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 .
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 1-12 are 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.
In claim 1, line 1, “that is used by being attached to an arm portion of a human body” is vague and sounds as if there is a connection to the human body. Apparatus claims cannot claim the body. It is suggested to use functional language such as “configured to be attached…”. Similarly in line 6, “in contact with the arm portion…” is vague. It is suggested to use functional language such as “configured to be in contact…”. Similarly, in line 20, “is attached to the arm portion” is vague. In the last two lines, “and thus arrangement of the first sensor substrate in the main body case is determined” is vague and it is unclear what this means and what/how it is determined.
In claim 2, line 3, “screw processing is performed” is vague and it is unclear what this means and what element is performing the processing. The claim is vague and sounds more like a method step than a structural limitation. It is unclear what structural elements are being positively recited.
In claim 5, line 3, “are formed by inset molding” is vague and sounds like a method step rather than a structural limitation. It is unclear what structural limitation this limitation provides.
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 1-4 and 6 are rejected under 35 U.S.C. 102a1 as being anticipated by Yang et al (11493889). Yang discloses the claimed limitations as follows:
--a main body case (e.g. element 16, watch case, etc.)
--a bottom portion (e.g. figure 6, element 1611, etc.)
--a front surface (e.g. figure 6, element 15/13, etc.) --an electrode member (e.g. figure 6, element 12, etc.)
--a first sensor substrate (e.g. figure 6, element 163, etc.) having an opening with an electrode contact at an outer periphery (e.g. figure 6, element 163, figure 8, element 1632, etc.)
--the electrode having a shaft portion/joining mechanism (e.g. figures 6/8, elements 12 and/or 164, etc.), with a larger head portion (e.g. figures 6/8, element 12, etc.) where the electrode member is jointed to the first sensor substrate by the joining mechanism via the opening portion and electrically connected to the sensor substrate (e.g. figures 6/8, elements 12, 164, 1632, col. 10, lines 44-59, etc.), and
--a surface of the head portion is fixed in a state of being in contact with an outer surface of the bottom portion of the main body case (e.g. electrode fastened to bottom wall, col. 10, lines 28-29, figures 6/8, etc.).
For claim: 2, screw processing brought into electrode contact (e.g. figure 8, elements 12 and 164, etc.); 3, screw being male, shaft in cylindrical shape (e.g. figure 8, elements 12 and 164, etc.); 4, recessed portion in bottom portion with head fixed in a stated of being fitted (e.g. figures 8, bottom portion near reference 12, col. 10, lines 28-29, etc.); 6, electrode contact surface being a “circular shape” (figure 4, element 12, etc.)
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. Yang discloses the claimed invention except for the addition of a bottom portion of the housing including a light transmissive portion, with sensor substrate in the housing/main body protruding toward the arm and having a light emitting element sensor and light receiving element (claims 7 and 12). It would have been obvious to one having ordinary skill in the art at the time the invention was made/before it was effectively filed to have modified the system and method as taught by Yang, with the addition of a bottom portion of the housing including a light transmissive portion, with sensor substrate in the housing/main body protruding toward the arm and having a light emitting element sensor and light receiving element, as is well known and common knowledge in the art (mpep 2144I, 2144.03), since it would provide the predictable results of a watch sensor that securely is attached to the arm and can easily detect PPG to provide the user with blood oxygen levels, HRV, and confirmation of heart rate.
Allowable Subject Matter
Claims 8-11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George Robert Evanisko whose telephone number is (571)272-4945. The examiner can normally be reached M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George R Evanisko/Primary Examiner, Art Unit 3792 7/20/26
Prosecution Insights