DETAILED ACTION
This action is pursuant to the claims filed on August 21, 2025. Claims 21-40 are pending. Claims 1-20 is/are canceled. A first action on the merits of claims 1-20 is as follows.
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 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.
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 21, 28 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 10,610,157 (hereinafter “Patent ‘157”). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to independent claim 21, Patent ‘157 claims an electronic watch (claim 1: an electronic watch) comprising:
a touch-sensitive display (claim 1: a touch-sensitive display);
a housing (claim 1: a housing);
a crown (claim 1: a crown) coupled to the housing and configured to receive a rotational input and defining a first electrode (claim 5: the crown is configured to rotate… and the third electrode is a surface of the crown body);
a carrier formed from a transparent material (claim 1: a carrier formed from a transparent material);
a light emitter and a light receiver (claim 1: optical sensor; the Examiner notes that an optical sensor broadly covers the light emitter and light receiver);
a second electrode positioned on the carrier (claim 1: a second electrode positioned directly on the carrier);
a processor (claim 1: a processor) configured to determine an electrocardiogram using the signals from the first and second electrodes (claim 1: the processor configured to determine an electrocardiogram using the first voltage, the second voltage, and the third voltage).
Independent claims 28 and 35 claim similar features and therefore, claim 1 of Patent ‘157 anticipates or is obvious over the instant claims 28 and 35.
Claims 21, 28 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 10,987,054 (hereinafter “Patent ‘054”). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to independent claim 21, Patent ‘054 claims an electronic watch (claim 1: an electronic watch) comprising:
a touch-sensitive display (claim 1: a touch-sensitive display);
a housing (claim 1: a housing);
a crown (claim 7: a button cap) coupled to the housing and configured to receive a rotational input and defining a first electrode (claim 7);
a carrier formed from a transparent material (claim 1: a carrier formed from a transparent material);
a light emitter and a light receiver (claim 1: a light emitter and a light receiver);
a second electrode positioned on the carrier (claim 1: a second electrode positioned on the carrier);
a processor (claim 1: a processor) configured to determine an electrocardiogram using the signals from the first and second electrodes (claim 1: the processor configured to determine an electrocardiogram using the first voltage, the second voltage, and the third voltage; claim 7).
Independent claims 28 and 35 claim similar features and therefore, claim 1 of Patent ‘054 is obvious over the instant claims 28 and 35.
Claims 21, 28 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 11,432,766 (hereinafter “Patent ‘766”) and further in view of Kagasawa (U.S. PGPub. No. 2016/0338598). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to independent claim 21, Patent ‘766 claims an electronic watch (claim 1: an electronic watch) comprising:
a touch-sensitive display (claim 1: a touch-sensitive display);
a housing (claim 1: a housing);
a crown (claim 1: crown) coupled to the housing and configured to receive a rotational input and defining a first electrode (claim 4);
a carrier formed from a transparent material (claim 1: a transparent carrier);
a second electrode positioned on the carrier (claim 1: a second electrode positioned on the carrier);
a processor (claim 1: a processor) configured to determine an electrocardiogram using the signals from the first and second electrodes (claim 1: the processor configured to determine an electrocardiogram using the first voltage, the second voltage, and the third voltage; claim 7).
Independent claims 28 and 35 claim similar features and therefore, claim 1 of Patent ‘766 is obvious over the instant claims 28 and 35.
However, Patent ‘766 does not claim a light emitter and a light receiver.
Kagasawa discloses a wearable watch similar to the Patent ‘766 comprising an optical sensor which inherently requires a light emitter and a light receiver for detecting pulse wave of a wearer ([0081]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Patent ‘766 and incorporate the light emitter and the light receiver as taught by Kagasawa as doing so allows for pulse rate detection ([0081]).
Claims 21, 28 and 35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 36 of copending Application No. 18/075,212 and further in view of Kagasawa (U.S. PGPub. No. 2016/0338598). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to independent claim 21, Application ‘212 claims an electronic watch (claim 36: a wearable electronic device) comprising:
a touch-sensitive display (claim 36: a touch-sensitive display);
a housing (claim 36: a housing);
a crown (claim 36: a button cap) coupled to the housing and configured to receive a rotational input and defining a first electrode (claim 7);
a carrier formed from a transparent material (claim 36: a carrier comprising a transparent material);
a light emitter and a light receiver (claim 36: a light emitter and a light receiver);
a second electrode positioned on the carrier (claim 36: a second electrode positioned on the carrier); and
However, Application No. ‘212 fails to recite a processor as claimed.
Kagasawa discloses a wearable watch similar to the Application ‘212 comprising a processor (processing element 124 in Fig. 2) configured to process signals from the sensors which include optical sensors and electrodes to provide pulse rate and electrocardiogram information (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the invention of Application ‘212 and provide a processor as taught by Kagasawa for processing information from the light emitter and light receiver and electrodes to provide pulse rate and electrocardiogram information.
Independent claims 28 and 35 claim similar features and therefore, claim 26 of Application ‘212 is obvious over the instant claims 28 and 35.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 28 and 35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/118,930 and further in view of Ely (U.S. PGPub. No. 2015/0041289). Although the claims at issue are not identical, they are not patentably distinct from each other.
In regards to independent claim 21, Patent ‘930 claims an electronic watch (claim 21: a wearable electronic device) comprising:
a touch-sensitive display (claim 21: a touch-sensitive display);
a housing (claim 21: a housing);
a carrier formed from a transparent material (claim 21: a carrier comprising a transparent material);
a light emitter and a light receiver (claim 21: a light emitter and a light receiver);
a second electrode positioned on the carrier (claim 21: a second electrode positioned on the carrier); and
a processor (claim 1: a processor).
However, Application No. ‘930 fails to recite a crown as claimed.
Ely discloses a wearable watch similar to the Application ‘930 comprising a crown (tactile switch assembly 110; [0019]: “the tactile switch assembly may include a button that forms a crown for the watch”) as one of three electrocardiogram electrode and a processor configured to determine an electrocardiogram based upon the electrocardiogram electrodes (processing element 124 in Fig. 2, [0033]-[0035],[0058]-[0059]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the invention of Application ‘212 and provide a crown and configured the processor as taught by Ely for obtaining a signal through the crown and configure the processor to process signals from the electrodes to provide an electrocardiogram information.
Independent claims 28 and 35 claim similar features and therefore, claim 1 of Patent ‘054 is obvious over the instant claims 28 and 35.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 21-40 would be allowable if proper terminal disclaimer is filed disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of parent patents.
During the search of the prior art, Ely (U.S. PGPub. No. 2015/0041289), and further in view of Kegasawa (U.S. PGPub. No. 2016/0338598) have been found to be closest to the claimed invention.
In regards to independent claim 21, Ely discloses an electronic watch (watch 100 in Fig. 1), comprising:
a touch-sensitive display (display 116 is configured as a multi-touch display screen via capacitive sensing elements, [0030]);
a housing (enclosure 114) at least partially enclosing the touch-sensitive display (opening of the enclosure 114 receives the display 116 as shown in Fig. 1);
a crown (tactile switch assembly 110; [0019]: “the tactile switch assembly may include a button [148] that forms a crown for the watch”) coupled to the housing (the assembly 110 extends from the side of the enclosure 114) and configured to receive a rotational input ([0047]: the button 148 (or other button) may be rotatable to provide a first input), the crown defining a first electrode ([0040]: the button 148 includes an outer surface 232 that is configured to receive a user input);
a carrier positioned at a rear of the housing (the rear portion of the enclosure 114 reads on the claimed carrier);
a second electrode ([0058]: sensors connected to a user’s wrist may act as a lead for the ECG) and configured to measure a first voltage (the connection between the user’s wrist may act as a lead for the ECG; the Examiner notes that in order for the sensor to come into contact with a user’s wrist, the sensor is positioned either along the rear surface of enclosure 114 or the band of the watch 100);
a processor operably coupled to the first electrode and the second electrode and configured to determine an electrocardiogram based at least in part on the first signal from the first electrode and a second signal from the second electrode (processing element 124 in Fig. 2, [0033]-[0035],[0058]-[0059]).
However, Ely fails to disclose a carrier formed from a transparent material positioned at a rear of the housing where a light emitter configured to emit light through the carrier and toward a body; a light receiver configured to receive light reflected from the body; a second electrode positioned on the carrier.
Kegasawa (U.S. PGPub. No. 2016/0338598) disclose an electronic watch (Fig. 14A-14B) comprising a carrier (a light transmissive member 532 as best shown in Fig. 16, [0173]) at a rear of a housing (measurement apparatus main body section 2G), a light emitter and a light receiver ([0081]: pulse wave detector 53 includes pulse wave sensor 531 configured to detect a user’s pulse wave which emits and detects light via the light transmissive member 532). Therefore, the concept of incorporating electrode(s) along the rear surface of the housing to determine ECG signal and pulse wave signal is known in the art (abstract).
However, as shown in Fig. 18, Kagasawa only discloses that an electrode (542) is only disposed on the rear of the housing (body section 2G) and not on the carrier (light transmissive member 532). There would be no motivation to modify the size of the carrier assembly (53 in Fig. 16) of Kegasawa so that the entire carrier member as shown in Fig. 16 is formed from a transparent material of member 531. Furthermore, there would be no motivation to modify the position of electrodes to be directly on the transparent carrier/monolithic transparent element as doing so prevents the transparent carrier to be used for transmitting and receiving light for pulse wave detection.
Rothkopf (U.S. PGPub. No. 2016/0058375) discloses a watch (wearable electronic device in Fig. 6) comprising a housing (housing 600 shown in Fig. 7); a display (display disposed within the housing 601, [0120]); a transparent carrier ([0201]: rear cover 608 as best shown in Fig. 16 formed from an optically transparent material and is configured to be positioned within the opening in the house 601, [0201]); and a processor (processing unit 102, [0198]). While Rothkopf discloses providing two electrodes on a rear surface of the watch (electrodes 1601 and 1602 as shown in Fig. 16), it does not disclose that these electrodes are positioned on the transparent carrier as they are disposed on the rear surface of the housing member.
While Rothkopf is clear that 1611-1613 in Fig. 16 are array of light sources and 1614 in Fig. 16 is a detector configured for optical transmission and detection to estimate or compute a health metric or other physiological phenomena ([0191]), Rothkopf is even more clear that the electrodes (1601 and 1602 in Fig. 16) are disposed on the rear surface of the device and not along the transparent carrier (rear cover 608, [0196]). Rothkopf contemplates that the electrodes may be placed on locations other than the rear surface of the watch such as the top surface of the watch ([0197]) but does not mention being disposed on the transparent carrier.
Taken together, there would be no motivation from Rothkopf to provide the electrodes on the transparent carrier or a transparent portion of the carrier as required in independent claims 21, 28, or 35.
Masimo (WO 2005/092182) discloses a watch (1 in Fig. 1) comprising a housing member (housing 2); a display (display 10); a transparent carrier (a cover glass 23, [0055]); and a processor (data processing part 9, [0059]). While Masimo discloses providing two electrodes on a rear surface of the watch (electrodes 7a & 7b disposed on element 4a as shown in Fig. 5), it does not disclose that these electrodes are positioned on the transparent carrier (23). In light of Fig. 5, there would be no motivation to provide electrodes 7a and 7b along the surface of the transparent carrier (23) or for the transparent carrier to extend below the surface of the electrodes.
Similarly, Paulke et al. (WO 2017/165532) discloses biosensor module (biosensor module 100 in Fig. 1F) comprising electrodes (120). However, Paulke does not disclose a transparent carrier as claimed.
Taken together, the concept of providing an electrode along a carrier formed from a transparent material (as claimed in independent claim 21), transparent carrier (as claimed in independent claim 28), a second transparent member coupled to the housing and at least partially defining a rear exterior surface (as claimed in independent claim 35) of an electronic watch is not disclose, taught or suggested in the prior art.
Accordingly, claims 22-27, 29-34, and 36-40 claim as allowable as being dependent on independent claims 21, 28 and 35, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUNHWA KIM whose telephone number is (571)270-1265. The examiner can normally be reached 9AM-5:30PM.
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/EUN HWA KIM/Primary Examiner, Art Unit 3794 7/31/2026
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