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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/21/25 has been entered.
Response to Arguments
Upon further consideration Examiner notes that the current Application is a PPH (see PPH Decision 10/8/24) case, Examiner notes for future reference PPH cases come with limitations for amendments see PPH FAQ (https://www.uspto.gov/sites/default/files/documents/FAQs-for-PPH-revised-05032023.pdf) number 35.
With regards to the 112b for claim 16 regarding “Claim 14 recites “wherein the plurality of textile patches comprises a plurality of conductive threads and/or conductive fabric in electrical communication with the plurality of bioelectrical sensors;” which causes confusion.”, based on the amendment it clarifies that the plurality of conductive threads is in addition to the “bioelectrical sensors” and “in electrical communication” with them. As such the rejection withdrawn in view of the amendment.
With regards to the 112b regarding “Claim 16 recites “wherein an amplitude of the AC current is greater than or equal to 0.1 uA or less than or equal to 1500 uA” it’s unclear what the scope” the rejection is withdrawn in view of the amendment.
Applicant's arguments filed 11/21/25 have been fully considered but they are not persuasive and/or moot.
With regards to the 101 arguments, Applicants seem to be arguing that the passing of the signal through the arm and gathering the response and gathering temperature data is not something that can be achieved in the mind. These elements Applicants are pointing to are part of the extra solution activity of data gathering. The abstract idea is “determining a state of one or more muscles” (and as discussed in the rejection, in one interpretation the “determining a bioimpedance of the oscillatory signal” is also part of the abstract idea). The data gathering is part of the additional elements. To the extent Applicant is arguing elements which are not claimed, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “may be done in real . . .” argument) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicants next argue it is integrated into a practical application; Examiner disagrees that the additional elements integrate the abstract idea into a practical application because it is adding insignificant extra-solution activity to the judicial exception. Applicant states it improves the functioning because “The independent claim captures improved wearable device technology by determining bioimpedance and other information from the skin using a plurality of bioelectrical sensors integrated with a plurality of textile patches.” Examiner is unsure what element is the improvement over the art, is it the processing is it the gathering of the data. As such it seems to be a conclusory statement without additional explanation of what in particular Applicant is arguing is the improvement and this is not persuasive. Examiner believes the prosecution would benefit from an interview discussing the 101 rejection.
With regards to the 103 arguments, Applicants argue that while the Boh reference discloses a plurality of “substrates” made out of “polyester” this does not disclose the limitation of “textile”, or in Applicants words “It is respectfully submitted that polyimide and polyester are not necessarily textiles, rather they are simply polymers that may be fabricated into textiles.” Examiner notes that this seemingly acknowledges that it is known to use polyester in textiles. Applicants also recite that Boh’s discussion of various ways of manufacturing support their position and that the recitation of garments is not sufficient for “textile”. For the manufacturing discussion, the quote Applicants are arguing supports their position is not as limiting as they are implying, [0096] states “may be made using any known material (e.g., polyimide, polyester, etc.) used for such purposes using any suitable process known in the art (e.g., lamination, deposition, masking, etching, etc.).” (emphasis added). This language is broad and is not limited to “lithographic methods” as Applicants contend. In conclusion, while Examiner disagrees with the scope of the disclosure taught, for purposes of compact prosecution and to more explicitly lay out polyester is known to be used in textile substrates the rejection has been updated accordingly.
Applicant next seems to argue that the even if one were to combine the Boh and Var references it would not render the structures claimed based on the underlying argument discussed above that textile patches are not disclosed. This is not persuasive. The Boh reference discloses a plurality of “patches” each with a substrate made of material such as polyester per the updated rejection Var recites polyester is known to be used for textile substrates (i.e. polymer based yarns such as polyester). Thus, taken in combination a plurality of textile patches is disclosed.
Applicants next appear to make a motivation argument, arguing that a PHOSITA “would not have looked to modify the systems of Boh with the conductive thread or temperature sensors of Var”. To the extent Applicants are arguing there is no motivation, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, The Boh reference recites using the use having sensors (i.e. electrodes) mounted on the user or on garments in order for the sensors to gather data from the user; while the Var reference discloses the use of plurality of sensors for gathering a comprehensive medical status of a person and integrating such sensors into textiles. Combining additional sensors is taught as a benefit (aka a “teaching, suggestion, or motivation”) to give a more comprehensive understanding and using the elements of element such as conductive thread is taught as a benefit to provide ways of unobtrusively gathering/transferring data in the wearable. Additionally, combining elements of Boh with those of Var are merely combining prior art elements according to known methods to yield predictable results, for example: the teaching of a polyester substrate with a polyester textile substrate; combining an additional sensor to an electrode sensor system etc.
Applicants remaining discussion relies on the arguments presented above which are not persuasive/moot for the same reasons discussed above.
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 14-20 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 14 recites “wherein the plurality of textile patches comprises a plurality of conductive threads and/or conductive fabric in electrical communication with the plurality of bioelectrical sensors;” which causes confusion. Conductive fabric/threads are used in two ways based on the spec (1) as a way of forming some of the actual sensing element, such as a dry electrodes (aka the bioelectric sensor on textile patch); or, (2) as a transmission pathway between the different elements, such as between the processing/transmission element and the “textile patch”/bioelectric sensor. In one interpretation, the confusion in this stems from the first part of the quoted element (underlined portion) seemingly discussing (1) while the second part seems to be discussing (2) simultaneously referencing both uses. However, based on the spec the portion that provides communication or (2) above with the other sensors and electrical components is part of the garment not the textile patch itself.
In another possible interpretation of the quoted element, the two portions before and after the and/or may be separate elements. More specifically reciting requiring “wherein the plurality of textile patches comprises a plurality of conductive threads” and/or “conductive fabric in electrical communication with the plurality of bioelectrical sensors” each as their own elements.
For the above reasons it does not clearly define the metes and bounds of what is claimed and is indefinite. The claims depending from claim 14 share this issue and are likewise rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Step 1
The claimed invention in claim 14 is directed to statutory subject matter as the claims recite a process.
Step 2A, Prong 1
Regarding Claim 14, the recited step of “determining a state of the one or more muscles based, at least in part, on the determining of the bioimpedance” is directed to a mental process of performing concepts in the human mind or by a human using the aid of pen and paper. Examiner notes that in one interpretation “determining” a bioimpedance from data (as the readings represent the voltages equivalent of the impedance, through ohms law V=IR, where R is replaced by Z so V=IZ since you know the current and voltage you know Z) can also be interpreted as a mental concept/mathematical process. However, in another interpretation “determining” a bioimpedance from data, could be interpreted as a portion of the data gathering as it is the “bioimpedance” gathered see discussion below. For example, these limitations simply amount to a clinician reading a data/signals printout and making a mental determination as to bioimpedance and the meaning of the data.
Step 2A, Prong 2
Regarding Claim 14, the judicial exception is not integrated into a practical application. The claim includes the additional elements of “providing a plurality of bioelectrical sensors integrated into a plurality of textile patches to a surface of skin, wherein the plurality of bioelectrical sensors comprises one or more bioelectrical impedance sensors and one or more sensors selected from the group consisting of a temperature sensor and a motion sensor, wherein the plurality of textile patches comprise a plurality of conductive threads and/or conductive fabric in electrical communication with the plurality of bioelectrical sensors; applying an oscillatory electric signal through the skin and across one or more muscles with the bioelectrical impedance sensor; determining a bioimpedance of the oscillatory electric signal from the bioelectrical impedance sensor”. The steps of “providing . . .”, “applying . . .” and “determining . . . ” amounts to insignificant, extra-solution activity in that the application of sensors applying the electrical signal and gathering its response is solely done to create the environment in which data is gathered for the mental analysis step. This is not a particular prophylaxis. See Example C. in MPEP §2106.04(d)(2).
Step 2B
Regarding Claim 14, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As with step 2A, Prong 2 above, the claim includes the additional elements of “providing a plurality of bioelectrical sensors integrated into a plurality of textile patches to a surface of skin, wherein the plurality of bioelectrical sensors comprises one or more bioelectrical impedance sensors and one or more sensors selected from the group consisting of a temperature sensor and a motion sensor, wherein the plurality of textile patches comprise a plurality of conductive threads and/or conductive fabric in electrical communication with the plurality of bioelectrical sensors; applying an oscillatory electric signal through the skin and across one or more muscles with the bioelectrical impedance sensor; determining a bioimpedance of the oscillatory electric signal from the bioelectrical impedance sensor”. The steps of “providing . . .”, “applying . . .” and “determining . . . ” amounts to insignificant, extra-solution activity in that the application of sensors applying the electrical signal and gathering its response is solely done to create the environment in which data is gathered for the mental analysis step. This is not a particular prophylaxis. See Example C. in MPEP §2106.04(d)(2).
Additionally, per the Berkheimer requirement, element (1) the bioelectrical sensors integrated into the plurality of textile using conductive thread; element (2) gathering bioimpedance data through the application of electrical signal and gathering its response are well-known, routine and conventional (WRC). Per references: Boh (see citations below); US 20140135593 see [0007]-[0008] including “conventional dry electrodes . . . incorporated into textiles”; US 20160128594 see [0033]-[0035], [0105]; US 20170224280 see [0007]-[0008]; element (1) is shown to be WRC. Per references: Boh see citations below, Seward Rutkove. Electrical impedance myography: Background, current state, and future directions. Muscle Nerve. 2009 Dec;40(6):936-46. doi: 10.1002/mus.21362. PMID: 19768754; PMCID: PMC2824130. Viewed on 12/2/24 – discloses the background of Electrical Impedance Myography (EIM) see Impedance measurements in muscle Section and Figs. 2-4; US 20120323136 see [0026]-[0027], Fig. 1; element (2) is shown to WRC.
The claim limitations when viewed individually and in combination therefore do not amount to significantly more than the abstract idea itself. The claims are therefore ineligible.
Claims 15-20 only further define the data gathering (insignificant, extra-solution activity) or the decisions made with the gathered data (i.e., only further define the mental process or mathematical concept). Therefore, the claims do not include any additional elements that show integration into a practical application and do not include any additional elements that amount to significantly more than the abstract idea. The claims are ineligible.
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.
Claim(s) 14-16, 18, 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohorquez (Jose Bohorquez et al., US 20160157749) hereinafter Boh in view of Varadan (Vijay Varadan et al., US 20170354372) hereinafter Var.
Regarding Claim 14, an interpretation of Boh discloses a method for determining muscle fatigue ([0010], [0015] including “capable of measuring/tracking and/or managing the level of fatigue/injury in muscles . . . This is based on the unexpected observation that certain bioimpedance parameters” see also [0004]-[0006]), the method comprising:
providing a plurality of bioelectrical sensors integrated into the plurality of patches to a surface of skin ([0096] including “These patterned flexible substrates 216 may be made using any known material (e.g., polyimide, polyester, etc.)”, [0097] including “The device 220 may be attached to the skin by any method (e.g., using a gel, glue, tape, etc.) . . .To attach device 220 to the skin, the user may peel off the protective strip and attach the substrate 216 at the desired location with the electrodes 18 in contact with the skin.”, Figs. 14A-C see also [0010] including “For example, electrodes operably linked to other portions of the disclosed apparatus and system may be suitably integrated with wearable garments using any suitable manner.”, [0045], [0051], [0064], [0098]-[0101] additional relevant discussion of Figs. 14A-C and 15, [0120], Fig. 15; Electrodes are the “bioelectric sensors” and are integrated into the flexible devices with substrate/patches), wherein the plurality of bioelectrical sensors comprises one or more bioelectrical impedance sensors ([0004] including “EIM is based on electrical bioimpedance of tissue . . . In EIM, electrical current, such as, e.g., high-frequency alternating current, may be applied to localized areas of muscle via electrodes (e.g., surface electrodes) and the consequent surface voltage patterns are analyzed.”, [0070]-[0071], [0074] see also [0010], [0096]-[0097], Figs. 14A-C, 15 see also including “For example, electrodes operably linked to other portions of the disclosed apparatus and system may be suitably integrated with wearable garments using any suitable manner.”, [0045], [0051], [0064], [0098]-[0101] additional relevant discussion of Figs. 14A-C and 15, [0120], Fig. 15; Electrodes are the “bioelectric sensors” and are integrated into the flexible devices with substrate/patches),
wherein the plurality of patches ([0096]-[0097], Figs. 14A-C see also [0010] including “For example, electrodes operably linked to other portions of the disclosed apparatus and system may be suitably integrated with wearable garments using any suitable manner.”, [0045], [0051], [0064], [0098]-[0101], [0120], Fig. 15);
applying an oscillatory electric signal through the skin and across one or more muscles with the bioelectrical impedance sensor ([0004] including “EIM is based on electrical bioimpedance of tissue . . . In EIM, electrical current, such as, e.g., high-frequency alternating current, may be applied to localized areas of muscle via electrodes (e.g., surface electrodes) and the consequent surface voltage patterns are analyzed.”, [0070]-[0071], [0074]; AC is oscillatory signal and the electrodes are external thus travelling through the skin across the muscle(s));
determining a bioimpedance of the oscillatory electric signal through the skin and across the one or more muscles from the bioelectrical impedance sensor ([0004], [0070]-[0071], [0074]);
determining a state of the one or more muscles based, at least in part, on the determining of the bioimpedance of the oscillatory electric signal through the skin and across the one or more muscles ([0010] including “noninvasive way of measuring and tracking the localized health of the measured region (e.g., muscle fatigue, recovery, etc.) over time.”, [0015] including “capable of measuring/tracking and/or managing the level of fatigue/injury in muscles . . . This is based on the unexpected observation that certain bioimpedance parameters”, [0074] see also [0004], [0070]-[0071]).
An interpretation of Boh may not explicitly disclose wherein plurality of bioelectrical sensors comprises a temperature sensor; polyester substrate is a textile; wherein the plurality of textile patches comprises a plurality of conductive threads and/or conductive fabric, wherein the plurality of conductive threads and/or conductive fabric is in electrical communication with the plurality of bioelectrical sensors.
However, in the same field of endeavor (medical diagnostic devices), Var teaches wherein plurality of bioelectrical sensors comprises a temperature sensor ([0084] including “The temperature sensor 220 may include a resistive temperature detector, a thermistor, and an infrared photodiode detector.”, [0108], [0115]; Examiner notes that Var also discloses respiration sensing using a piezoresistive strain sensor for respiration sensing which senses the mechanical stress caused by the motion in the body during respiration); polyester substrate is a textile ([0089]-[0090] including “The substrate can be made of flexible fabric made of natural yarns such as cotton, silk; polymer based yarn such as polyester, polyester lycra blend, nylon, rayon;”, [0101]); wherein the plurality of textile patches comprise a plurality of conductive threads and/or conductive fabric, wherein the plurality of conductive threads and/or conductive fabric is in electrical communication with the plurality of bioelectrical sensors ([0021] including “conductive thread, for electrical connections”, [0081]-[0082] including “conductive thread connections are required to be able to connect to the electronics”, [0084], [0115], [0138] including “washable electrodes such as the gold nanowire electrodes or conductive fabric based electrodes”, Fig. 14; Recites conductive fabric or gold nanowire based electrodes electrically connected to other electronic components of the smart garment system through conductive threads/traces).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of patches having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate, temperature sensors as bioelectric sensors and including conductive/thread fabric as recited by Var because providing multiple sensors with textiles provides comprehensive and unobstructive health monitoring over the long term ([0015], [0018]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have combined the plurality of patches having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate, temperature sensors as bioelectric sensors and including conductive/thread fabric as recited by Var because it is combining prior art elements according to known methods to yield predictable results.
Regarding Claim 15, an interpretation of Boh further discloses wherein a period of oscillation of the oscillatory signal is greater than or equal to 10 kHz and less than or equal to 200 kHz ([0070] including “The alternating current directed through a current element pair is typically . . . at a frequency between about 1 kHz and about 1 MHz”, [0071] including “at different frequencies of current (e.g., 25 KHz, 50 KHz, 100 KHz, 200 KHz, etc.)”, Table 1; each of 25 KHz, 50 KHz, 100 KHz, 200 KHz are within the oscillatory range).
Regarding Claim 16, an interpretation of Boh further discloses wherein a max/min amplitude of the AC current is greater than or equal to 0.1 uA or less than or equal to 1500 uA ([0070] including “The alternating current directed through a current element pair is typically between about 5 micro-amps and about 500 micro-amps”; this represents a subset of the range claimed).
Regarding Claim 18, an interpretation of Boh in view of Var discloses the above in claim 14.
an interpretation of Boh may not explicitly disclose determining a temperature data from the temperature sensor.
However, in the same field of endeavor (medical diagnostic devices), Var teaches determining a temperature data from the temperature sensor ([0084] including “The temperature sensor 220 may include a resistive temperature detector, a thermistor, and an infrared photodiode detector.”, [0108] “body temperature sensing”, [0115] including “the temperature sensors 220 may have conductive fabric- or thread-based connections, i.e. without traditional wires, that enable them to send signals to an onboard amplification and transmission system (e.g. which may be integrated into the control module 300).”, [0117])
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of textile patches having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with determining temperature data from temperature sensors as bioelectric sensors and including conductive/thread fabric as recited by Var because it is combining prior art elements according to known methods to yield predictable results.
Regarding Claim 20, an interpretation of Boh further discloses wherein the surface of the skin comprises a skin of a user, wherein the oscillatory electric signal is applied while the user is in movement ([0005] including “Sustained exercise, including aerobic and anaerobic activities such as running, cycling, and weight lifting, can produce muscle fatigue. . . desirable to perform EIM measurements during, or immediately after, exercise.”, [0015], [0045] including “device 10 may be configured to be attached (for example, strapped) to a user (for example, at the bicep) during exercise.”, [0047], see also [0007]; recites gathering data during exercise biceps is mentioned also mentioned is running including sensing impedance continuously or periodically).
Regarding Claim 21, an interpretation of Boh further discloses attaching the plurality of patches to a garment ([0010], [0051] including “may be in the form of one or more detachable sensors that are attached . . . to garments”, [0101] see also [0045], [0051], [0064], [0096]-[0101], Figs. 14A-C, 15).
An interpretation of Boh may not explicitly disclose wherein polyester substrate is a textile.
However, in the same field of endeavor (medical diagnostic devices), Var teaches wherein polyester substrate is a textile ([0089]-[0090] including “The substrate can be made of flexible fabric made of natural yarns such as cotton, silk; polymer based yarn such as polyester, polyester lycra blend, nylon, rayon;”, [0101]).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of patches with a substrate having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate as recited by Var because providing multiple sensors with textiles provides comprehensive and unobstructive health monitoring over the long term ([0015], [0018]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have combined the plurality of patches with a substrate having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate, as recited by Var because it is combining prior art elements according to known methods to yield predictable results.
Regarding Claim 22, an interpretation of Boh further discloses detaching the plurality of patches to a garment ([0010], [0051] including “may be in the form of one or more detachable sensors that are attached . . . to garments”, [0101] see also [0045], [0051], [0064], [0096]-[0101], Figs. 14A-C, 15).
An interpretation of Boh may not explicitly disclose wherein polyester substrate is a textile.
However, in the same field of endeavor (medical diagnostic devices), Var teaches wherein polyester substrate is a textile ([0089]-[0090] including “The substrate can be made of flexible fabric made of natural yarns such as cotton, silk; polymer based yarn such as polyester, polyester lycra blend, nylon, rayon;”, [0101]).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of patches with a substrate having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate as recited by Var because providing multiple sensors with textiles provides comprehensive and unobstructive health monitoring over the long term ([0015], [0018]). Additionally, it would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have combined the plurality of patches with a substrate having bioelectrical sensors including bioimpedance sensing electrodes as recited by Boh combined with using polyester textile as a substrate, as recited by Var because it is combining prior art elements according to known methods to yield predictable results.
Claim Rejections - 35 USC § 103
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boh in view of Var in further view of Straka (Adrian Straka et al., US 20200107731) hereinafter Str.
Regarding Claim 17, an interpretation of Boh in view of Var discloses the above in claim 14, including Boh’s disclosure of bioelectrical impedance sensor including electrodes in view of the Vars disclosure of gold nanowire based and/or conductive fabric electrodes (see the rejection of 14 above). Examiner notes that the gold nanowires are on “electrically-conductive fibers 209” or threads. However, for purposes of compact prosecution and to more explicitly show electrodes based on “conductive thread” please see below.
An interpretation of Boh may not explicitly disclose wherein the electrodes comprises conductive thread.
However, in the same field of endeavor (medical diagnostic systems), Str teaches wherein the electrodes comprises conductive thread ([0023]-[0024] including “the electrodes as sensors 12 can be composed of conductive yarn/fibres (e.g. knitted, woven, embroidery using conductive fibres—e.g. silver wire/threads)”, [0041] see also Figs. 1, 12-13; Examiner notes while not currently relied upon additional references disclosing this are included in the conclusion section). For purposes of compact prosecution Examiner notes that Str also recites sensing body movement using a motion sensor ([0021] including “a temperature sensor 12 d for measuring a body temperature of the wearer.”, [0026]) and body temperature using a temperature sensor ([0021] including “Also provided is a series of motion sensors 36 (e.g. accelerometer(s) and gyroscopes) for determining movements of the wearer,”, [0026])
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of textile patches comprising conductive fabric/threads and bioelectrical sensors including bioimpedance sensing electrodes and temperature sensors as recited by Boh in view of Var combined with the sensing electrodes including conductive thread as recited by Str because it is merely combining prior art elements, the use of electrodes with a particular type of electrode using conductive threads, according to known methods to yield predictable results.
Claim Rejections - 35 USC § 103
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boh in view of Var in further view of Berg (James Berg et al., US 20150148619) hereinafter Berg.
Regarding Claim 19, an interpretation of Boh in view of Var in further view of Str discloses the above in claim 18, including Boh’s disclosure of the muscle state using bioimpedance measurements and Var discloses determining temperature data from temperature sensing (see the rejections of claim 1 and 18 above).
An interpretation of Boh may not explicitly disclose motion sensing; wherein determining the state of the one or more muscles is based, at least in part, on the motion data and the temperature data.
However, in the same field of endeavor (medical diagnostic systems), Berg teaches motion sensing ([0025], [0031] including “temperature sensors, accelerometers (e.g., single axis accelerometers, multi-axis accelerometers), gyroscopes (e.g., single axis gyroscopes, multi-axis gyroscopes) . . . bioimpedance sensors,” see also [0088]-[0089]); wherein determining the state of the one or more muscles is based, at least in part, on the motion data and the temperature data ( [0025], [0026] including “the system 100 can be configured to aggregate a combination of one or more of the biometric factors described above, and to determine and output a variety of metrics associated with the user's exercise activity. These metrics can provide the user with insights pertaining to his/her muscle exertion, muscle balance, . . .muscle fatigue, . . . muscle recovery behavior”, [0031] including “temperature sensors, accelerometers (e.g., single axis accelerometers, multi-axis accelerometers), gyroscopes (e.g., single axis gyroscopes, multi-axis gyroscopes) . . . bioimpedance sensors,” see also [0075], [0088]-[0089], Fig. 10; the references recites gathering a plurality of data and using aggregations of the data to determine elements such as muscle fatigue, muscle balance etc.).
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the plurality of textile patches comprising conductive fabric/threads and bioelectrical sensors including bioimpedance sensing electrodes and temperature sensors as recited by Boh in view of Var to include the use of motion and temperature in determining a muscle state as recited by Berg because it is combining prior art elements (combining additional sensed parameters to make a determination) according to known methods to yield predictable results.
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 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-16 of copending Application No. 18087134 (reference application) in view of Boh. Claim 2 of ‘134 discloses the majority of amended claim 1 except for the use of the bioimpedance (which is taught by claim 14 of ‘134) and Boh discloses the application of oscillations see the rejection of claim 1 above. It is simply combining prior art elements (the structure of ‘134 claim 2 with the functional elements of Boh) according to known methods to yield predictable results. Similar discussion applies to the remainder of the claims of the current application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20170157431 see Figs. 1-4, [0109], [0166] recites sensing including motion, impedance and temperature and determining muscle state
US 20170143977 see Fig. 5A-b, [0121], [0140]-[0141], [0196] the reference discloses removable elements including sensors and processors which when mounted on the garment are connected to each other such as through conductive traces in the fabric
US 20180014784 see [0008] “The sensor array also comprises a conductive fabric comprising a plurality of electrically conducting threads or wires embedded therein.”, [0028]-[0032], Figs. 1-3
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