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 .
Notice to Applicant
This communication is in response to application filed 2/7/2025. It is noted that application is a continuation of 18/638,854 filed 04/18/2024 (US Patent No. 12254981)
which is a continuation of 17/045,687 filed 10/06/2020 (US Patent No. 11990237) which is a 371 of PCT/EP2019/058853 filed 04/08/2019 and claims priority to Provisional Application No. 62/654,218 filed 04/06/2018. Claims 19-38 are pending.
Terminal Disclaimer
The terminal disclaimer filed on March 4, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent Nos. 12,254,981 and 11,990,237 has been reviewed and is NOT accepted for the following reasons:
The applicant name on the TD form isn't the same on the ADS. No additional fee is required with the resubmission.
The terminal disclaimer identifies a party who is not the applicant (only for applications filed on or after September 16, 2012; See FP 14.26.10):
For cases filed on/after 9/16/12, 37 CFR 1.321 specifies that the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant's ownership.
A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the "new" applicant in the applicant information, and is underlined since it is new, and (3) a 3.73(c) statement showing chain of title to the new applicant. Along with the § 1.46(c) request we need a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless they file a TD that is signed by the applicant.
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.
Claim19-38 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,990,237 and U.S. Patent No. 12,254,981.
Although the claims at issue are not identical, they are not patentably distinct from each other because the ’237 patent claims a method including: receiving a metadata block (MDB) from a self-describing module, the MDB including identification (ID) data and corresponding configuration data; associating the ID data from the MDB with ID data of a plurality of subsystems of a medical monitoring device; and updating configuration data of at least one subsystem based on the association. Independent claims 19, 27, and 35 of the instant application recite corresponding system/device implementations of the same invention, including a self-describing module transmitting an MDB and a monitoring device and/or mount programmed to receive the MDB, associate subsystem ID data, and update subsystem configuration data. The differences between the instant claims and the patented claims are limited to statutory class and nominal recitation of hardware performing the same functions, which do not render the claims patentably distinct. A device or system configured to perform the patented method would have been an obvious implementation of that method. The ’981 patent, which is directed to the same invention family and discloses corresponding system embodiments using MDB-based ID association and configuration updates, further evidences that the instant claims are obvious variants of the same inventive concept.
Potential Reasons for Allowance
Regarding a potential grounds of rejection under 35 USC 101, the pending
claims integrate the judicial exception into a practical application in light of MPEP 2106.
The claims are directed to a specific improvement to the way computers operate. The claims recite a specific ordered combination of steps which provide a technical solution to improve a specific technology (implementing a self-describing module in a specific way by receiving and associating specific types of data and then updating the configuration data of at least one subsystem of the monitoring device mount). This improvement in the monitoring device mount technology integrates the judicial exception into a practical application that will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
Gaines (20120226768) the closest domestic prior art of record teaches in
para. [0010] a device integration server in communication with the wireless relay modules for receiving data packets from the wireless relay modules including information provided by the medical devices. This information includes identification of an associated medical device and data of the medical device... and in para. [0011] The data management system is configured to log information provided to the device integration server concerning the medical devices. The web server is configured to provide webpages including the data of the medical devices for display on a remote monitoring computer...; and in para. [0030] requests associated program data for constructing a display page from a metadata and applications database .
The closest foreign prior art of record, Wong (WO-2016100811-A1) teaches medical data extraction and management for efficient, secure support of various information systems.
The closest non-patent literature of record, “SmartAssist” (Schrader, Andreas, Darren Carlson, and Peter Rothenpieler. "Smartassist-wireless sensor networks for unobtrusive health monitoring." Proceedings of the 5th BMI Workshop on Behaviour Monitoring and Interpretation, CEUR Workshop Proceedings, Karlsruhe, Germany, Sep. Vol. 21. 2010.) teaches in-home sensor network performs user activity monitoring. The algorithmically derived aggregated health status in combination with edited profile information of the user can be shared with patrons in order to realize context-aware services
The closest prior arts of record fail to expressly teach a metadata block (MDB) including identification (ID) data and configuration data, and associating the ID data from the MDB with ID data of a plurality of sub-systems of the monitoring device mount; and updating configuration data of at least one sub-system of the monitoring device mount with the configuration data in the MDB based on a result of the association between ID data from the MDB and the ID data of the plurality of sub-systems, as per independent claim 1.
No final decision on patentability has been made in light of pending rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINH GIANG MICHELLE LE whose telephone number is (571)272-8207. The examiner can normally be reached Mon- Fri 8:30am - 5:30pm PST.
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, JASON DUNHAM can be reached at 571-272-8109. 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.
LINH GIANG "MICHELLE" LE
PRIMARY EXAMINER
Art Unit 3686
/LINH GIANG LE/Primary Examiner, Art Unit 3686 4/3/26
Prosecution Insights