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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 7/9/2026 is acknowledged. Claims 11-20 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim.
Claim Interpretation
The pending claims are apparatus claims and interpretation is governed by the following principles of law:
"To anticipate a claim, a reference must disclose every element of thechallenged claim and enable one skilled in the art to make the anticipatingsubject matter." PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,1566 (Fed. Cir. 1996).
"[T]he patentability of apparatus or composition claims depends onthe claimed structure, not on the use or purpose of that structure." CatalinaMktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,809 (Fed. Cir.2002).
"It is well settled that the recitation of a new intended use for an oldproduct does not make a claim to that old product patentable." In reSchreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
As such, any recited intended use or purpose, while considered, does not bear patentable weight. As examples, providing “greater accuracy” or “enhances diagnostics” or “to improve diagnostics” or “for improved comfort and fit” or “for enhanced data transfer” or “to ensure comfort and compatibility” are considered natural/inherent byproducts of the recited STRUCTURE in the claims. If the prior art discloses the recited structure, then the structure can also perform the intended use/purpose.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tran (US 2015/0125832).
Regarding claims 1 and 2, Tran discloses a wearable neurological monitoring device for diagnosing sleep apnea (see abstract and par. 0373). The device includes a modular structure configurable as a wristband (par. 0050). The device further includes a plurality of sensors 40, including an EEG sensor, an accelerometer, and a blood oxygen sensor, among others (par. 0050). The modular structure includes a processing unit (par. 0219) that is configured to collect signals from the sensors and integrate and analyze the collected signals using algorithms (par. 0050, 0219-0230). Diagnostic outputs are wirelessly transmitted to external devices (par. 0050, par. 0219-0235). As described in par. 0050, various sensors may be added and removed from a modular sensor interface without disrupting functionality.
Regarding claims 4 and 10, the wristband is expandable and made of flexible plastic, which is considered hypoallergenic (par. 0053).
Regarding claims 5 and 8, the wristband is a mobile application able to operate to display or announce real-time outputs, send alerts and provide health recommendations, if so desired by a user (par. 0053, 0224, 0225).
Regarding claim 6, the communication system supports cellular, Wi-Fi and Bluetooth (par. 0218-0219).
Regarding claim 7, the data is sent to a clou-based platform that can be accessed by healthcare professionals (fig. 6B).
Regarding claim 9, the processing unit is configured to execute algorithms, as described above. The algorithms can be FOR detecting epilepsy, Parkinson’s, sleep apnea, stress and anxiety, if so desired by a user (i.e., intended use of the algorithms).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tran in view of Akay (US 2005/0240086).
Tran discloses that the device includes a battery that lasts for at least 12 hours (par. 0459). Tran is silent as the battery being rechargeable. Akay discloses an analogous device for health monitoring and that the device includes a rechargeable battery that last at leas 12 hours (par. 0031). Therefore, it would have been obvious to one of ordinary skill in the art before the applicant’s invention to modify the battery of Tran to be rechargeable as taught by Akay since Akay teaches that non-rechargeable and rechargeable batteries are interchangeable in wearable health monitors (par. 0031).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892, specifically US 2019/0113774 and US 2018/0303190 which disclose modular, wearable sensor structures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric D Bertram whose telephone number is (571)272-3446. The examiner can normally be reached Monday-Friday 8am-6pm Central Time.
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, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Eric D. Bertram/Primary Examiner, Art Unit 3796
Prosecution Insights