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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Notice of Amendment
In response to the amendment(s) filed on 6/26/26, amended claim(s) 1 and 11, canceled claim(s) 2-10, and new claim(s) 12-16 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
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). 4. The disclosure of the prior-filed application, Application No. 17/407,099 (hereinafter “the ‘099 application”), fails 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. Specifically, claim 1 recites “wherein at least based on outputs from the first and second microphones, and the data regarding sound in the storage medium, the controller is configured to determine if the user has coughed.” This claimed subject matter is supported by Fig. 5B and para [0067], [0071], and [0073] [0078]. However, Fig. 5B and para [0067], [0071], and [0073]-[0078] is not part of the disclosure of the ‘099 application. Therefore, the ‘099 application does not fully comply with the requirements of 35 Page 3 Application/Control Number: 18/666,784 Art Unit: 3791 U.S.C. 112(a) for the above-recited claim language because it is missing the disclosure that provides support for the claim language. As a result, the effective filing date of the instant claim set is 5/16/24.
Claim Objections
Claim 16 is objected to because of the following informalities: “comprising wireless communication component” (lines 1-2) appears that it should be “comprising a wireless communication component.”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “wireless communication component configured to wirelessly transmit data based on the determination to a mobile phone to be processed to produce at least a health risk of the user,” in claim 16, which corresponds to a “wireless transceiver” (see para [0044]-[0045] of Applicant’s specification as originally filed).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 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.
Claim(s) 1 and 11-16 is/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.
For claim 1, the claim language “wherein at least based on outputs from the first and the second microphone, and the data regarding sound in the storage medium, the controller is configured to determine if the user has coughed” does not appear to be 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 pre AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. A claim may lack written description when the specification does not disclose the computer and the algorithm (i.e., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. See MPEP 2161.01(I). Here, the claim recites the function of determining if the user has coughed based on outputs from the first and the second microphone, and the data regarding sound in the storage medium, but the specification never discloses the necessary steps and/or flowcharts of how this occurs. It is not enough that a skilled artisan could devise a way to accomplish the function because this is not relevant to the issue of whether the inventor has shown possession of the claimed invention. See MPEP 2161.01(I). Therefore, adequate disclosure is needed.
Dependent claim(s) 11-16 fail to cure the deficiencies of independent claim 1, thus claim(s) 1 and 11-16 is/are rejected under 35 U.S.C. 112(a).
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.
Claim(s) 1 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0054092 to Howell et al. (hereinafter “Howell”) in view of U.S. Patent Application Publication No. 2022/0087570 to Lesso et al. (hereinafter “Lesso”).
For claim 1, Howell discloses an eyewear of a user (Abstract) comprising:
a front portion (unlabeled, but as can be seen in Fig. 8) with a left side (unlabeled, but as can be seen in Fig. 8) and a right side (unlabeled, but as can be seen in Fig. 8);
a first side portion (unlabeled, but as can be seen in Fig. 8) and a second side portion (unlabeled, but as can be seen in Fig. 8), one coupled to the left side of the front portion (unlabeled, but as can be seen in Fig. 8) and the other coupled to the right side of the front portion (unlabeled, but as can be seen in Fig. 8);
a first microphone (“Dual Microphone,” Fig. 8) and a second microphone (“Dual Microphone,” Fig. 8) in the eyewear (as can be seen in Fig. 8);
a controller (“controller,” para [0016]) in the eyewear (para [0016]) coupled to at least the first microphone and the second microphone (para [0054] and [0060]); and
a storage medium (“database,” para [0082]) (also see para [0151]) configured to store at least attributes of a plurality of sound (“database of similar coughing sound,” para [0082]) (also see para [0151]), including an attribute of sound regarding cough (“database of similar coughing sound,” para [0082]) (also see para [0151]),
wherein at least based on output from the first microphone, and the data regarding sound in the storage medium, the controller is configured to determine if the user has coughed (para [0082] [0083] and [0151]).
Howell does not expressly disclose that the determination is based on the first microphone and the second microphone.
However, Lesso teaches determining if a user has coughed based on an output from a first microphone and a second microphone (para [0068]-[0069]).
It would have been obvious to a skilled artisan to modify Howell such that the determination is based on the first microphone and the second microphone, in view of the teachings of Lesso, for the obvious advantage of using more sources of data to get a more accurate determination of whether the user has coughed. 31.
For claim 11, Howell further discloses wherein the controller is configured to generate a recommendation and output the recommendation to the user based on the determination (para [0042], [0069], and/or [0183]).
For claim 12, Howell further discloses wherein the controller is configured to produce at least information regarding a health risk of the user based on the determination (para [0019] and [0042]).
For claim 13, Howell further discloses a temperature sensor at least partially in the eyewear (para [0061]), with the sensor configured to measure temperature of the user (para [0061]); and a heart rate sensor at least partially in the eyewear (para [0136]), with the sensor configured to measure heart rate of the user (para [0136]), wherein the eyewear is configured to be eyeglasses (para [0023]), and wherein the health risk of the user is configured to depend on data from the temperature sensor and the heart rate sensor (para [0181]).
For claim 14, Howell further discloses an activity detector at least partially in the eyewear (para [0062]), the activity detector configured to detect activity of the user (para [0062]), and the activity detector including at least an accelerometer (para [0080]), wherein the health risk of the user is configured to depend on data from the activity sensor (para [0181]) (also see para [0141]).
For claim 15, Howell further discloses wherein the health risk is configured to depend on data regarding a health condition associated with another person proximate to the user (para [0043] and [0048]).
For claim 16, Howell further discloses a wireless communication component configured to wirelessly transmit data based on the determination to a mobile phone to be processed to produce at least a health risk of the user (Examiner’s Note: construed in view of the 112(f) invocation above) (para [0042]-[0043]).
Response to Arguments
Applicant’s arguments filed 6/26/26 have been fully considered.
With respect to the claim objections, Applicant’s amendments and arguments are persuasive and thus the objections are withdrawn.
With respect to the 112(a) rejection, Applicant argues that para [0101] of the specification as originally filed provides written description for the claim language of claim 1. Specifically, para [0101] states “the audio sound by the user can be compared to a database of similar coughing sound to identify the audio sound as a cough.” But merely stating that a comparison happens is not an algorithm in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Claim 1 recites “the controller is configured to determine if the user has coughed” and the response states well para [00101] discloses that the sounds from the microphone can be compared. Ok, but what’s the comparison? It’s like saying “we determine a cough using a formula.” Ok, what’s the formula? If the formula is not described, then Applicant hasn’t met their threshold in sufficient detail for written description. Here, the comparison is not sufficiently described. What parameter or parameters is/are compared? How are those parameters compared? What functions are used and/or what boundaries are used in the comparison? How does the determination relate to the comparison and/or what is the nexus of the determination based on the comparison? For example, are peaks determined at specific frequencies and then if the amplitude of certain speaks at specific frequencies fall within a threshold range, then a corresponding match is confirmed that then classifies the sound as a cough? That is just an example of describing an algorithm (i.e., the necessary steps) in sufficient detail that a skilled artisan would understand that Applicant had possession of the invention. But merely just stating that sounds are compared doesn’t really describe much to the skilled artisan other than data is input into a black box of comparison and then a result is output. As a result, the specification still lacks the sufficient level of detail necessary to demonstrate to a skilled artisan that Applicant had possession of the invention.
In further of the above, it is noted that that para [00102] of Applicant’s specification mentions that “AI techniques” may be used to tell the difference between coughs and other types of sounds made by humans. However, the specification doesn’t give a structural/architectural detail of the AI model to perform this function, also leading to a lack of evidence that Applicant had possession of the AI model to performed the claimed function, and therefore a lack of written description.
With respect to the 112(b) rejection, Applicant’s amendments and arguments are persuasive and thus the rejection is withdrawn.
With respect to the 103 rejection(s), the priority date of the instant claim set is still 5/16/24 because the 112(a) rejection has not been resolved for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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