from US 11,406,306.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10,076,257. Although the claims at issue are not identical, they are not patentably distinct from each other because US 10,076,257 has been found to anticipate each and every element of the present invention, for instance both provide:
18/600,430 (claim 21)
10,076,257 (claim 1)
An electronic device for detecting a user's cardiac signal, comprising:
An electronic device for detecting a user's cardiac signal, comprising:
an enclosure comprising:
an enclosure;
a display; and
a display (claim 9)
a bezel extending around the display and defining an exterior surface;
“wherein the enclosure supports the display, and wherein at least a portion of the exterior surface of the enclosure forms at least a portion of an exterior surface of the electronic device behind the display” (claim 9); “portion of the enclosure is a bezel”(claims 12-13)
an input mechanism positioned at least partially within the enclosure;
a second pad that is embedded in a second portion of the enclosure,
a first lead
a first lead
comprising a conductive pad that is contained within the enclosure,
comprising a first pad that is embedded in a first portion of the enclosure,
positioned on an inner surface of the bezel
“wherein an exterior surface of the enclosure comprises an exterior surface of the first portion, wherein the first pad is positioned underneath the exterior surface of the first portion”(claim 1), with a “portion of the enclosure is a bezel”(claims 12-13)
and configured to detect a first electrical signal associated with the user's cardiac activity through a portion of the bezel;
wherein the first pad is configured to detect a first electrical signal of the user's cardiac signal via the user's skin's contact with the exterior surface of the first portion of the enclosure;( claim 1), with a “portion of the enclosure is a bezel”(claims 12-13)
a second lead
a second lead
coupled to the input mechanism and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism;
comprising a second pad that is embedded in a second portion of the enclosure, wherein the second pad is configured to detect a second electrical signal of the user's cardiac signal via the user's skin's contact with at least one of the second pad and the second portion of the enclosure;
and a processor enclosed by the enclosure and configured to process the detected first and second electrical signals.
and a processor coupled to the heart sensor and configured to receive and process the detected cardiac signal, wherein the first lead further comprises a first connector coupled to the first pad and configured to provide the first electrical signal detected by the first pad to the processor, and wherein the second lead further comprises a second connector coupled to the second pad and configured to provide the second electrical signal detected by the second pad to the processor.
As set forth, the present invention is not viewed to be patentably distinct from US 10,076,257.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,615,290. Although the claims at issue are not identical, they are not patentably distinct from each other because US 8,615,290 has been found to anticipate each and every element of the present invention, for instance both provide:
18/600,430 (claim 21)
8,615,290 (claim 1)
An electronic device for detecting a user's cardiac signal, comprising:
An electronic device operative to detect a user's cardiac signal, comprising:
an enclosure comprising:
a housing;
a display; and
a display (claim 13),
a bezel extending around the display and defining an exterior surface;
a bezel that comprises a first portion and a second portion and that is coupled to the housing to form at least a portion of an enclosure for the electronic device
an input mechanism positioned at least partially within the enclosure;
“ the second portion” of the bezel which the user contacts. “the second lead is configured to detect the second electrical signal of the user's cardiac signal via the user's contact with an exterior surface of the second portion“ (claim 6). Thus, the examiner considers the second portion of the bezel that user contacts to collect cardiac signals to be the input mechanism. Furthermore, since
“bezel that comprises a first portion and a second portion and that is coupled to the housing to form at least a portion of an enclosure”, the examiner considers the input mechanism (i.e. second portion of the bezel), to thus be positioned at least partially within the enclosure since the second portion is part of the enclosure.
a first lead
a first lead
comprising a conductive pad that is contained within the enclosure, positioned on an inner surface of the bezel
“wherein an exterior surface of the bezel comprises an exterior surface of the first portion, and wherein the first lead is positioned underneath the exterior surface of the first portion” (claim 9) Thus, the exterior surface that engages with the first lead is the “conductive pad” that is contained within the enclosure (also see claim 4 which discloses a third portion of the bezel that is non-conductive and separates the first and second portion. Which means that the first pad is contained within the enclosure and separated from the second portion by a third portion of the enclosure).
and configured to detect a first electrical signal associated with the user's cardiac activity through a portion of the bezel;
configured to detect a first electrical signal of the user's cardiac signal via the user's contact with at least one of the first lead and the first portion;
a second lead
a second lead
coupled to the input mechanism and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism;
wherein the second lead is configured to detect a second electrical signal of the user's cardiac signal via the user's contact with at least one of the second lead and the second portion; (also see claim 6, “the second lead is configured to detect the second electrical signal of the user's cardiac signal via the user's contact with an exterior surface of the second portion“)
and a processor enclosed by the enclosure and configured to process the detected first and second electrical signals.
and a processor coupled to the heart sensor and operative to receive and process the detected cardiac signal.
As set forth above, the present invention is not viewed to be patentably distinct from US 8,615,290.
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 21-40 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.
Claims 21, 30 and 35 recite an “input mechanism”. While there is support for an input mechanism, “electronic device 100 can include any suitable input mechanism, such as for example, a button, keypad, dial, a click wheel, or a touch screen”([0025]) and “the processor can receive and process heart activity as the user places a finger over lead 326 (e.g., when the user slides a finger across the display to unlock the device) or when an input mechanism detects a particular input”([0051]), there is no support in the specification for the limitation “an input mechanism positioned at least partially within the enclosure” in claims 21, 30 and 35 or “a second lead electrically coupled to the input mechanism” in claims 21 and 30 or “a second lead coupled to an inner surface of the input mechanism” in claim 35.
Additionally, there is no support in the specification for the limitation “the input mechanism is positioned on a second side of the enclosure” in claims 28 and 33 or “the input mechanism is a conductive portion of the enclosure” in claim 38.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 61/111,498; 12/358,905; 14/136,658; 16/131,988 and 17/882,923, all fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The specifications of the previously recited applications provide support for an “input mechanism”, with “electronic device 100 can include any suitable input mechanism, such as for example, a button, keypad, dial, a click wheel, or a touch screen”([0025]) and “the processor can receive and process heart activity as the user places a finger over lead 326 (e.g., when the user slides a finger across the display to unlock the device) or when an input mechanism detects a particular input”([0051]). However the specification is deficient of further description and details as it relates to the “input mechanism”. Therefore, there is no support in the specification for the limitations of “an input mechanism positioned at least partially within the enclosure”, “a second lead electrically coupled to the input mechanism”, “the input mechanism is positioned on a second side of the enclosure” or “the input mechanism is a conductive portion of the enclosure”. Therefore, the priority date is considered to be the date of March 8, 2024.
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 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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 21-23, 25-28, 30-40 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Shimuta et al. (US 20120022385 A1).
As to claim 21, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses an electronic device for detecting a user's cardiac signal (Abstract; Figures 1-3) comprising: an enclosure (housing, depicted as 2 in Figures 1-4; [0079]) comprising: a display (display panel, depicted as 8 in Figures 1-4; [0080]); and a bezel (lower and upper case, depicted as 3 and 4 respectively in Figures 1-6; [0079]) extending around the display ([0080]; Figures 1-4; display panel is enclosed within the bezel and thus the bezel extends around the display (upper and lower case, including the display window, depicted as 5 in Figures 1-6, and part of the upper case); Figures 1-6) and defining an exterior surface (Figures 1-4); an input mechanism (operating button, depicted as 45 in Figure 9; [0120, 0125]; operating button includes electrode, depicted as 47 [0128-0129]) positioned at least partially within the enclosure (Figure 9; [0120]); a first lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12; [0091]; As to Figure 9, “One electrode 46 is a transparent electrode similar to the transparent electrode 10 in the first embodiment and is arranged within an upper surface of the display window 43 in a forward left portion thereof closer to the user” [0121]; Therefore the electrode 46 of Figure 9 is connected with a current carrying line, as shown in the first embodiment of Figures 3-8) comprising a conductive pad (electrode, depicted as 46 in Figure 9; [0121]) that is contained within the enclosure (Figure 9), positioned on an inner surface of the bezel (“electrode 46 is a transparent electrode similar to the transparent electrode 10 in the first embodiment and is arranged within an upper surface of the display window 43” [0121]. Therefore, since the conductive pad (electrode) “is arranged within the upper surface of the display window”, the examiner considers the conductive pad (electrode) to be positioned on an inner surface of the bezel (upper and lower surfaces of the case including the display window); see Figures 1, 3-5 and 9) and configured to detect a first electrical signal associated with the user's cardiac activity ([0125]) through a portion of the bezel (Figures 1, 3-6 and 9; since the detected biological signal is transmitted through the bezel (i.e., case) as seen in Figure 3-5, for processing, the examiner considers the “first electrical signal associated with the user's cardiac activity” to pass “through a portion of the bezel” to the processing unit); a second lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12) coupled to the input mechanism (operating button, which includes electrode, depicted as 47 [0128-0129]) and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism ([0125, 0128-0129]); and a processor (processing unit, depicted as 18 in Figures 3-4; [0094, 0123]) enclosed by the enclosure and configured to process the detected first and second electrical signals ([0095, 0099, 0123]).
As to claim 22, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the bezel comprises: a first portion (display window) formed from a first material having a first conductivity ([0080, 0083, 0086]); and a second portion (upper portion of the case) formed from a second material (“The lower case 3 and the upper case 4 are each made of an insulating material, e.g., resin” [0079]) having a second conductivity lower than the first conductivity (Shimuta et al. discloses the display window, or first portion, can be formed from a transparent resin or glass [0080]. Glass has a higher conductivity than resin. As such, the first portion has a higher conductivity than the second portion (i.e., the upper portion of the case)).
As to claim 23, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the first lead is electrically coupled to the first material (first lead is coupled to the electrode which are located on the display window; [0091]; Figures 1-6 and 9); and the second material at least partially surrounds the input mechanism (upper case, see Figure 9).
As to claim 25, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses “electrode 47 is an electrode made of a transparent or opaque electroconductive material and is arranged on the surface of the operating button 45. An insulating film 49 made of a transparent or opaque insulating material is coated on an upper surface of the electrode 47” [0122]. As such, the examiner considers the insulating film, depicted as 49 in Figure 9, to be the “insulating material positioned between the bezel (Figure 9) and the input mechanism” (operating button, depicted as 45 in Figure 9).
As to claim 26, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses “the processing circuit unit has the function of, when the operating button 45 is pressed, starting the operations of detecting the biological signals, generating the electrocardiographic signal, and computing the electrocardiographic data, etc.” [0123]; Therefore, “the processor generates a physiological parameter of the user using the processed first and second electrical signals”.
As to claim 27, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the input mechanism is a button (operating button, depicted as 45 in Figure 9; [0120, 0125]).
As to claim 28, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the enclosure comprises multiple sides (Figure 1-5); the bezel (lower and upper case, depicted as 3 and 4 respectively in Figures 1-6; [0079]) is positioned on a first side of the enclosure (disposed around the perimeter of the enclosure; Figures 1, 4-5 and 9); and the input mechanism is positioned on a second side of the enclosure (Figure 9).
As to claim 30, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses an electronic device for detecting a user's electrical cardiac signal (Abstract; Figures 1-3) comprising: an enclosure (housing, depicted as 2 in Figures 1-4; [0079]) comprising: a display (display panel, depicted as 8 in Figures 1-4; [0080]); and a bezel (lower and upper case, depicted as 3 and 4 respectively in Figures 1-6; [0079]) extending around the display ([0080]; Figures 1-4; display panel is enclosed within the bezel and thus the bezel extends around the display (upper and lower case, including the display window, depicted as 5 in Figures 1-6, and part of the upper case); Figures 1-6) and defining an exterior surface (Figures 1-4); a first lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12; [0091]; As to Figure 9, “One electrode 46 is a transparent electrode similar to the transparent electrode 10 in the first embodiment and is arranged within an upper surface of the display window 43 in a forward left portion thereof closer to the user” [0121]; Therefore the electrode 46 of Figure 9 is connected with a current carrying line, as shown in the first embodiment of Figures 3-8) coupled to an inner surface of the bezel (lead resides within the case, as seen in Figures 1 and 3-6, and thus is coupled to an inner surface of the bezel; Figures 4-5) and configured to detect a first electrical signal associated with the user's cardiac activity ([0125]; via the electrode [0091, 0121]) through a portion of the bezel (Figures 1, 3-6 and 9; since the detected biological signal is transmitted through the bezel (i.e., upper and lower surfaces of the case including the display window) as seen in Figure 3-5, for processing, the examiner considers the “first electrical signal associated with the user's cardiac activity” to pass “through a portion of the bezel” to the processing unit); an input mechanism (operating button, depicted as 45 in Figure 9; [0120, 0125]; operating button includes electrode, depicted as 47 [0128-0129]) positioned at least partially within the enclosure (Figure 9; [0120]); a second lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12) coupled to the input mechanism (operating button, which includes electrode, depicted as 47 [0128-0129]) and configured to detect a second electrical signal associated with the user's cardiac activity based on a user contact with the input mechanism ([0125, 0128-0129]); and a processor (processing unit, depicted as 18 in Figures 3-4; [0094, 0123]) enclosed by the enclosure and configured to process the detected first and second electrical signals ([0095, 0099, 0123]).
As to claim 31, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses “transparent insulating film 12 covers an entire upper surface of the display window 5 on which the transparent electrodes 10 and 11 are formed. Stated another way, the transparent insulating film 12 not only directly covers respective upper surfaces of the transparent electrodes 10 and 11, but also covers a remaining portion of the upper surface of the display window 5, in which the transparent electrodes 10 and 11 are not formed, with the adhesive layer 13 interposed therebetween. Further, portions of the upper surface of the transparent insulating film 12 opposing to the transparent electrodes 10 and 11, i.e., partial upper surfaces of the transparent insulating film 12 positioned oppositely away from its partial lower surfaces being in contact with the transparent electrodes 10 and 11, serve as the contact surfaces 12A. When detecting the biological signals, the user brings the thumbs into contact with the contact surfaces 12A”([0088]). The examiner considers the enclosure (housing) to comprise an electrically isolating material (transparent insulating film, depicted as 12 in Figure 1-6) positioned between the bezel (upper and lower case, including the display window, depicted as 5 in Figures 1-6, and part of the upper case); Figures 1-6) and the enclosure (Figure 1, 3-5 and 9).
As to claim 32, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the input mechanism comprises a button (operating button, which includes electrode, depicted as 47 [0128-0129]); and the processor is configured to receive the second electrical signal in response to detecting a user input to the button ([0125, 0128-0129]).
As to claim 33, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the enclosure comprises multiple sides (Figure 1-5); the bezel (lower and upper case, depicted as 3 and 4 respectively in Figures 1-6; [0079]) is positioned on a first side of the enclosure (disposed around the perimeter of the enclosure; Figures 1, 4-5 and 9); and the input mechanism is positioned on a second side of the enclosure (Figure 9).
As to claim 34, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses “the processing circuit unit has the function of, when the operating button 45 is pressed, starting the operations of detecting the biological signals, generating the electrocardiographic signal, and computing the electrocardiographic data, etc.” [0123]; Therefore, “the processor is configured to generates a physiological parameter of the user using the processed first and second electrical signals”.
As to claim 35, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses an electronic device for detecting a user's cardiac signal (Abstract; Figures 1-3) comprising: an enclosure (housing, depicted as 2 in Figures 1-4; [0079]) comprising: a display (display panel, depicted as 8 in Figures 1-4; [0080]); and a bezel (lower and upper case, depicted as 3 and 4 respectively in Figures 1-6; [0079]) extending around the display ([0080]; Figures 1-4; display panel is enclosed within the bezel and thus the bezel extends around the display (upper and lower case, including the display window, depicted as 5 in Figures 1-6, and part of the upper case); Figures 1-6); a first lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12; [0091]; As to Figure 9, “One electrode 46 is a transparent electrode similar to the transparent electrode 10 in the first embodiment and is arranged within an upper surface of the display window 43 in a forward left portion thereof closer to the user” [0121]; Therefore the electrode 46 of Figure 9 is connected with a current carrying line, as shown in the first embodiment of Figures 3-8) coupled to the bezel (lead resides within and engages with the case, as seen in Figures 1 and 3-6, and as such the examiner considers it to be “coupled to the bezel”; Figures 4-5) and configured to detect an electrical cardiac signal of the user ([0125]; via the electrode [0091, 0121]) through the bezel (Figures 1, 3-6 and 9; since the detected biological signal is transmitted through the upper surface of the bezel (i.e., upper and lower surfaces of the case including the display window) as seen in Figure 3-5, for processing, the examiner considers the “first electrical cardiac signal of the user” to pass “through the bezel” to the processing unit); an input mechanism (operating button, depicted as 45 in Figure 9; [0120, 0125]; operating button includes electrode, depicted as 47 [0128-0129]) positioned at least partially within the enclosure (Figure 9; [0120]); a second lead (current carrying line(s), depicted as 14 in Figures 3-8 and 12) coupled to an inner surface of the input mechanism (operating button, which includes electrode, depicted as 47 [0128-0129]; Figures 3-6) and configured to detect the electrical cardiac signal of the user at the input mechanism ([0125, 0128-0129]); and a processor (processing unit, depicted as 18 in Figures 3-4; [0094, 0123]) enclosed by the enclosure and configured to process the electrical cardiac signals of the user’s cardiac signal ([0095, 0099, 0123]).
As to claim 36, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses “electrode 47 is an electrode made of a transparent or opaque electroconductive material and is arranged on the surface of the operating button 45. An insulating film 49 made of a transparent or opaque insulating material is coated on an upper surface of the electrode 47” [0122]. As such, the examiner considers the enclosure (housing) to comprise a third portion of the enclosure, insulating film (depicted as 49) that separates and electrically isolates the bezel (upper and lower case, including the display window, depicted as 5 in Figures 1-6, and part of the upper case; Figures 1-6) from the input mechanism (operating button, depicted as 45 in Figure 9).
As to claim 37, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the third portion of the enclosure (insulating film) comprises at least one of a plastic material ([0088-0089, 0122]).
As to claim 38, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the input mechanism (operating button, depicted as 45 in Figure 9) is a conductive portion of the enclosure (via electrode, depicted as 47 in Figure 9, disposed on button); and the third portion is an insulating portion (insulating film; depicted as 49 in Figure 9; [0122]) of the enclosure.
As to claim 39, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the first lead is embedded along an outer surface of the bezel (Figure 3-6).
As to claim 39, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the input mechanism (operating button, depicted as 45 in Figure 9) comprises a metal material (via electrode, depicted as 47 in Figure 9, disposed on button; [0084, 0122]); and the second lead is coupled to the metal material (via electrode, [0084, 0121]).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 24 and 29 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Shimuta et al. (US 20120022385 A1).
As to claim 24, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the invention substantially as claimed with a bezel with a resin or plastic material, but does not explicitly disclose the bezel having a “first material is a metal material; and the second material is a plastic material”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the bezel materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (See MPEP 2144.07). Furthermore, such a modification to the bezel materials would provide the predictable results of optimizing function, performance and manufacturing costs.
As to claim 29, as best understood in light of the 35 U.S.C. 112 rejections presented above, Shimuta et al. discloses the invention substantially as claimed with two leads, but does not explicitly disclose “a third lead that is contained within the enclosure, positioned on an inner surface of the bezel and configured to detect an electrical signal associated with the user's cardiac activity through a portion of the bezel”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to add a third lead, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (see MPEP 2144.04). Furthermore, such a modification would provide the predictable results of ensuring sufficient electrical connection with the user.
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/ALYSSA M ALTER/Primary Examiner, Art Unit 3792