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 Species B in the reply filed on 2025-12-22 is acknowledged. The traversal is on the ground(s) that: examiner does not explain any concrete difference in the field of search beyond conclusory statement, the office action does not correspond to the claimed subject matter, the record does not establish serious search burden, does not recite the mutually exclusive characteristics of the species.
This is not found persuasive because:
With respect to the field of search (i.e. establishing search burden) of the restriction: The difference in classification IS the “concrete difference in the field of search” between the identified inventions that applicant argues is not present (MPEP 808.02(a)). As the inventions have separate classification thereof, they prima facia establish search burden, no additional rational is required, and patents need not be cited to show separate classification (MPEP 808.02(a)).
Regarding the correspondence of the claimed subject matter, it must first be noted that in order to show distinctness between product and process of use, only one rationale need be provided (MPEP 806.05(h)), the argued office action provides two, one for each of group II and III. Namely, the distinctness between I and II is that I, while recited as moveable, is not required to move in order to disclose the claims as recited, a materially different product from what is required for claim 16 (see e.g. YU FIG.6/FIG.7 where, while movable, 300/400 remains adjacent to both 100/200 without 300/400 being moved); and the distinctness between I and III is the process of claim 22 can be operated on a hinge-less device, a process of using that can be practiced with another materially different product.
Regarding search burden between I and III, as noted above: As the inventions have separate classification thereof, they prima facia establish search burden, no additional rational is required (MPEP 808.02(a)). Claim 1 is an apparatus claim, and method claims in an apparatus claim are regarded as a functional “adapted to” limitation 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. (see also MPEP 2114(IV)) Additionally it must be noted that by the nature of both “Product and Process of Using”( 806.05(h)) and “Combination and Subcombination”( 806.05(c)) rationales for restriction, the office acknowledges that the restricted groups share “at least some” common elements: the question before the office is whether the groups share sufficient subject matter that they cannot be separated, which for the reasons set out in the restriction and for the reasons above, the office concludes they do not.
Regarding search burden between II and III, as noted above: As the inventions have separate classification thereof, they prima facia establish search burden, no additional rational is required (MPEP 808.02(a)). Also as noted above, “Combination and Subcombination”( 806.05(c)) rationale for restriction, by it’s nature, acknowledges that the combination and subcombination share some elements (recited in the MPEP as ABbr Bsp), but they are sufficiently different to establish that the inventions are distinct from one another for the reasons set out above and in the prior action.
Regarding reference in the office action between the species. By way of example, group C FIG.14 paragraph [0058] (citing the PgPub) recites in part “…allowing the camera 1404 to view the overlay component 806…” As paragraph [0058] refers back to component 806 which is a component that is part of group A, at least element 806 must necessarily be shared between them. Election of, for example, group C would result in examination of the subject matter required by group C including subject matter that is shared between group C and other groups.
As recited in MPEP 809.02(a) that for a reply to an election of species to be complete the applicant must include “identification of the claims encompassing the elected species or grouping of patentably indistinct”. I.e. applicant identifies the claims to the species, not examiner. As to the argued mutually exclusive features, in the paragraphs cited in the election of species the applicant establishes the exclusive features of their own invention. Again citing to group C paragraph [0058] establishes the exclusive features of e.g. an extension arm for a camera, which is not a feature recited in any other species, and thus establishes them as “mutually exclusive” (MPEP 806.04(f)).
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first set of one or more magnets” of claim 13 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
While magnets are shown in other dissimilar embodiments, there are no magnets shown as part of either 806 or 802 in the present application.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Han et al. (US 2013/0207897).
A compute device comprising:
a lid (e.g. 1 Fig.1). comprising a display;
a base portion (e.g. 2 Fig.1) comprising a keyboard (e.g. virtual with 4 down paragraph [0007]);
a hinge (e.g. 3 Fig.1) that joins the lid and the base portion; and
an overlay component (e.g. 4 Fig.1), wherein the overlay component is movable between a first position adjacent the lid and a second position adjacent the base portion (e.g. described paragraph [0034])
Claim(s) 1, 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YU et al. (US 2010/0128428).
Regarding claim 1 YU discloses:
A compute device comprising:
a lid (e.g. 200 FIG.6) comprising a display;
a base portion (e.g. 100 FIG.6) comprising a keyboard;
a hinge (e.g. shown but not pointed out unit between 100 and 200 FIG.2) that joins the lid and the base portion; and
an overlay component (e.g. 300/400 FIG.2), wherein the overlay component is movable between a first position adjacent the lid (e.g. FIG.6) and a second position adjacent the base portion (e.g. FIG.7).
Regarding claim 13 YU discloses:
a first set of one or more magnets (e.g. 206 FIG.4) to hold the overlay component in the first position (e.g. described paragraph [0029]). (drawing objection holding magnets not shown for embodiment)
Claim(s) 1, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oakley (US 2004/0001049).
Regarding claim 1 Oakley discloses:
A compute device comprising:
a lid comprising a display (e.g. 114 FIG.1);
a base portion (e.g. 112 FIG.1) comprising a keyboard (e.g. 111 FIG.1);
a hinge (e.g. shown not pointed out between 114, 112 FIG.1) that joins the lid and the base portion; and
an overlay component (e.g. 111 FIG.2), wherein the overlay component is movable between a first position adjacent the lid (e.g. FIG.2) and a second position adjacent the base portion (e.g. FIG.1).
Regarding claim 14 Oakley discloses:
the hinge allows the lid to rotate 360° relative to the base portion (e.g. shown FIG.6), wherein the hinge allows the overlay component to rotate at least 180° relative to the base portion (e.g. shown FIG.4).
Claim(s) 1, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anzai et al. (US6259597).
Regarding claim 1 Anzai discloses:
A compute device comprising:
a lid (e.g. 30 Figure 1) comprising a display (e.g. 32 Figure 1);
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 1), wherein the overlay component is movable between a first position (e.g. Figure 3) adjacent the lid and a second position (e.g. Figure 7) adjacent the base portion.
Regarding claim 15 Anzai discloses:
the overlay component does not include active electronic components (e.g. only resistive film sheets 46/48, Figure 2).
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) 2-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Han et al. US 2013/0207897) in view of Armstrong-Muntner (US 2014/0063049).
Regarding claim 2 Han discloses The compute device of claim 1
Han does not disclose:
electrically switchable between an opaque state and a clear state
Armstrong-Muntner teaches:
electrically switchable between an opaque state (e.g. FIG.5A) and a clear state (e.g. FIG.5B).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
Regarding claim 3 Han as modified discloses The compute device of claim 2
Han does not disclose:
a polymer-dispersed liquid crystal (PDLC) layer
Armstrong-Muntner teaches:
a polymer-dispersed liquid crystal (PDLC) layer (e.g. 520 FIG.5A).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
Regarding claim 4 Han as modified discloses The compute device of claim 3
Han does not disclose:
a polarizer, wherein the PDLC layer is able to electrically switch between a first field of view through the polarizer and a second field of view through the polarizer different from the first field of view
Armstrong-Muntner teaches:
a polarizer, wherein the PDLC layer is able to electrically switch between a first field of view (e.g. 520 FIG.5A) through the polarizer and a second field of view through the polarizer different from the first field of view (e.g. 520 FIG.5B).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
Regarding claim 5 Han as modified discloses:
one or more sensors to detect whether the overlay component is in the first position or the second position (e.g. described paragraph [0034]).
Regarding claim 6 Han as modified discloses:
a processor (e.g. paragraph [0034]);
one or more computer-readable media comprising a plurality of instructions stored thereon (e.g. read as inherent to “notebook” paragraph[0019], [0022]) that, when executed by the processor, cause the processor to turn the overlay component transparent in response to the overlay component being placed in the first position (e.g. described paragraph [0034]) and turn the overlay component in response to the overlay component being placed in the second position (e.g. described paragraph [0034])
Han does not disclose:
opaque
Armstrong-Muntner teaches:
turn the component transparent (e.g. 520 FIG.5B) and turn the component opaque (e.g. 520 FIG.5A).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
(please note that claim 6 depends from claim 1 and that claim 1 is an apparatus claim, and therefor claim 6 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 6 further limits and refines the limitations of the apparatus of claim 1 Han is read to disclose such structural characteristics and therefor discloses claim 6 for the reasons noted in the rejection above and shown in the prior art (MPEP 2111.04, MPEP 2111.05(III), MPEP 2114(II))).
Regarding claim 7 Han as modified discloses The compute device of claim 2
Han does not disclose:
a user of the compute device is able to select whether the component is in the opaque state or in the clear state
Armstrong-Muntner teaches:
a user of the compute device is able to select (paragraph [0089]) whether the component is in the opaque (e.g. 520 FIG.5A) state or in the clear state (e.g. 520 FIG.5B).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
Regarding claim 8 Han as modified discloses:
the overlay component comprises a touch sensor layer (e.g. described paragraph [0034]).
Regarding claim 9 Han as modified discloses:
a processor (e.g. paragraph [0034]);
one or more computer-readable media comprising a plurality of instructions stored thereon (e.g. read as inherent to “notebook” paragraph[0019], [0022]) that, when executed by the processor, cause the processor to map touch sensor coordinates dependent on whether the overlay component is in the first position or the second position (e.g. described paragraph [0034]).
Regarding claim 12 Han as modified discloses:
a processor (e.g. paragraph [0034]);
one or more computer-readable media comprising a plurality of instructions stored thereon (e.g. read as inherent to “notebook” paragraph [0019], [0022]) that, when executed by the processor, cause the processor to:
identify a user of the compute device (e.g. detect touch, paragraph [0034]);
switch the overlay component (e.g. described paragraph [0034])
Han does not disclose:
determine that a person other than the identified user of the compute device is visible in a field of view of a camera of the compute device; and
switch the component to the opaque state in response to the determination that the person other than the identified user is visible in the field of view
Armstrong-Muntner teaches:
a processor (e.g. paragraph [0111]);
one or more computer-readable media comprising a plurality of instructions stored thereon (e.g. paragraph[0136]]) that, when executed by the processor, cause the processor to:
identify a user of the compute device (e.g. described paragraph [0101]);
determine that a person other than the identified user of the compute device is visible in a field of view of a camera of the compute device (e.g. identifying as in paragraph [0126]); and
switch the component to the opaque state in response to the determination that the person other than the identified user is visible in the field of view (e.g. switching in response described paragraph [0118]).
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 Armstrong-Muntner, as pointed out above, in Han, 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 visual indicator for the state of the device and “a privacy screen for users or other bystanders.” (paragraph [0007])
(please note that claim 12 depends from claim 1 and that claim 1 is an apparatus claim, and therefor claim 12 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 12 further limits and refines the limitations of the apparatus of claim 1 Han is read to disclose such structural characteristics and therefor discloses claim 12 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(s) 2, 10, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Han et al. US 2013/0207897) in view of Hertel (US 2017/0235206).
Regarding claim 2 Han discloses The compute device of claim 1
Han does not disclose:
electrically switchable between an opaque state and a clear state
Hertel teaches:
electrically switchable between an opaque state and a clear state (e.g. described paragraph [0082]).
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 Hertel, as pointed out above, in Han, 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 decorative or informative patterns can be written on the variable transmission window to hide the non-uniformities which in practice always occur in such windows. In theory, a variable transmission window should display an absolutely uniform optical state in both its transmissive and non-transmissive optical states.” (paragraph [0135])
Regarding claim 10 Han as modified discloses The compute device of claim 2
Han does not disclose:
component comprises a display layer
Hertel teaches:
component comprises a display layer (e.g. described paragraph [0133]).
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 Hertel, as pointed out above, in Han, 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: “allows, useful and changing information such as name of business, opening hours, time, temperature, prices, advertising, menus, logos, images can be displayed.” (paragraph [0134])
Regarding claim 11 Han as modified discloses The compute device of claim 10
Han does not disclose:
display layer is an electronic paper display
Hertel teaches:
display layer is an electronic paper display (e.g. described paragraph [0133]).
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 Hertel, as pointed out above, in Han, 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: “allows, useful and changing information such as name of business, opening hours, time, temperature, prices, advertising, menus, logos, images can be displayed” (paragraph [0134]) “low cost per area, and require power only when switching.” (paragraph [0019])
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional art cited in toe PTO-892 disclose/teach similar circuit board housings with displays and hinges 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