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 .
Priority
This application is a continuation-in-part of US Application no. 18/471,143 filed 20 September 2023.
Claim Objections
Claim 2 is objected to because of the following informalities: in line 6 there should be an “of” inserted between “subset” and “the”. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: line 2 recites “comprises textured surfaces” is considered to read “a textured surface”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: line 7 recites “guiding the the first ring-shaped” wherein the second instance of “the” should be omitted. 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.
Claim 10 recites the limitation "wherein the binding agent" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 8 does not introduce an “binding agent”. Claim 9 does. Appropriate correction is required.
Claim 11 recites the limitation "wherein the binding agent" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 8 does not introduce an “binding agent”. Claim 9 does. Appropriate correction is required.
Claim 16 recites the limitation "a mold" in line 3. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
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.
Claim(s) 1, 5, 6, 8, 13-15, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Badinski et al. (WO 2015/081321) in view of Song et al. (US Publication no. 2019/0174886 – disclosed by Applicant).
In regard to claims 1 and 17 (referring to present claim 1), Von Badinski et al. in figure 8 an arrangement of a wearable ring computing device, the ring comprising the following structure:
an inner ring-shaped housing 812b comprising one or more apertures, wherein the inner ring-shaped housing defines an inner circumferential surface of the wearable ring device (para 181);
one or more sensors disposed at least partially within the inner ring-shaped housing, the one or more sensors configured to acquire physiological data from a user through the one or more apertures (see annotated figure 8, and para 159, 166-168 relating to the completed ring of figure 3B);
an outer ring-shaped housing 812a that at least partially surrounds the inner ring-shaped housing, wherein the outer ring-shaped housing defines an outer circumferential surface of the wearable ring device (para 181);
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a first ring-shaped fitting 814a and a second ring-shaped fitting 814b (located in environment where the side circumference of the inner 812b meets the external circumference of outer ring 812a).
While Von Badinski et al. discloses many features of the present invention, it is not clear whether the first ring-shaped fitting 814a is at least partially disposed within a first slot between the outer ring-shaped housing and the inner ring-shaped housing on a first lateral side of the wearable ring device; and that the second ring-shaped fitting is at least partially disposed within a second slot between the outer ring-shaped housing and the inner ring-shaped housing on a second lateral side of the wearable ring device, wherein the first ring-shaped fitting and the second ring-shaped fitting are configured to undergo a mechanical deformation upon being inserted into the first slot and the second slot, respectively, wherein the mechanical deformation of the first ring-shaped fitting and the second ring-shaped fitting causes the first ring-shaped fitting and the second ring- shaped fitting to engage one or more features of the inner ring-shaped housing, the outer ring- shaped housing, or both, to couple the outer ring-shaped housing to the inner ring-shaped housing.
Song et al. describe a ring that includes the following structural features (figure 1):
An inner ring 220, and outer ring 210, a first ring-shaped fitting 110, and a second ring-shaped fitting 120 (para 35-38). Figures 3 and 4 (annotated below) show:
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The cross section of figure 4 is considered to depict the configuration of first ring-shaped fitting 110 is at least partially disposed within a first slot (shown above, the space created between outer housing 210 and inner housing 220 which allows 110 to be inserted, para 38) between the outer ring-shaped housing 210 and the inner ring-shaped housing 220 on a first lateral side of the wearable ring device, and the second ring-shaped fitting 120 is at least partially disposed within a second slot (shown above, the space created between outer housing 210 and inner housing 220 which allows 120 to be inserted, para 38) between the outer ring-shaped housing 210 and the inner ring-shaped housing 220 on a second lateral side of the wearable ring device. The configuration presented here allows the first ring-shaped fitting 110 and the second ring-shaped fitting 120 to be configured to undergo a mechanical deformation upon being inserted into the first slot and the second slot (elements 110, 120, 210, and 220 are press-fit together), respectively, wherein the mechanical deformation of the first ring-shaped fitting 110 and the second ring-shaped fitting 120 causes the first ring-shaped fitting 110 and the second ring- shaped fitting 120 to engage one or more features 222,224 of the inner ring-shaped housing 220, the outer ring-shaped housing, or both, to couple the outer ring-shaped housing to the inner ring-shaped housing (para 38, the press-fit is considered to cause the mechanical deformation as press-fitting requires that the components 142 of side rings 110 and 120 are forced under pressure to fit within assembling grooves 222 and 224 of inner ring 220 thereby causing a mechanical coupling of all elements of the ring. Figures 2 and 3 of Song et al. show the final assembly of the ring with all components fitted together.
Modification of the components 814a and 814b of Von Badinski et al. to comprise features that mechanically deform once inserted into the region formed between the inner ring housing and outer ring housing (e.g., the press-fit, groove based mechanical coupling shown in Song et al.) is considered to have been obvious to one of ordinary skill in the art to improve retention and coupling of ring components, assembly reliability, and structural integrity of a compact annual device with predictable results.
In regard to claims 5 and 19, Von Badinski et al. in view of Song et al. substantially describes the invention as claimed, wherein Song et al. further show: one or more first grooves 222 (figure 4) in the outer ring-shaped housing, the inner ring-shaped housing 220, or both, wherein the one or more first grooves 222 are located at least partially in the first slot (the slot formed by the spaced between elements 210 and 220 allowing part 110 to be inserted); and one or more second grooves 224 in the outer ring-shaped housing, the inner ring- shaped housing 220, or both, wherein the one or more second grooves are located at least partially in the second slot (the slot formed by the spaced between elements 210 and 220 allowing part 120 to be inserted), wherein the one or more features 140,142 comprise the one or more first grooves 222 and the one or more second grooves 224 (protrusions 140, 142 formed in a shape corresponding to groove 222,224), wherein the first ring-shaped fitting 110 is configured to deform into the one or more first grooves 224 (para 38, the pieces are press-fit with respect to one another), and the second ring-shaped fitting 120 is configured to deform into the one or more second grooves 224 (para 38, the pieces are press-fit with respect to one another).
In regard to claim 6, Von Badinski et al. in view of Song et al. substantially describes the invention as claimed, wherein Song et al. further show: a first set of flanges 140 on the first ring-shaped fitting 110, wherein the first set of flanges are configured to undergo the mechanical deformation from a first shape to a second shape during insertion of the first ring-shaped fitting into the first slot 222 (para 38, protrusion 140 is press-fit into grove 222), wherein the first set of flanges are configured to undergo a second mechanical deformation from the second shape back to the first shape after insertion into the first slot, wherein the second mechanical deformation causes the first set of flanges to engage the one or more first grooves;
and a second set of flanges 140 on the second ring-shaped fitting 120, wherein the second set of flanges 140 are configured to undergo the mechanical deformation from the first shape to the second shape during insertion of the second ring-shaped fitting into the second slot, wherein the second set of flanges are configured to undergo a third mechanical deformation from the second shape back to the first shape after insertion into the second slot, wherein the third mechanical deformation causes the second set of flanges to engage the one or more second grooves (the deformations considered to comprise necessary and natural properties of an interference/press fit connection based on the tolerances of the corresponding elements).
In regard to claim 8, Von Badinski et al. in view of Song et al. substantially describes the invention as claimed, wherein Song et al. is considered to suggest: a thickness of the first ring-shaped fitting 110 is wider than the first slot (the space between outer ring 210 and inner ring 220) and a thickness of the second ring-shaped fitting 120 is wider than the second slot (the space between outer ring 210 and inner ring 220. Figure 4 of Song et al. appears to depict the relative dimensions, wherein the side rings 110 and 120 comprise a thickness greater than the slot form between the outer ring 210 and inner ring 220. Additionally, as the components are configured to be press-fit together, the features with respect to the thicknesses are considered to comprise an obvious choice in design based to select tolerances of each portion to improve retention and coupling of ring components, assembly reliability, and structural integrity of a compact annual device.
In regard to claim 13, Von Badinski et al. in view of Song et al. substantially describes the invention as claimed, wherein Song et al. further show: the first ring- shaped fitting 110 and the second ring-shaped fitting 120 are configured to be removed via insertion of a removal tool at least partially into the first slot and the second slot, respectively (para 31, a decoupling tool may be inserted to permit separation of ring components).
In regard to claim 14, neither Von Badinski et al. nor Song et al. are found to teach or suggest the first ring- shaped fitting and the second ring-shaped fitting comprise one or more non-metal materials that are configured to enable wireless signals to propagate into and out of the wearable ring device through the first ring-shaped fitting and the second ring-shaped fitting, respectively. However, it has been held to have been obvious to one of ordinary skill in the art since it is withing the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (In re Leshin, 125 USPQ 416).
In regard to claim 15, neither Von Badinski et al. nor Song et al. are found to teach or suggest wherein coupling the outer ring-shaped housing to the inner ring-shaped housing via insertion of the first ring-shaped fitting into the first slot and the second ring-shaped fitting into the second slot creates a waterproof seal between the outer ring-shaped housing and the inner ring-shaped housing. The “wherein” statement here however is considered to simply express an intended result of the claimed structure, and accordingly is not given weight since the recitation does not further provide limiting structure (MPEP 2111.01 I). Moreover, Von Badinski et al. suggest that an epoxy or potting material may be used to form a waterproof seal as well as increase the structural rigidity of the ring. Therefore, it is considered to have been obvious to one of ordinary skill in the art to construct the ring suggested by Von Badinski et al. in view of Song et al. to be water proof since it is explicitly suggested by Von Badinski et al. to protect the sensors and associated circuitry from fluid as well as increase structural rigidity.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Von Badinski et al. (WO 2015/081321) in view of Song et al. (US Publication no. 2019/0174886), further in view of Haverinen et al. (US Publication no. 2017/0042477).
In regard to claim 16, neither Von Badinski et al. nor Song et al. are found to teach or suggest a filler material that is injected into a cavity between the inner ring-shaped housing and a surface of a mold to fill at least a portion of the one or more apertures of the inner ring-shaped housing, wherein the filler material is further configured to bind a printed circuit board to the inner ring-shaped housing. Haverinen et al. describes a wearable ring similar to Von Badinski et al. that teaches a filler material that is injected into a cavity between the inner ring-shaped housing and a surface of a mold to fill at least a portion of the one or more apertures of the inner ring-shaped housing, wherein the filler material is further configured to bind a printed circuit board to the inner ring-shaped housing (para 46-48). Therefore, it is considered to have been obvious to inject a filler material into the cavity since the technique is explicitly taught by Haverinen et al. to fill in the unfilled space and to cover and protect the electronic parts. The modification is considered to comprise the application of a known technique to a known device in a predictable manner.
Allowable Subject Matter
Claims 2-4, 7, 9-12, 18, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claims 2-4 and 18, the prior art fails to describe, among other things one or more first chamfers and one or more second chamfers.
In regard to claim 7, the prior art fails to describe, among other things, the first ring shaped fitting and second ring shaped fitting configured to under mechanical deformation based on the application of heat.
In regard to claims 9-11 and 20, the prior art fails to describe, among other things, the use of a binding agent to couple the inner ring housing and outer ring housing together.
In regard to claim 12, the prior art fails to describe, among other things, the textured surface of the inner ring shaped housing, outer ring shaped housing, or both in order to permit engagement with either the first or second ring shaped fitting.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1 and 5-16 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 and 5-15 of copending Application No. 18/471,143 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. The claims of the ‘143 application recite each and every feature of the present invention. The conflict is exhibited below.
Claim 1 of the ‘143 Application:
A wearable ring device, comprising:
an inner ring-shaped housing comprising one or more apertures, wherein the inner ring-shaped housing defines an inner circumferential surface of the wearable ring device;
one or more sensors disposed at least partially within the inner ring-shaped housing, the one or more sensors configured to acquire physiological data from a user through the one or more apertures;
an outer ring-shaped housing that at least partially surrounds the inner ring-shaped housing, wherein the outer ring-shaped housing defines an outer circumferential surface of the wearable ring device;
a first ring-shaped fitting at least partially disposed within a first slot between the outer ring-shaped housing and the inner ring-shaped housing on a first lateral side of the wearable ring device; and
a second ring-shaped fitting at least partially disposed within a second slot between the outer ring-shaped housing and the inner ring-shaped housing on a second lateral side of the wearable ring device, wherein the first ring-shaped fitting and the second ring-shaped fitting are configured to undergo a mechanical deformation upon being inserted into the first slot and the second slot, respectively, wherein the mechanical deformation of the first ring-shaped fitting and the second ring-shaped fitting causes the first ring-shaped fitting and the second ring- shaped fitting to engage one or more features of the inner ring-shaped housing, the outer ring- shaped housing, or both, to couple the outer ring-shaped housing to the inner ring-shaped housing.
Present claim 1:
A wearable ring device, comprising:
an inner ring-shaped housing comprising one or more apertures, wherein the inner ring-shaped housing defines an inner circumferential surface of the wearable ring device;
one or more sensors disposed at least partially within the inner ring- shaped housing, the one or more sensors configured to acquire physiological data from a user through the one or more apertures;
an outer ring-shaped housing that at least partially surrounds the inner ring-shaped housing, wherein the outer ring-shaped housing defines an outer circumferential surface of the wearable ring device;
a first ring-shaped fitting at least partially disposed within a first slot between the outer ring-shaped housing and the inner ring-shaped housing on a first lateral side of the wearable ring device; and
a second ring-shaped fitting at least partially disposed within a second slot between the outer ring-shaped housing and the inner ring-shaped housing on a second lateral side of the wearable ring device, wherein the first ring-shaped fitting and the second ring-shaped fitting are configured to undergo a mechanical deformation upon being inserted into the first slot and the second slot, respectively, wherein the mechanical deformation of the first ring-shaped fitting and the second ring-shaped fitting causes the first ring-shaped fitting and the second ring-shaped fitting to engage one or more features of the inner ring-shaped housing, the outer ring-shaped housing, or both, to couple the outer ring-shaped housing to the inner ring-shaped housing.
Similar conflict between elements is exhibited by claims 2, 3, and 5-15 of the ‘143 application over present claims 5-16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN T GEDEON whose telephone number is (571)272-3447. The examiner can normally be reached M-F 8:00 am to 5:30 PM ET.
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/BRIAN T GEDEON/Primary Examiner, Art Unit 3796 22 June 2026
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