www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`15/733,790
`
`10/26/2020
`
`Philip G. Dion
`
`80852US004/083749-01 14
`
`9810
`
`200663
`
`7590
`
`09/28/2024
`
`Vorys-Solventum
`Vorys, Sater, Seymour and Pease LLP
`909 Fannin St.
`
`EXAMINER
`
`HANEY, JONATHAN MICHAEL
`
`HOUSTON,TX 77010
`
`3791
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/28/2024
`
`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):
`
`IPDocketing @ Solventum.com
`VDocketHou @vorys.com
`vorys_docketing @cardinal-ip.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1,4-9,14 and 21 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`CL] Claim(s)__is/are allowed.
`Claim(s) 1,4-9,14 and 21 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://www.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) 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)£) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) 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. |
`3.2.) 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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 20240926
`
`Application No.
`Applicant(s)
`15/733,790
`Dion 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 08/14/2024.
`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, 790
`Art Unit: 3791
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA orAIA Status
`
`The presentapplication,filed on or after March 16, 2013, is being examined under the first
`
`inventorto file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR
`
`1.17(e), was filed in this application after final rejection. Since this applicationis eligible for continued
`
`examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the
`
`finality of the previous Office action has been withdrawn pursuant to 37 CFR1.114. Applicant's
`
`submission filed on 08/14/2024 has been entered.
`
`Response to Amendment
`
`The amendment,filed 08/14/2024, has been entered. The examiner notesclaims 1, 4-9, 14, and
`
`21 are pending, with new claims 21 being added and claims 2-3, 10-13, and 15-20 being canceled.
`
`Response to Arguments
`
`Applicant’s arguments, see Remarks pages5-8, filed 08/14/2024, with respect tothe rejection(s)
`
`of claim(s) under 1, 4-9, 14 have been fully considered and are persuasive in view of the amendment.
`
`Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of
`
`rejection is made in view of Ellis (US 20180049646 A1).
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 3
`
`In response to applicant's argument that the examiner's conclusion of obviousness is based
`
`upon improper hindsight reasoning,it must be recognized that any judgment on obviousness isin a
`
`sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account
`
`only knowledge which was within the level of ordinary skill at the time the claimed invention was made,
`
`and does not include knowledge gleaned only from the applicant's disclosure, sucha reconstructionis
`
`proper. See /n re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
`
`Claim Rejections - 35 USC § 103
`
`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
`
`basis (i.e., changing from AIA to pre-AlA) 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 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.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumesthat 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 effectivefiling dates of each claim that
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 4
`
`was not commonly ownedas 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, 4-8, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bieberich (US
`
`8801282 B2) in view of Meyerson (US 20180184908 A1) andEllis (US 20180049646 A1).
`
`Regarding claim 1, Bieberich teaches a temperature device [abstract], comprising:
`
`a flexible substrate [col. 4 Ins. 30-36], comprising;
`
`a circular section [Figure 1 Item 102];
`
`a tail section [Figure 3 Item 104]; and
`
`a tabsection [Figure 1 Item 106];
`
`an electrical circuit on a surface of the flexible substrate [col. 4 Ins. 30-36], the electrical
`
`circuit comprising;
`
`a heater element on the circular center section having an outer perimeter and
`
`an inner perimeter [col. 4 Ins. 30-36], wherein the inner perimeter surrounds a zone of
`
`the surface that is thermally distinct from the heater element[col. 4 Ins. 45-52, Figure 3,
`
`see examiner figures 1 and 2 for interpretations of perimeters and dimensions];
`
`a first thermal sensor disposed in the zone [Figure 3 Item 120];
`
`a second thermal sensor disposed outside the heater element on thetail section
`
`[Figure 3 Item 126];
`
`a plurality of electrical pads disposed outside the heater element on the tab
`
`section [Figure 3 ltem 130]; and
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page5S
`
`a plurality of conductive traces, wherein each of the plurality of conductive
`
`traces connects one ofthe first thermal sensors, the second thermal sensor, and the
`
`heater element with the plurality of electrical pads [col. 2 Ins. 30-33]; and
`
`a heater insulator[col. 8 Ins 28-31, Figure 4 Item 208].
`
`Bieberich fails to teach the heater insulator comprises a lower thermal resistance region
`
`disposed over the zone of the surface of the flexible substrate toallow a portion heat generated by the
`
`heater element to escape and reduce thermal interference with the first thermal sensor; and at least
`
`one adjacent region located adjacent to the lower thermal resistance region and over the heater
`
`element, wherein the at least one adjacent region has a greater thermal resistance than that of the
`
`lower thermal resistance region.
`
`Meyerson teaches the heater insulator comprises a lower thermal resistance region [Figure 3
`
`Item 32] disposed over the zone of the surface of the flexible substrate [Figure 3 Item 40]; and
`
`at least one adjacent region [Figure 3 Item 26] located adjacent to the lower thermal resistance
`
`region [Figure 3 Item 32] and over the heater element [as taught by Bieberich], wherein the at least one
`
`adjacent region has a greater thermal resistance than that of the lower thermal resistance region
`
`[0047].
`
`It would have been obvious to one of ordinary skill in the art before the effective filing date of
`
`the claimed invention to take the teachings of Bieberich and incorporate the teachings of Meyersonto
`
`include the heater insulator comprises a lower thermal resistance region dis posed over the zone of the
`
`surface of the flexible substrate; and at least one adjacent region located adjacent to the lower thermal
`
`resistance region and over the heater element, wherein the at least one adjacent region has a greater
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 6
`
`thermal resistance than that of the lower thermal resistance region. Doing soconfigures the two
`
`regions in away that maximizes the accuracy of the readings taken by the temperature sensor(s) by
`
`providing less thermal resistance to more sensitive areas of the apparatus.
`
`Ellis teaches a lower thermal resistance region configured to allow a portion heat generated by
`
`the heater element to escape and reduce thermal interference with the first thermal sensor [0053-0057,
`
`Figures 6A-B Item 126, “heat spreader”].
`
`It would have been obvious to one of ordinary skill in the art before the effective filing date of
`
`the claimed inventions to take the teachings of Bieberich and incorporate the teachingsof Ellis to
`
`include a lower thermal resistance region configured to allow a portion heat generated by the heater
`
`element to escape and reduce thermal interference with the first thermalsensor. Doing so configures
`
`the system to move heat away from a heat source and distribute it over a wide area or into another
`
`component, such as a heat sink or heat exchanger, to improve thermal performance from increased
`
`heat distribution as well as to prevent heat-induced malfunctions by improving energy efficiency and
`
`system reliability.
`
`In addition, the examiner notes that applicant points out the higher thermal resistance region
`
`and lower thermal resistance region of Meyerson are opposite to applicant’s configuration [see
`
`applicant’s Remarks page 6 par. 1]. However, not only does this appearto be a piecemeal analysis of
`
`the examiner’s combination of references, the examiner asserts that it would be obvious to try for one
`
`of ordinary skill in the art to alter the configuration of the higher thermal resistance region and lower
`
`thermal resistance region of Meyerson to improve the accuracy of the device of Bieberich, as there area
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 7
`
`finite number of configurations (twoin this case) to place the higher and lower thermal resistance
`
`regions.
`
`xaminer
`
`E
`
`F
`
`igurel
`
`to
`
`Hiiadmotet
`SetonBigALEaon£fervietyWeibo
`
`ao
`
`ho
`
`bs
`
`Nv=
`
`
`
` ryZkdeoed
`
`ntyoee
`
`So
`
`
`
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 8
`
`Regarding claim 4, Bieberich, Meyerson, andEllis teach the temperature device of claim 1,
`
`wherein the lower thermal resistance region [MeyersonFigure 3 Item 32] is thinner than the at least
`
`one adjacent region [Meyerson Figure 3 Item 26].
`
`Regarding claim 5, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1,
`
`wherein the heater insulator is ring shaped [Meyerson Figure 2 Item 26].
`
`Regarding claim 6, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1, and
`
`further teaches an operational power of the temperature device when placed on a forehead of a patient
`
`[Bieberich col. 3 Ins. 44-49], proximate to a temporal artery [Bieberichcol. 3 Ins. 44-49], but fail to teach
`
`receiving a current is no greater 200 mW at standard ambient conditions. Upon review of the
`
`disclosure, the operational power of no greater 200 mW at standard ambient conditions is not statedas
`
`critical or important (see par. 0076).
`
`It would have been obvious to one of ordinary skill in the art at the filing date of the invention to
`
`adjust the operational power to an optimal range/value,since it has been held that where the general
`
`conditions of a claimare disclosedin the prior art, discovering the optimum or working ranges involves
`
`only routine skill in the art. /nre Aller, 105 USPQ 233. See MPEP 2144.05.11. The Examiner notes that a
`
`particular parameter must be recognizedas a result effective variable, in this case, that parameter is
`
`operational power which achieves the recognized result of adjusting the power required to run the
`
`device efficiently and also minimize interference from higher quantities of current, therefore, one of
`
`ordinary skill in the art at the filing date of the invention would have found the claimed value through
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 9
`
`routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA1977). See also Inre Boesch,
`
`617 F.2d 272, USPQ 215 (CCPA 1980).
`
`Regarding claim 7, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1,
`
`where Bieberich further teaches wherein an inner perimeter of the heater insulator [Figure 4 Item 208]
`
`overlaps the inner perimeter of the heater element [situated on Figure 4 Item 102].
`
`Regarding claim 8, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1,
`
`wherein the heater insulator has a ring shape [Meyerson Figure 2 Item 26], but fails to teach wherein
`
`the lower thermal resistance region comprises a material having has a thermal conductivity of at least
`
`100 W/(m K). Upon review of the disclosure, the thermal conductivity of at least 100 W/(m K) (see par.
`
`0033)
`
`It would have been obvious to one of ordinary skill in the art at the filing date of the invention to
`
`adjust the thermal conductivity to an optimal range/value, since it has been held that where the general
`
`conditions of a claimare disclosedin the prior art, discovering the optimum or working ranges involves
`
`only routine skill in the art. /nre Aller, 105 USPQ 233. See MPEP 2144.05.1I. The Examiner notes that a
`
`particular parameter must be recognizedas a result effective variable, in this case, that parameter is
`
`thermal conductivity which achieves the recognized result of configuring the thermal conductivity toa
`
`level that maximizes the accuracyand minimizes heat dissipation of the temperature sensor apparatus,
`
`therefore, one of ordinaryskill in the art at the filing date of the invention would have found the claimed
`
`value through routine experimentation. /n re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). See also
`
`In re Boesch, 617 F.2d 272, USPQ 215 (CCPA 1980).
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 10
`
`Regarding claim 14, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1,
`
`wherein the heater elementis a heater trace defined by wires [Bieberich col. 4 Ins 37-44].
`
`Claims 9 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bieberich,
`
`Meyerson,andEllis as applied to claim 1 above, and further in view of Ryu (US 20200069190 A1).
`
`Regarding claim 9, Bieberich, Meyerson, and Ellis teach the temperature device of claim 1,
`
`wherein the heater insulator has a ring shape [Meyerson Figure 2 Item 26], but fails to teach wherein
`
`the lower thermal resistance region comprisesa hole.
`
`Ryu teaches wherein the lower thermal resistance region comprises a hole [Figure 2 Item 116].
`
`It would have been obvious to one of ordinary skill in the art before the effectivefiling date of
`
`the claimed invention to take the teachings of Bieberich, Meyerson, and Ellis and incorporate the
`
`teachings of Ryu to include wherein the lower thermal resistance region comprises a hole. Doing so
`
`configures the system to have an area that houses the sensors and has a lower thermal conductivity
`
`from the insulative layer, thus increasing accuracy of the temperature readings.
`
`Regarding claim 21, Bieberich, Meyerson,Ellis, and Ryu teach the temperature device of claim
`
`9, wherein the at least one adjacent region has a first thermal conductivity [Ellis 0029, Figure 6B Item
`
`114] wherein the heater insulator further comprises a material [Ellis 0029 “heat sink”] disposed in the
`
`hole [Ellis 0029 “heat flux channel”], and wherein the material has a second thermal conductivity that is
`
`greater thanthefirst thermal conductivity [Ellis 0029,it is well understood the purpose of a heat sink is
`
`to have a higher thermal conductivity to absorb heat from the surrounding regions].
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`Page 11
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`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 Sits:
`
`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
`
`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
`
`file and managepatent submissions in Patent Center,visit: https://patentcenter.us pto. gov.Visit
`
`https ://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https ://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional
`
`questions, contact the Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like
`
`assistance froma USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or
`
`571-272-1000.
`
`

`

`Application/Control Number: 15/733, 790
`Art Unit: 3791
`
`/JONATHAN M HANEY/
`Examiner, Art Unit 3791
`
`/DEVIN B HENSON/
`Primary Examiner, Art Unit 3791
`
`Page 12
`
`