FINAL REJECTION
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 .
Response to Amendment
On 4/29/2026, Applicant filed an amendment to the application which contains a Specification amendment, an amended claim set, and arguments/remarks. The amendment to the application has been entered and considered for this Office Action.
Specification
The amendment to the Specification is sufficient to overcome the objection raised in the previous Office Action1.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-3, 5, 6, 9-11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over over Kurkowski et al., US 2022/0015667 A1 (hereinafter “Kurkowski”) in view of Bogdanovic et al., US 2022/0228998 A1 (hereinafter “Bogdanovic”) and Masuyama et al., “Gradiometer Using Separated Diamond Quantum Magnetometers” Sensors 2021 (see IDS dated 3/5/2025) (hereinafter “Masuyama”).
Regarding claims 1 and 6: Kurkowski discloses a device for detecting magnetic signals generated by a beating heart (Abstract and ¶ [0002], [0054]), comprising:
a support body with a contact surface
(e.g., bed/mattress 115 or chair 117, Fig. 1); and
an arrangement magnetometer units
sensor units: (sensors 101/101B/101C)
sensors units are characterized as magnetometers: (“When a sensor (101) is placed on or near the body, […] magnetic field changes to the chest area, amongst other things can be measured” ¶ [0054]; “Physical detection also includes changes to electrical or magnetic fields […] Physical detection can be carried out by a wide variety of instruments, but devices such as […] magnetometers, […] are all capable of physical detection. Physical parameters including, but not limited to, […] change in magnetic field can all be measured.” ¶ [0037]),
the arrangement embedded in the support body
(see Fig. 1)
(“sensors located in a patient’s bed or on a chair”, ¶ [0003])
(“It is generally preferred that the sensors (101) be untethered from the patient (that is not connected to the patient) and placed on or in a bed (patient (105)) or mattress (115) or on or in a chair (117) (patient (107)), regardless of their orientation to the bed or chair, or may be carried by a user or otherwise held in proximity to certain points of their body. When a sensor (101) is placed on or near the body, […] magnetic field changes to the chest area, amongst other things can be measured. External changes to the human condition […] will commonly cause physical changes in the chest while the heart beats […].”, ¶ [0054]),
wherein the support body is configured to accommodate a user sitting or lying on the contact surface
(implied by the bed or chair as discussed above)
(see Fig 1 which illustrates patient 105 lying on the mattress of the bed, and patient 107 sitting on the chair).
Kurkowski further discloses a signal processing unit to which the magnetometer units are connected (¶ [0052]).
Kurkowski does not disclose that the magnetometer units are specifically nitrogen-vacancy centers, NV, magnetometer units, let alone an arrangement of at least four of them.
Bogdanovic teaches an arrangement of nitrogen-vacancy centers, NV, magnetometer units (see ¶ [0026]-[0027] which discusses nitrogen vacancy (NV) magnetometry as a specific type of electron spin defect based magnetometry; further, ¶ [0032] which teaches an array of magnetometer pixels). Bogdanovic teaches ¶ [0026] that “electron spin defect based magnetometers may be operated at room temperature and, in certain cases, within relatively compact structures, allow for portability and reduction in magnetometer costs, which may be advantageous in health related applications such as measuring magnetic fields emanating from the heart”. The ordinarily skilled artisan would understand that this advantage is applicable to NV magnetometers because NV magnetometers are a type of electron spin defect based magnetometer as discussed above.
Bogdanovic further teaches at ¶ [0086]-[0088], with reference to Fig. 7, that the array may include between 3 and 300 pixels (e.g., 9 pixels are illustrated in Fig. 7). In the sense that each pixel can itself read on a nitrogen-vacancy centers, NV, magnetometer unit, Bogdanovic can be considered to teach an arrangement of at least four (e.g., nine) nitrogen-vacancy centers, NV, magnetometer units. The ordinarily skilled artisan would have recognized that the arrangement of the NV magnetometer units as an array of pixels allows for spatial discernment of magnetic signals, thereby enabling imaging (e.g., see ¶ [0120] of Bogdanovic).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Kurkowski by implementing the arrangement of magnetometer units as at least four nitrogen-vacancy centers, NV, magnetometer units, as taught by Bogdanovic; and the ordinarily skilled artisan would have been motivated to make this modification because NV magnetometer units may be operated at room temperature, can fit within relatively compact structures allowing for portability, and can reduce costs, which would be understood as advantageous in measuring magnetic fields emanating from the heart such as in Kurkowski, and further to enable imaging of the magnetic fields emanating from the heart.
Kurkowski modified in view of the Bogdanovic does not teach that the arrangement is a three-dimensional (3D) arrangement in which at least one of the at least four NV magnetometer units is not arranged in a plane in which at least three others of the at least four NV magnetometer units are arrangement, let alone that the device is configured to determine, using the signal processing unit, an effective magnetic field strength and/or field direction as a difference of magnetic field strengths and/or field directions detected using at least two of the at least four NV magnetometer units.
In this sense, the modified Kurkowski invention can be considered a “base” device upon which the claimed invention can be seen as an “improvement”.
Masuyama teaches determining an effective magnetic field strength and/or field direction as a difference of magnetic field strengths and/or field directions detected using at least two NV magnetometer units in order to implement a gradiometer (see Fig. 1). The gradiometer technique here involves at least two sensors that are separated by the base length as shown in Fig. 1 which is reproduce in part below.
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The ordinarily skilled artisan would have recognized that implementing the magnetometers as a gradiometer can reduce environmental noise by measuring the environmental noise using Sensor 2 and subtracting it from the Sensor 1, thereby isolating the desired signal from the target (i.e., free of environmental noise):
The distance between the target and Sensor 1 (depth) is close enough such that Sensor 1 is able to measure signal from the target. Additionally, Sensor 1 is affected by environmental noise.
Sensor 1 = target signal + noise
The distance between Sensor 2 and the target (depth + base length) is large enough such that Sensor 2 cannot measure the target signal. Sensor 2 is also affected by environmental noise in the same way Sensor 1 is; i.e., the environmental noise as measured by Sensor 2 should be nearly identical to the environmental noise as measurement by Sensor 1.
Sensor 2 = noise
Subtracting Sensor 2 from Sensor 1 should therefore result in the signal from the target without the environmental noise.
Sensor 1 – Sensor 2 = (target signal + noise) – (noise) = target signal
The gradiometer technique of Masuyama is applicable to the modified Kurkowski invention because Kurkowski is concerned with measuring biomagnetic signals which are understood to be weak and therefore susceptible to being masked by environmental noise, and Masuyama considers biomagnetic signals applications such as magnetic encephalography (MEG).
In this sense, Masuyama’s gradiometer technique can be considered a known technique that is applicable to the “base” device.
Applying the known gradiometer technique of Masuyama to the 2D array of the modified Kurkowski invention2 would result in the following. The 2D array of NV magnetometer units would be analogous to Masuyama’s Sensor 1 (or from another point of a view, would be analogous to a plurality of Sensors 1) and has a distance from the target equal to “depth”. Another NV magnetometer unit analogous to Masuyama’s Sensor 2 is added. The added NV magnetometer unit is positioned further away from the target than the 2D array of NV magnetometer units by a distance of “base length” (i.e., the distance between the added NV magnetometer unit and the target is equal to “depth + base length”). The environmental noise measured by the added NV magnetometer unit would be subtracted from the each of the NV magnetometer units of the 2D array, thereby isolating the target signals measured by the NV magnetometer units of the 2D array (i.e., the target signals can be acquired free of the environmental noise).
A rough illustration of the proposed modification of the arrangement of NV magnetometer units is provided below.
The ordinarily skilled artisan can easily recognize that applying the gradiometer technique of Masuyama to the 2D array of the modified Kurkowski invention (i.e., the aforementioned proposed modification) would result in an arrangement of at least four3 NV magnetometer units, wherein the arrangement is a 3D arrangement in which at least one4 of the at least four NV magnetometer units is not arranged in a plane5 in which at least three others6 of the at least four3 NV magnetometer units are arranged as recited in claim 1 as currently amended.
In this sense, the ordinarily skilled artisan would have recognized that applying the known technique would have yielded predictable results and resulted in the improved system (i.e., the claimed invention).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Kurkowski such that the arrangement of NV magnetometer units is a 3D arrangement in which at least one of the at least four NV magnetometer units is not arranged in a plane in which at least three others of the at least four NV magnetometer units are arranged, and such that the device is configured to determine, using the signal processing unit, an effective magnetic field strength and/or field direction as a difference of magnetic field strengths and/or field directions detected using at least two of the at least four NV magnetometer units, because it would have merely involved applying a known technique to a known device ready for improvement to yield predictable results. The ordinarily skilled artisan would have been motivated to make this modification in order to reduce, suppress, or filter out environmental noise.
Regarding claim 2: It is implied or otherwise obvious that the support body has an elastic material between the arrangement (i.e., the magnetometer units) and the contact surface in the sense that (1) the magnetometer units are embedded inside a bed/mattress or chair as discussed above and (2) it is implied or otherwise considered well-understood, routine, and conventional, that the bed/mattress or chair is made of elastic materials at the contact surface (e.g., cushioning).
Regarding claim 3: Kurkowski further discloses that the support body is a bed/mattress or a chair (see Fig. 1 and the discussion above).
Regarding claim 5: Detecting both the strength and direction of a magnetic field is known from multi-vector magnetometry (¶ [0067] of Bogdanovic) and therefore obvious to the ordinarily skilled artisan in order to implement multi-vector magnetometry.
Regarding claim 9: It is noted that the claim appears to merely describe some of the essential structures of NV magnetometer units and how they work. Bogdanovic teaches that each of the at least four NV magnetometer units has, a sensor medium, a diamond crystal, or a section of a diamond crystal having nitrogen-vacancy centers, and the device is configured to detect a magnetic field strength and/or a field direction by reading a spin resonance dependent on the magnetic field strength in the sensor medium (¶ [0025]-[0030]).
It would have been obvious to one having ordinary skill in the art to further modify the invention of Kurkowski such that each of the at least four NV magnetometer units has, a sensor medium, a diamond crystal, or a section of a diamond crystal having nitrogen-vacancy centers, and the device is configured to detect a magnetic field strength and/or a field direction by reading a spin resonance dependent on the magnetic field strength in the sensor medium, as taught by Bogdanovic; and the ordinarily skilled artisan would have been motivated to make this modification in order to implement the magnetometers of Kurkowski as NV magnetometer units (i.e., that is how NV magnetometers work).
Regarding claim 10: It is noted that the claim appears to merely describe additional essential structures of NV magnetometer units and how they work. Bogdanovic teaches at least one excitation light source configured radiate light into the sensor medium, at least one microwave source configured to generate a resonant field in the sensor medium, and at least one photodetector configured to detect resonance-dependent fluorescent light from the sensor medium (see ¶ [0030]).
It would have been obvious to one having ordinary skill in the art to further modify the invention of Kurkowski by providing at least one excitation light source configured radiate light into the sensor medium, at least one microwave source configured to generate a resonant field in the sensor medium, and at least one photodetector configured to detect resonance-dependent fluorescent light from the sensor medium, as taught by Bogdanovic; and the ordinarily skilled artisan would have been motivated to make this modification in order to implement the magnetometers of Kurkowski as NV magnetometer units (i.e., that is how NV magnetometers work).
Regarding claim 11: Bogdanovic teaches a same excitation light source and/or a same microwave source are associated with the at least two of the at least four NV magnetometer units (¶ [0030]).
It would have been obvious to one having ordinary skill in the art to further modify the invention of Kurkowski such that a same excitation light source and/or a same microwave source are associated with the at least two of the at least four NV magnetometer units, as taught by Bogdanovic; and the ordinarily skilled artisan would have been motivated to make this modification in order miniaturize the NV magnetometer units as a whole.
Regarding claim 13: Bogdanovic further teaches that the distance between the sensor media of the at least two of the at least four NV magnetometer units is from 1 to 30 millimeters (implied by the ranges of dimensions and parameters in ¶ [0088]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Kurkowski such that the distance between the sensor media of the at least two of the at least four NV magnetometer units is from 1 to 30 millimeters, as taught by Bogdanovic; and the ordinarily skilled artisan would have been motivated to make this modification in order implement a 2D magnetic field imaging geometry.
Regarding claim 14: See above regarding claims 1 and 6. The out-of-plane NV magnetometer discussed above can read on the “one of the at least four NV magnetometer units” recited in claim 14. Masuyama teaches that a base length (the distance between the signal sensor and the environmental noise sensor) can be optimized based on the depth (the distance between the target and the signal sensor): “Ideally, to detect small signals efficiently, the optimum base length should be selected depending on the distance between the measurement target and sensors, the sensor sensitivity, and the inhomogeneity of magnetic noise. In general, to improve the signal-to-noise ratio (SNR), the base length should be longer than the distance between the measuring object and sensors. However, in previous studies, two fixed detection points in a diamond chip were used for the gradiometers. Thus, the distance between each point was the length of the order of micrometers. On the other hand, when we apply the gradiometer methodology to MEG, the base length should be of the order of a centimeter or more. It is also worth mentioning that we can expand the NV center magnetometry not only inside of rooms but also outdoors if the NV center gradiometer method is developed.”
Masuyama further teaches: “To realize sensing with high sensitivity, the base length is the important parameter for the gradiometer. Thus, the distance between the target and sensor 1, called “depth”, should be minimized for highly sensitive sensing, although the base length should be longer than the depth. For example, for sensing a deep brain signal, a base length of 50 mm or more is preferable.” (emphasis added)
Further: “Figure 1b shows a schematic setup of the gradiometer using two diamond quantum sensors that enabled us to change in a wide range of the base length.”
Further: “As above-mentioned, the distance of the base length to the target depth is a key parameter for magnetometry (noise cancelation) by gradiometer. We measured the base length dependence of the acquired signal. One sensor of the gradiometer was placed at 50 mm apart from the target magnet assuming the target object is in a deep part of the body, such as in the brain. By varying the position of the other sensor, i.e., the base length, we measured the differential signal level. The results of Figure 6 clearly demonstrated that the differential signal dramatically increased with increasing base length, and the saturation was observed at a base length above 50 mm. This result indicates that the gradiometer with variable base length demonstrated in this study is useful to sense a target with deep regions. To obtain large signals of the gradiometer, the base length should be longer than the depth. On the other hand, to cancel the magnetic noise, sensor 1 and sensor 2 should detect the same level. Therefore, the base length should be set appropriately, considering the distance between the measurement target and the noise source. In this respect, the gradiometer using the optical fiber has an advantage since the base length can be easily changed without the adjustment of the optical path.”
In this sense, the ordinarily skilled artisan would have recognized that the base length as discussed in Masuyama (which would correspond to the “distance” as recited in claim 14) is a result-effective variable because increasing the distance results in a increasing the differential signal. The general conditions of the claim are therefore disclosed in the prior art with the difference being that the claim recites a what appears to merely be an optimum or workable range that could be found by routine experimentation such an experiment similar to Masuyama’s experiment.
The courts have held: "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art to further modify the invention of Kurkowski such that the distance between the further NV magnetometer unit and the at least two NV magnetometer units is at least 1 m because as a matter of routine optimization because it is not inventive to disclose the optimum or workable ranges by routine optimization where the generation conditions of the claim are already taught in the prior art.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kurkowski in view of Bogdanovic and Masuyama as applied to claim 1 above, and further in view of Erasala et al., US 2020/0170528 A1 (hereinafter “Erasala”).
Regarding claim 4: Kurkowski modified in view of the teachings of Bogdanovic and Masuyama teaches the invention of claim 1, but does not further teach a structure made of a material with a magnetic permeability greater than 1 on a side of the arrangement facing away from the contact surface and/or a contact body containing the structure.
Erasala teaches a magnetic field shield (301, Fig. 3) that surrounds the patient when measuring magnetic fields of the patient (¶ [0097]). For example, the patient can be placed in the internal volume of the shield via the open end 303, and sensor (401, such as a magnetometer, ¶ [0098]) can be brought in proximity of the body the patient via the same open end 303 using device 400 (see Fig. 4). Further, the shield has a high permeability greater than 1 (¶ [0052], [0069]-[0071]).
Erasala teaches that the shield can “reduce noise and enhance signal collection” (Abstract).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modification the invention of Kurkowski by providing a magnetic field shield, as taught by Erasala; and the ordinarily skilled artisan would have been motivated to make this modification in order to reduce noise and enhance signal collection.
By making the above modification, the shield surrounding the patient/bed would therefore read on a structure made of a material with a magnetic permeability greater than 1 on a side of the arrangement facing away from the contact surface and/or a contact body containing the structure because portions of the shield could be considered to face away from the contact surface in the sense that the shield would entirely surround the bed including the contact surface thereof.
Allowable Subject Matter
Claim 12 is 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.
Claim 15 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 12 as originally examined (see preliminary amendment filed with application) was indicated as reciting subject matter that is allowable over the prior art (see Non-Final Rejection dated 1/29/2026). New claim 15 is identical in scope to the originally examined claim 12, but in the form of an independent claim. New claim 15 is therefore allowed for the same reason.
Claim 12 has now been amended to recite at least four NV magnetometer units in accordance with the amendments to claim 1. The scope of claim 12 has been narrowed by virtue of the narrowing of claim 1; otherwise, the allowable subject matter remains.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
Claim 1 has been amended to now recite an arrangement of at least four NV magnetometer units and that the arrangement is a 3D arrangement in which at least one of the at least four NV magnetometer units is not arranged in a plane in which at least three others of the at least four NV magnetometer units are arrangement.
Applicant argues that Masuyama does not teach this limitation. Applicant cites In re Royka which allegedly states that obviousness requires a suggestion of all limitations. Applicant therefore concludes that since Masuyama does not teach the aforementioned limitation, the references do not establish a prima facie case of obviousness.
Examiner response: This argument is not found to be persuasive. First, the court case cited by the applicant (In re Royka) is old and out of date. Teaching, suggestion, or motivation (hereinafter “TSM”) is just one of many ways a prima facie case of obviousness can be established. Since then, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) has identified other rationales besides TSM that may support a conclusion of obviousness. Second, the grounds of rejection is/was not based on TSM, but rather is/was based on the rationale of applying a known technique to a known device (method, or product) ready for improvement to yield predictable results as identified in KSR.
MPEP 2143 recites in part:
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.
"[T]he analysis that "should be made explicit" refers not to the teachings in the prior art of a motivation to combine, but to the court’s analysis. . . . Under the flexible inquiry set forth by the Supreme Court, the district court therefore erred by failing to take account of ‘the inferences and creative steps,’ or even routine steps, that an inventor would employ and by failing to find a motivation to combine related pieces from the prior art." Ball Aerosol, 555 F.3d at 993, 89 USPQ2d at 1877.
The Federal Circuit’s directive in Ball Aerosol was addressed to a lower court, but it applies to Office personnel as well. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP § 2141 and § 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the relevant time. This requirement for explanation remains even in situations in which Office personnel may properly rely on common sense or ordinary ingenuity. In re Van Os, 844 F.3d 1359, 1361, 121 USPQ2d 1209, 1211 (Fed. Cir. 2017) ("Absent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious.’").
I. EXAMPLES OF RATIONALES
Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.
It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed herein, they are to adhere to the guidance provided regarding the necessary factual findings. It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly.
The subsections below include discussions of each rationale along with examples illustrating how the cited rationales may be used to support a finding of obviousness. Some examples use the facts of pre-KSR cases to show how the rationales suggested by the Court in KSR may be used to support a finding of obviousness. The cases cited (from which the facts were derived) may not necessarily stand for the proposition that the particular rationale is the basis for the court’s holding of obviousness, but they do illustrate consistency of past decisions with the lines of reasoning laid out in KSR. Other examples are post-KSR decisions that show how the Federal Circuit has applied the principles of KSR. Cases are included that illustrate findings of obviousness as well as nonobviousness. Note that, in some instances, a single case is used in different subsections to illustrate the use of more than one rationale to support a finding of obviousness. It will often be the case that, once the Graham inquiries have been satisfactorily resolved, a conclusion of obviousness may be supported by more than one line of reasoning.
MPEP 2143 further recites in part:
D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a "base" device (method, or product) upon which the claimed invention can be seen as an "improvement;"
(2) a finding that the prior art contained a known technique that is applicable to the base device (method, or product);
(3) a finding that one of ordinary skill in the art would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
In this case, the limitation in question appears to be the result of applying the gradiometer technique (known from Masuyama) to a 2D array of NV magnetometer units (known from Bogdanovic). Applying an additional NV magnetometer unit separated from the 2D array of NV magnetometer units by a “base length” distance in order to measure the environmental noise as part of the gradiometer technique would necessarily result in the out-of-plane magnetometer unit recited in the claim.
Regarding claim 14, Applicant argues that the results effective variable is for establishing a gradiometer in which benefits are shown up saturation at 50 mm; further, that there is no indication of an benefit beyond 100 mm which is well beyond the saturation point taught by Masuyama; and therefore concludes that the claimed distance of 1 m is not within the range for which distance in a gradiometer is a result-effective variable, thus the rejection should be withdrawn.
Examiner response: This is not found to be persuasive. First, despite Masuyama stating that saturation occurs at 50 mm, Fig 6(b) shows the differential signal still increasing as the base length is increased beyond 50 mm, thereby suggesting additional benefit beyond 50 mm.
Second, Masuyama also teaches that “for sensing a deep brain signal, a base length of 50 mm or more is preferable” (emphasis added). Use of the phrase “or more” here suggests using a base length that is longer than 50 mm. The ordinarily skilled artisan would have recognized that a base length of “at least 1 m” satisfies such suggestion (i.e., a length that is at least 1 m is in fact longer than 50 mm).
MPEP 2144.05 recites in part: “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
In this case, the claimed range of “at least 1 m” overlaps or lies inside the claimed range of “50 mm or more”. Therefore, a prima facie case of obviousness exists.
Third, Masuyama teaches that “the optimum base length should be selected depending on the distance between the measurement target and sensors, the sensor sensitivity, and the inhomogeneity of magnetic noise”. In other words, the optimal base length is based on the depth (distance between the target and the sensors), the sensor sensitivity, and the noise inhomogeneity. Masuyama’s results (differential signal strength vs base length) are based on some arbitrarily chosen experimental setup including a given depth, using sensors having a given sensitivity, and a given environmental noise. Thus, the ordinarily skilled artisan would have recognized that saturation may occur at different base lengths for different depths, different sensor sensitivities, and/or different noise inhomogeneity. The fact that the inventor has chosen some combination of depth, sensor sensitivity, and noise inhomogeneity that leads to choosing a base length of at least 1 m does not appear to inventive but rather appears to be no more than merely discovering the optimum or workable ranges by routine experimentation.
Applicant does not appear to provide arguments for claims 2-6, 9-11, and 13 beyond the arguments for claim 1 already discussed above. Since the arguments for claim 1 are not found to be persuasive, claims 2-6, 9-11, and 13 also remain rejected for the same reasons claim 1 remains rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 COLIN T. SAKAMOTO whose telephone number is (571)272-4958. The examiner can normally be reached Monday - Friday, ~9AM-5PM Pacific.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
9 July 2026
1 Non-Final Rejection dated 1/29/2026, see pages 2-5
2 Kurkowski modified in view of the teachings of Bogdanovic as discussed above.
3 e.g., 10 NV magnetometer units.
4 The added magnetometer unit analogous to Masuyama’s Sensor 2.
5 The plane of the 2D array of NV magnetometer units.
6 e.g., 9 NV magnetometer units that form the 2D array which are analogous to Masuyama’s Sensor 1 (or from another point of view, analogous to a plurality of Sensors 1).
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