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 § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5-6, 12, and 15 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Converse et al, US Pub. 2014/0253397.
Regarding claims 1 and 12, Converse et al disclose a conformal, wearable, thin microwave antenna for sub-skin and skin surface monitoring comprising: a housing 108 configured to engage a body part of a wearer; a first antenna 102, laid out on a substrate positioned on or within the housing, the first antenna positioned to allow the first antenna to transmit and receive according to a wireless communication modality through air; a second antenna 104, laid out in a position on or within the housing and spaced apart from the substrate on which the first antenna is positioned, the second antenna configured to emit and receive wireless signals and laid out to transmit and receive according to the wireless communication modality through the body part of a wearer, the first antenna being tuned differently than the second antenna; and a transceiver (the structure receives and transmits signals which is a transceiver function), disposed on or within the housing and operatively coupled the first antenna and the second antenna, the transceiver configured to selectively cause one of the first antenna and the second antenna to communicate with an external antenna of an external system by transmitting and receiving data via the wireless communication modality (see fig. 1-5; par. 0026-0033); (see fig. 3; par. 0035); (see figs. 1-3 and 5; col. 0035).
Regarding claim 3, wherein the transceiver comprises: a first transceiver, coupled to the first antenna, configured to transmit and receive according to the wireless communication modality via the first antenna; and a second transceiver, coupled to the second antenna, configured to transmit and receive according to the wireless communication modality via the second antenna. (Each antenna structure receives and transmits signals which is a transceiver function).
Regarding claim 5, wherein the first and second antennas are discrete components with respect to one another and the first and second positions are separate with respect to one another (see figs. 1-5).
Regarding claim 6, wherein the transmitted or received data is about at least one of: the wearable article; or a person associated with the wearable article (see figs. 1-3).
Regarding claim 15, further comprising a third antenna 512 positioned on or within the housing and operatively coupled to the transceiver, the third antenna configured for wireless communication according to a protocol different from that of the first and second antennas (see fig. 5, par. 0035).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2, 4, 7-14, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Converse et al in view of Charrat et al, US Pub. 2012/0322500. The teachings of Converse et al have been discussed.
Regarding claim 2, Converse et al do not disclose the specific frequency modality.
Charrat et al disclose a contactless integrated circuit having NPC and UHF operating
mode so the features of frequency modality can be easily derived from the feature of Charrat et al, which disclose a NFC/UHF component referred includes modulation and demodulation circuits for a reader and tag modes, (see paragraph [0049}: and figure 7).
Accordingly, the specific frequency modality would have been obvious over Converse et al in view of Charrat et al in order to meet specific customer requirements. Therefore, it would have been an obvious extension as taught by the prior art.
Regarding claims 4 and 16, wherein the substrate is a first substrate and wherein the second antenna is positioned on a second substrate different from the first substrate, the first and second substrates positioned apart from one another (the prior art shows that the antenna are separated from each other and positioned on a substrate, but to explicitly disclose separate substrate for each antenna. However, it is also shown that each antenna occupied a different portion of the substrate. Therefore, to separate the substrate in portions so that each antenna is positioned onto its independent portion would have been obvious since each antenna is independently positioned).
Regarding claim 7, wherein the first and second antennas are further tuned to transmit and receive according to the wireless communication modality through a structure of an article of footwear in addition to through air and a human foot, respectively (regarding an electronic data storage operatively coupled to a transceiver that is configured to store information about at least one of a wearable article and a person associated with the wearable article’, is not disclosed m any of the prior art documents. However, the feature is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan).
Regarding claim 8, wherein the transmitted or received data includes visual information related to the wearable article (regarding the type of information about the wearable article and/or a person associated with the wearable article, such limitation, feature, is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan.
Regarding claim 9, wherein the housing comprises an upper for an article of footwear and a sole structure, wherein the first and second antennas are positioned on or within the sole structure and the transceiver is positioned on or within the sole structure (the type of article is just merely a method of used wherein the feature is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan).
Regarding claims 10-11, further comprising an output device, coupled to the first and second antennas, configured to provide a first indication if the first antenna receives a wireless signal and a second indication if the second antenna receives a wireless signal (providing indication when a signal is detected is common in the art for alerting operators and/or users of the device current status. Therefore, it would have been an obvious extension as taught by the prior art).
Regarding claim 13, wherein the transceiver is configured to select between the first antenna and the second antenna based on a detected environment or signal condition (setting up criteria for selecting antennas is just merely a matter of choice for meeting specific customer requirements, which therefore, obvious).
Regarding claim 14, further comprising a data storage device operatively coupled to the transceiver, the data storage device configured to store information relating to the wearable article or a user of the wearable article (regarding an electronic data storage operatively coupled to a transceiver that is configured to store information about at least one of a wearable article and a person associated with the wearable article’, is not disclosed m any of the prior art documents. However, the feature is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan).
Regarding claim 17, wherein the first and second antennas are formed by conductive traces, wires, or printed elements on the separate substrates (see figs. 1-6).
Regarding claim 18, wherein the transceiver comprises a single transceiver or multiple transceivers, each operatively coupled to one or more antennas (the antenna structures can transmit and receive signals, they serve as transmitters).
Regarding claim 19, wherein the housing comprises an article of apparel with at least one of the first antenna and second antenna disposed within one of: an information tag; a portion of textile within the article of apparel; a laminated portion within the article of apparel; and a length of conductive thread within the article of apparel ( the type of article is just merely a method of used wherein the feature is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan).
Regarding claim 20, wherein the housing comprises an article of footwear and at least one of the first antenna and the second antenna is positioned in a sole structure of the article of footwear (the type of article is just merely a method of used wherein the feature is merely a matter of design option when the general knowledge in the relevant field of the art is used. Therefore, it would have been obvious to an ordinary artisan).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,333,371 (hereinafter ‘371 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed recite similar limitations as the ‘371 Patent. For instance, in claim 1 of the current application and in the ‘603 Patent, the applicant claims:
Application No. 19/238,749
Patent No. 12,333,371
A wearable article, comprising: a housing
configured to engage a body part of a wearer;
a first antenna, laid out on a substrate
positioned on or within the housing, the first
antenna positioned to allow the first antenna
to transmit and receive according to a wireless
communication modality through air; a
second antenna, laid out in a position on or
within the housing and spaced apart from the
substrate on which the first antenna is
positioned, the second antenna configured to
emit and receive wireless signals and laid out
to transmit and receive according to the
wireless communication modality through the
body part of a wearer, the first antenna being
tuned differently than the second antenna; and
a transceiver, disposed on or within the
housing and operatively coupled the first
antenna and the second antenna, the
transceiver configured to selectively cause
one of the first antenna and the second
antenna to communicate with an external
antenna of an external system by transmitting
and receiving data via the wireless
communication modality.
A wearable article, comprising: a structure configured to enclose a body part of a wearer, the body part different than the structure; a first antenna, laid out on a substrate positioned on or within the structure, the first antenna configured to emit and receive wireless signals and laid out to transmit and receive according to a wireless communication modality through air, the first position configured to allow the first antenna to transmit and receive trough air; a second antenna, laid out in a position on or within the structure and spaced apart from the substrate on which the first antenna is positioned, the second antenna configured to emit and receive wireless signals and laid out to transmit and receive according to the wireless communication modality through the body part, the first antenna being tuned differently than the second antenna, the second position spaced apart from the first position and configured to allow the second antenna to transmit and receive trough the body part; and a transceiver, disposed on or within the structure and operatively coupled the first antenna and the second antenna, the transceiver configured to selectively cause one of the first antenna and the second antenna to communicate with an external antenna of an external system by transmitting and receiving data via the at least one of the first and second antennas according to the wireless communication modality, wherein the transceiver is configured to receive information from the external system and transmit information to the external system.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-20 of the ‘371 Patent as a general teaching for a wearable article and a method for the making the same, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘371 Patent. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘371 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876