DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s preliminary amendment filed on 11/22/2024 is acknowledged.
Claims 2-11 are pending for examination. Claim 1 is cancelled.
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 2-11 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. Claims that depend directly or indirectly from claim 2 is/are also rejected due to said dependency.
The terms “substantially” in claim 2 are relative terms which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what degree of variance(s) of the properties is/are considered as “substantially aligns with the curved surface”, “substantially uninterrupted top convex surface” and “substantially less than a length”.
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 2-4 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5 and 8 of U.S. Patent No. 9,277,880. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 5 and 8 of ‘880 anticipate claims 2-4 and 11 of present application.
Claims 5-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-8, 10, 14, and 16 of U.S. Patent No. 9,277,880 in view of Kiani (USPGPUB 2005/0234317 – applicant cited). In regard to claims 5-10 of present application, claims 1, 5-8, 10, 14, and 16 of ‘880 recite all the claimed limitations except wireless communications with a monitor device configured to process at least one signal stream from the noninvasive optical sensor to determine output values for one or more physiological parameters and one of the one or more physiological parameters comprises oxygen saturation. Kiani teaches a pulse oximetry system (Fig. 7 and associated descriptions) comprises a pulse oximetry sensor (element 720, Fig. 7 and associated descriptions) with a wireless adapter (elements 600 or 775, Fig. 7 and associated descriptions) which provides wireless communications with a monitor device (element 780, Fig. 7 and associated descriptions; [0038]) configured to process at least one signal stream from the noninvasive optical sensor to determine output values for one or more physiological parameters (raw data, [0044]) and one of the one or more physiological parameters comprises oxygen saturation ([0044]). It would have been obvious to one having ordinary skill in the art at the time the invention was made to substitute the cable communication and associated processing functions of the sensor (claims 1, 5-8, 10, 14, and 16 of ‘880) with the wireless communication and remote monitor processing and determining oxygen saturation from the optical signals as taught by Kiani, since both sensors are optical/ oximetry devices and one of ordinary skill in the art would have recognized that wireless communication with remote processing are alternative equivalent way of cable communication with remote processing. The rationale would have been the simple substitution of one known, equivalent element for another to obtain predictable results (obvious to substitute elements, devices, etc.), KSR, 550, U.S. at 417.
Allowable Subject Matter
Claim 2 would be allowable if overcome the 35 USC 112 second paragraph rejection and the double patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter: Sakai (USPN 5,131,391 – applicant cited) teaches an oximeter sensor with a housing (Fig. 5) comprises an optical source configured to emit optical radiation into a tissue at a measurement site on a patient (elements 18/20 and body surface 12, Fig. 5); and a first heat insulating shell housing the optical source (elements 22/26, Fig. 5) the first heat insulating shell including: a top surface (top surface of elements 70 or 26, Fig. 5); a bottom surface opposite the top surface (bottom surface of element 20/26 , Fig. 5); a cavity extending from the top surface to the bottom surface (cavity holding elements 14/16/18/20/22, Fig. 5); a heat sink comprising heat conducting material (elements 70 and/or 72, Fig. 5); wherein heat produced by the optical source is dissipated via the heat sink through said cavity (Fig. 5); and one or more fins that form the outer surface of the heat sink (element 72, , Fig. 5). Xiao et al. (USPGPUB 2009/0129102 – applicant cited) teaches a heat dispending structure comprises a heat sink (element 100, Figs. 1 and 2 and [0014-0020]) integrated with a housing (element 10, Figs. 1 and 2 and [0014-0020]) which encloses a LED module (element 200, Fig. 2 and [0014-0020]), the heat sink integrated into a curved outer surface of housing (Figs. 1 and 2 and [0018]) and including one or more curved fins (fins 20, Figs. 1 and 2 and [0018]). However, the prior art of record does not teach or suggest “a first heat insulating shell housing the optical source, the first heat insulating shell including: a top surface; a bottom surface opposite the top surface; a cavity extending from the top surface to the bottom surface, wherein the top surface includes a curved surface at a periphery of said cavity; a heat sink comprising heat conducting material and disposed at least partially within said cavity, the heat sink having an outer convex surface that .
Conclusion
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/CHU CHUAN LIU/Primary Examiner, Art Unit 3791
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