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 .
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive.
Regarding the 35 USC 112(b) rejection, Applicants claims still recites a step of simultaneously receiving data. However, the claim is a device claim and it is unclear which structure in the claim Applicant is attributing to this function. Positively reciting a method step in a device claim also creates confusion as to what exactly is being claimed. See rejection for more details.
Regarding the 35 USC 103 rejection , Applicant argues the art of record does not disclose the 1/100 ratio claimed and that it would not be an obvious matter of design choice in that this ratio provides the benefit of allowing reliable simultaneous power and data reception within the same housing. Applicant argues there is no evidence in Murata that the frequencies disclosed would have any similar correlations in size that would result in the claimed ratio. The Examiner respectfully disagrees. As noted in the interview, the relationship between resonant frequency and antenna length is a well-known and well-established design constraint in antenna design (see references cited in the conclusion section below for background on antenna length/frequency relationships). Antennas are typically designed as quarter-wave and half-wave systems (while other variants so indeed exist). Regardless, the higher the frequency the smaller the antenna and the lower the frequency, the larger the antenna. This is most readily evident in the size/length difference in AM radios that operate in the MHz frequency range and home wi-fi routers that operate in the GHz range. Therefore, when looking to the disclosure of Murata, while the exact antenna sizes are not discloses and instead the antennas are described purely in terms of frequency of operation, the Examiner notes one of ordinary skill in the art would be well-apprised of the relative size differences of the antennas based on their resonant frequencies. The wavelengths used for the radio communications (frequencies up to 5 GHz which have a wavelength of approximately 60 mm) are substantially smaller than those used for power transmission (which relies on frequencies of 6.78 or 13.56 MHZ, which have wavelengths of approximately 22,000 to 44,500 mm). A quarter-wave antenna for a 5GHz antenna would be 15 mm (60/4) and a quarter-wave antenna for a 6.78 MHz antenna would be 11,125 (44500/4). The size of the antenna for radio waves is much less than 1/100 the area of the power transmission antenna due to the design constraints of such antennas.
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 1-20 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 1 recites “frequency coexistence operations are performed…”. However, the claim is a device claim and not a method claim and Applicant has not claimed the method step in conjunction with any particular structure. For example, for a device claim, a typical claim construction would be “Element X configured to perform frequency coexistence operations…”. The Examiner respectfully requests amending the claim to associate the intended use step with a structure and not solely claiming it as a standalone method step as currently presented. The metes and abound sare presently unclear. For purposes of examination, the Examiner will interpret the claimed invention as being capable of simultaneous data and power transfer.
Claims 2-20 are rejected due to their dependence on indefinite claim 1.
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.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Murata Manufacturing Co Ltd (WO 2020/066095), herein Murata.
Regarding Claims 1, 4, 5, 8, 11-14, 18 and 20, Murata discloses an in-vivo implantable medical device comprising a housing 11 having a sealed internal space; a power receiving coil 15; a power resonance capacitor 13 in the internal space, wherein the capacitor configures a resonance circuit with the power receiving coil 15; a magnetic sheet 16 configured to generate a magnetic circuit in the magnetic field for the power receiving coil; electronic circuitry (other components labeled 13 in Fig. 1; se abstract) for signal processing (“The plurality of electronic circuit components 13 are components for realizing the functions of the in-vivo implantable medical device 10, and include, for example, various biosensors, ICs, passive elements, and the like. That is, the plurality of electronic circuit components 13 are components of the "electronic circuit" that performs the signal processing of the present invention.”); and a window 112 including a nonmetallic biocompatible material such as ruby, glass, ceramic, etc. (“The second member 112 is a molded body of a nonmetallic biocompatible material. For example, the second member 112 is made of sapphire, ruby, glass, ceramic, or the like. By using such a nonmetallic biocompatible material for the second member 112, the influence on the living body and the influence from the living body can be suppressed.”), wherein the window 112 is larger than the shape of the power receiving coil 15; and the magnetic sheet 16 is larger than the outer shape of the power receiving coil 15 (see Fig. 1). This embodiment does not disclose a radio communicators antenna. However, in a separate embodiment, Murata discloses also incorporating a radio communications antenna in circuit 31 (“The built-in communication module 31 includes a planar communication antenna and a communication IC. These are mounted or formed on a circuit board for the built-in communication module 31. Communication realized by the built-in communication module 31 is data communication. This communication includes short-range communication such as 400MHz band MICS, 2.4GHz band Wi-Fi, 2.4GHz band Bluetooth (registered trademark), 2.4GHz band Bluetooth Low Energy (registered trademark), and 5.0GHz band Wi-Fi. Wireless communication, and low power consumption is preferable.”) for the purpose of enabling external control of the implantable device (“Thus, the in-vivo implantable medical device 10 can externally obtain a control signal for performing a predetermined process (measurement, application of an electric signal, and the like) on the living body.”). This feature is envisioned in any embodiment given the breadth of the claim (“The in-vivo implantable medical device according to any one of claims 1 to 6. It is provided with a built-in communication module arranged in the internal space, electrically connected to the electronic circuit, and communicating with an external communication module, and a communication antenna connected to the built-in communication module.”). The antenna is offset from the magnetic sheet so that the magnetic flux does not intersect (Fig. 1B) and thus enables simultaneous data and power transfer (“the built-in communication module 31 and the power receiving coil 15 are separated from each other, so that even if wireless communication for data communication and power supply are performed at the same time, these Mutual interference can be suppressed.”). The shape of the communication module 31 is smaller than that of coil 15 but, due to the drawings not being necessarily to scale, the exact relative dimensions are not clear from the drawings. Murata does disclose the wavelengths used for the radio communications (frequencies up to 5 GHz which have a wavelength of approximately 60 mm) are substantially smaller than those used for power transmission (which relies on frequencies of 6.78 or 13.56 MHZ, which have wavelengths of approximately 22,000 to 44,500 mm). Switching occurs to allow for the two frequencies to co-exist and the Examiner contends the configuration disclosed by Murata provides the benefit of suppressing thermal effects due to the spacing of the communications antenna 31 and power coil 15. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the embodiment of Fig. 1 of the Murata reference to include a radio communications antenna, as taught and suggested by Murata in a second embedment as shown in Fig. 1B, for the purpose of enabling external control of the implantable device.
Furthermore, it would have been an obvious matter of design choice to make the area of the radio communications antenna to be 1/100 of the area of the power receiving coil since Murata discloses the different frequency ranges targeted by each antenna, and such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Additionally, such a size disparity would also be present due to the known relationship of antenna frequency and length (see response to argument section above).
In regards to Claims 2 and 3, Murata discloses utilizing wavelengths approximately 50 mm for far-field communication for radio communication and wavelengths of approximately 22,000-44,000 mm for near field communication for magnetic coupling. Murata does not disclose a wavelength of 48 mm or less for the far field radio communication. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a wavelength of 48mm or less for radio communication, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding Claims 6, 7 and 15-17, Murata discloses a power receiving circuit such as a charge storage device (e.g. a battery) (“Thereby, the power supply current flows efficiently through the power receiving coil 15, and the power is efficiently supplied to the in-vivo implantable medical device 10. That is, by arranging a nonmetal-based biocompatible material in a region where power is received in the in-vivo implantable medical device 10, power receiving efficiency is improved. This electric power is stored in the secondary battery 14 and supplied to the electronic circuit components 13 and the like.”); a sensing circuit 21; processing circuitry 13 and radio communication circuitry 31
In regard to Claims 9 and 19, Murata discloses the housing is made of titanium (“The first member 111 is a molded body of a metal-based biocompatible material. For example, the first member 111 is made of Ti (pure titanium) or a Ti alloy such as Ti-6Al-4V. By using such a material for the first member 111, the influence on the living body and the influence from the living body can be suppressed.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Science Insights provides a brief overview of antenna basics and how antenna length is highly dependent on the resonant frequency that is being targeted.
See Robert S. Elliott, "Radiation Patterns of Dipoles, Loops, and Helices," in Antenna Theory & Design , IEEE, 2003, pp.58-78, doi: 10.1109/9780470544174.ch2 for a more in-depth discussion and the equations relating frequency and antenna length.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLEN PORTER whose telephone number is (571)270-5419. The examiner can normally be reached Mon - Fri 9:00-6:00 EST.
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, Unsu Jung can be reached at 571-272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN PORTER/ Primary Examiner, Art Unit 3796
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