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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/09/2026 has been entered.
Response to Arguments
Applicant’s arguments filed 09/09/2026 have been fully considered but are not persuasive.
Applicant argues, “Goff describes that the housing 120 and the flexible skin attachment element 110 has a rectangular shape. However, Goff does not describe that the measurement surface of the housing has an elliptical shape. Goff further does not describe that a side surface of the housing is formed as a curved surface corresponding to the elliptical shape. Further, the Specification of the present disclosure describes, the criticality of the claimed limitations, at least, for example, at [0070], "[w]hen the detection surface 1a of the case 1 has an elliptical shape, the side surface 1c of the case 1 is a curved surface. When the first measurement apparatus 100a is attached to the measurement site by a double-sided tape or the like, it is difficult for the first measurement apparatus 100a to be detached due to being caught on clothes and the like…”
Examiner respectfully disagrees. Goff discloses
a housing (fig. 6: 100: combination of 120 and 110) having a measurement surface (110; [0105]), and
wherein the housing has a side surface (see Examiner Fig. 1 below: outer side surface of 120 that goes all around 120),
the measurement surface has a rectangle shape (fig. 6: 110 is rectangular) in the plan view of the measurement surface (fig. 6), and
the side surface is a curved surface corresponding to the rectangle shape of the measurement surface (fig. 6: side surface of 120 is curved and corresponds to the rectangle shape of 110; see also fig. 4A which shows 120 assembled with 110).
Goff fails to disclose wherein
the measurement surface has an elliptical shape in the plan view of the measurement surface,
the side surface is a curved surface corresponding to the elliptical shape of the measurement surface.
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the measurement surface of Goff to instead have an elliptical shape in the plan view of the measurement surface and to modify the side surface of Goff to correspond to the elliptical shape of the measurement surface, because doing so would be a change in shape, as shown In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant), and as evidenced by Bly (US 2009/0076363), which teaches monitoring a patient using a patch (fig. 1J: 110; [0012 0081], wherein the patch may comprise various geometric shapes [0081] and corners that are rounded [0081] and therefore harder to remove ([0081]: rounded corners improve adherence of the patch to skin for an extended period of time compared to right angle corners).
Specifically, regarding Applicant’s arguments directed to the criticality of the claimed elliptical shape, Examiner asserts that it would still have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the measurement surface of Goff to have various different shapes as discussed above, since many different shapes could have been selected based on preference, including which shape of an adhesive layer of the measurement surface of Goff (Goff: [0023]: flexible material may include an adhesive) might stay on the subject’s skin longer due to being less likely to get caught on clothes.
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Examiner Fig. 1 – Goff Annotated Fig. 6
Applicant argues, “Goff does not teach, suggest, or render obvious at least, for example, the features of "the housing has a side surface which is gripped when the test subject wears the biological information measurement apparatus”.
Examiner respectfully disagrees. As demonstrated below (Claim Rejections - 35 USC 103, In re claim 1), the housing having a side surface which is gripped when the test subject wears the biological information measurement apparatus is indeed disclosed by Goff.
CLAIM INTERPRETATION
As best understood, the recited “a triangular shape with R-shaped corner portions” in re claim 8 is being understood as a measurement surface that has a triangular shape and corners that are rounded as shown in Applicant’s Fig. 7 (see also Applicant’s instant specification [0079-0080]).
Applicant is asked to confirm or correct this interpretation.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Goff et al. (US 2019/0142625) [in view of Bly et al. (US 2009/0076363)].
In re claim 1, Goff discloses a biological information measurement apparatus (fig. 1: 100; [0105, 0116]) comprising:
a detection unit (fig. 6: pulse oximetry 144; [0116]) including a light-emitting unit ([0116]: pulse oximetry 144 would have a light-emitting unit; [0117]: another example of a pulse oximetry module has a part which emits light) and a light-receiving unit ([0116]: pulse oximetry 144 would have a light-receiving unit; [0117]: another example of a pulse oximetry module has a part which receives light);
an inertial sensor (fig. 6: 140 [0116]) configured to detect a body motion of a test subject ([0116]: 140 may include an accelerometer which would detect body motion of a test subject; [0029]); and
a housing (fig. 6: 100: combination of 120 and 110) having a measurement surface (110; [0105]) configured to face the test subject ([0107]: bottom surface of 110 which conforms to anatomy of a wearer; fig. 2) and accommodating the detection unit and the inertial sensor (fig. 6: 110 includes a cut-out for 120 which contains the detection unit 144 and the inertial sensor 140, and is interpreted as accommodating the detection unit and the inertial sensor under broadest reasonable interpretation by providing space for them),
wherein in a plan view of the measurement surface (fig. 6), a first width (fig. 6: top to bottom length of 110) of the housing along a parallel axis (fig. 6: axis going top to bottom on 110) parallel to an axis of the inertial sensor (fig. 6: axis going top to bottom of a top surface of 140; fig. 17) is different from a second width (fig. 6: left to right length of 110) of the housing (fig. 6) along an orthogonal axis orthogonal to the axis of the inertial sensor (fig. 6: orthogonal to the axis of the inertial sensor is an axis going left to right of 140; fig. 6: orthogonal axis is left to right axis of 110),
the housing has a side surface (see Examiner Fig. 1 above: outer side surface of 120 that goes all around 120) *which is gripped when the test subject wears the biological information measurement apparatus (fig. 4A: test subject wearing 100 would grip side surface of 120 to grab the biological information measurement apparatus, for instance, when they want to remove it),
the measurement surface has a rectangle shape (fig. 6: 110 is rectangular) in the plan view of the measurement surface (fig. 6),
the side surface is a curved surface corresponding to the rectangle shape of the measurement surface (fig. 6: side surface of 120 is curved and corresponds to the rectangle shape of 110; see also fig. 4A which shows 120 assembled with 110), and
**a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8 (see Examiner Fig. 1 above, where the first width appears to be around half of a length of the second width, and therefore a ratio of the first width of the housing to the second width of the housing would be around .5).
Goff fails to disclose
the measurement surface has an elliptical shape in the plan view of the measurement surface,
the side surface is a curved surface corresponding to the elliptical shape of the measurement surface.
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the measurement surface of Goff to instead have an elliptical shape in the plan view of the measurement surface and to modify the side surface of Goff to correspond to the elliptical shape of the measurement surface, because doing so would be a change in shape, as shown In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant), and as evidenced by Bly, which teaches monitoring a patient using a patch (fig. 1J: 110; [0012 0081], wherein the patch may comprise various geometric shapes [0081] and corners that are rounded [0081] and therefore harder to remove ([0081]: rounded corners improve adherence of the patch to skin for an extended period of time compared to right angle corners).
*Regarding the limitation, “which is gripped when the test subject wears the biological information measurement apparatus”, Examiner asserts that the recited limitations are directed to functional language/intended use.
A recitation of the functional language of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the functional language, then it meets the claim.
In this case, the proposed combination only be able to perform these functions in order to anticipate the claimed invention; see MPEP § 2114 (I) and In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. Therefore, since the proposed combination has all of the necessary structure to provide wherein the housing has a side surface that can be gripped when the test subject wears the biological information measurement apparatus, it is therefore capable of and/or able to be configured to do the above limitations, see MPEP 2114 "[A]pparatus claims cover what a device is, not what a device does." See MPEP 2114.
**Regarding the limitations directed to “a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8”, although Examiner fig. 1 above shows the first width of the housing being around half of a length of the second width of the housing, in the instance that this is not explicitly disclosed by Goff, claim 1 is rejected under 35 U.S.C 103 as follows:
At the time the instant application was filed it would be obvious to try to provide a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8. Furthermore, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421, 82 USPQ2d at 1397, especially since the claimed ratio of the first width of the housing to the second width of the housing is not disclosed as being crucial or unexpected, and also because someone of ordinary skill in the art at the time the instant invention was filed would not pick a ratio that was too small or too big, and as also evidenced by Bly, which teaches wherein the patch may comprise a length (fig. 1G: 170) that is within a range of about 4” to 8” [0081] and a width (fig. 1H: 174) that is within a range of about 2” to 4” [0081].
Even if the proposed combination fails to yield “a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8”, it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (In re Aller, 105 USPQ 233).
In re claim 2, the proposed combination yields (all mapping directed to Goff unless otherwise stated) wherein the first width is smaller than the second width (fig. 6: length from top to bottom of 110 is less than the length going left to right of 110).
In re claim 3, the proposed combination yields (all mapping directed to Goff unless otherwise stated) wherein the measurement surface includes an adhesive layer [0023].
In re claim 4, the proposed combination yields (all mapping directed to Goff unless otherwise stated) wherein the housing has a facing surface (fig. 6: top of 120) facing the measurement surface (fig. 6: bottom of the facing surface would face toward the measurement surface).
The proposed combination fails to yield wherein the facing surface is a convex curved surface.
Another embodiment of Goff (fig. 16A; [0094, 0131]) teaches wherein a facing surface (fig. 16a: top portion of 100) is a convex curved surface (fig. 16a).
Goff further teaches that the downward peripheral portion of housing 105 ([0131]; fig. 16a) provides direct coupling with the skin [0131].
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the biological information measurement apparatus yielded by the proposed combination, to provide wherein the facing surface is a convex curved surface, as taught by the second embodiment of Goff, because doing so would provide better coupling with the skin.
In re claim 6, Goff discloses a biological information measurement set (fig. 2: combination of 100 and 130).
Regarding the limitations “a biological information measurement set comprising:
a biological information measurement apparatus including a detection unit including a light-emitting unit and a light-receiving unit,
an inertial sensor configured to detect a body motion of a test subject, and
a housing having a measurement surface configured to face the test subject and accommodating the detection unit and the inertial sensor; and
...wherein in a plan view of the measurement surface, a first width of the housing along a parallel axis parallel to an axis of the inertial sensor is different from a second width of the housing along an orthogonal axis orthogonal to the axis of the inertial sensor,
the housing has a side surface which is gripped when the test subject wears the biological information measurement apparatus,
the measurement surface has an elliptical shape in the plan view of the measurement surface,
the side surface is a curved surface corresponding to the elliptical shape of the measurement surface, and
a ratio of the first width of the housing to the second width of the housing is in a range of 0.2 to 0.8”,
see the proposed combination yielded in re claim 1 above.
Regarding the limitation, “a wearing tool configured to cover the housing and press the biological information measurement apparatus to the test subject”, the proposed combination yields (all mapping directed to Goff unless otherwise stated) a wearing tool ([0066]: headband which secures the electronics housing to a forehead) configured to cover the housing ([0066]: headband would cover at least part of the housing) and press the biological information measurement apparatus to the test subject [0066],
In re claim 7, the proposed combination yields (all mapping directed to Goff unless otherwise stated) wherein a facing surface of the housing (see in re claim 4 above) in contact with the wearing tool is implemented by an elastic member ([0105]: 120 may be a softer elastomer which is an elastic member and would be in contact at least indirectly with the wearing tool [0066]).
In re claim 8, regarding the limitations, “a biological information measurement apparatus comprising:
a detection unit including a light-emitting unit and a light-receiving unit;
an inertial sensor configured to detect a body motion of a test subject; and
a housing having a measurement surface configured to face the test subject and accommodating the detection unit and the inertial sensor,
wherein in a plan view of the measurement surface, a first width of the housing along a parallel axis parallel to an axis of the inertial sensor is different from a second width of the housing along an orthogonal axis orthogonal to the axis of the inertial sensor,”
see in re claim 1 above.
Regarding the limitation, “the measurement surface has a triangular shape with R-shaped corner portions in the plan view of the measurement surface”, Goff discloses wherein the measurement surface has a rectangle shape (see in re claim 1 above) with corner portions (fig. 6) in the plan view of the measurement surface (fig. 6).
Goff fails to disclose wherein the measurement surface has a triangular shape with R-shaped corner portions in the plan view of the measurement surface
It would have been obvious to someone of ordinary skill in the art at the time the instant invention was filed to modify the measurement surface of Goff to provide wherein the measurement surface has a triangular shape with R-shaped corner portions in the plan view of the measurement surface, because doing so would be a change in shape, as shown In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant), and as also evidenced by Bly, which teaches multiple geometric shapes being used as desired (see in re claim 1 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Katra et al. (US 2011/0270049) discloses wherein a patch [0079] for monitoring a patient [0037-0038] may comprise many shapes [0079].
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUMAISA R BAIG whose telephone number is (571)270-0175. The examiner can normally be reached Mon-Fri: 8am- 5pm.
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, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUMAISA RASHID BAIG/Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796
