DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/13/2024 is being considered by the examiner.
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 .
Double Patenting
Claims 1, 4-6 and 8 of this application is patentably indistinct from claims 1, and 5 of Application No. 18279221. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of copending Application No. 18/279,221 in view of view of Alsharif et al. (Alsharif SH, AlGhamdi KM. Evaluation of Scalp Hair Density and Diameter in the Arab Population: Clinical Office-Based Phototrichogram Analysis. Clin Cosmet Investig Dermatol. 2022 Dec 15;15:2737-2743. doi: 10.2147/CCID.S394045. PMID: 36545499; PMCID: PMC9762255.) herein referred to as “Alsharif” further in view of Jimenez et al. (Jimenez F, Ruifernández JM. Distribution of human hair in follicular units. A mathematical model for estimating the donor size in follicular unit transplantation. Dermatol Surg. 1999 Apr;25(4):294-8. doi: 10.1046/j.1524-4725.1999.08114.x. PMID: 10417585.herein referred to as “Jimenez”
This is a provisional nonstatutory double patenting rejection.
18/691,470
18/279,221
1. A brain wave detection electrode which is brought into contact with a scalp of a subject to detect brain waves, the brain wave detection electrode comprising: a base portion;
a plurality of pyramid-shaped protrusion portions protruding from the base portion; and
an electrode portion provided in the protrusion portion,
wherein a distance D1 between protrusion portions most adjacent to each other among the plurality of protrusion portions satisfies the following expression (1),
D1< L(m2+ n2)1/2 – d or D1 > L(m2+n2)1/2+d ... (1)
m and n: an integer of 0 or more, in which either m or n is 1 or more, L: a distance between centers of hair follicles in the scalp of the subject, and d: a diameter of the hair follicle in the scalp of the subject.
As evidenced by Alsharif and Jimenez: where D1 is taken to be 2 mm, n m and n is taken as to be 2 (integer equal or greater than zero and more than 1), L is taken to be 1.4 mm (as evidenced by Jimenez) and d is taken to be 0.05 mm (as evidenced by Alsharif). Given the formula D1< L(m2+ n2)1/2 gives 2 > 3.9 which is valid. Therefore, the claims are patentably indistinct
1. A brain wave detection electrode comprising: a pillar-shaped base part;
a plurality of polygonal pyramid-shaped protruding parts that are elastic bodies and provided perpendicularly to one end face of the pillar-shaped base part; and
electrode parts provided on tip portions of the polygonal pyramid-shaped protruding parts, wherein a ratio As of a width D of a bottom surface of a protruding part, of the plurality of polygonal pyramid-shaped protruding parts, to a height H of the protruding part is equal to or greater than 1.2 and equal to or less than 2.0, and a hardness E of the elastic bodies is equal to or greater than 15 and equal to or less than 55.
Claim 5: The brain wave detection electrode according to claim 1, wherein a shortest distance L between vertices of adjacent protruding parts, of the polygonal pyramid-shaped protruding parts, is equal to or greater than 2 millimeters and equal to or less than 5 millimeters.
Claims 4, 5-6, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1,9 and 5 of copending Application No. 18/279,221 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because see table below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
18/691,470
18/279,221
Claim 4: The brain wave detection electrode according to claim1 wherein the protrusion portion is a pyramid.
Claim 1: A brain wave detection electrode comprising: a pillar-shaped base part; a plurality of polygonal pyramid-shaped protruding parts that are elastic bodies and provided perpendicularly to one end face of the pillar-shaped base part; and electrode parts provided on tip portions of the polygonal pyramid-shaped protruding parts.
Claim 5, Quadrangular pyramid is seen as a polygonal pyramid: The brain wave detection electrode according to claim 1 wherein the pyramid of the protrusion portion is a quadrangular pyramid.
Claim 1: A brain wave detection electrode comprising: a pillar-shaped base part; a plurality of polygonal pyramid-shaped protruding parts that are elastic bodies and provided perpendicularly to one end face of the pillar-shaped base part; and electrode parts provided on tip portions of the polygonal pyramid-shaped protruding parts.
Claim 6:The brain wave detection electrode according to claim 1 wherein the protrusion portions are arranged such that sides of bottom surfaces of adjacent protrusion portions are in contact with each other.
Claim 3: The brain wave detection electrode according to claim 1, wherein, polygons of bottom surfaces of adjacent protruding parts, of the plurality of polygonal pyramid-shaped protruding parts, are in contact with each other.
Claim 8: The brain wave detection electrode according to claim 1 wherein the distance D1 between the protrusion portions most adjacent to each other is 2 mm or more and 10 mm or less.
Claim 5: The brain wave detection electrode according to claim 1, wherein a shortest distance L between vertices of adjacent protruding parts, of the polygonal pyramid-shaped protruding parts, is equal to or greater than 2 millimeters and equal to or less than 5 millimeters.
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 1-10 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 1, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “distance D1 between protrusion portions most adjacent to each other among the plurality of protrusion portions satisfies the following expression (1), D1< L(m2+ n2)1/2 – d or D1 > L(m2+n2)1/2+d ... (1) m and n: an integer of 0 or more, in which either m or n is 1 or more, L: a distance between centers of hair follicles in the scalp of the subject, and d: a diameter of the hair follicle in the scalp of the subject.”, and the claim 8 also recites “wherein the distance D1 between the protrusion portions most adjacent to each other is 2 mm or more and 10 mm or less.” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 2-10, claims 2-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 because they depend upon claim 1 and therefore inherit the rejection.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 4-5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. (US 20180125386 A1) herein referred to as “Lim” in view of Alsharif et al. (DOI: 10.2147/CCID.S394045) herein referred to as “Alsharif” further in view of Jimenez et al. (DOI: 10.1046/j.1524-4725.1999.08114.x) herein referred to as “Jimenez”.
Regarding claim 1, Lim discloses: A brain wave detection electrode which is brought into contact with a scalp of a subject to detect brain waves, the brain wave detection electrode comprising: a base portion ([Figure 2A]; Lim discloses base 115); a plurality of pyramid-shaped protrusion portions protruding from the base portion; ([Figure 1], [0118];” contact electrodes 110-4 of the brainwave sensor unit may have a quadrangular pyramid shape.”) and an electrode portion provided in the protrusion portion, ([Figure 2A]; electrodes 111 and 112). Lim does not explicitly disclose: wherein a distance D1 between protrusion portions most adjacent to each other among the plurality of protrusion portions satisfies the following expression (1), D1< L(m2+ n2)1/2 - d or D1 > L(m2+n2)1/2 + d ... (1) m and n: an integer of 0 or more, in which either m or n is 1 or more, L: a distance between centers of hair follicles in the scalp of the subject, and d: a diameter of the hair follicle in the scalp of the subject.
However, Jimenez discloses: L: a distance between centers of hair follicles in the scalp of the subject ([Results Line 6]; “The distance between follicular units ranges from 1.0 mm to 1.4 mm.” therefore L is taken to be 1.4 mm). Alsharif discloses: and d: a diameter of the hair follicle in the scalp of the subject. ([Table 6]; Hair diameter ranged from 55-87 μm. Therefore, d is taken to be 0.05 mm). Lim discloses: wherein a distance D1 between protrusion portions most adjacent to each other among the plurality of protrusion portions satisfies the following expression (1), D1< L(m2+ n2)1/2 - d or D1 > L(m2+n2)1/2 + d... (1) m and n: an integer of 0 or more, in which either m or n is 1 or more. ([0011]; “A distance between the first and second contact electrodes may be between 0.5 mm and 5 mm.” where D1 is taken to be 0.5 mm, n m and n is taken as to be 2 (integer equal or greater than zero and more than 1), L is taken to be 1.4 mm (as evidenced by Jimenez) and d is taken to be 0.05 mm (as evidenced by Alsharif). Given the formula D1< L(m2+ n2)1/2 gives 0.5mm > 3.9 which is valid. Therefore, Lim’s listed range falls within the range listed by the formula).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the distance between centers as disclosed by Jimenez and the hair diameter as disclosed by Alsharif the motivation being the human hair follicles and hair diameter would expectedly fall within average ranges.
Regarding claim 4, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 1. Lim further discloses: wherein the protrusion portion is a pyramid. ([0019]; “The first and second contact electrodes may have one of a cylinder shape, a cone shape, a quadrangular pyramid shape, a rectangular prism shape, a funnel shape, and a curved funnel shape”)
Regarding claim 5, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 4. Lim further discloses: wherein the pyramid of the protrusion portion is a quadrangular pyramid. ([0019]; “The first and second contact electrodes may have one of a cylinder shape, a cone shape, a quadrangular pyramid shape, a rectangular prism shape, a funnel shape, and a curved funnel shape”)
Regarding claim 8, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 1. Lim further discloses: wherein the distance D1 between the protrusion portions most adjacent to each other is 2 mm or more and 10 mm or less. ([0011]; “A distance between the first and second contact electrodes may be between 0.5 mm and 5 mm.” )
Claim(s) 2-3, 6-7, and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim in view of Alsharif further in view of Jimenez further in view of Gevins et al. (US 4967038 A) herein referred to as “Gevins”.
Regarding claim 2, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 1. Lim does not explicitly discloes: wherein the plurality of protrusion portions are arranged with a configuration in which vertices of the plurality of protrusion portions form a square lattice.
However, Gevins discloses: wherein the plurality of protrusion portions are arranged with a configuration in which vertices of the plurality of protrusion portions form a square lattice. ([Figures 3B-3E] Gevins discloses the connecting vertices arranged in a square lattice)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the brain wave detection electrode as disclosed by Lim in view of Alsharif further in view of Jimenez with the square lattice connection as disclosed by Gevins the motivation being a simple substitution of a spaced electrode arrangement pattern with the square lattice arrangement pattern with the predictable result of fitting electrodes on a base to record physiological signals.
Regarding claim 3, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 1. Lim does not explicitly disclose: wherein the plurality of protrusion portions are arranged with a configuration in which vertices of the plurality of protrusion portions form an equilateral triangle lattice.
However, Gevins discloses: a square lattice formation of electrodes. ([Figures 3B-3E] Gevins discloses the connecting vertices arranged in a square lattice)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the brain wave detection electrode as disclosed by Lim in view of Alsharif further in view of Jimenez further in view of Gevins with a equilateral triangle lattice the motivation being obvious to try given a finite number of configurations of which to arrange triangle electrodes.
Regarding claim 6, Lim in view of Alsharif further in view of Jimenez disclose: The brain wave detection electrode according to claim 5. Lim does not explicitly disclose: wherein the protrusion portions are arranged such that sides of bottom surfaces of adjacent protrusion portions are in contact with each other.
However, Gevins discloses: wherein the protrusion portions are arranged such that sides of bottom surfaces of adjacent protrusion portions are in contact with each other. ([Figures 3B-3E] Gevins discloses the connecting vertices arranged in a square lattice)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the brain wave detection electrode as disclosed by Lim in view of Alsharif further in view of Jimenez with the contact connection as disclosed by Gevins the motivation being a simple substitution of a spaced electrode arrangement pattern with the square lattice arrangement pattern with the predictable result of fitting electrodes on a base to record physiological signals.
Regarding claim 7, Lim in view of Alsharif further in view of Jimenez disclose further in view of Gevins disclose: The brain wave detection electrode according to claim 6. Lim further discloses: wherein the pyramid of the protrusion portion is a cone. ([0019]; “The first and second contact electrodes may have one of a cylinder shape, a cone shape, a quadrangular pyramid shape, a rectangular prism shape, a funnel shape, and a curved funnel shape”)
Regarding claim 9, Lim in view of Alsharif further in view of Jimenez disclose: A brain wave measuring device comprising: the brain wave detection electrode according to claim 1. Lim does not explicitly disclose: and a frame to which the brain wave detection electrode is attached, the frame being mounted on the head of the subject.
However, Gevins discloses: and a frame to which the brain wave detection electrode is attached, the frame being mounted on the head of the subject. ([Figure 4]; Gevins discloses electrode 12a attached to a frame and in contact with a patients head 21)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the brain wave detection electrode as disclosed by Lim in view of Alsharif further in view of Jimenez with the frame as disclosed by Gevins the motivation being to conduct signals from outputs ([(7)].
Regarding claim 10, Lim in view of Alsharif further in view of Jimenez disclose further in view of Gevins disclose: A brain wave measuring method comprising: mounting the brain wave measuring device according to claim 9. Gevins further discloses: on the head of the subject and measuring brain waves. ([(18); “In accordance with the present invention, there is provided a method and apparatus, called a "Smart Hat" to detect a patient's brain waves”)
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the brain wave detection electrode as disclosed by Lim in view of Alsharif further in view of Jimenez with the frame as disclosed by Gevins the motivation being to conduct signals from outputs ([(7)].
Conclusion
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/CASEY GEORGE CHA/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794