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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/21/2024 was filed after the mailing date of the application on 06/21/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 14 is 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. The specification does not provide how the blocking element “blocks” the end of the strap, the device, or otherwise. Further, the specification states that the blocking element can be an adhesive, but it is unclear how the blocking element can be both an insulator and adhesive, let alone what the blocking element is intended to block.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation are: “fixing member” in claim 12 and “blocking member” in claim 14. See the three-prong test for each below.
Claim 12 - Step A: the claimed limitation uses a term as a generic placeholder (fixing member) for performing the claimed function.
Step B: the claimed limitation is modified by functional language, where the adjective “fixing” gives the “fixing member” its function.
Step C: the claimed limitation is not modified by sufficient structure to achieve the claimed function.
Claim 14 - Step A: The claimed limitation uses a term as a generic placeholder (blocking element) for performing the claimed function.
Step B: the claimed limitation is modified by functional language, wherein the adjective “blocking” gives the “blocking element” its function.
Step C: the claimed limitation is not modified by sufficient structure to achieve the claimed function.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea/mental process without significantly more. The claim recites “determining whether the metal strap is fastened to the user”, “detecting the biometric information based on the determining”, “correcting the detected biometric information based on a prestored reference”, and “displaying the corrected biometric information”. This judicial exception is not integrated into a practical application because the claim is directed to an abstract idea (detecting, determining, correcting) with generic elements such as electrodes. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a metal frame, metal strap, and insulating structure perform well-understood, routine, and conventional activity. See the two step two prong analysis below.
Step 1: Does the claim recite a statutory category?
Yes. Claim 15 recites a method which is eligible at step 1.
Step 2A, Prong 1: Is a judicial exception recited?
Yes. Claim 15 recites the limitations “determining whether the metal strap is fastened to the user”, “detecting the biometric information based on the determining”, “correcting the detected biometric information based on a prestored reference”, and “displaying the corrected biometric information”. The above limitations appear to be directed to mental processes and mathematical operations of human activity because the limitations concern data collection, data analysis, and recording of results which could be done mentally or by hand and with pen and paper. Nothing in the claimed element precludes the step from being practically being performed in the mind. Thus, the claim recites a mental process. Further, the claim recites a mathematical formula or calculated that is used to influence a value via correction of the detected biometric information. Thus, the claim also recites a mathematical concept.
Step 2A, Prong 2: Is the judicial exception integrated into a practical application?
No. Claim 15 does not recite any other additional elements that integrates the judicial exception into a practical application. The limitations of determining whether the metal strap is fastened, and detecting the biometric information based on the determining, are recited at a high level of generality and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The correcting step is also recited at a high level of generality, and merely is feedback from the determining step and an adjustment of a mathematical value. Displaying the corrected data is also considered to be a form of insignificant extra-solution activity. The combination of these additional elements is no more than mere instructions to apply the exception. These additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practice the abstract idea. The corrected value as an output source is not used for other activity outside of displaying a value. Therefore the claim is directed to an abstract idea.
Step 2B: Does the claim provide an inventive concept?
No. As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere extra solution activity to apply the exception. Mere instructions to apply an exception cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Furthermore, the ability to adjust a value with feedback is seen as well-understood, routine, and conventional, therefore there is no inventive concept in the claim and thus it is ineligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeong (US 2018/0220972), herein after “Jeong”.
Regarding claim 1, Jeong teaches “A wearable electronic device (Figure 1) comprising
a metal frame (housing 111/410, p.[0051]);
a plurality of electrodes (431/432) positioned on the metal frame (on housing 410, Fig. 4) to be in contact with a user's body (p.[0085]) and configured to form an electrical signal path with the user's body in contact to acquire biometric information (p.[0085]);
a metal strap (120, 130, p.[0058]) connected to the metal frame (Fig. 1);
and an insulating structure, wherein the insulating structure is configured to electrically separate the metal strap and the metal frame to reduce leaking of the electrical signal to the metal frame through the metal strap (p.[0058], "This is a problem that may be solved by applying an insulating structure between the metal housing 111 and the metal straps 120 and 130 in the electronic device 100").”
Claim Rejections - 35 USC § 103
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.
Claims 2-8 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Liu (US 2021/0048841), herein after “Liu”.
Regarding claim 2, the limitations of claim 1 are taught as described above. Jeong does not explicitly teach the insulating structure, but Liu does in an analogous invention. Liu teaches
"wherein the insulating structure includes: a body (204) accommodated in a through hole formed in the metal strap (Fig. 3)"
“a first pin and a second pin disposed at both ends of the body and connected to the metal frame (conductive pins in p.[0056-57])”
“and an insulating member surrounding the body so that the metal strap and the metal frame are electrically separated (insulating sheets p.[0056-57])”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the insulating structure of Liu in Jeong. As stated in Jeong (p.[0058]), the use of the insulating structure can inhibit radiation and produces predictable results of limiting current distortion in the device.
Regarding claim 3, the limitations of claim 1 are taught as described above. Jeong does not explicitly teach the insulating structure, but Liu does in an analogous watch invention. Liu teaches "wherein the insulating structure includes: a body (204) accommodated in a groove formed in the metal strap (grooves 203a, Fig. 3)"
“a first pin and a second pin disposed at both ends of the body and connected to the metal frame (conductive pins in p.[0056-57])”
“and an insulating member surrounding the body so that the metal strap and the metal frame are electrically separated (insulating sheets p.[0056-57])”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the insulating structure of Liu in Jeong. As stated in Jeong (p.[0058]), the use of the insulating structure can inhibit radiation and produces predictable results of limiting current distortion in the device.
Regarding claim 4, the limitations of claim 3 are taught as described above. Jeong does not explicitly teach the groove and structure, but Liu does in an analogous watch invention. Liu teaches "wherein the groove extends from a first side surface of the metal strap to a second side surface opposite the first side surface in a longitudinal direction, wherein a cross-sectional shape of the groove cut in a direction perpendicular to the longitudinal direction has an open circular shape, wherein the metal strap includes a first surface extending from a partial edge of the first side surface to a partial edge of the second side surface, wherein the first side surface faces the user's body while the user is wearing the wearable electronic device, and wherein the groove is formed in the first surface." in Figure 2-3, with grooves of 203a with open circular shape with a first side surface of the groove faces the user's body (the user's wrist) when the metal strap is attached to the frame and the watch is worn by the user.
It would have been obvious to one of ordinary skill in the art before the effective filing date to use the groove of Liu in the system of Jeong. As stated in Liu, the use of the groove allows for the straps to be detachably coupled to the metal frame and produces predictable results of having detachable straps.
Regarding claim 5, the limitations of claim 1 are taught as described above. Jeong does not explicitly teach the limitation, but Liu does in an analogous watch device. Liu teaches "wherein the metal strap includes an end link connected to the metal frame (locking end 202), and wherein the end link includes an insulating material so that the metal strap and the metal frame are electrically separated (locking end 202, p.[0022])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Liu in Jeong. As stated in Liu, the use of the locking end (metal straps with an end link) to allow the metal straps to be detachably engaged and produces predictable results of detachable metal straps.
Regarding claim 6, the limitations of claim 1 are taught as described above. Jeong does not explicitly teach the limitation, but Liu does in an analogous watch device. Liu teaches “wherein the metal strap includes an end link connected to the metal frame (locking end 202), a center link connected to the end link (203), and a side link (204) connected to the center link, and wherein at least some of the end link, the center link, or the side link are made of an insulating material (p.[0022]).” It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Liu in Jeong. As stated in Liu, the use of the locking end (metal straps with an end link) to allow the metal straps to be detachably engaged and produces predictable results of detachable metal straps.
Regarding claim 7, the limitations of claim 1 are taught as described above. Jeong does not explicitly teach the insulating structure, but Liu does in an analogous watch device. Liu teaches “further comprising: an insulating layer (insulating sheet, p.[0023]), wherein the metal frame (body 100) includes a front surface (display 120), a rear surface opposite the front surface (rear cover 130), and a side surface extending from the front surface to the rear surface (110), and wherein the insulating layer is formed on at least a portion of the side surface of the wearable electronic device (insulating sheet 204 is on the side surface/sidewall of the device when the strap is attached)”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the insulating structure of Liu in Jeong. As stated in Jeong (p.[0058]), the use of the insulating structure can inhibit radiation and produces predictable results of limiting current distortion in the device.
Regarding claim 8, the limitations of claim 7 are taught as described above. Jeong does not teach the limitations of claim 8, but Liu does in an analogous watch device. Liu teaches “wherein the metal frame includes a first protrusion (103) and a second protrusion (104) extending from the side surface (Fig. 4), wherein the metal strap is connected between the first protrusion and the second protrusion (p.[0060], Fig. 3-4), and wherein the insulating layer is formed in a region between the first protrusion and the second protrusion on the side surface (insulating layer 204, where 204 is in a region between the first and second protrusion when the metal strap is connected to the metal frame as shown in Fig. 3-4, p.[0056-0057])”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use protrusions to connect the metal frame to the metal strap. The use of the protrusions allows for the metal frame to be detachably coupled to the metal straps and produces predictable results of creating detachable straps.
Regarding claim 11, the limitations of claim 1 are taught as described above. Jeong does not teach the claimed limitation, but Liu does in an analogous watch device. Liu teaches “wherein the metal strap includes an end link (201) and a strap (200), wherein a coupling surface is formed on the end link (202), wherein an end of the strap is coupled to the coupling surface (Fig. 3), wherein the insulating structure (204) includes an adhesive member disposed between the coupling surface and the end of the strap, and wherein the end of the strap is electrically separated from the coupling surface through the adhesive member (p.[0056])”. While Liu does not explicitly state that the insulating structure includes an adhesive member disposed between the coupling surface and the end of the strap, substituting with an adhesive coupling for another way of coupling or attaching the insulating structure to the coupling surface is obvious and produces predictable results.
Regarding claim 13, the limitations of claim 11 are taught as described above. Jeong does not teach the limitations of claim 13, but Liu does. Liu teaches “wherein the coupling surface (202) surrounds all of the end of the strap. (Fig. 3)”.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Liu and Chong Rodriguez (US 2020/0128670), herein after “Chong”.
Regarding claim 9, the limitations of claim 1 are taught as described above. Neither Liu nor Jeong teaches the limitations of claim 9, but Chong does in an analogous wearable device. Chong teaches "a printed circuit board (module 70) and at least one element disposed on the printed circuit board and electrically connected to a ground portion of the printed circuit board, wherein the metal frame is electrically connected to the at least one element, and wherein the at least one element includes a capacitor (p.[0089])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a printed circuit board with a ground and connection to a capacitor, as taught in Chong, in Jeong/Liu. It is known in the art to use printed circuit boards for sensory circuitry and moreover it is known in the art to use capacitors for circuit signal processing, and such a system produces predictable results.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Liu and Hansen (US 2022/0241105).
Regarding claim 10, the limitations of claim 1 are taught as described above. Neither Jeong nor Liu explicitly teach "wherein the plurality of electrodes include a first portion made of an electrically conductive material and a second portion made of an electrically insulating material, wherein the first portion is spaced apart from the metal frame and is configured to form an electrical signal path with a user's body in contact, and wherein the second portion is connected to the first portion, at least partially accommodated in the metal frame, and is configured to electrically insulate the first portion and the metal frame", but Hansen does in an analogous wearable device. Hansen teaches in Fig. 6 and p.[0148] that the electrodes are covered with a masking element that insulates them from a conductive portion of the electrode that is configured for sensing signals from a user's body in contact (Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Hansen in Jeong/Liu. One of ordinary skill in the art would routinely use an insulator component to prevent unintentional shorting of the device and produces predictable results of maintaining signal integrity within the device.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Liu and further in view of Sharma (US 2016/0070393), herein after “Sharma”.
Regarding claim 12, the limitations of claim 11 are taught as described above. Neither Jeong nor Liu teaches the limitations "wherein the end link includes a fixing member extending in a longitudinal direction, and wherein both ends of the coupling surfaces that face each other based on the longitudinal direction are open", but Sharma does in an analogous wearable device. Sharma teaches "wherein the end link includes a fixing member extending in a longitudinal direction, and wherein both ends of the coupling surfaces that face each other based on the longitudinal direction are open (Fig. 45, p.[0186])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a fixing member, as taught in Sharma, in Jeong/Liu. As stated in Sharma, p.[0186], it is known in the art to use the fixing member (akin to a spring pin or spring bar) for constructing watch bands and the substitution of a fixing member in Jeong/Liu produces reasonable predictable results of holding the watch straps together.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Liu and further in view of Nousiainen (US 2017/0202514), herein after “Nousiainen”.
Regarding claim 12, the limitations of claim 11 are taught as described above. Neither Jeong nor Liu teach the limitation "wherein the insulating structure includes a blocking member disposed between the end of the strap and the coupling surface", but Nousiainen does in an analogous wearable device. Nousiainen teaches the limitation "wherein the insulating structure includes a blocking member (spacer element 100) disposed between the end of the strap and the coupling surface" in Fig. 8 and p.[0084]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the blocking member of Nousiainen in Jeong/Liu. As stated in Nousiainen p.[0084], the blocking member may prevent the slipping of the strap from the wrist of the user and produces predictable results of mediating the tightness of the strap for the user.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong in view of Joe (US 2020/0146630), herein after “Joe”.
Regarding claim 15, the limitations of claim 1 are taught as described above. Jeong does not teach the limitations "the method comprising: determining whether the metal strap is fastened to a user; detecting the biometric information based on the determining; correcting the detected biometric information based on a pre-stored reference value of biometric information; and displaying the corrected biometric information", but Joe does in an analogous wearable device. Joe teaches the limitations "the method comprising: determining whether the metal strap is fastened to a user (Fig. 9, step 920, and Fig. 12, step 1205); detecting the biometric information based on the determining (Fig. 12, 1210); correcting the detected biometric information based on a pre-stored reference value (wherein correcting is suggesting increasing the tightness of the band) of biometric information (1215, 1235, 1245); and displaying the corrected biometric information (1255,1260)". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of Joe in Jeong. By maintaining an appropriate posture and position of the device on the user, the device can determine if appropriate contact is made in order to generate a high quality biometric signal and produces predictable results of creating high quality signals (p.[0012])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abigail M Bock whose telephone number is (571)272-8856. The examiner can normally be reached M-F 7:30am - 5:00pm.
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/ABIGAIL BOCK/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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