DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 negated by the manner in which the invention was made.
Claims 1-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Maclaughlin (USPN 2010/0331631) in view of Haisley et al. (USPN 2012/0253148).
Maclaughlin discloses an ear-worn device for measuring one or more physiological parameters of a user, the ear-worn device comprising: an ear back piece comprising: a concave surface configured to contact a portion of a back of an ear of the user; a concha piece comprising: a first leg comprising a first end and a second end; a second leg comprising a first end, a second end, and a convex surface at the second end of the second leg, said first end of the second leg connected to the second end of the first leg, said second leg extending non-parallel relative to the first leg, said convex surface configured to contact a portion of a concha of the user’s ear; a clip member connected to the first end of the first leg of the concha piece and to the ear back piece, said clip member configured to wrap around a portion of the user’s ear, said clip member further configured to bias the concave surface of the ear back piece into contact with said portion of the back of the user’s ear and bias the convex surface of the concha piece into contact with said portion of the concha of the user’s ear; and a lobe attachment member connected to the clip member and configured to be secured to first and second sides of a lobe of the user’s ear, the lobe attachment member comprising: at least one emitter configured to emit light towards tissue of the lobe of the user’s ear; and at least one detector configured to output at least one signal responsive to detecting light after passing through at least a portion of said tissue of the lobe of the user’s ear, said at least one signal indicative of at least one of pulse rate and oxygen saturation. A cable extending from a portion of the clip member, the cable is configured to transmit said at least one signal outputted by the at least one detector of each of the concha piece and lobe attachment member to a monitoring device, said at least one signal usable by the monitoring device to determine said at least one of said pulse rate and said oxygen saturation. the clip member comprises a first straight portion and a second straight portion pivotably connected to the first straight portion. A first portion of the lobe attachment member is connected at an end the first straight portion of the clip member, and wherein a second portion of the lobe attachment member is connected at an end of the second straight portion of the clip member. The first end of the first leg of the concha piece is connected at an end of the first straight portion of the clip member, and wherein the ear back piece is connected at an end of the second straight portion of the clip member, the second leg of the concha piece is substantially perpendicular to the first leg of the concha piece. See the entire document specifically [0030], [0033],[0037]-[0038],[0043].
Maclaughlin fails to explicitly disclose at least one emitter arranged adjacent the concave surface and configured to emit light towards tissue of the portion of the back of the user’s ear; and at least one detector arranged adjacent the convex surface and configured to output at least one signal responsive to detecting light after passing through at least a portion of said tissue of the portion of the back of the user’s ear, said at least one signal indicative of at least one of pulse rate and oxygen saturation. Haisley et al. discloses two separate sensors arranged on the ear sensor (figure 17). Therefore, it would have been obvious to one with ordinary skills in the art at the time the invention was made to incorporate the second sensor of Haisley et al. into the ear sensor of Maclaughlin, since such modification would provide one sensor on the ear lobe attachment and the other on the concha piece of the ear sensor, in order to obtain additional physiological parameter.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,877,867. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the Patent. As, such, any invention meeting the limitations of the claims of the Patent would necessarily meet those of the instant application as well.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,432,771. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the Patent. As, such, any invention meeting the limitations of the claims of the Patent would necessarily meet those of the instant application as well.
Claims 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-39 of copending Application No. 18537677 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the Patent. As, such, any invention meeting the limitations of the claims of the Patent would necessarily meet those of the instant application as well.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARJAN FARDANESH whose telephone number is (571)270-5508. The examiner can normally be reached Monday-Friday 9:00-17:00.
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/MARJAN FARDANESH/Primary Examiner, Art Unit 3791
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