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.
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(s) is/are: “a measuring unit configured to apply a current to the first and second input electrodes and detect a voltage from the first and second output electrodes to measure a body impedance of the user,” in claim 1, which has no corresponding structure; “a current provider configured to apply the current to the first and second input electrodes,” in claim 2, which has not corresponding structure; “a voltage detector configured to detect the voltage from the first and second output electrodes,” in claim 2, which has no corresponding structure; “an impedance calculator configured to calculate the body impedance from the current and the voltage,” in claim 2, which has no corresponding structure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 1, the claim language “a measuring unit configured to apply a current to the first and second input electrodes and detect a voltage from the first and second output electrodes to measure a body impedance of the user” does not appear to be described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, there is a lack of written description of what the corresponding structure is, and a lack of evidence that Applicant had possession. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter canceled from the claim(s).
For claim 2, the claim language “a current provider configured to apply the current to the first and second input electrodes” does not appear to be described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, there is a lack of written description of what the corresponding structure is, and a lack of evidence that Applicant had possession. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter canceled from the claim(s).
For claim 2, the claim language “a voltage detector configured to detect the voltage from the first and second output electrodes” does not appear to be described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, there is a lack of written description of what the corresponding structure is, and a lack of evidence that Applicant had possession. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter canceled from the claim(s).
For claim 2, the claim language “an impedance calculator configured to calculate the body impedance from the current and the voltage” does not appear to be described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, there is a lack of written description of what the corresponding structure is, and a lack of evidence that Applicant had possession. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter canceled from the claim(s).
Dependent claim(s) 2-4 fail to cure the deficiencies of independent claim 1, thus claim(s) 1-4 is/are rejected under 35 U.S.C. 112(a).
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(s) 1-4 is/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.
For claim 1, the claim language “a measuring unit configured to apply a current to the first and second input electrodes and detect a voltage from the first and second output electrodes to measure a body impedance of the user” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, the metes and bounds of the claim language cannot be determined since it is unknown what the structure is. The claim is examined as meaning anything that can apply a current to the first and second input electrodes and detect a voltage from the first and second output electrodes to measure a body impedance of the user.
For claim 2, the claim language “a current provider configured to apply the current to the first and second input electrodes” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, the metes and bounds of the claim language cannot be determined since it is unknown what the structure is. The claim is examined as meaning anything that can apply the current to the first and second input electrodes.
For claim 2, the claim language “a voltage detector configured to detect the voltage from the first and second output electrodes” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, the metes and bounds of the claim language cannot be determined since it is unknown what the structure is. The claim is examined as meaning anything that can detect the voltage from the first and second output electrodes.
For claim 2, the claim language “an impedance calculator configured to calculate the body impedance from the current and the voltage” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f), but the corresponding structure could not be found. Therefore, the metes and bounds of the claim language cannot be determined since it is unknown what the structure is. The claim is examined as meaning anything that can calculate the body impedance from the current and the voltage.
Dependent claim(s) 2-4 fail to cure the ambiguity of independent claim 1, thus claim(s) 1-4 is/are rejected under 35 U.S.C. 112(b).
Allowable Subject Matter
Claim(s) 1-4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 112(b), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
U.S. Patent Application Publication No. 2016/0073814 to Lapetina et al. discloses a method of measuring a body component of a user by a body component measuring apparatus (Abstract) including a band (140) (Fig. 1A) (para [0037]) configured to be worn on the user (as can be seen in Fig. 1A), a first electrode (“first electrical contact,” para [0037]) which are disposed on an inside surface of the band (para [0037]) and configured to contact a wrist of the user (para [0037]), a second electrode (“second electrical contact,” para [0037]) which are disposed on an outside surface of the band (para [0037]), a measuring unit configured to apply a current to the first second electrodes and detect a voltage from the first and second electrodes to measure a body impedance of the user (para [0040]), an acceleration sensor (para [0065]), and configured to sense whether the band is worn on a left wrist or on a right wrist by using a signal received according to a movement of the user (para [0041]), a memory (“memory,” para [0084]), the method comprising: sensing whether the band is worn on the left wrist or on the right wrist by using the signal received according to the movement of the user (para [0041]); providing the current between the first input electrode and the second input electrode (para [0040]); measuring the voltage between the first output electrode and the second output electrode (para [0040]); and determining the body impedance of the user based on the measured voltage (para [0040]).
However, the prior art of record does not disclose and does not render obvious the ordered combination of features recited in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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