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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 37 - 38 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 37 is indefinite because there is insufficient there is antecedent basis for “the heart rate signal”. It is unclear what is being referred to. It is noted that claim 39 recites that the physiological information is a heart rate signal. It is unclear if claim 37 is intended to depend from claim 39.
Claim 38 is indefinite by virtue of dependency.
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 21 - 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 12,072,288 in view of LeBoeuf et al. (US 2013/0131519).
Claim 21 is suggested by reference claim 3 and/or 9. In particular, reference claim 3 recites a wearable electronic device comprising:
a photoplethysmographic device (implicit from the recited sensor/emitter) comprising:
a first light detector (“first light sensor”, claim 1);
a first light emitter (“first light emitter”, claim 1);
a first window (“first window”, claim 1), wherein the first light detector is positioned behind the first window (“first light sensor positioned behind the first window”, claim 1);
a first Fresnel lens positioned between the first window and the first light detector (“second Fresnel lens positioned between the first window and the first light sensor”, claim 3);
a second window (“third window”, claim 1),, wherein the first light emitter is positioned behind and off-center with respect to the second window (“first emitter positioned behind and off-center with respect to the third window”, claim 1); and
a second Fresnel lens positioned between the second window and the first light emitter (“first Fresnel lens positioned between the first emitter and the third window”, claim 1) and comprising:
a first zone that is positioned above the first emitter and configured to collimate light emitted by the first emitter (“first zone that is positioned above the first emitter and configured to collimate light emitted by the first emitter”, claim 1); and
a second zone that includes ridges that act to obscure components underlying the second zone. (“second zone that is positioned above the second emitter and includes ridges that act to obscure components underlying the second zone”, claim 1).
Reference claim 9 recites substantially similar features. However, the reference claims do not recite a strap and a housing.
LeBoeuf discloses light-guiding devices. LeBoeuf teaches a strap (“… strap … can engage the sensor module with the skin”, [0224]) and a housing (“optical emitter … detector … disposed within the housing”, [0230]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include a strap, as taught by LeBoeuf, in order to facilitate engaging the device with skin, as suggested by LeBoeuf ([0224]).
It also would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include a housing, as taught by LeBoeuf, in order to contain the structural components of the device in a localized fashion.
Claim 22 is suggested by reference claim 2 and/or 10.
Claim 23 is suggested by reference claim 1 and/or 9.
Claim 24 is suggested by reference claim 5 and/or 12.
Regarding claim 25, the reference claims do not recite an optical isolation positioned between the first light detector and the first light emitter.
LeBoeuf teaches an optical isolation between a first light detector and a first light emitter (light blocking region, [0167] and figs. 8A - 8B).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include an optical isolation positioned between the first light detector and the first light emitter, as taught by LeBoeuf, in order to reduce the risk of the inspection light interrogating and saturating the optical detectors, as discussed by LeBoeuf ([0167]).
Claim 26 is suggested by reference claim 1 and/or 9.
Claim 27 is suggested by reference claim 4 and/or 11.
Claim 28, and corresponding method of use claim 36, are suggested by reference claim 3, 9, and/or 16. In particular, reference claim 3 recites a wearable electronic device comprising:
a first light detector (“first light sensor”, claim 1) and a first light emitter (“first light emitter”, claim 1);
a first window (“first window”, claim 1), wherein the first light detector is positioned behind the first window (“first light sensor positioned behind the first window”, claim 1);
a first Fresnel lens positioned between the first window and the first light detector (“second Fresnel lens positioned between the first window and the first light sensor”, claim 3);
a second window (“third window”, claim 1),, wherein the first light emitter is positioned behind and off-center with respect to the second window (“first emitter positioned behind and off-center with respect to the third window”, claim 1); and
a second Fresnel lens positioned between the second window and the first light emitter (“first Fresnel lens positioned between the first emitter and the third window”, claim 1) and comprising:
a first zone that is positioned above the first emitter and configured to collimate light emitted by the first emitter (“first zone that is positioned above the first emitter and configured to collimate light emitted by the first emitter”, claim 1); and
a second zone that includes ridges that act to obscure components underlying the second zone. (“second zone that is positioned above the second emitter and includes ridges that act to obscure components underlying the second zone”, claim 1).
Reference claim 9 recites substantially similar features. The method steps of instant claim 36 involving determining the physiological information using the received first portion of the emitted light are merely naturally flowing use of the structures of reference claims 3 and/or 9. Refer to reference (method) claim 16 for explicit recitation of such steps.
However, the reference claims differ in that they do not recite that the first light detector and first light emitter are mounted to a component mounting plane. The reference claims also do not recite an optical isolation positioned between first light detector and the first emitter.
LeBoeuf discloses light-guiding devices. LeBoeuf teaches a first light detector and a first light emitter mounted to a component mounting plane (interior surface of base 50, [0167] and figs. 8A- 8D). LeBoeuf also teaches an optical isolation between a first light detector and a first light emitter (light blocking region, [0167] and figs. 8A - 8B).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to have the first light detector and first light emitter be mounted to a component mounting plane, as taught by LeBoeuf, in order to contain the structural components of the device in a localized fashion.
It also would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include an optical isolation positioned between the first light detector and the first light emitter, as taught by LeBoeuf, in order to reduce the risk of the inspection light interrogating and saturating the optical detectors, as suggested by LeBoeuf ([0167]).
Claim 29 is suggested by reference claim 2 and/or 10.
Claim 30 is suggested by reference claim 1 and/or 9.
Claim 31 is suggested by reference claim 5 and/or 12.
Regarding claim 32, the reference claims do not recite the component mounting plane is made of a same material as the optical isolation. However, the selection of suitable materials for an intended use is considered a routine matter of design choice; and applicant has disclosed no criticality of the claimed selection of materials.
It would therefore have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to have the component mounting plane be made of a same material as the optical isolation, as a routine matter of design choice, for the purpose of adopting desired manufacturing techniques (i.e., such as integral manufacturing), to thereby simplify manufacturing processes and/or reduce expenses.
Claim 33 is suggested by reference claim 1 and/or 9.
Claim 34 is suggested by reference claim 4 and/or 11.
Regarding claim 35, the reference claims do not recite a housing, wherein the component mounting plane, the first light emitter, and first light detector are positioned within the housing.
LeBoeuf teaches a housing (i.e., the exterior surface of the device, figs. 8A-8D), wherein the component mounting plane, the first light emitter, and first light detector are positioned within the housing (see this arrangement in figs. 8A - 8D).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include a housing, wherein the component mounting plane, the first light emitter, and first light detector are positioned within the housing, as taught by LeBoeuf, in order to further facilitate containing the structural components of the device in a localized fashion.
Claims 37 - 39 are suggested by reference claim by reference claim 1 and/or 9. However, the reference claims do not recite the physiological information is a heart rate signal determined using a second portion of the emitted light.
LeBoeuf teaches physiological information that is a heart rate signal determined using a second portion of the emitted light (heart rate, [0189] - [0191]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to have the physiological information be a heart rate signal determined using a second portion of the emitted light, as taught by LeBoeuf, in order to evaluate a user’s heart rate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798