DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of invention I in the reply filed on 2025-12-16 is acknowledged. The traversal is on the ground(s) that The office has not articulated specific facts establishing a serious burden, and the stated ground appear to rely primarily on conclusory assertions and classification statements rather than an explanation of why a materially different search or examination would be required. This is not found persuasive.
It appears that applicant has confused the various tests and standards involved with restrictions. Applicant is directed to MPEP 803(II): “For purposes of the initial requirement, a serious search burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02.”(emphasis original)
As the argued restriction requirement dated 2025-10-17 properly explains the separate classification of the respective inventions the restriction requirement dated 2025-10-17 demonstrates a serious burden. There is no additional explanation requirement beyond explaining (at least) the separate classification to demonstrate a serious burden. Additionally, please note that the separate requirements to show serious burden are separated by the conjunction “or”:
“separate classification, OR separate status in the art, OR a different field of search”
As “separate classification” is explained in the restriction requirement dated 2025-10-17, then the status or field are not additionally required.
The reason there is a serious burden is because the claims are classified differently in the art. While a prima facie showing of serious search and/or examination burden may be rebutted by appropriate showings or evidence by the applicant, applicant has provided no such showings or evidence.
The recitation of the relatedness of the inventions (i.e. I and (II,III) being related as product and process of use: II and III being related as combination/subcombination) does not relate to the establishment of applicant’s argued “serious burden” (MPEP 803(I)(B)) but instead establish why the separate inventions are either independent or distinct from one another as claimed (MPEP 803(I)(A)).
There is no recitation in the MPEP that requires, in addition to explaining the differences in classification, an explanation of how “purported classification differences would necessitate separate searches”. Instead, as stated in MPEP 808.02 an explanation of different classification (as is contained in the restriction requirement dated 2025-10-17): “shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.”
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 26 is objected to because of the following informalities: Claim 26, which depends from claim 1 recites: "a first overlay section and a second overlay section, wherein the second overlay section is movable between a first position…" and "stacked on top of the first overlay section and a second position in which the second overlay section covers at least part of a keyboard". Both the above limitations are already presented in claim 1 and so are redundant to the limitations of claim 1. While they also approach being unclear by presenting a second set of “a first overlay section” (etc.), it is clear that the errors in claim 26 are a transcription error and insufficient to render the claim unclear. For purposes of examination, and based on claim 26 being read in light of the specification, all duplicate elements of claim 26 are read as the same elements as originally presented in claim 1, from which claim 26 depends. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pen (US 2008/0084396).
Regarding claim 1 Pen discloses:
A compute device comprising:
a lid (e.g. 12 Fig.1(a)) comprising a display (e.g. 14 Fig.1(a));
a base portion (e.g. 13 Fig.1(a)) comprising a keyboard (e.g. 18 Fig.1(a));
a hinge (e.g. 17 Fig.1(a)) that joins the lid and the base portion; and
an overlay component (e.g. 16 Fig.1(a)) comprising a first overlay section (e.g. 16a Fig.1(a)) and a second overlay section (e.g. 16b Fig.1(a)), wherein the second overlay section is movable between a first position stacked on top of the first overlay section (e.g. where 16b attaches to 16a Fig.1(a)) and a second position in which the second overlay section covers at least part of the keyboard (e.g. shown Fig.1(g)).
Regarding claim 9 Pen discloses:
wherein the overlay component does not include active electronic components (e.g. transparent material, paragraph [0033]).
Claim(s) 1, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anzai et al. (US 6259597).
Regarding claim 1 Anzai discloses:
A compute device comprising:
a lid (e.g. 30 Figure 1) comprising a display (e.g. 32 Figure 3);
a base portion (e.g. 20 Figure 1) comprising a keyboard (e.g. 24 Figure 1);
a hinge (e.g. 22 Figure 1) that joins the lid and the base portion; and
an overlay component (e.g. 40 Figure 2) comprising a first overlay section (e.g. 52 Figure 2) and a second overlay section (e.g. 44 Figure 2), wherein the second overlay section is movable between a first position stacked on top of the first overlay section (e.g. stacking shown Figure 2) and a second position in which the second overlay section covers at least part of the keyboard (e.g. shown Figure 4).
Regarding claim 13 Anzai discloses:
the second overlay section comprises a first surface and a second surface opposite the first surface, wherein the first surface and the second surface are glass or ceramic (e.g. described col 3 line 65-col 4 line 14).
Claim(s) 1-4, 12, 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karidis et al. (US 2002/0024499).
Regarding claim 1 Karidis discloses:
A compute device comprising:
a lid (e.g. 208 fig.7) comprising a display (e.g. 202 fig.7);
a base portion (e.g. 102, 103, 105, 204, 208 fig.7) comprising a keyboard;
a hinge (e.g. 213 fig.7) that joins the lid and the base portion; and
an overlay component (e.g. 434, 150 fig.7) comprising a first overlay section (e.g. 434 fig.7) and a second overlay section (e.g. 150 fig.5), wherein the second overlay section is movable between a first position stacked on top of the first overlay section (e.g. on top fig.3) and a second position in which the second overlay section covers at least part of the keyboard (e.g. on top fig.3).
Regarding claim 2 Karidis discloses:
the second overlay section comprises a first surface and a second surface (e.g. faces of paper 150) opposite the first surface, wherein the base portion comprises a touch sensor (e.g. 105 Fig.11), wherein the touch sensor is to sense touches on the first surface of the second overlay section in the first position and sense touches on the second surface of the second overlay section in the second position (e.g. described paragraph [0073]).
Regarding claim 3 Karidis discloses:
the compute device is to interpret the touches (e.g. described paragraph [0080]) on the first surface of the second overlay section in the first position as input on a track pad (e.g. described paragraph [0077]).
Regarding claim 4 Karidis discloses:
the touch sensor is to detect hovers of one or more objects over the overlay component (e.g. described paragraph [0081]).
Regarding claim 12 Karidis discloses:
the first overlay section is a physically separate component from the second overlay section (e.g. shown/indicated fig.7).
Regarding claim 26 Karidis discloses:
one or more computer-readable media (e.g. plurality shown fig.4) comprising a plurality of instructions stored thereon (e.g. described paragraph [0089]) that, when executed by a compute device (e.g. 420 fig.4), causes the compute device to:
receive, from an overlay sensor (e.g. described paragraph [0073]) of the compute device, data indicative of a state of an overlay component, wherein the overlay component comprises a first overlay section and a second overlay section, wherein the second overlay section is movable between a first position in which the second overlay section is stacked on top of the first overlay section and a second position in which the second overlay section covers at least part of a keyboard of the compute device;
determine that the second overlay section is in the second position based on the data received from the overlay sensor;
receive data from a touch sensor (e.g. paragraph [0080]) of the compute device; and
interpret the data from the touch sensor as a touch on the overlay component based on a determination that the second overlay section is in the second position.
(please note that claim 26 depends from claim 1 and that claim 1 is an apparatus claim, and therefor claim 26 is regarded as a functional “adapted to” claim of an apparatus. A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971) (MPEP 2173.05(g), MPEP 2114). "Functional" terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function, and so insofar as claim 26 further limits and refines the limitations of the apparatus of claim 1 Karidis is read to disclose such structural characteristics and therefor discloses claim 26 for the reasons noted in the rejection above and shown in the prior art (MPEP 2111.04, MPEP 2111.05(III), MPEP 2114(II))).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that 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 effective filing dates of each claim that was not commonly owned as 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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karidis et al. (US 2002/0024499) in view of Citron (US 4926010).
Regarding claim 5 Karidis discloses:
The compute device of claim 2
Karidis does not explicitly disclose:
a metal grid
Citron teaches:
the touch sensor (e.g. 9 FIG.2) comprises a metal grid (e.g. “planar cross grid of wires” col 3 line 11) in the base portion below the overlay component (e.g. shown FIG.2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Citron, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “a significant space saving” and “An overall more attractive and compact unit results” (col 3 lines 50-53).
Claim(s) 6, 7, 8, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karidis et al. (US 2002/0024499) in view of Bathiche et al. (US 2013/0242495).
Regarding claim 6 Karidis discloses:
The compute device of claim 1
Karidis does not explicitly disclose:
magnetic hinge
Bathiche teaches:
Component (e.g. 1000 Fig.10) comprises a magnetic hinge (e.g. 1006 Fig.10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Bathiche, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “support a zero to negative insertion force to connect the computing device to the connection portion, e.g., such that the devices "click" together. Thus, a plurality of computing devices may be communicatively and physically coupled to the connection device, which may be used to support a variety of different usage scenarios” (paragraph [0034]).
Regarding claim 7 Karidis as modified discloses:
The compute device of claim 6
Karidis does not explicitly disclose:
one or more magnets in the first section and one or more magnets in the second section, wherein the one or more magnets in the first section are attracted to the one or more magnets in the second section along a first plane when the second section is in the first position and along a second plane when the second section is in the second position, the first plane substantially perpendicular to the second plane
Bathiche teaches:
one or more magnets (e.g. 1006 Fig.10) in the first section (e.g. 202 Fig.10) and one or more magnets (e.g. 1008 Fig.10) in the second section (e.g. 104 Fig.10), wherein the one or more magnets in the first section are attracted to the one or more magnets in the second section along a first plane when the second section is in the first position (e.g. shown Fig.10) and along a second plane when the second section is in the second position (e.g. shown Fig.12), the first plane substantially perpendicular to the second plane.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Bathiche, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “support a zero to negative insertion force to connect the computing device to the connection portion, e.g., such that the devices "click" together. Thus, a plurality of computing devices may be communicatively and physically coupled to the connection device, which may be used to support a variety of different usage scenarios” (paragraph [0034]).
Regarding claim 8 Karidis as modified discloses:
The compute device of claim 6
Karidis does not explicitly disclose:
smooth transition
Bathiche teaches:
a smooth transition (e.g. rounded surfaces shown Fig.10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Bathiche, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “support a zero to negative insertion force to connect the computing device to the connection portion, e.g., such that the devices "click" together. Thus, a plurality of computing devices may be communicatively and physically coupled to the connection device, which may be used to support a variety of different usage scenarios” (paragraph [0034]).
Regarding claim 14 Karidis discloses:
The compute device of claim 1
Karidis does not explicitly disclose:
detect whether the second overlay section is in the first position or the second position
Bathiche teaches:
detect whether the second overlay section is in the first position or the second position (e.g. described paragraph [0054]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Bathiche, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “to configure a user interface that continues across the devices” (e.g. ease of use, paragraph [0054]).
Claim(s) 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karidis et al. (US 2002/0024499) in view of YANAGISAWA et al. (US 2017/0359914).
Regarding claim 10 Karidis discloses:
The compute device of claim 1
Karidis does not explicitly disclose:
electronic paper display
YANAGISAWA teaches:
Component (e.g. 101 FIG.1A) comprises an electronic paper display (e.g. electrophoretic [0037]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of YANAGISAWA, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “the user can operate intuitively flexible displays on which texts, pictures, and the like are displayed as if reading a book by this technique” (e.g. user ease paragraph [0004]).
Regarding claim 11 Karidis as modified discloses:
The compute device of claim 10
Karidis does not explicitly disclose:
turn off the display in response to use of the electronic paper display
YANAGISAWA teaches:
turn off the display in response to use of the electronic paper display (e.g. described paragraph [0067]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of YANAGISAWA, as pointed out above, in Karidis, as one having ordinary skill in the art would have would have recognized the teaching, suggestion, and motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings (as pointed out above) to arrive at the claimed invention, and would have been motivated to do this with a reasonable expectation of success because such a combination and/or modification would have allowed for: “whereby the power consumption of the electronic device can be reduced” (paragraph [0059]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references cited on the PTO-892 disclose/teach similar electronic device housings with displays as those disclosed in the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THERON S MILLISER whose telephone number is (571)270-1800. The examiner can normally be reached 9-6.
Limited examiner interviews are available.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N. Hayman can be reached at (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THERON S MILLISER/Examiner, Art Unit 2841 /IMANI N HAYMAN/Supervisory Patent Examiner, Art Unit 2841
Prosecution Insights