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 Objections
Claims 1, 2, 8, and 17 are objected to because of the following informalities: the term “status” in line 6 of claim 1 should be deleted; the phrase “the real-time sleep status data” in line 4 of claim 2 should be amended to read “the real-time sleep data”; the term “level” in line 2 of claim 8 should be amended to read “priority”; the term “level” in line 2 of claim 17 should be amended to read “priority”. Appropriate correction is required.
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 7, 14, 21, and 22 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. Claim 7 recites the phrase “a sleep disturbance message”. It is unclear if this phrase is referring to the sleep disturbance message recited in claim 1. For this examination, the phrase in claim 7 is being interpreted as “the sleep disturbance message”. Claim 14 recites the phrase “the display” in line 3. As there is no previous recitation of a display, the phrase lacks proper antecedent basis. For this examination, the phrase is being interpreted as “a display”. Claim 14 recites the phrase “a sleep disturbance message”. It is unclear if this phrase is referring to the sleep disturbance message recited in claim 1. For this examination, the phrase in claim 14 is being interpreted as “the sleep disturbance message”. Claims 21 and 22 both recite the phrase “the priority ranking”. The phrase lacks proper antecedent basis in both claims.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 11, 17, 20, 21, 23, 24, and 29 of U.S. Patent No. 11,134,887. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower than the claims of the current invention, encompassing the subject matter present in the current claims. Any reference meeting the limitations set forth in claims 1-5, 11, 17, 20, 21, 23, 24, and 29 would also meet the limitations set forth in claims 1-22 of the current invention.
Claims 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,992,330. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the US Patent are narrower than the claims of the current invention, encompassing the subject matter present in the current claims. Any reference meeting the limitations set forth in claims 1-18 would also meet the limitations set forth in claims 1-22 of the current invention.
Examiner’s Note
None of the prior art teaches or suggests, either alone or in combination, a sleep monitoring and disturbance mitigating system or method, wherein a remote receiving station is configured to modify rules related to a sleep disturbance priority and a plurality of disturbance events previously administered to a plurality of subjects based on at least one subject’s responses to previously administered disturbance events, in combination with the other claimed elements or steps.
Response to Arguments
Applicant's arguments filed 17 October 2025 have been fully considered and they are not entirely persuasive.
Regarding the rejections of claims 7 and 14 under 35 U.S.C. 112(b), Applicant argues that the removal of “the sleep disturbance priority message” in claim 1 obviates the rejections. The Examiner respectfully disagrees. While the removal of “the sleep disturbance priority message” from claim 1 overcomes the previous rejection of claim 1 under 35 U.S.C. 112(b), it does not address the indefiniteness issues of claims 7 and 14. It remains unclear in claims 7 and 14 as to whether or not the “a sleep disturbance message” recited in each claim is referring to the “a sleep disturbance message” recited in claim 1.
Regarding the rejection of the claims under 35 U.S.C. 101, the amendments to claims 1 and 15 incorporating a practical application of generating a sleep disturbance priority and modifying rules related to the sleep disturbance priority based on subject responses has obviated the rejection.
Applicant’s amendments to the claims have overcome the prior art of record.
The claims are not currently in condition for allowance due to the objections, rejections under 35 U.S.C. 112(b), and/or double patenting rejections discussed above. Attempts to discuss an Examiner’s amendment with the Applicant’s representative on 16 December 2025 and 18 December 2025 were unsuccessful. The Examiner invites the Applicant’s representative to schedule an interview to discuss amendments to the claims (and the filing of proper Terminal Disclaimers) that would put the application as a whole in condition for allowance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Westerink et al.’960 (US Pub No. 2011/0275960 – previously cited) is the closest prior art of record. Figure 1 of Westerink et al.’960 discloses a sleep monitoring and disturbance mitigation system (see TITLE and ABSTRACT), the system comprising: a sleep status monitoring apparatus 3,9 to collect real-time sleep data from a subject; to determine a sleep status based at least partially on the sleep data; and to transmit the real-time sleep data and sleep status to a remote receiving station 5,5’; the remote receiving station configured to receive the real-time sleep status and the sleep status from the sleep status monitoring apparatus; and to use a sleep disturbance priority to display a sleep disturbance message comprising data indicative of the sleep status and the sleep disturbance priority on a display located remotely from the sleep status monitoring apparatus (page 1, sections [0005-0008], and page 3, section [0025]).
Westerink et al.’960 discloses all of the elements of the claimed invention, as discussed above, except for explicitly stating that the remote receiving station generates the sleep disturbance priority and sleep disturbance message. Westerink et al.’960 implies that the sleep disturbance priority and the sleep disturbance message are generated by the sleep status monitoring apparatus. However, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to try generating the sleep disturbance priority and sleep disturbance message at the remote receiving station as it would merely be choosing from a finite number of identified, predictable solutions (performing the generating step at either the sleep status monitoring apparatus or at the remote receiving station), with a reasonable expectation of success.
Rastogi et al.’770 (US Pub No. 2015/0141770 – previously cited) and Hijazi et al.’808 (US Pub No. 2016/0066808 – previously cited) both teach that it is well known in the medical diagnostic art to provide outputs to a patient and/or caregiver on any one of a workstation computer, a mobile communication device, a smart phone, and a tablet computer.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ETSUB D BERHANU whose telephone number is (571)270-5410. The examiner can normally be reached Mon-Fri 9:00am-5:30pm EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ETSUB D BERHANU/Primary Examiner, Art Unit 3791