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 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:
“the controller unit being configured to relay instructional programs to the modules and units which cause the modules and units to operate, the controller unit receiving a vitals measurement from each sensor module and, upon detection of at least one vitals measurement outside of given parameters, producing at least one corresponding output signal related to the wearer's at least one vitals measurement outside of given parameters” in claims 1, 8 and 19
The closest support is in para 27 of the application specification received on 1/10/2025 (hereafter referred to as AP specification) which recites the following “the sensor modules 120 are controlled by the controller unit which has a processor, a computer memory storage unit, a volatile memory unit, and circuitry connecting the controller unit to the modules and units within the housing structure 110.”
Based on these sections, a controller unit is understood to be a processor, memory, circuitry and/or their equivalents.
“a communication unit that is located within the interior of the housing
structure and receives the at least one corresponding output signal from the controller unit and is adapted to relay the at least one corresponding output signal to the law enforcement official to alert the law enforcement official of the wearer's medical issue via a speaker” in claims 1, 8 and 19
The closest support is in para 28 of AP specification which states:
“One embodiment of the communication unit includes a cellular chip that sends a wireless signal to a receiver or network such as a mobile telephone carrier network or a satellite network. This wireless signal can then be relayed to law enforcement officials on-site or at a designated location. Another embodiment of the communication unit includes a Bluetooth™ chip that sends the wireless signal to a Bluetooth™ receiving device belonging to the law enforcement official, whether on his or her person or to a unit in his or her vehicle.”
Based on these sections, a communication unit as claimed is interpreted as being a cellular chip, a Bluetooth chip, and/or their equivalents.
“a rechargeable power unit located within the interior of the housing structure that is accessed by a port on the exterior of the housing structure, provides power to the vitals monitoring apparatus's other modules and units” in claims 1, 8 and 19
The closest support is in para 46 of the AP specification which states the following:
“The power unit 330 subsequently includes a battery to hold an amount of electrical charge. The battery is charged and recharged by a power subsystem. The power subsystem may comprise known technologies such as a charging port, insertable battery cells, inductive charging (aka wireless or cordless charging), or any other charging system appreciated by those skilled in the art.”
Based on these sections, a rechargeable power unit is interpreted as being battery, a wired inductive charging device, a wireless inductive charging device and/or their equivalents.
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 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 8-18 and 20 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.
First, claim 8 recites a preamble that states the following: “A system including a vitals monitoring apparatus coupled to a set of handcuffs and a specialized external device, the system comprising:”. This is followed by the limitations of “a vitals monitoring apparatus coupled with a set of handcuffs comprising”, “a specialized external device comprising”. It’s not clear if applicant meant to claim an additional vitals monitoring apparatus coupled with an additional set of handcuffs and an additional specialized external device from that recited in the preamble or if this is a typo and applicant meant to refer back to the vitals monitoring apparatus coupled with the set of handcuffs and specialized external device of the preamble. Based on disclosure, the interpretation taken for this examination is the latter or in other words, the interpretation taken for this examination is that the vitals monitoring apparatus coupled with the set handcuffs and specialized external device recited in the body is referring back the structures first recited in the preamble. Regardless if this is applicant’s intention or not applicant should clarify what is being claimed here. If applicant meant to refer back to the structures in the preamble, examiner suggests replacing “a” with “the”, so for example, “a vital monitoring apparatus” could be changed to “the vital monitoring apparatus”. Claims 9-18 are rejected as well based on dependency to claim 8.
Second, claim 8 and 20 recite “a specialized external device” that includes among many other elements includes an element claimed as: “a vitals monitoring apparatus connection method”. There doesn’t appear to be any special definition defining “a vitals monitoring apparatus connection method”. However, para 67 of AP specification states the following regarding this term:
“a vitals monitoring handcuff apparatus connection method (such as Bluetooth™, Near-Field Communication, Zigbee, Z-Wave, Ultra-Wideband, and equivalents (with corresponding hardware) to operably connect with the vitals monitoring handcuff apparatus)”
It seems like applicant is trying to claim a wireless connection. While the claims are read in light of the specification, the specification’s limitations are not read into the claims. This raises questions as to what is being claimed by “a vitals monitoring apparatus connection method” as it can be interpreted it many different ways even in light of the specification. Also, this raises questions on as if any structure is being claimed, because when this limitation is read under broadest reasonable interpretation all that seems to be required is a wireless connection. For this examination any device capable of producing a wireless connection is interpreted as a vitals monitoring handcuff apparatus connection method. Regardless if this is applicant’s intended interpretation, applicant should clarify what is being claimed to make it clear what is being claimed here and what this limitation is claiming structurally (as claims 8 and 20 are apparatus claims). Claims 9-18 are rejected as well based on dependency to claim 8.
Finally, for claim 12 only, claim 12 recites the limitation “the specialized external device having an input method”
Para 67 of AP Specification is most relevant to this limitation which states the following:
“an input method (such as a numpad, small keypad, or series of buttons tied to specific
functions)”
Again, this doesn’t appear to be a special definition, but unlike claim 8 and 20 this appears to be specific input devices without the inclusion of signals like a connection. However, since the claims are interpreted under broadest reasonable interpretation and this isn’t a special definition, there are multiple ways this limitation can be interpreted. For this examination, an input method is interpreted as a button or series of buttons which are capable to record a user’s input. Regardless if this is the applicant’s interpretation or not, applicant should clarify what is being claimed here.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Regarding claims 8-18 and 20:
The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claims 8 and 20 recite “a vitals monitoring apparatus connection method” which as explained under 35 USC 112(b) rejection above under broadest reasonable interpretation is understood to be wireless connections which is inclusive of transient signals. Since transient signals are not part of the four categories of patent eligible subject matter, claim 8 and 20 claim subject material that is not eligible. Claims 9-18 are rejected under 35 USC 101 from dependency on claim 8
Regarding claims 19-20:
The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because claim 19 recites “an application” which is understood to essentially be software (i.e. which includes both transient and non-transient signals).
Claim 19 further recites “the companion application installed on at least one of the law enforcement official's personal device and a piece of law enforcement equipment”. It is not completely clear if the software is specifically installed on non-transitory computer readable media or storage. For example, claim 19 never recites the application (i.e. software code) is stored on non-transitory storage and similarly claim 20 doesn’t specify if the application is stored on non-transitory storage either. This is important because with the software being on non-transitory storage, broadest reasonable interpretation includes an interpretation where both transitory signals and non-transitory signals from the application are being claimed. Transitory signals are not within the four categories of patent eligible subject matter.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12183178 hereafter known as Pat ‘178. Although the claims at issue are not identical, they are not patentably distinct from each other because Pat ‘178 anticipates all the limitations as recited in the claim.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Pat ‘178. Although the claims at issue are not identical, they are not patentably distinct from each other because Pat ‘178 obviates all the limitations as outlined below.
Claim 1 of Pat ‘178 discloses all the limitations of claim 1 of this application on which claim 7 is dependent on as discussed above.
However, Claim 1 of Pat ‘178 fails to disclose “wherein the housing structure of the vitals monitoring apparatus is permanently affixed to the set of handcuffs”.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify claim 1 of Pat ‘178 by permanently affixing the housing structure to the handcuffs (i.e. thereby reciting claim 7) because there are only a limited number of ways of connecting the housing structure and the handcuffs (i.e. in non-attached manner, releasably attached or permanently affixed) and permanently affixed is one of those limited ways.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17520250 (reference application) hereafter known as AP ‘250. Although the claims at issue are not identical, they are not patentably distinct from each other because AP ‘250 anticipates all the limitations recited in the claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending AP ‘250. Although the claims at issue are not identical, they are not patentably distinct from each other because AP ‘250 obviates all the limitations recited in the claim.
Claim 1 of AP ‘250 discloses all the limitations of claim 1 of this application as discussed above.
However, Claim 1 of AP ‘250 fails to disclose “wherein the housing structure of the vitals monitoring apparatus is permanently affixed to the set of handcuffs” as recited by claim 7.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to modify Claim 1 of AP ‘250 by permanently affix the housing structure to the handcuffs (i.e. thereby reciting claim 7) because there are only a limited number of ways of connecting the housing structure and the handcuffs (i.e. in non-attached manner, releasably attached or permanently affixed) and permanently affixed is one of those limited ways.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-6 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 is the broadest claim of this group of claims. Claim 2 recites a vitals monitoring apparatus coupled with a set of handcuffs. The closest prior art is Pat ‘178. Pat ‘178 outlines all the limitations of claim 1 (on which claim 2 is dependent on) as outlined in the rejection above. However, Pat ‘178 fails to disclose “the controller unit creates a profile, assigns an identifier to the profile, records data including the received sensor measured vitals measurements to the profile along with timestamps for the vitals measurements, and records any medical issue that occurs during the wearer's time wearing the activated vitals monitoring apparatus.” Furthermore, nothing in the prior art when viewed with Pat ‘178 obviates this deficiency. It is important to note that the missing limitation does not by itself define the invention over the prior art. Rather, it is the missing limitation in combination with all the limitations of claim 2 (including those limitations imparted through dependency from claim 1) together that defines the invention over the prior art. Therefore, the combination of claimed limitations of claim 2 (including those limitations imparted through dependency from claim 1) is neither anticipated, nor obviated in view of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Rebro et al (US-20230141400) hereafter known as Rebro. This is the published specification of AP 17520250 which is still currently pending and has undergone claim amendments.
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SEBASTIAN X LUKJAN
/SXL/ Examiner, Art Unit 3792
/NIKETA PATEL/ Supervisory Patent Examiner, Art Unit 3792
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