DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16, the phrase “the brightness of the light” lacks clear antecedent basis. Furthermore, the phrase “…configured to the brightness of the light in response to user moving a finger…” does not seem to describe a complete feature in response to user’s finger.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Costa et al. (hereafter Costa; US 20050029038 A1).
Regarding claim 1, Costa discloses a apparatus comprising:
a light (10, [0022]);
a switch to turn the light on or off (8, [0022]); and
a clipping mechanism (arms 14a, 14b; [0023]) configured to removably attach the apparatus to a bell portion (36) of a stethoscope (30),
wherein:
the switch (8) is accessible to a user while the apparatus is attached to the bell portion (36) with the clipping mechanism (arms 14a, 14b; see Fig. 5, e.g.), and
the apparatus is configured not to block any portion of a diaphragm (within 32) of the stethoscope while the apparatus is attached to the bell portion (36) with the clipping mechanism (arms 14a, 14b) (as illustrated in Fig. 5, the operation of the diaphragm is not blocked by the apparatus being attached to the stethoscope).
Regarding claims 2 and 4, Costa discloses that the clipping mechanism (arms 14a, 14b) comprises flexible, rubberized plastic (ABS in [0035]) configured to deflect when attaching the apparatus to the stethoscope or detaching the apparatus from the stethoscope, and further wherein the flexible, rubberized plastic is configured to dampen noise from passing from the apparatus into the stethoscope (ABS inherently dampening noise from passing from the apparatus into the stethoscope).
Regarding claim 3, Costa discloses that the clipping mechanism is configured to fit on at least two different sized bells of at least two different stethoscopes (arms 14a and14b comprise flexible, rubberized plastic, such as ABS in [0035], so they are inherently being able to fit on at least two different sized bells).
Regarding claim 6, Costa discloses a battery (58, [0029]).
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 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Costa.
Regarding claims 9 and 10, Costa fails to show an electronic stethoscope. Examiner takes Official Notice that an electronic stethoscope is notoriously well known in the art. One skilled in the art would have expected that the removable light assembly could be mounted to an electronic stethoscope with a similar shape as the stethoscope in Costa without generating any unexpected result. One skilled in the art would have expected reasonable success when the removable light assembly is mounted to an electronic stethoscope with a similar shape as the stethoscope in Costa. Thus, it would have been obvious to one ordinary skill in the art to modify Costa by utilizing the removable light assembly for other type of stethoscope, including an electronic type, in order to enhance the functionality of the light assembly.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable respectively over claims 1-5 and 19 of U.S. Patent No. 11026654 (hereafter patent ‘654). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of patent ‘654 recites each and every limitation specified in claims 1 and 16-19 and claim 19 of patent ’654 recites each and every limitation specified in claim 20. Claims 1 and 19 of patent ‘654 are more specific.
Dependent claims 2-15 correspond to dependent claims 2-15 of patent ‘654.
Claims 1-9, 11 and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable respectively over claims 1-10 of U.S. Patent No. 11957503 (hereafter patent ‘503). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of patent ‘503 recites each and every limitation specified in claim 1. Claim 1 of patent ‘503 is more specific.
Dependent claims 2-4 correspond to dependent claims 2-4 of patent ‘503.
Dependent claims 6-9 correspond to dependent claims 5-7 of patent ‘503.
Dependent claim 11 correspond to dependent claim 9 of patent ‘503.
Regarding claim 13, patent’ 503 fails to explicitly recite the location of the percussive device. However, the claimed feature includes two positions which are the only possible positions for mounting the percussive device when the percussive device is being utilized as a part of stethoscope. Thus, it would have been obvious to one of ordinary skill in the art to modify patent ‘503 by explicitly stating one or two only possible location of the percussive device relative to the stethoscope.
Dependent claim 14 correspond to dependent claim 10 of patent ‘503.
Regarding claim 15, patent ‘503 fails to specify first electrical signal. However, in order to determine the response subject to the plunger impacting the membrane as specified in claim 10, the first electrical signal must be a controlled signal that controls the percussive force applied into the living subject. Thus, it would have been obvious to one of ordinary skill in the art to modify patent ‘503 by controlling the first electrical signal in order to detect the response based on the known magnitude and duration of the force caused by the controlled first electrical signal.
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/PING LEE/Primary Examiner, Art Unit 2654