NON-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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/419,606 (hereinafter, “provisional application”), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The claims describe an arrangement of three optical transmitters and one optical receiver such that:
the respective optical signal paths between the transmitters and the receive substantially overlap;
the distance between third transmitter and the receiver (“first distance” as recited in the claims) is longer/greater than the distance between the second transmitter and the receiver (“second distance” as recited in the claims); and
the second distance is longer/greater than the distance between the first transmitter and the receiver (“first distance” as recited in the claims).
The “provisional application” does not appear to disclose this arrangement, let alone in combination with additional details of claims 1, 12, and 19 (and dependent claims thereof). The discussion in the “provisional application” regarding the distances between the transmitters and the receiver only seem to be within the context of two transmitters, not three. Although provisional application discusses an embodiment where three (or even four) transmitters are used with the same receiver the embodiment does not appear to be characterized as having the claimed distance relationships (i.e., where the first distance is longer/greater the second distance which is longer/greater than third distance). Relative to the provisional application, the claims appear to recite new matter.
The disclosure of the prior-filed application, Application No. 18/460,256 (hereinafter “parent application”), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The “parent application” similarly does not appear to disclose the aforementioned arrangement, let alone in combination with additional details of claims 1, 12, and 19 (and dependent claims thereof). The discussion in the “parent” regarding the distances between the transmitters and the receiver only seem to be within the context of two transmitters, not three. Even if the parent application discusses an embodiment where three (or more) transmitters are used with the same receiver, the embodiment does not appear to be characterized as having the claimed distance relationships (i.e., where the first distance is longer/greater the second distance which is longer/greater than third distance). Relative to the parent application, the claims appear to recite new matter.
Applicant states that this application is a continuation or divisional application of the “parent application”. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: See discussion above.
Specification
The Specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The claims describe an arrangement of three optical transmitters and one optical receiver such that:
the respective optical signal paths between the transmitters and the receive substantially overlap;
the distance between third transmitter and the receiver (“first distance” as recited in the claims) is longer than the distance between the second transmitter and the receiver (“second distance” as recited in the claims); and
the second distance is longer than the distance between the first transmitter and the receiver (“first distance” as recited in the claims).
The Specification does not appear to disclose this arrangement, let alone in combination with additional details of claims 1, 12, and 19 (and dependent claims thereof). The discussion regarding the distances between the transmitters and the receiver only seem to be within the context of two transmitters, not three. Even if the Specification discusses an embodiment where three (or more) transmitters are used with the same receiver, the embodiment does not appear to be characterized as having the claimed distance relationships (i.e., where the first distance is longer/greater the second distance which is longer/greater than third distance). Relative to the parent application, the claims appear to recite new matter.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the arrangement of three transmitters and one receiver with the claimed distance relationships (e.g., claim 1) discussed above, as well as the claimed locations/positions of the first, second, and third transmitters and receiver in the upper portion (claims 10)/lower portion (claim 11) of the bottom wall, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 10 and 11 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.
Claim 10 recites that “the first location on the bottom wall of the first optical transmitter, the second location on the bottom wall of the second optical transmitter, the third location on the bottom wall of the third optical transmitter and the fourth location on the bottom wall of the optical receiver are in an upper portion of the bottom wall”. Claim 11 recites the same but says “lower portion” instead of “upper portion”. The ordinarily skilled artisan would not be reasonably apprised of the scope of the claims because the claims do not define any “upper” or “lower” direction respectively. Ordinarily, the examiner would look to the Specification and the Drawings but the Specification makes no mention an upper portion and a lower portion of the bottom wall and the Drawings do not even show the first, second, and third transmitters and the receiver of claim 1 as discussed above.
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 1-9 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al., US 2016/0278646 A1 (hereinafter “Hu”) in view of LeFrancois et al., US 2020/0297226 A1 (hereinafter “LeFrancois”).
Regarding claim 1: Hu discloses a wrist-worn electronic device (¶ [0030]: “a tissue site (for example, but not limited to, a […] wrist”. ¶ [0049]: “The OP sensor may be configured for contact with the body tissue to be monitored […] in the form of a […] wristwatch”. ¶ [0099]: “The OP system may be configured as a standalone system, for example, embodied in a wristwatch…”), comprising:
a housing including a bottom wall configured to contact a user's wrist (implied or otherwise obvious; see discussion below);
a first optical transmitter positioned at a first location on the bottom wall (light source(s) 28 at location marked as 2 in Fig. 2) and operable to output a plurality of first optical signals that pass through a user's skin (¶ [0049], [0053]-[0056], [0148]), each first optical signal having a unique wavelength (¶ [0056]: “light sources of different wavelengths are located at different distances from the photodetector”. ¶ [0058]: “each light source may be positioned at a distance from the photodetector that is a function of the wavelength of said light source”. Since the first second and third transmitters/light sources are located as different distances from the receiver/photodetector as discussed below, they would each have a unique wavelength);
a second optical transmitter positioned at a second location on the bottom wall (light source(s) 28 at location marked as 3 in Fig. 2) and operable to output a plurality of second optical signals that pass through the user's skin (¶ [0049], [0053]-[0056], [0148]), each second optical signal having a unique wavelength (see above regarding ¶ [0056] and [0058]);
a third optical transmitter positioned at a third location on the bottom wall (light source(s) 28 at location marked as 4 in Fig. 2) and operable to output a plurality of third optical signals that pass through the user's skin (¶ [0049], [0053]-[0056], [0148]), each third optical signal having a unique wavelength (see above regarding ¶ [0056] and [0058]);
an optical receiver positioned at a fourth location on the bottom wall (photodetector 30 at location marked as 1 in Fig. 2) and
operable to receive the first, second, and third optical signals from the first, second, and third optical transmitters respectively, such that the first, second, and third optical signals respectively travel along first, second, and third signal paths respectively from the first, second, and third optical transmitters to the optical receiver (¶ [0022]-[0023], [0026-0029], [0053], [0053]-[0056], [0062], [0148]),
the optical receiver further operable to generate a first, second, and third electronic signals respectively corresponding to the first, second, and third optical signals (¶ [0059]-[0060], [0081]-[0082], [0151]-[0153], [0159]);
a processor coupled with the optical receiver, the processor configured to: receive the first, second and third electronic signals from the optical receiver, and determine physiological information about the user based on the first, second, and the third electronic signals (¶ [0024], [0067], [0151]-[0153], [0158]-[0159]);
wherein the first signal path substantially overlaps with the second signal path and the third signal path (the locations/positions of the sources and the photodetector are illustrated in Fig. 2 as being co-linear and, therefore, the paths therebetween would be substantially overlapping);
wherein a first distance (annotated by the examiner as D1 below) between the third location (4, Fig. 2) on the bottom wall of the third optical transmitter and the fourth location (1, Fig. 2) on the bottom wall of the optical receiver is greater than a second distance (annotated by the examiner as D2 below) between the second location (3, Fig. 2) on the bottom wall of the second optical transmitter and the fourth location (1, Fig. 2) on the bottom wall of the optical receiver; and
wherein the second distance is greater than a third distance (annotated by the examiner as D3 below) between the first location (2, Fig. 2) on the bottom wall of the first optical transmitter and the fourth location (1, Fig. 2) on the bottom wall of the optical receiver.
The limitation of the housing including the bottom wall configured to contact the user’s wrist is implied from the wristwatch form factor discussed above. Further, it is understood that the transmitters and the receivers would be positioned at respective locations on the bottom wall in order to be able to sufficiently transmit and receive light to and from the wrist. Otherwise, even if not implied, the limitation is still obvious over the further teachings of LeFrancois:
LeFrancois teaches:
¶ [0022]: “Embodiments of the present technology provide an electronic fitness device that may be worn on a user's wrist, such as the electronic fitness device shown in FIG. 1”
¶ [0025]: “An exemplary electronic fitness device 10 may be embodied by a smart watch or a fitness band that is typically worn on a user's wrist, […]. The electronic fitness device 10 may broadly comprise a housing 12, a wrist band 14, a display 16, a user interface 18, a communication element 20, a location determining element 22, a first optical transmitter array 24, a second optical transmitter array 26, a third optical transmitter array 27, a first optical receiver 28A, a second optical receiver 28B, a third optical receiver 28C, a fourth optical receiver 28D, a fifth optical receiver 28E, a sixth optical receiver 28F, a seventh optical receiver 28G, an eighth optical receiver 28H, a plurality of lenses 30, a memory element 32, and a processing element 34.”
¶ [0026]: “The housing 12 generally houses or retains other components of the electronic fitness device 10 and may include or be coupled to the wrist band 14. As seen in FIG. 3, the housing 12 may include a bottom wall 36, an upper surface 38, and at least one side wall 40 that bound an internal cavity (not shown in the figures). The bottom wall 36 includes a lower, outer surface that contacts the user's wrist while the user is wearing the electronic fitness device 10. The bottom wall 36 may be substantially flat with a slight curvature that enables the bottom wall 36 to contact a substantial portion of the user's wrist. […] The bottom wall 36 may include one or more openings in which the optical transmitter arrays 24, 26 and the optical receivers 28 are placed, positioned, or located. The one or more openings within the bottom wall 36 may be covered by one or more lenses 30 through which the optical signal may be transmitted and received.”
¶ [0036]: “The first optical transmitter array 24 is positioned at a first location, or in a first opening, on the bottom wall 36 of the housing 12, and the second optical transmitter array 26 is positioned at a second location, or in a second opening, on the bottom wall 36, as shown in FIGS. 3 and 4A.”
¶ [0038]: “Referring to FIG. 4B, the third optical transmitter array 27 is positioned at a third location, or in a third opening, on the bottom wall 36 of the housing 12”
¶ [0041]: “Referring to FIGS. 3,5A, 5B, and 5C, the first optical receiver 28A is positioned at a third location, or in a third opening, on the bottom wall 36 of the housing 12. The second optical receiver 28B is positioned at a fourth location, or in a fourth opening, on the bottom wall 36. The third optical receiver 28C is positioned at a fifth location, or in a fifth opening, on the bottom wall 36. The fourth optical receiver 28D is positioned at a sixth location, or in a sixth opening, on the bottom wall 36. If the third optical transmitter array 27 is included with the electronic fitness device 10, then the first optical receiver 28A is positioned at a fourth location, or in a fourth opening, the second optical receiver 28B is positioned at a fifth location, or in a fifth opening, the third optical receiver 28C is positioned at a sixth location, or in a sixth opening, and the fourth optical receiver 28D is positioned at a seventh location, or in a seventh opening.”
In this sense, LeFrancois can be considered to teach a wrist-worn electronic device comprising:
a housing including a bottom wall configured to contact a user’s wrist;
first, second, and third optical transmitters respectively positioned at first, second, and third locations on the bottom wall, and
an optical received positioned at a fourth location on the bottom wall.
The ordinarily skilled artisan would have recognized that the housing and the bottom wall can provide protection to the internal components of the electronic device from environmental elements such as dirt and liquids. Additionally, placing the transmitters and the receivers on the bottom wall can provide for improved optical coupling with the wrist because the bottom wall contacts the user’s wrist.
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 device of Hu such that the device comprises a housing including a bottom wall configured to contact a user’s wrist and such that the first, second, and third transmitters and the receiver are respectively positioned on first, second, third, and fourth locations on the bottom wall, as taught by LeFrancois; and the ordinarily skilled artisan would have been motivated to make this modification in order to provide protection to the internal components of the electronic device from environmental elements such as dirt and liquids and improve optical coupling with the wrist.
Regarding claim 2: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, the second and third locations on the bottom wall are associated with a transmitter array (e.g., see Fig. 2 which shows transmitters 28 at locations 2, 3, 4, and 5 which form a transmitter array).
Regarding claim 3: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, the first location, the second location and the third location on the bottom wall are associated with a first area of a transmitter array, a second area of the transmitter array and a third area of a transmitter array, respectively (e.g., see Fig. 2 which shows transmitters 28 at locations 2, 3, 4, and 5 which form respective areas/portions of a transmitter array).
Regarding claim 4: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, the first signal path, the second signal path and the third signal path at least partially pass through a first portion of the user's wrist (¶ [0029]: “the position of each light source will determined on the basis of the expected optical path length of light passing through the body tissue type from each light source to the photodetector”. ¶ [0030]: “The at least one body tissue type may comprise one or more of: a tissue site (for example, but not limited to, a finger, neck, toe, ear, temple, wrist, […]”).
Regarding claim 5: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, Hu does not disclose that the plurality of first optical signals output by the first optical transmitter includes a first wavelength between 630-680 nm.
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 re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
Hu teaches that wavelength of the transmitter/light source depends on the path length or distance between the receiver and the respective transmitter/light source (¶ [0056]: “light sources of different wavelengths are located at different distances from the photodetector”. ¶ [0058]: “each light source may be positioned at a distance from the photodetector that is a function of the wavelength of said light source”. Since the first second and third transmitters/light sources are located as different distances from the receiver/photodetector as discussed below, they would each have a unique wavelength”). Hu further teaches that the transmitters/light sources may have wavelengths in the range of approximately 450 nm to 1100 nm (¶ [0048]).
The claimed range overlaps or lies in a range disclosed in the prior art (i.e., “630-680 nm” overlaps or lies in “450 nm to 1100 nm”). As discussed above, it has been held 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).
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 device of Hu such that first wavelength is between 630-680 nm because claimed range overlaps or lies in a range disclosed in the prior art.
Regarding claim 6: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, Hu does not disclose that the plurality of second optical signals output by the second optical transmitter includes a second wavelength between 750-950 nm.
See MPEP 2144.05 as discussed above.
Hu teaches that wavelength of the transmitter/light source depends on the path length or distance between the receiver and the respective transmitter/light source (¶ [0056]: “light sources of different wavelengths are located at different distances from the photodetector”. ¶ [0058]: “each light source may be positioned at a distance from the photodetector that is a function of the wavelength of said light source”. Since the first second and third transmitters/light sources are located as different distances from the receiver/photodetector as discussed below, they would each have a unique wavelength”). Hu further teaches that the transmitters/light sources may have wavelengths in the range of approximately 450 nm to 1100 nm (¶ [0048]).
The claimed range overlaps or lies in a range disclosed in the prior art (i.e., “750-950 nm” overlaps or lies in “450 nm to 1100 nm”). As discussed above, it has been held 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).
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 device of Hu such that second wavelength is between 750-950 nm because claimed range overlaps or lies in a range disclosed in the prior art.
Regarding claim 7: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, Hu does not disclose that the plurality of third optical signals output by the third optical transmitter includes a third wavelength between 600-630 nm.
See MPEP 2144.05 as discussed above.
Hu teaches that wavelength of the transmitter/light source depends on the path length or distance between the receiver and the respective transmitter/light source (¶ [0056]: “light sources of different wavelengths are located at different distances from the photodetector”. ¶ [0058]: “each light source may be positioned at a distance from the photodetector that is a function of the wavelength of said light source”. Since the first second and third transmitters/light sources are located as different distances from the receiver/photodetector as discussed below, they would each have a unique wavelength”). Hu further teaches that the transmitters/light sources may have wavelengths in the range of approximately 450 nm to 1100 nm (¶ [0048]).
The claimed range overlaps or lies in a range disclosed in the prior art (i.e., “600-630 nm” overlaps or lies in “450 nm to 1100 nm”). As discussed above, it has been held 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).
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 device of Hu such that third wavelength is between 600-630 nm because claimed range overlaps or lies in a range disclosed in the prior art.
Regarding claim 8: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, Hu does not disclose that the first, second, and third optical transmitters are LEDs and that the optical receiver is a photodiode; however, the examiner takes OFFICIAL NOTICE that LEDs and photodiodes are well-understood, routine, and conventional in the art as optical transmitters (sources of light) and optical receivers (light detectors) respectively, and therefore would have been obvious to the ordinarily skilled artisan. For example, LeFrancois teaches that “each optical transmitter 42 may include a photonic generator, such as a light-emitting diode (LED), a modulator, a top emitter, an edge emitter, or the like” (¶ [0032]), and that “each optical receiver 28 may include a photodetector, such as a photodiode, a phototransistor, a photoresistor, a phototube, or the like” (¶ [0039]).
Regarding claim 9: The modified Hu device as discussed above renders obvious claim 1 as discussed above; further, Hu further discloses the first location (2, Fig. 2) on the bottom wall of the first optical transmitter and the second location (3, Fig. 2) on the bottom wall of the second optical transmitter are positioned between the third location (4, Fig. 2) on the bottom wall of the third optical transmitter and the fourth location (1, Fig. 2) on the bottom wall of the optical receiver.
Regarding claim 12: See above regarding claim 9.
Regarding claim 13: See above regarding claims 12 and 2.
Regarding claim 14: See above regarding claims 12 and 3.
Regarding claim 15: See above regarding claims 12 and 4.
Regarding claim 16: See above regarding claims 12 and 5.
Regarding claim 17: See above regarding claims 12 and 6.
Regarding claim 18: See above regarding claims 12 and 7.
Regarding claim 19: See above regarding claims 15.
Regarding claim 20: See above regarding claims 19 and 2.
Duplicate Claim Warning
Applicant is advised that should claim 9 be found allowable, claim 12 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Similarly, should claim 15 but found allowable, claim 19 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Examiner Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Han et al., US 2016/0058312 A1
Tsai et al., US 2022/0142569 A1
Rowe et al., US 2013/0021596 A1; US 9,061,866 B2
MPEP 2173.06 recites in part:
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The first approach is recommended from an examination standpoint because it avoids piecemeal examination in the event that the examiner’s 35 U.S.C. 112, second paragraph rejection is not affirmed, and may give applicant a better appreciation for relevant prior art if the claims are redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection.
In this case, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claims 10 and 11 as discussed above in the §112(b) rejection. Any attempt to reject claims 10 and 11 would necessarily be based on considerable speculation about the meaning of terms employed in the claims or assumptions that must be made as to the scope of the claims — in this case, speculation or assumption as to the meaning of the terms “upper portion” and “lower portion” as recited in claims 10 and 11 respectively. Therefore, a prior art rejection of these claims in their current form would not be proper.
Conclusion
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.
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, KEITH M. RAYMOND can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
3 September 2026
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