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 .
Election/Restrictions
In response to restriction requirement of 08/20/2025, applicant elected group I, claims 21-30 with traverse. Applicant’s arguments regarding the traversal are not persuasive for the following reasons.
Applicant argues on page 6:
“Independent claims 21 and 31 are not mutually exclusive, and the Examiner has failed to point to any specific limitations that cause these claims to be mutually exclusive. Additionally, arguing that one claim includes features that are not required in another claim is not the same as demonstrating that claims are mutually exclusive.”
Examiner respectfully disagrees. Examiner has stated that “the arrangement of the light guides and features of the ear gel in combination with the other elements are different for the two sets of inventions.” The limitations are clearly different. Claim 31 is different from claim 21 in that it recites an earpiece, how the ear gel fits around the earpiece, and difference in the materials that are used for constructing the device of claim 31,as well as the coupling features recited. Claim 21 requires housing, how the guides are arranged with respect to the housing. These are mutually exclusive limitations. MPEP sections 806.04 (f) and 806.05 discuss about mutually exclusive claims. As per MPEP 806.04 (f), “mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope” From this section of MPEP it is understood that one claim includes features that are not required in another claim implies, mutually exclusive. MPEP 806.05 recites “Related inventions in the same statutory class are considered mutually exclusive, or not overlapping in scope, a first invention would not infringe a second invention, and the second invention would not infringe the first invention”. In this case the invention of claim 21 does not infringe on invention of claim 31 (e.g. a double patenting between the claims would not be possible because of the mutually exclusive limitations). Further, applicant does not disclose or admit that they are the same or obvious variants.
In view of reasons cited above, the restriction is proper, and claims 31-40 are currently withdrawn from consideration. Claims 21-30 are considered in this Office Action.
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.
Claim 21 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of US 12082946 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because (anticipation analysis):
As per claim 21, US 12082946 B2 also claims 21 a biometric monitoring device, comprising: a housing; an optical source positioned within the housing and configured to emit light; an optical detector positioned within the housing and configured to detect a returned portion of the emitted light; (US 12082946 B2 Col 16 lines 37-43)
a first light guide extending from a first location on the housing and defined by a first material, wherein a first end of the first light guide is in optical communication with the optical source (US 12082946 B2 Col 16 lines 44-48);
a second light guide extending from a second location on the housing and defined by the first material, wherein a first end of the second light guide is in optical communication with the optical detector (US 12082946 B2 Col 16 lines 50-54);
an ear gel secured to the housing, defined by a second material having greater flexibility than the first material, and comprising (US 12082946 B2 Col 16 line 57):
a third light guide comprising a first end optically coupled to a second end of the first light guide and secured to the ear gel (US 12082946 B2 Col 16 line 65 to Col 17 line 2 );
a fourth light guide comprising a first end optically coupled to a second end of the second light guide and secured to the ear gel (US 12082946 B2 Col 17 lines 4-9); and
an optical divider positioned between the third light guide and the fourth light guide and configured to prevent light from crossing between the third light guide and the fourth light guide (US 12082946 B2 claim 6).
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.
Claims 21-25, 27-30 rejected under 35 U.S.C. 103 as being unpatentable over LeBoeuf [US 20140249381 A1]
As per claim 21, LeBoeuf teaches a biometric monitoring device (LeBoeuf Fig 4C annotated below, ¶0233 “for use in biometric monitoring”), comprising:
a housing (LeBoeuf Fig 4C base 50); an optical source positioned within the housing and configured to emit light; an optical detector positioned within the housing and configured to detect a returned portion of the emitted light; (LeBoeuf Fig 4C items 24, 26, ¶0148);
a first light guide extending from a first location on the housing and defined by a first material, wherein a first end of the first light guide is in optical communication with the optical source (LeBoeuf Fig 4C, annotated below, shows a first light guide extending from a first location on the housing ( the lower LHS box) as claimed. A first material implied in the components shown);
a second light guide extending from a second location on the housing and defined by the first material, wherein a first end of the second light guide is in optical communication with the optical detector (LeBoeuf Fig 4, annotated below, shows a second light guide extending from a second location on the housing ( the upper LHS box) as claimed. A first material implied in the components shown ¶0053 “One or both of the first and second light guides may comprise a substantially rigid light transmissive material…Examples of suitable rigid materials may include, but are not limited to, polyurethane, polymer-based materials, resins, higher durometer plastics, polycarbonate, acrylic, and the like...”); and
an ear gel module secured to the housing (LeBoeuf Fig 4c, components comprising elements listed below including third light guide, fourth light guide and optical divider)
a third light guide comprising a first end optically coupled to a second end of the first light guide and secured to the ear gel (LeBoeuf Fig 4C, annotated below to show a third light guide as claimed); and
a fourth light guide comprising a first end optically coupled to a second end of the second light guide and secured to the ear gel (LeBoeuf Fig 4C, annotated below to show a fourth light guide as claimed).
an optical divider positioned between the third light guide and the fourth light guide and configured to prevent light from crossing between the third light guide and the fourth light guide (LeBoeuf Fig 4C part of the acoustic wave-guiding region 54 between the third and fourth waveguides. ¶0153 “the acoustic wave-guiding region 54 may be air or another material, and the separation between these regions may be defined by at least part of the cladding material 21.”, implies regions for 110 and 111 are also isolated).
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The only difference is that the embodiment of Fig 4C does not expressly recite that the ear gel comprises a second material having greater flexibility than the first material. However, LeBoeuf discloses use of a light-guiding cover 18 is formed from a soft, resilient material, such as silicone (LeBoeuf Fig 1, ¶0134, ¶0143). Hence LeBoeuf mentions use of the more flexible material as the ear cover or the claimed ear gel. Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify the apparatus of LeBoeuf Fig 4C, by integrating other teachings as suggested in the document. The motivation for silicon is to deform when inserted within an ear canal of a subject (LeBoeuf ¶0143).
As per claim 22, LeBoeuf further teaches wherein the optical divider comprises a third material that is different from the second material (LeBoeuf ¶0413 “.. the light-guiding region may be silicone or other soft material and the outer cladding may be air, a polymer, plastic, or a soft material having a lower index of refraction than silicone.”. As per MPEP 2144.07 “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination…” Hence this claim is only directed to selecting an appropriate material for constructing the region between the third and fourth waveguides).
As per claim 23, LeBoeuf further teaches wherein the optical divider extends from an inner surface of the ear gel to an outer surface of the ear gel (LeBoeuf Fig 4C, the identified optical divider extends from an inner surface (surface closer to 50, on the left side of Fig 4C), to an outer surface (surface closer to the ear on the right side of 4C).
As per claim 24, LeBoeuf further teaches wherein the second ends of the first and second light guides are located external to the housing in adjacent spaced-apart relationship (LeBoeuf Fig 4C the first and second light guides are external to 50 and spaced apart).
As per claim 25, LeBoeuf further teaches wherein the ear gel is removably secured to the housing; the second end of the third light guide is removably attached to the second end of the first light guide; and the second end of the fourth light guide is removably attached to the second end of the second light guide (LeBoeuf 0041 “The optical emitter and optical detector are attached to the housing, such as the housing of the earbud itself”. Fig 4C components are attached. If it is attached it can also be removed by some means).
As per claim 27, LeBoeuf further teaches wherein the first and second light guides are substantially rigid (LeBoeuf ¶0042 “at least one light guide comprises a substantially rigid light transmissive material”).
As per claim 28, LeBoeuf further teaches wherein the ear gel and the third and fourth light guides comprise a flexible optically transmissive material (As per MPEP 2144.07 “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination…” Hence this claim is only directed to selecting an appropriate material for constructing the waveguides and ear gel so as to allow optical transmission and reception, while providing comfort to the ear).
As per claim 29, LeBoeuf further teaches wherein the ear gel further comprises a stabilizing member configured to engage a concha of a user (LeBoeuf ¶0009 “The cover may be formed from a soft, resilient material, such as silicone which deforms when inserted within an ear canal of a subject. In some embodiments, the cover includes an alignment member that facilitates alignment of the earbud housing within an ear canal of a subject”, ¶0142 “includes an alignment member 40 (also referred to as a stabilization arm”) that facilitates alignment of the earbud 30 within an ear canal of a subject” Inserting in canal as in Fig 4C canal implies engaging a conchal wall or between the tragus and the auditory canal).
As per claim 30, LeBoeuf further teaches wherein the ear gel has a frusto-conical shape (LeBoeuf Fig 4C).
Claim 26 rejected under 35 U.S.C. 103 as being unpatentable over LeBoeuf as applied to claim 21 above, and further in view of Kosman [US 4712858 A].
As per claim 26, LeBouef teaches claim 21 as discussed above. LeBouef does not expressly teach wherein the second end of the third light guide is positioned over at least a portion of the second end of the first light guide; and the second end of the fourth light guide is positioned over at least a portion of the second end of the second light guide.
Kosman teaches wherein the second end of the third light guide is positioned over at least a portion of the second end of the first light guide; and the second end of the fourth light guide is positioned over at least a portion of the second end of the second light guide (In view of applicant spec. page 21 lines 17-18, examiner interprets telescoping connection as insert fit. Kosman Fig 16, transmit waveguide 428 inserted into receive waveguide 426).
Before the effective filing date of the claimed invention it would have been obvious to a person of ordinary skill in the art to modify apparatus in LeBoeuf by using connection as in Kosman. This is only directed to combining prior art elements according to known methods to yield predictable results as discussed in MPEP 2143.I.A. The predictable result here would be to construct the multiple light guide sections in LeBoeuf from the optical elements to and from ear using known prior art schemes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OOMMEN JACOB whose telephone number is (571)270-5166. The examiner can normally be reached 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at 571-270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Oommen Jacob/ Primary Examiner, Art Unit 3797
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