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 .
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 5 is 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. With regard to claim 5, “the second portion” lacks antecedent basis (Examiner notes the term finds basis in claim 4, but the claim does not depend from claim 4).
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, 6, 7, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 6 of U.S. Patent No. 11,445,948. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are generally consistent in scope with those of the patent, except that the claims of the patent do not explicitly 1) identify a portion of the first tab as being “a platform” where the circuit board is supported and 2) detail the relationship of the join between the first tab and second tab, wherein the second tab encloses at least a portion of the first surface of the first tab. With regard to the first difference, because the structure of the patent claims includes a circuit board in relation to first and second connector tabs, this inherently includes a portion that supports the circuit board, such that a broadly recited ‘platform’ would be present in the arrangement of the patent claims. With regard to the second difference, a variety of manners to provide a join between sub-elements was known in the art at the time of the invention, such as abutting/flush, surrounding, enclosing, etc. Without a showing of criticality or unexpected results it would have been within the skill level of the art before the effective filing date of the claimed invention to have determined an appropriate relationship between the first tab, the second tab, and the retainer to achieve desired results, including to implement the arrangement with the second tab enclosing at least a portion of the first surface of the first tab, consistent with known practice, to yield predictable results.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Applicant cites several references detailing aspects of sensor/cable configurations. For example, Al-Ali et al. (USPN 7,280,858 - Figure 2) shows details of an oximetry sensor/cable configuration and (USPN 10,617,302) teaches a sensor/cable/processor configuration. Additionally, Lovejoy et al. (USPN 6,061,584) teaches a pulse oximetry sensor that may connect to a cable, with details of the cable shown in Figure 9. Although multiple elements are used in the assembly, there is no disclosure of a connector assembly comprising a first connector tab having a platform and a catch, both positioned on a first surface of the first tab, a second connector tab comprising an opening, and a retainer comprising an arm further comprising a detent, where the arm extends through the second connector tab so that the detent engages the catch of the first connector tab. Hosiden (EP 2991174) in Figures 1 and 8 shows a manner to assemble a connector; however, while the convex portion 11c on the metal piece 10 may have similarities with the claimed retainer having an arm and a detent, the arm passing through an opening of a central piece, Hoiden indicates that a force from pressing portion 11b brings elements into contact with the wall of the corresponding assembly. Thus, a pressure between the elements causes pieces to remain in relation to one another. Additionally, Wu (USPGPub 2005/0003707) teaches a cable assembly with internal circuit modules; however, as seen in Figure 3, the three elements of the assembly (10, 31, 32) do not hold the circuit elements in the claimed manner. Yasukawa et al. (USPN 5,781,511) show details of a sensor and cable connectable to a wrist worn processing device. Armenariz (USPN 5,306,162) shows in Figures 1 and 2, electronics connected with an element 46 with plural pins and detents, having the pins pass through openings of a second element 12, and mating with holes/catches on a third element 14. However, Armanariz does not have separate connector tab elements but instead assembles the circuit and cable directly together. As such, the prior art does not teach or suggest the claimed arrangements.
Claims 10 – 21 are allowed.
Claims 3, 4, and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC FRANK WINAKUR whose telephone number is (571)272-4736. The examiner can normally be reached Mon-Fri 9 am - 6 pm.
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, Chuck Marmor, II can be reached at 571-272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC F WINAKUR/Primary Examiner, Art Unit 3791
Prosecution Insights