`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`13/378,448
`
`12/15/2011
`
`Katsuhiko Maruo
`
`89884(302721)
`
`1084
`
`11/07/2014
`7590
`21874
`EDWARDS WILDMAN pALMER LLP
`PO. BOX 55874
`BOSTON, MA 02205
`
`SIMS,JASONM
`
`PAPER NUMBER
`
`ART UNIT
`
`1631
`
`
`
`
`NOT 7ICATION DATE
`
`DELIVERY MODE
`
`11/07/2014
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patent@ edwardswildman.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 13/378,448 MARUO, KATSUHIKO
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1631JASON SIMS first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 11/1/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)|XI Claim(s) 1-19is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)I:l Claim(s) _ is/are rejected.
`
`8)I:I Claim(s)
`is/are objected to.
`
`9)|XI Claim(s 1-19 are subject to restriction and/or election requirement.
`I
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt ://\va.usoto. ov/ atentS/init events"
`
`
`
`
`h/index.‘s or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)|:l All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20141103
`
`

`

`Application/C
`
`ontrol Number: 13/378,448
`
`Page 2
`
`Art Unit: 1631
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Election/Restrictions
`
`This application contains claims directed to more than one species of the generic
`
`invention. These species are deemed to lack unity of invention because they are not so
`
`linked as to form a single general inventive concept under PCT Rule 13.1.
`
`The species are as follows:
`
`|) Species of a configured blood sugar estimation apparatus:
`
`A) The configured apparatus in claim 2.
`
`B) The configured apparatus in claim 3.
`
`C) The configured apparatus in claim 5.
`
`D) The configured apparatus in claim 6.
`
`E) The configured apparatus in claim 7.
`
`F) The configured apparatus in claim 8.
`
`G) The configured apparatus in claim 9.
`
`H) The configured apparatus in claim 10.
`
`l) The configured apparatus in claim 11.
`
`J) The configured apparatus in claim 12.
`
`K) The configured apparatus in claim 13.
`
`L) The configured apparatus in claim 14.
`
`M) The configured apparatus in claim 15.
`
`N) The configured apparatus in claim 16.
`
`

`

`Application/Control Number: 13/378,448
`
`Page 3
`
`Art Unit: 1631
`
`O) The configured apparatus in claim 17.
`
`P) The configured apparatus in claim 18.
`
`Applicant is required, in reply to this action, to elect a single species in specie
`
`elections I) to which the claims shall be restricted if no generic claim is finally held to be
`
`allowable. The reply must also identify the claims readable on the elected species,
`
`including any claims subsequently added. An argument that a claim is allowable or that
`
`all claims are generic is considered non-responsive unless accompanied by an election.
`
`Upon the allowance of a generic claim, applicant will be entitled to consideration
`
`of claims to additional species which are written in dependent form or otherwise require
`
`all the limitations of an allowed generic claim.
`
`Currently, the following claim(s) 1
`
`is generic:
`
`

`

`Application/Control Number: 13/378,448
`
`Page 4
`
`Art Unit: 1631
`
`REQUIREMENT FOR UNITY OF INVENTION
`
`As provided in 37 CFR 1.475(a), a national stage application shall relate to one
`
`invention only or to a group of inventions so linked as to form a single general inventive
`
`concept (“requirement of unity of invention”). Where a group of inventions is claimed in
`
`a national stage application, the requirement of unity of invention shall be fulfilled only
`
`when there is a technical relationship among those inventions involving one or more of
`
`the same or corresponding special technical features. The expression “special technical
`
`features” shall mean those technical features that define a contribution which each of
`
`the claimed inventions, considered as a whole, makes over the prior art.
`
`The determination whether a group of inventions is so linked as to form a single
`
`general inventive concept shall be made without regard to whether the inventions are
`
`claimed in separate claims or as alternatives within a single claim. See 37 CFR
`
`1.475(e).
`
`In the instant application Ruchti et al. (US P/N 2007/0179367) at the abstract and
`
`paragraphs [0020] - [0030] and [0052] describe an apparatus configured to establish a
`
`non-invasive reference optical spectrum and calculate the difference spectrum between
`
`a reference spectrum and measurement spectrum measured at a different time from the
`
`reference spectrum along with being configured to create a calibration model which can
`
`also be modified. As such, the instant application was found to lack a unity of invention
`
`to a lack of a "special technical feature," which linked all the claims by a technical
`
`relationship among the species.
`
`

`

`Application/Control Number: 13/378,448
`
`Page 5
`
`Art Unit: 1631
`
`In the instant application Wang et al. (US P/N 2007/0244376) as evidenced by
`
`Wang et al. (US 2001/0023391) describes the claimed invention in claim 1. Wang et al.,
`
`the ‘376 application at the abstract and paragraphs [0021] and [0024] describe an
`
`apparatus configured to establish a reference optical spectrum and calculate the
`
`difference spectrum between a reference spectrum and measurement spectrum
`
`measured at a different time from the reference spectrum along with being configured to
`
`create a calibration model which can also be modified. Wang et al. describe the
`
`electrical-optical sensors/devices for physiological measurement wherein when two or
`
`more signals are used, a mold-in method can be used to find out concentration of
`
`analytes in blood. Wang et al., the '391 application, evidences the mold-in method at
`
`the abstract and paragraph [0025] as a method used to determine glucose
`
`concentration in the blood. As such, the instant application was found to lack a unity of
`
`invention to a lack of a "special technical feature," which linked all the claims by a
`
`technical relationship among the species.
`
`WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF
`
`INVENTIONS
`
`As provided in 37 CFR 1.475(b), a national stage application containing claims to
`
`different categories of invention will be considered to have unity of invention if the
`
`claims are drawn only to one of the following combinations of categories:
`
`(1) A product and a process specially adapted for the manufacture of said
`
`product; or
`
`(2) A product and process of use of said product; or
`
`

`

`Application/Control Number: 13/378,448
`
`Page 6
`
`Art Unit: 1631
`
`(3) A product, a process specially adapted for the manufacture of the said
`
`product, and a use of the said product; or
`
`(4) A process and an apparatus or means specifically designed for carrying out
`
`the said process; or
`
`(5) A product, a process specially adapted for the manufacture of the said
`
`product, and an apparatus or means specifically designed for carrying out the said
`
`process.
`
`Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
`
`No claim is allowed
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`examiner should be directed to Jason Sims, whose telephone number is (571 )-272—
`7540.
`
`If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s
`supervisor, Marjorie Moran can be reached via telephone (571)-272—0720.
`
`Papers related to this application may be submitted to Technical Center 1600 by
`facsimile transmission. Papers should be faxed to Technical Center 1600 via the
`Central PTO Fax Center. The faxing of such papers must conform with the notices
`published in the Official Gazette, 1096 OG 30 (November 15, 1988), 1156 OG 61
`(November 16, 1993), and 1157 OG 94 (December 28, 1993) (See 37 CFR §1.6(d)).
`The Central PTO Fax Center number is (571)-273-8300.
`
`Information regarding the status of an application may be obtained from the
`Patent Application Information Retrieval (PAIR) system. Status information for
`published applications may be obtained from either Private PAIR or Public PAIR.
`Status information for unpublished applications is available through Private PAIR only.
`For more information about the PAIR system, see http://pair—direct.usptogov. Should
`you have questions on access to the Private PAIR system, contact the Electronic
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`

`

`Application/Control Number: 13/378,448
`
`Page 7
`
`Art Unit: 1631
`
`Mason Sims/
`
`Primary Examiner, Art Unit 1631
`
`