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 .
Response to Amendment
The Amendments filed April 10, 2026 have been entered. Currently claim 1 has been amended, and claims 1, 3, 6-20 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 is not dependent on any independent or dependent claim. For expedited prosecution purposes, Examiner will interpret claim 3 as being dependent on claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim is dependent on a currently cancelled claim 2. For expedited prosecution purposes, Examiner will interpret claim 8 as being dependent on independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1, 6, 8-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lim (W.O. Application No. 2021172839 A1), in view of Ruaro (U.S. Application No. 20210096515 A1), and further in view of Martin (U.S. Patent No. 11106309 B1).
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);
an 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), and wherein the biometric sensor electrode is formed of a light-transmitting material (page 6, lines 8-9, bottom-up).
However, Lim does not disclose the antenna being a slot antenna.
Ruaro, in the same field of endeavor, teaches an electronic device (10) comprising a wireless circuitry (34) which includes one or more antennas such as antennas (40) (pa. 0034, 0036 & Fig. 2). The antennas include antennas with resonating elements that are formed from slot antenna structures, for example (pa. 0042), wherein the slot antenna resonating element is configured to transmit and receive radio-frequency signals at bands between 2.4 GHz and 5.0 GHz, in cellular telephone bands between 1.7 GHz and 2.7 GHz, in an ultra-wideband frequency band between about 5 GHz and 8.5 GHz (pa. 0063).
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 substituted the antenna of Lim with the slot antenna taught by Ruaro for the purpose of allowing for long-range communication.
However, Lim/Ruaro combination do 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.
Martin, in the same field of endeavor, teaches which teaches an electrode touch display smartwatch device (110) comprising a user interface (160) in communication with a transparent electrode integrated in an electrode touch display (110) via an RF antenna (Col. 9, lines 23-46 & Fig. 1). The transparent electrode is made of an optically transparent material (e.g., transparent conductive oxides (TCOs)) that has a sheet resistance (5.6-14.1 Ω/sq) (Col. 17, lines 39-58).
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 substituted the light-transmitting material of the biometric sensor electrode of Lim with the TCO material of the transparent electrode taught by Martin in order to enable the simultaneous high-fidelity electrical recordings and optical transmittance functionalities.
Regarding claim 6, Lim/Ruaro/Martin combination discloses wherein a gap is defined between the biometric sensor electrode and an active display area (513) of the display screen (Lim, see Fig. 8).
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 8, Lim/Martin combination discloses the invention substantially as claimed in claim 1 and discussed above.
However, they do not explicitly disclose wherein the frequency ranges from 0.6 Gigahertz to 10 Gigahertz.
Ruaro, in the same field of endeavor, teaches an electronic device (10) comprising a wireless circuitry (34) which includes one or more antennas such as antennas (40) (pa. 0034, 0036 & Fig. 2). The antennas include antennas with resonating elements that are formed from slot antenna structures, for example (pa. 0042), wherein the slot antenna resonating element is configured to transmit and receive radio-frequency signals at bands between 2.4 GHz and 5.0 GHz, in cellular telephone bands between 1.7 GHz and 2.7 GHz, in an ultra-wideband frequency band between about 5 GHz and 8.5 GHz (pa. 0063).
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 substituted the antenna of Lim with the slot antenna taught by Ruaro, including the slot antenna resonating element, for the purpose of allowing for long-range communication.
Regarding claim 9, Lim/Ruaro/Martin combination discloses wherein the cover comprises an optically transparent material (i.e., glass) (Lim, page 6, lines 16-17, bottom -up).
Regarding claim 10, Lim/Ruaro/Martin combination discloses wherein the optically transparent material comprises a glass material (Lim, page 6, lines 16-17, bottom -up).
Regarding claim 11, Lim/Ruaro/Martin combination discloses further comprising:
an electrical contact (512) disposed on the bottom surface of the cover, the biometric sensor electrode contacting the electrical contact (Lim, page 6, lines 12-14, bottom-up).
Regarding claim 14, Lim discloses wherein the top surface and the bottom surface of the cover each comprise a flat surface (see Fig. 8).
However, Lim/Martin combination do not disclose the periphery of the cover comprise a curved surface.
Ruaro, in the same field of endeavor, teaches a display (14) includes a display cover layer (98), wherein the periphery of the cover comprises a curved surface (pa. 0064 & Fig. 6).
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 Ruaro, 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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lim, Ruaro, and Martin as applied to claim 1 above, and further in view of Radio-frequency and optically transparent radome de-icing materials, hereinafter referred to as Young-Ryeul.
Regarding claim 3, Lim/Ruaro/Martin combination discloses the invention substantially as claimed in claim 1 discussed above.
However, they do not disclose wherein the sheet resistance is about 3000 ohms per square for the frequency at which the slot antenna is operable.
Young-Ryeul, in the same field of endeavor, teaches a transparent conductive oxide (TCO) film (specifically a fluorine-doped tin oxide (FTO) film) being lightweight and high optically transparent in radio frequency applications, wherein the sheet resistance of the FTO film was found to be varied from 9 to 5000 Ω sq−1 with 0.219 to 90.0% RF transmission at the 8.2 to 12.4 GHz region (abstract).
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 substituted the light-transmitting material of the biometric sensor electrode of Lim with the TCO material, specifically the TCO material taught by Young-Ryeul in order to enable for excellent RF transparency and sheet resistance properties at RF high frequencies.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lim, Ruaro, and Martin as applied to claim 1 above, and further in view of Wei (U.S. Application No. 20180166772 A1).
Regarding claim 7, Lim/Ruaro/Martin combination discloses the invention substantially as claimed in claims 1 and 6 discussed above.
However, they do 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, Ruaro, and Martin as applied to claim 1 above, and further in view of Jeong (E.P. Application No. 3357415 B1).
Regarding claim 12, Lim/Ruaro/Martin combination discloses the invention substantially as claimed in claim 1 discussed above.
However, they do 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 a transparent conductive oxide such as 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/Ruaro/Martin combination do 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.
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 Ruaro (U.S. Application No. 20210096515 A1).
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, an RF antenna, 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.” Ruaro, however, provides for a slot antenna (40-1) defined by a gap (88) between the conductive housing (12W) and the printed circuit board (94) (pa. 0065, 0070, 0082 & Fig. 6). 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 Ruaro 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.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 04/10/2026, with respect to the 102 rejection of claim 1 under Lim and the 103 rejection of claim 2-5 under Lim in view of Puchades have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, the following new grounds of rejection have been set forth in the action above:
Claims 1, 6, 8-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lim (W.O. Application No. 2021172839 A1), in view of Ruaro (U.S. Application No. 20210096515 A1), and further in view of Martin (U.S. Patent No. 11106309 B1).
It is the Examiner’s position that the newly filed rejections based on the combination of references are tenable for at least the reasoning set forth in the action above.
Conclusion
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/A.V.G./Examiner, Art Unit 3794 /Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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