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 without traverse of Group I (claims 1-14) in the reply filed on 12/01/2025 is acknowledged.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/01/2025.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application 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, 6, and 9-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lim (W.O. Application No. 2021172839A1).
Regarding independent claim 1, Lim discloses a wearable computing device (200, 400) (page 4, lines 18-20 & Fig. 2) comprising:
a conductive housing (210) (page 4, lines 21-25);
a printed circuit board (480) at least partially disposed within the conductive housing (page 4, last paragraph & Fig. 4);
a slot antenna (450) defined by a gap (space defined by structural components like battery 470, support member 460, display 220, and front plate 201) between the conductive housing and the printed circuit board (page 4, last paragraph). Examiner is interpreting the term ‘gap’ as any unfilled or filled space/break in an object or between two objects;
a display (220) screen electrically coupled to the printed circuit board (page 5, lines 10-11, bottom-up);
a cover (511) positioned on the display screen, the cover comprising a top surface and a bottom surface (page 6, lines 16-17, bottom-up); and
a biometric sensor electrode (553) positioned partially on the top surface of the cover (page 5, lines 20-21 and line 31), the biometric sensor electrode at least partially wrapping around a periphery of the cover (see Fig. 8).
Regarding claim 6, Lim discloses wherein a gap is defined between the biometric sensor electrode and an active display area (513) of the display screen.
Examiner is interpreting the term ‘gap’ as any unfilled or filled space/break in an object or between two objects. In this case, a gap (defined by the cover glass 511 and the touch layer 513) exists between at least a top portion of the biometric sensor electrode and the active display area.
Regarding claim 9, Lim discloses wherein the cover comprises an optically transparent material (i.e., glass) (page 6, lines 16-17, bottom -up).
Regarding claim 10, Lim discloses wherein the optically transparent material comprises a glass material (page 6, lines 16-17, bottom -up).
Regarding claim 11, Lim discloses further comprising:
an electrical contact (512) disposed on the bottom surface of the cover, the biometric sensor electrode contacting the electrical contact (page 6, lines 12-14, bottom-up).
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.
Claims 2-5, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lim as applied to claim 1 above, and further in view of Puchades (U.S. Application No. 20170331172 A1).
Regarding claim 2, Lim discloses the biometric sensor electrode is formed of a conductive material capable of receiving or transmitting an electrical signal in contact with the user's body (page 5, lines 31-32).
However, Lim does not disclose wherein the biometric sensor electrode has a sheet resistance such that the biometric sensor electrode is at least partially radio frequency transparent at a frequency at which the slot antenna is operable.
Puchades, in the same field of endeavor, teaches a sensor antenna including a thin film material including a sheet resistance capable of being modified by an external stimulus where the antenna response varies over a range of sheet resistance values (pa. 0036).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the thin film material with the sheet resistance of Puchades to the biometric sensor electrode of Lim to allow the electrode to exhibit a calibrated change in sheet resistance when exposed to an external stimulus (Puchades, pa. 0037).
Regarding claim 3, Lim discloses the invention substantially as claimed in claims 1-2 and discussed above.
However, Lim does not disclose wherein the sheet resistance is about 3000 ohms per square for the frequency at which the slot antenna is operable.
Puchades, in the same field of endeavor, teaches the thin-film is fabricated so that sheet resistance is between about 0.1 ohm/sq and about 1000 ohm/sq (pa. 0039).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the sheet resistance to be about 3000 ohms per square, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Lim discloses the biometric sensor electrode is formed of a conductive material capable of receiving or transmitting an electrical signal in contact with the user's body (page 5, lines 31-32).
However, Lim does not disclose wherein the biometric sensor electrode has a sheet resistance such that the biometric sensor electrode supports radio frequency currents for loading the slot antenna at a frequency at which the slot antenna is operable.
Puchades, in the same field of endeavor, teaches a sensor antenna including a thin film material including a sheet resistance capable of being modified by an external stimulus where the antenna response varies over a range of sheet resistance values (pa. 0036).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the thin film material with the sheet resistance of Puchades to the biometric sensor electrode of Lim to allow the electrode to exhibit a calibrated change in sheet resistance when exposed to an external stimulus (Puchades, pa. 0037).
Regarding claim 5, Lim discloses the invention substantially as claimed in claims 1, 4 and discussed above.
However, Lim does not disclose wherein the sheet resistance is less than about 200 ohms per square for the frequency at which the slot antenna is operable.
Puchades, in the same field of endeavor, teaches the thin-film is fabricated so that sheet resistance is between about 0.1 ohm/sq and about 1000 ohm/sq (pa. 0039).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the sheet resistance to be about 3000 ohms per square, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 8, Lim discloses the invention substantially as claimed in claims 1-2 and discussed above.
However, Lim does not explicitly disclose wherein the frequency ranges from 0.6 Gigahertz to 10 Gigahertz.
Puchades, in the same field of endeavor, teaches a resonance frequency range of ˜1-5- 1.7 GHz (pa. 0052, 0056).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the frequency range of the wearable computing device of Lim for the purpose of performing at an optimal level based on the designs of the biometric sensor electrode and the slot antenna.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lim as applied to claim 1 above, and further in view of Wei (U.S. Application No. 20180166772 A1).
Regarding claim 7, Lim discloses the invention substantially as claimed in claims 1 and 6 discussed above.
However, Lim does not explicitly disclose wherein a width of the gap ranges from about 0.5 millimeters to about 3 millimeters.
Wei, in the same field of endeavor, teaches a wearable electronic device (100) comprising a display (130) and a PCB (140) comprising a sensor (analogous to the biometric sensor electrode of Lim) (pa. 0042, 0051 & Fig. 3), wherein the distance between these two components is about 2.5 mm (identified by the thickness of the batter 135) (pa. 0057).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the size of the gap of Lim to be in the range of about 0.5 millimeters to about 3 millimeters, as taught by Wie, since the biometric sensor electrode and the active display area of the wearable computing device of Lim would seem to operate well with a gap of these distances.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lim as applied to claim 1 above, and further in view of Jeong (E.P. Application No. 3357415 B1).
Regarding claim 12, Lim discloses the invention substantially as claimed in claim 1 discussed above.
However, Lim does not disclose a physical vapor deposition (PVD) defined coating covering at least a portion of the biometric sensor electrode.
Jeong, in the same field of endeavor, teaches a wearable electronic device (300) comprising an electrode (431) which may be fully coated with indium tin oxide (ITO), wherein the coating is applied via a sputtering process, a CVD(Chemical Vapor Deposition) process, or a PVD(Physical Vapor Deposition) process (pa. 0074 & Fig. 3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the ITO coating of Jeong to the biometric sensor electrode of Lim for the purpose of providing the electrode with RF transparency properties, which allows radio waves to pass through it with minimal absorption, reflection, or interference. Furthermore, it would have been obvious to apply such coating using a PVD process in order to add superior hardness, wear resistance, corrosion protection, and conductivity/barrier properties to the biometric sensor electrode.
Regarding claim 13, Lim discloses wherein the biometric sensor electrode comprises a first portion (upper portion) positioned on the top surface of the cover, and a second portion (lower portion) positioned on the bottom surface of the cover (see Fig. 8).
However, Lim does not disclose wherein the portion of the biometric sensor electrode that is coated comprises at least one of the first portion of the biometric sensor electrode or the second portion of the biometric sensor electrode.
Jeong, in the same field of endeavor, teaches a wearable electronic device (300) comprising an electrode (431) which may be fully coated with indium tin oxide (ITO), wherein the coating is applied via a sputtering process, a CVD(Chemical Vapor Deposition) process, or a PVD(Physical Vapor Deposition) process (pa. 0074 & Fig. 3). Therefore, all portions of the electrode are coated by the ITO coating.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the ITO coating of Jeong to the first and second portion of the biometric sensor electrode of Lim for the purpose of providing the electrode with RF transparency properties, which allows radio waves to pass through it with minimal absorption, reflection, or interference.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lim as applied to claim 1 above, and further in view of Jeong (U.S. Application No. 20210030359 A1), henceforth referred to as Jeong359 .
Regarding claim 14, Lim discloses wherein the top surface and the bottom surface each comprise a flat surface.
However, Lim does not disclose the periphery of the cover comprise a curved surface.
Jeong359, in the same field of endeavor, teaches a wearable electronic device (400) comprising a display (120) which may take various shapes such as a circular shape, an oval shape, or a polygonal shape (pa. 0040 & Fig. 4).
It would have been an obvious matter of design choice to one having ordinary skill in the art at before the effective filing date of the claimed invention to have modified the shape of the periphery of the cover of Lim to be curved, as taught by Jeong350, since applicant has not disclosed that the particular shape of the periphery of the cover solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with either straight or curved shape.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-7, 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 11-12, 14, 17-18 of U.S. Application No. 20250004425 A1 in view of Lim (W.O. Application No. 2021172839A1).
Regarding instant claim 1, it is the Examiner’s position that copending independent claims 1 and 14 are narrower in some aspects given that the copending claim recites a plurality of the limitations that overlap, or otherwise narrower in scope than, those in instant claim 1. These narrower aspects include the claimed wearable computing device, a conductive housing, a display screen, a cover, and a biometric sensor electrode. With respect to the narrower aspects, the Examiner notes that it has been held that the generic aspects of the instant invention would be anticipated by the narrower species aspects of the copending claim. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
With respect to the broader aspects of the copending claim, the Examiner notes that the difference between the instant claim 1 and the copending claims 1 and 14 exists in that the copending claims 1, 14 fails to provide for “a slot antenna defined by a gap between the conductive housing and the printed circuit board.” Lim, however, provides for a device as that of the copending claim and specifically contemplates the wearable device to include a slot antenna (450) defined by a gap (space defined by structural components like battery 470, support member 460, display 220, and front plate 201) between the conductive housing and the printed circuit board (page 4, last paragraph). Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have added the slot antenna of Lim in combination with the wearable device in copending claims 1 and 14 in order to provide transmit or receive a signal or power to the outside (e.g., an external electronic device).
With respect to dependent claims 6-7, 11-13, see copending application dependent claims 11-12, 17-18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schlub (U.S. Application No. 20110012794 A1) an electronic device may have a housing in which an antenna is mounted.
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794