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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/733,785
`
`10/26/2020
`
`Michael W. Mansholt
`
`80585US004
`
`3347
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`HANEY, JONATHAN MICHAEL
`
`ART UNIT
`
`3791
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/20/2023
`
`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):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-20 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 11-20 is/are withdrawn from consideration.
`[] Claim(s)__ is/are allowed.
`Claim(s) 1-10 is/are rejected.
`[) Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11)M The drawing(s) filed on 10/26/2020 is/are: a)¥) accepted or b)() 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)2) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)() None ofthe:
`b)( Some**
`a) All
`1.1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231213
`
`Application No.
`Applicant(s)
`15/733, 785
`Mansholt et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`JONATHAN M HANEY
`3791
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 11/28/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA orAIA Status
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`The presentapplication,filed on or after March 16, 2013, is being examined under the first
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`inventorto file provisions of the AIA.
`
`Election/Restrictions
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`Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being
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`drawn to anonelected invention, there being no allowable generic or linking claim. Applicant timely
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`traversed the restriction (election) requirementin the reply filed on 11/28/2023.
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`Response to Arguments
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`Applicant's arguments, filed 11/28/2023, regarding the restriction requirement have been fully
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`considered but they are not persuasive. The examiner notes that the applicant appears to be arguing
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`that Bieberich does not teachall of the limitations of invention in question and not against shared
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`technical feature that is found between applicant’s invention and that of Bieberich. The applicant does
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`state [page 7 paragraph 1 of Remarks] that the special technical feature described in the restriction
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`requirement,filed 10/04/2023, is not a specialtechnical feature, but appears tobe a mere allegation as
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`the argumentsare all directed to the differences between inventions and not against the shared
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`technical feature.
`
`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 jointinventor regards as the
`invention.
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 3
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claims 6-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second paragraph,as
`
`being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventoror a joint inventor (or for applications subject to pre-AlA35 U.S.C. 112, the applicant), regards
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`as the invention.
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`The term “proximate”in claims 6-7 is a relative term which renders the claims indefinite. The
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`term “proximate”is not defined by the claim, the specification does not provide a standard for
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`ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised
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`of the scope of the invention. Thus, the distance between required by the claim language between the
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`second and third sensors has been rendered indefinite by use of the relative term “proximate”.
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`Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 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-AlA 35 U.S.C. 112, the applicant), regards as the
`
`invention.
`
`The claim language of claim 8 appears to state the conductive trace of the third thermalsensor
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`is parallel to itself. The examiner believes this may have been writtenin error and the applicant meant
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`to say “the conductive trace of the third thermal sensor is parallel to a portion of the conductive trace of
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`the second thermalsensor” as canbe seenin applicant’s drawings Figure 3.
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`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 4
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`Claim Rejections - 35 USC § 102
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`Inthe 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-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory
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`basis (i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new ground of
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`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}(1) the claimed invention was patented, described ina printed publication, or in public use, on sale,
`or otherwise available to the public before the effectivefiling date of the claimed invention.
`
`(a}(2) the claimed invention was described ina patent issued under section 151, or in anapplication
`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.
`
`Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Bieberich(US
`
`20130317388 A1).
`
`Regarding claim 1, Bieberich teaches a temperature device [abstract], comprising:
`
`a flexible substrate [0011]; and,
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`an electrical circuit on a surface of the flexible substrate [0011], the electrical circuit
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`comprising:
`
`at least three thermal sensorsincluding at least one skin thermal sensor [0015];
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`a plurality of electrical pads (0041, Figure 4A Item171]; and
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`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page5S
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`a plurality of conductive traces connecting the at least three thermal sensors
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`with the plurality of electrical pads [Figure 4A].
`
`Regarding claim 2, Bieberich teaches the temperature device of claim 1, wherein two
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`thermal sensors are arranged to measure a deep tissue temperature of a patient [0033] and a
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`third sensor is dedicated to measurea skin temperatureof the patient [0015].
`
`Regarding claim3, Bieberich teaches the temperature device of claim 1, wherein the
`
`electrical circuit further comprises:
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`a heater trace surrounding a zoneof the surface [Figure 4A Item 124], a first thermal
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`sensordisposed in the zone [Figure 4A Item 140], at least two thermal sensors disposed outside
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`of the heater trace [Figure 4A Items 142 and 143], a plurality of electrical pads disposed outside
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`of the heater trace [Figure 4A Item 171], and a plurality of conductive traces connecting the first
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`and second thermal sensors and the heater trace with the plurality of electrical pads [Figure 4A].
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`Regarding claim 4, Bieberich teaches the temperature device of claim 3, whereina
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`second thermal sensor [Figure 4A Item 142] and athird thermal sensor [Figure 4A Item 143]is
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`disposed outside of the heater trace [Figure 4A Item 124].
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`Regarding claim5, Bieberich teaches the temperature device of claim 4, in which
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`sections of the flexible substrate are folded together to place the first and second thermal
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`sensorsin proximity to one another, betweenthe sections [0032].
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 6
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`Regarding claim6, Bieberich teaches the temperature device of claim 5, wherein the
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`third thermal sensor[Figure 4A Item 143] is not proximate to the second thermal sensor[Figure
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`4A Item 142].
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`Regarding claim 7, Bieberich teaches the temperature device of claim 4, wherein a conductive
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`trace of the second thermal sensor [Figure 4A Item 142] is proximate to a portion of a conductive trace
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`of the third thermal sensor[Figure 4A Item 143].
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`Regarding claim 8, Bieberich teaches the temperature device of claim 7, wherein the conductive
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`trace of the third thermal sensoris parallel to a portion of the conductive trace of the third thermal
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`sensor[Figure 4A Item 143, see 112 rejection above].
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`Regarding claim 9, Bieberich teaches the temperature device of claim 1, wherein the flexible
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`substrate comprises a center section [Figure 4A Item 130],
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`a tabsection that is contiguous with the center section and extending from the center sectionin
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`a first radial direction [Figure 4A Item 108], and a first tail section contiguous with the center section and
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`extending from the center sectionin a second radial direction [Figure 4A Item 106].
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`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 forthin 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.
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 7
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`This application currently names joint inventors. In considering patentability of the claims the
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`examiner presumesthat the subject matter of the various claims was commonly owned as of the
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`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
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`of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that
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`was not commonly ownedas of the effective filing date of the later invention in order for the examiner
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`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
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`against the later invention.
`
`Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bieberich as applied to
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`claim 9 above, and further in view of Van Duren (US 20100268114 A1).
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`Regarding claim 10, Bieberich teaches the temperature device of claim 9, but fails to teach the
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`flexible substrate comprises a secondtail section that is contiguous with the center section and
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`extending from the center sectionin a third radial direction, wherein thefirst tail section compris es a
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`first tail portion extending from the center section in the second radial direction and a second tail
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`portion and extending from the center sectionin a third radial direction.
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`Van Duren teachesthe flexible substrate [0010] comprises a second tailsection [Figure 12A Item
`
`713] that is contiguous with the center section and extending from the center section in a third radial
`
`direction, wherein thefirst tailsection [Figure 12A Item 711] comprises a first tail portion extending
`
`from the center section in the second radial direction and asecond tail portion and extending from the
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`center section ina third radial direction [Figure 12A].
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 8
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`It would have been obvious to one of ordinary skill in the art before the effective filing date of
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`the claimed invention to take the teachings of Bieberich and incorporate the teachings of Van Durento
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`include teach the flexible substrate comprises a second tail section that is contiguous with the center
`
`sectionand extending from the center sectionin a third radial direction, wherein thefirst tail section
`
`comprises a first tail portion extending from the center sectionin the second radial direction and a
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`second tail portion and extending from the center section in a third radial direction. Doing so allowsfor
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`the positioning of the thermal sensors in desired locations to improve the quality and accuracy of
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`measurements.
`
`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to JONATHAN M HANEYwhose telephone number is (571)272-0985. The examiner
`
`can normally be reached Monday through Friday, 0730-1630 ET.
`
`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
`
`If attempts to reachthe examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Alexander Valvis can be reached on (571)272-4233. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Center is available to registered users. To
`
`

`

`Application/Control Number: 15/733,785
`Art Unit: 3791
`
`Page 9
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`file and managepatent submissions in Patent Center,visit: https://patentcenter.us pto. gov.Visit
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`https ://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
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`
`571-272-1000.
`
`/JONATHAN M HANEY/
`Examiner, Art Unit 3791
`
`/DEVIN B HENSON/
`Primary Examiner, Art Unit 3791
`
`