UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/437,666
`
`02/21/2017
`
`Teruhisa OKUYA
`
`NIIPP0189US
`
`1308
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`MELHUS~ BENJAMIN S
`
`ART UNIT
`3791
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/26/2019
`
`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
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/437,666
`Examiner
`BENJAMIN s MELHUS
`
`Applicant(s)
`OKUYA et al.
`Art Unit
`3791
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on 4/12/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] 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.
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`4)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s) g is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1—2 and 4—7 is/are rejected.
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`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 2/21/17 is/are: a). accepted or b)D 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
`
`b)|:] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`21:] Certified copies of the priority documents have been received in Application No.
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`3D 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20190415
`
`

`

`Application/Control Number: 15/437,666
`Art Unit: 3791
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Election/Restrictions
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`Applicant’s election without traverse of Species A, drawn to claims 1, 2, and 4-7,
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`in the reply filed on 4/12/19, is acknowledged.
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`Priority
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`Acknowledgment is made of applicant's claim for foreign priority based on an
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`application filed in Japan on 4/14/16. It is noted, however, that applicant has not filed a
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`certified translation of the Japanese application which may be reguired at a later time in
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`situations as described by 37 CFR 1.55 (g)(3).
`
`Claim Interpretation
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`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 3
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`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
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`a claim element (also commonly referred to as a claim limitation) is limited by the
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`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is invoked.
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`As explained in MPEP § 2181, subsection I, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph:
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`(A)
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`the claim limitation uses the term “means” or “step” or a term used as a substitute
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`for “means” that is a generic placeholder (also called a nonce term or a non-
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`structural term having no specific structural meaning) for performing the claimed
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`function;
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`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
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`“means for”) or another linking word or phrase, such as “configured to” or “so
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`that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 4
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites function without reciting
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`sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word “means” (or “step”) are
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`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
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`except as otherwise indicated in an Office action. Conversely, claim limitations in this
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
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`indicated in an Office action.
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`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
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`that is coupled with functional language without reciting sufficient structure to perform
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`the recited function and the generic placeholder is not preceded by a structural modifier.
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`Such claim limitation(s) is/are:
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`“a biological signal measurer that measures a biological signal including external
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`noise of biological noise and of environmental noise”;
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`“a biological noise measurer that measures a signal including the biological
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`noise”;
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 5
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`“a biological noise estimator that estimates the biological noise from the signal
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`measured by the biological noise measurer”;
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`“an environmental noise measurer that measures a signal including the
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`environmental noise”;
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`“an environmental noise estimator that estimates the environmental noise from
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`the signal measured by the environmental noise measurer”; and
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`“a calculator that calculates a biological signal in consideration of an effect of the
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`external noise, using the biological signal measured by the biological signal measurer,
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`the biological noise estimated by the biological noise estimator and the environmental
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`noise estimated by the environmental noise estimator” in claims 1, 2, and 5-7.
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`It is noted that claim 4 obviates the 112(f) invocation for the biological signal
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`measurer and the biological noise measurer as the claim properly incorporates explicit
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`structure.
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`Because this/these claim |imitation(s) is/are being interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
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`cover the corresponding structure described in the specification as performing the
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`claimed function, and equivalents thereof.
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`If applicant does not intend to have this/these |imitation(s) interpreted under 35
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the
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`claim |imitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
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`claimed function); or (2) present a sufficient showing that the claim |imitation(s) recite(s)
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 6
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`sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`Claim Rejections - 35 USC § 1 12(b)
`
`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 4, 6, and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for
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`pre-AIA the applicant regards as the invention.
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`Claim 4 twice recites “an electrode”. It is not clear whether these two recitations
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`are intended to refer to the same one electrode or two distinct electrodes.
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`Claim 6 recites “an absorbance at a point of attention of a head of a user
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`an
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`absorbance of the whole brain of the user” (emphasis). While each mention of
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`absorbance is qualified to be measured in a different manner (i.e., point of attention vs.
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`whole brain), it is still unclear whether the claim intends to recite two distinct absorbance
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`measurements (Le, a first absorbance and a second absorbance) or a single
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`absorbance measurement at two distinct points. Claim 7 encounters the same issue
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`mutatis mutandis with the recitation of “an amount of sweat produced by a user due to
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`emotional sweating
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`an amount of sweat produced due to a change in body
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`temperature of the user” (emphasis).
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 7
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
`
`Claims 1, 2, 4, 5, and 7 is/are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Shin (US 20150080675 A1) in view of Nakamura (US 4716907
`
`A).
`
`For claim 1, Shin teaches a biological signal measurement system [entire
`
`document - see at least abstract] comprising: a biological signal measurer [100, 200,
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`500 - where any/all three of the units measure a biological signal of movement,
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`brainwaves, and/or other signals per 1151 et seq.] that measures a biological signal
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`including external noise of biological noise and of environmental noise [139:
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`drowsiness, unconscious movements, reflex movements constitute both biological noise
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`and “environmental” noise (i.e., noise that is influenced by environment such as reflexes
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`based on environmental factors)];
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`a biological noise measurer [camera 500 measures twitches and other
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`unintentional movements per 1139 that measures a signal including the biological noise;
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`detector 200 per Fig. 4 measures a plurality of signals including those which contribute
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`noise to brainwaves/other body signal measurements per 1139];
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 8
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`an environmental noise measurer [other of 500 and/or Fig. 4 with sensors within
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`detector 200] that measures a signal including the environmental noise [e.g.,
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`movements or change in body signals (GSR, temp, facial muscles, HR, respiration) can
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`be influenced by environment and thereby constitute environmental “noise”]; and
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`a calculator [i.e., relevant portions of controller 400] that calculates a biological
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`signal in consideration of an effect of the external noise, using the biological signal
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`measured by the biological signal measurer [1139, 77: controller accounts for
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`movement/noise/undesired signal by coordinating (i.e., “considers”) camera recording
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`and synchronized body signals (i.e., of Fig. 4)];
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`For claims 1 and 2, Shin fails to teach a biological noise estimator that
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`estimates the biological noise from the signal measured by the biological noise
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`measurer; an environmental noise estimator that estimates the environmental noise
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`from the signal measured by the environmental noise measurer; where the calculator
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`calculates the biological signal in consideration of (inter alia) the biological noise
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`estimated by the biological noise estimator and the environmental noise estimated by
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`the environmental noise estimator; wherein the biological noise estimator estimates the
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`biological noise to be a first signal obtained by multiplying the biological signal
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`measured by the biological noise measurer by a first constant, the environmental noise
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`estimator estimates the environmental noise to be a second signal obtained by
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`multiplying the signal measured by the environmental noise measurer by a second
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`constant; the calculator calculates the biological signal in consideration of the effect of
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 9
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`the external noise by subtracting the first signal and the second signal from the
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`biological signal measured by the biological signal measurer.
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`Nakamura teaches a biological signal measurement system [abstract] including a
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`noise estimator (i.e., either/both biological and/or environmental noise) [relevant portion
`
`of 7] which estimates noise within a signal (Le, a noise signal) by (inter alia) multiplying
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`a signal by a constant [col. 3 |. 15-55]; where a calculator calculates a biological signal
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`[EEG discussed throughout] in consideration of the effect of external noise by
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`subtracting the estimated noise signal from the biological signal measured by the
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`biological signal measurer [col. 3 |. 34-35: determination of actual EEG signal Xm(t) as
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`the subtraction of a noise signal Zm(k) from a measured EEG signal Ym(t)].
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`It would have been obvious to one of ordinary skill at the time the invention was
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`filed to modify the system of Shin to incorporate the noise estimator(s) of Nakamura
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`(i.e., as each a biological and environmental noise estimator determining a first and
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`second signal respectively) and subsequent calculations of Nakamura in order to
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`determine a more accurate biological signal measurement [Nakamura col. 3 |. 38-48;
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`col. 1
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`l. 45 - col. 2 l. 5].
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`For claim 4, Shin teaches the biological signal measurement system according
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`to claim 1,
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`wherein the biological signal is brain waves [discussed throughout entire
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`document - see at least Fig. 1 with unit 100; see also claim 1];
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`the biological signal measurer has an electrode attachable to a head of a user
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`[Fig. 3], and
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 10
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`the biological noise measurer has an electrode attachable to a vicinity of at least
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`one of a throat, an eye, and a temple of the user [Fig. 3; Fig. 7].
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`For claim 5, Shin teaches the biological signal measurement system according
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`to claim 1,
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`wherein the biological signal is related to a temperature of at least one of a hand
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`fingertip [1]57; Fig. 5 with sensor 230 on pinky finger], the nose, an instep and a foot
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`fingertip of a user [1]57-58: mention of attachment to fingers and toes],
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`the biological signal measurer is attachable to at least one of a hand fingertip
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`[Fig. 5 with sensor 230 on pinky finger], the nose, an instep and a foot fingertip of the
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`user [1]57-58: mention of attachment to fingers and toes], and
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`the biological noise measurer is attachable to at least one of a wrist, a back of a
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`hand, a palm, a first joint of a finger, a forehead, an ankle and an instep of the user [i.e.,
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`other of 220, 210, 230 is attached to finger including a first joint per Fig. 5].
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`For claim 7, Shin teaches the biological signal measurement system according
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`to claim 1,
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`wherein the biological signal is related to emotional sweating [1]51-55: GSR:
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`conductivity due to sweating including emotional sweating; Fig. 4 and 5],
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`the biological signal measurer measures an amount of sweat produced by a user
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`due to emotional sweating [1]51-55: GSR: conductivity is a measurement of an amount
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`of sweat (i.e., including due to sweating)], and
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 11
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`the biological noise measurer measures an amount of sweat produced due to a
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`change in body temperature of the user [1[51-55: GSR: conductivity is a measurement of
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`an amount of sweat produced (i.e., including due to temperature change)].
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`Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shin
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`in view of Nakamura, Kato (US 20140107494 A1), and Sutin (US 20180070831 A1).
`
`For claim 6, Shin fails to teach the biological signal is related to a cerebral blood
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`flow, the biological signal measurer measures an absorbance at a point of attention of a
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`head of a user, and the biological noise measurer measures an absorbance of the
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`whole brain of the user.
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`Kato teaches a biological signal measurement system [abstract] including a
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`biological signal measurer that measures a biological signal is related to a cerebral
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`blood flow [discussed throughout entire document - see at least [[37-38, 44-55 et seq.],
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`where the biological signal measurer measures an absorbance at a point of attention of
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`a head of a user [e.g., Fig. 2-4]. Sutin similarly teaches a biological signal measurement
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`system [abstract] which measures an absorbance of the whole brain of the user
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`[discussed throughout entire document: CBF and CBV (brain flow and volume) are
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`determined from pDCS (pulsatile spectroscopy) and NIRS of inflow and outflow vessels
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`of cerebral region (neck and brain arteries and veins) - see at least [[58-75, consider
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`also [[76, 78].
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`It would have been obvious to one of ordinary skill at the time the invention was
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`filed to modify the system of Shin to incorporate the cerebral flow measurement and
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`

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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`whole-brain absorption measurement of Kato and Sutin in order to determine a subject’s
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`mental status [Kato 118-11] and to monitor a patient’s (i.e., subject/user) critical brain
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`parameters in an accurate, non-invasive, and continuous manner [Sutin 1116-17].
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to BENJAMIN S MELHUS whose telephone number is
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`(571)272-5342. The examiner can normally be reached on Monday - Friday | 9:00 AM -
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`5:00 PM.
`
`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, Jeff Hoekstra can be reached on 571-272—7232. The fax phone number for
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`the organization where this application or proceeding is assigned 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
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`Application/Control Number: 15/437,666
`Art Unit: 3791
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`Page 13
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/BENJAM|N S MELHUS/
`
`Examiner, Art Unit 3791
`
`/RENE T TOWA/
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`Primary Examiner, Art Unit 3791
`
`