DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
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, 3-6, 8-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hashimshony et al (US 8,721,565) cited by Applicant.
Regarding claim 1, Hashimshony et al teach an electromagnetic (EM) probe (Fig. 1F, 100) for monitoring at least one biological tissue (Fig. 1G, 118), comprising:
a dome or cup (Fig. 1F, 122 & Fig. 13C, 230; Col. 12, lines 32-41) shaped cavity having an opening and an interior volume;
a circumferential flange (Tip 120 or 126) formed substantially around the dome shaped cavity, in proximity to the opening;
at least one layer of a material or the like of metal ring frame (Fig. 3A, 110 & 112), for absorbing electromagnetic radiation, covering an inner surface of the circumferential flange [through portion of Inner Diameter 112]; and
an emitting element (Fig. 12, 270 & 272) configured for at least one of emitting and capturing EM radiation and electrically connected (Fig. 13C, 232) to at least one of an EM receiver and an EM transmitter (270 & 272).
Regarding claim 3, Hashimshony et al teach that the circumferential flange (Tip 120 or 126) is an extension of the dome shaped cavity (122).
Regarding claim 4, Hashimshony et al teach that the circumferential flange is curved, following a curvature of the dome shape cavity (Fig. 3B, 122).
Regarding claim 5, Hashimshony et al teach that the circumferential flange has a convex shape [due to tip covering outer surface] and the dome shaped cavity has a concave shape [due to curving of inner surface].
Regarding claim 6, Hashimshony et al teach that the dome shaped cavity and the circumferential flange are made of a conductive material, such of sensor (Col. 4, lines 14-19).
Regarding claim 8, Hashimshony et al teach that the opening [Inside of 122] is formed between the material for absorbing electromagnetic radiation, covering lateral walls of the dome shaped cavity and the circumferential flange, made as sensor (Col. 4, lines 14-19).
Regarding claim 9, Hashimshony et al teach that an inner wall of the dome shaped cavity facing the opening is uncovered by the material [to receive or transmit EM].
Regarding claim 10, Hashimshony et al teach that an exterior surface of the dome shaped cavity and the circumferential flange is covered by the material (Fig. 3A, 110).
Regarding claim 11, Hashimshony et al teach that an entire of the exterior surface of the dome shaped cavity and the circumferential flange extending to an rim of the circumferential flange is covered by the material (Fig. 3A, 110).
Regarding claim 12, Hashimshony et al teach that a portion of a rim of the circumferential flange, sandwiched between the material (Fig. 3A, 110) covering the inner surface of the circumferential flange and the material covering an exterior surface of the circumferential flange.
Regarding claim 14, Hashimshony et al teaches a method of forming an effective sensor-to-tissue contact with electromagnetic (EM) probe (Fig. 1F, 100) for monitoring at least one biological tissue (Fig. 1G, 118), comprising:
providing a dome or cup (Fig. 1F, 122 & Fig. 13C, 230; Col. 12, lines 32-41) shaped cavity having an opening and an interior volume, and including a circumferential flange (Tip 120 or 126) formed substantially around the dome shaped cavity, in proximity to the opening;
applying at least one layer of a material or the like of metal ring frame (Fig. 3A, 110 & 112), for absorbing electromagnetic radiation, over an inner surface of the circumferential flange [through portion 112];
placing an emitting element (Fig. 12, 270 & 272) configured for at least one of emitting and capturing EM radiation; and
electrically connecting (Fig. 13C, 232) the emitting element to at least one of an EM receiver and an EM transmitter (270 & 272).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7, 13 and 17-22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hashimshony et al.
Regarding claim 7, 13 and 17-22, Hashimshony et al teach an electromagnetic (EM) probe (Fig. 1F, 100) for monitoring at least one biological tissue (Fig. 1G, 118), including a dome or cup (Fig. 1F, 122 & Fig. 13C, 230; Col. 12, lines 32-41) shaped cavity having an opening and an interior volume, which reads on applicants’ claimed invention.
However, Hashimshony et al do not disclose that the at least one layer of the material further covers inner/lateral walls of the dome shaped cavity and the flange.
It would be obvious to one of ordinary skill in the art at the time the invention was made to modify the probe of Hashimshony et al to provide the at least one layer of the material further covers inner walls of the dome shaped cavity, wherein the material is applied over lateral walls of the dome shaped cavity and the circumferential flange, wherein the material is applied to cover the lateral walls of the dome shaped cavity and the circumferential flange for reducing a diameter of opening dome shaped cavity without the applied material, wherein no material is applied to an inner wall of the dome shaped cavity facing the opening, wherein the material is applied to an exterior surface of the dome shaped cavity and the circumferential flange, and wherein an entire of the exterior surface of the dome shaped cavity and the circumferential flange extending to an rim of the circumferential flange is covered by the material since it is known in the art that the probe has a horn antenna (Fig. 13C, 230) to transmit and receive the RF microwave reflected from the tissue (Col. 12, lines 32-45) where some absorbing material are needed for inside and outside coating to prohibit any standing wave from the reflected wave to occur in the probe for proper analysis of the reflected wave.
Claim 15 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Hashimshony et al in view of Scherzinger et al (US 6,977,498).
Regarding claim 15, Hashimshony et al teach a method of forming an effective sensor-to-tissue contact with electromagnetic (EM) probe (Fig. 1F, 100) for monitoring at least one biological tissue (Fig. 1G, 118), including a dome or cup (Fig. 1F, 122 & Fig. 13C, 230; Col. 12, lines 32-41) shaped cavity having an opening and an interior volume, which reads on applicants’ claimed invention.
However, Hashimshony et al do not disclose that the dome shaped cavity is formed from layers of a printed circuit board (PCB).
Scherzinger et al teach a probe (Fig. 1, 11) formed with printed circuit boards (16 & 17), in order to prevent any risk of breaking, resulting in a long life, for the probe being placed on and lifted off a test body (Col. 2, lines 1-10).
It would be obvious to one of ordinary skill in the art at the time the invention was made to modify the method of forming the probe of Hashimshony et al by applying the probe formed with PCB, as taught by Scherzinger et al, in order to prevent any risk of breaking, resulting in a long life, for the probe being placed on and lifted off a test body or tissue.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2 and 16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 13 of prior U.S. Patent No. 12,207,900 B2. This is a statutory double patenting rejection.
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 1, 3-15 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,207,900 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because pending claims 1, 3-15 and 17-20 are of a broader scope and are therefore anticipated by the patented claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 9,675,251. Although the claims at issue are not identical, they are not patentably distinct from each other because it is merely an obvious variation of the wording or an obvious material reduction of an invention claimed in U.S. Patent No. 9,675,251, especially in view of independent Claims 1 and 14 of current application with respect to independent Claims 1 and 22 of U.S. Patent No. 9,675,251.
Conclusion
This is a continuation of applicant's earlier Application No. 18/217,637. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONIFACE N NGANGA whose telephone number is (571)270-7393. The examiner can normally be reached Mon. - Thurs. 5:30 am - 4:00 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, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BONIFACE N NGANGA/Primary Examiner, Art Unit 3797