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 .
Claim Interpretation
Claim 1 recites that a microcircuit is connected to antenna means, and that all of the antenna means to which the microcircuit is connected is located on one side of an axis of symmetry passing through a center of the watch bezel. Applicant’s remarks appear to indicate that the microcircuit and the antenna must be on one and a same side, rather than merely the antenna. See pages. 2-3 of the remarks. This limitation needs to be positively claimed, but for the purposes of compact prosecution, the claims have been read as requiring the microcircuit and antenna being on one and the same side.
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, “all of the antenna means to which the microcircuit is connected” being located “on either side of an axis of symmetry passing through the centre of the bezel” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Fig. 4 shows the antenna (19) on one side of the axis of symmetry, but also shows the microcircuit (11) being on the axis of symmetry rather than being wholly on the antenna’s side.
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.
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 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/972,989 in view of Erentok (US 2018/0088724) and Sayem (US 10,944,158) because although the claims are not identical, copending claim 1 includes all of the limitations of present claims 1 and 2 except for the flange being an inner face, the outer face comprising a tactile area, the circuit comprising a layer of conductive material forming an electrode coating an inner face beneath the tactile area, a communication module comprising a microcircuit connected to antenna means for communicating with a communication network, and all of the antenna means to which the microcircuit is connected and all of the tactile control member comprising the tactile control circuit being located within the bezel on either side of an axis of symmetry passing through the center of the bezel. Erentok shows (Fig. 3) a flange (322) being an inner face, an outer face (320) comprising a tactile area, a layer of conductive material forming an electrode (312) coating an inner face (322) beneath the tactile area, and all of a tactile control member comprising a tactile control circuit (312) being located on one side (right half of Fig. 3) of an axis of symmetry passing through a bezel center. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the inner face of ‘989 to be a flange, combined the outer face and electrode of Erentok with the invention of ‘989, and positioned the tactile control circuit of Erentok on one side. One of ordinary skill in the art would have been motivated to make this modification to create a bezel capable of receiving touch inputs.
Sayem shows (Fig. 9) a communication module comprising a microcircuit (18) connected to antenna means (30) for communicating with a communication network, wherein all of the antenna means to which the microcircuit is connected is positioned on one side (left half of Fig. 9) of an axis of symmetry (vertical line bisecting Fig. 9) passing through a bezel center ([0025] discloses a bezel). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified all of the antenna ‘989 to be on one side to minimize electrical coupling.
Claims 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10, respectively, of copending Application No. 17/972,989 in view of Erentok and Sayem, and further in view of Randjelovic (US 2022/0171345) because claims 9-10 include all the limitations of claims 6-7 except for the upper surface of a support element of a second portion being an inner face. Randjelovic teaches (Fig. 4) an upper surface (13a) of a support element (11) of a second portion (11) being an inner face (13a faces the inside of 7a). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified upper surface of ‘989 to be an inner face, as taught by Randjelovic. One of ordinary skill in the art would have been motivated to make this modification to create an easily-disassembled watch that allows for easy replacement of components.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 17/972,989 in view of Erentok, Sayem, and Randjelovic because claim 11 includes all the limitations of claim 8.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 17/972,989 in view of Erentok and Sayem because claim 12 includes all the limitations of claim 9.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 17/972,989 in view of Erentok and Sayem because claim 13 includes all the limitations of claim 10.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 17/972,989 in view of Erentok and Sayem because claim 14 includes all the limitations of claim 11 except for the watch being a smart watch. Erentok teaches a smartwatch ([0044]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the watch of ‘989 to be a smartwatch to create a watch capable of communicating and receiving touch inputs.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
In the 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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Erentok (US 2018/0088724) in view of Sayem (US 10,944,158).
Regarding claim 1, Erentok teaches an electronic watch (Figs. 1, 3) comprising a case provided with a bezel (102) entirely or partially forming a tactile interface of said watch ([0015]-[0016]), wherein said bezel (102) comprising an antenna circuit (308, 318 and [0021]-[0022]) of a communication module (306 and [0021]) of the watch (1) and is provided with a body (102) comprising inner (312, 322) and outer faces (318, 320), the inner face comprising a tactile control circuit (electrodes for sensing touch in [0018] and [0023]) of a tactile control member (102) of the watch and the outer face comprising at least one tactile area (320 and [0025]), said tactile control circuit comprising at least one layer made of a conductive material forming an electrode ([0018] and [0023]) located beneath said at least one tactile area (320). Erentok teaches all of the tactile control member comprising tactile control circuit (312) being located within the bezel on one side of an axis of symmetry passing through the center of the bezel.
Erentok does not explicitly teach all of the communication module comprising the antenna circuit being located within the bezel on either side of an axis of symmetry passing through the center of the bezel.
Sayem teaches (Fig. 9) a communication module comprising a microcircuit (18) connected to antenna means (30) for communicating with a communication network, wherein all of the antenna means (30) is located within a bezel on a side of an axis of symmetry passing through a center of the bezel. Fig. 9 shows the antenna 30 along a left side wall 38 of the watch, and [0025] discloses a bezel above the side wall 38.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the antenna of Erentok for the antenna of Sayem, so that all of the antenna circuit is located within the bezel on either side of an axis of symmetry passing through the center of the bezel. One of ordinary skill in the art would have been motivated to make this substitution as a predictable and known configuration for antennas, and to reduce electrical coupling with other electrical components ([0025] of Sayem).
Regarding claim 2, claim 2 is a product-by-process claim because the claim language recites coating an inner face with a layer of conductive material through physical vapor deposition of the conductive material or through micrometric-scale selective printing. These steps have been given little patentable weight because 1) the determination of patentability in product-by-process claims is based on the product itself, and 2) a product-by-process claim is unpatentable if the product is the same as or obvious from a product of the prior art, even if the prior art product was made by a different process. In re Thorpe et al., 227 USPQ 964 (Fed. Cir. 1985).
Therefore, Erentok teaches (Fig. 3) the electronic watch according to claim 1, wherein said at least one layer made of a conductive material forming the electrode coats a portion of the inner face defined beneath said at least one tactile area (320) of the outer face. Paragraph [0018] teaches electrodes on a positional element, paragraph [0023] teaches 312 being a positional element, and the Fig. 3 shows 312 positioned below 320.
Regarding claim 3, Erentok teaches the electronic watch according to claim 2, wherein the layer made of a conductive material coating said portion of the inner face (312) has a surface area which is smaller than the surface area of said tactile area of the outer face (320). See Fig. 3.
Regarding claim 4, Erentok teaches the electronic watch according to claim 1, wherein the inner face comprises several electrodes per tactile area ([0041]).
Regarding claim 7, Erentok teaches (Fig. 3) the electronic watch according to claim 1, wherein said at least one layer made of conductive material forming the electrode (312) is formed over a second portion of the inner face (the portion where 312 attaches to 322) of the bezel (102).
Regarding claim 9, Erentok teaches (Figs. 2-3) the electronic watch according to claim 1, wherein the control circuit comprises a microcontroller (204, 316) connected to said at least one electrode (206, 312) via at least one electrical connecting element (210).
Regarding claim 10, Erentok teaches the electronic watch according to claim 1, wherein the bezel is manufactured of at least one dielectric and/or electrically non-conductive material (302 in Fig. 3 and [0022]).
Regarding claim 11, Erentok teaches the electronic watch according to claim 1, wherein the watch is a smartwatch comprising the bezel ([0044]).
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Erentok in view of Sayem as applied to claim 1, and further in view of Beaucourt (US 2018/0219279).
Regarding claim 6, Erentok teaches the electronic watch according to claim 1, wherein the antenna circuit formed over a first portion of the inner face. Paragraph [0022] teaches an antenna 318 and an antenna feed 318; there therefore must be a circuit connecting 318 and 308 located over a first portion of the inner face 322 in Fig. 3.
Erentok does not teach the antenna circuit comprising first and second strands, each strand having proximal and distal ends and extending in parallel between their proximal and distal ends, the strands being connected to one another by their distal ends as well as at their proximal ends.
Beaucourt teaches (Fig. 2) an antenna circuit comprising first and second strands (203), the strands extending in parallel and being connected to one another at distal and proximal ends (Fig. 2, “Bottom Perspective View”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the antenna circuit of Erentok for the antenna circuit of Beaucourt. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of forming a conductive loop antenna that also provides structural support and cosmetic appeal ([0019] of Beaucourt).
Regarding claim 8, Erentok in view of Sayem and Beaucourt discloses (Fig. 9 of Sayem) the electronic watch according to claim 6, wherein the microcircuit (18) is connected to the first and second strands (Fig. 9 of Sayem and Fig. 2 of Beaucourt) via an electrical connecting element (18).
Response to Arguments
Applicant's arguments filed 2025-12-17 have been fully considered but they are not persuasive. Applicant argues that element 20 of Sayem is connected to the first antenna 30 according to Fig. 6. Therefore, element 20 is disposed on both sides of the center of Sayem’s watch frame, so that all of the antenna means to which element 20 is connected are not on one side of an axis of symmetry passing through the center of the bezel.
However, element/microcircuit 20 is not claimed to be part of the antenna circuit. Applicant’s claim 1 only recites that the microcircuit is connected to the antenna circuit.
Furthermore, Figs. 6 and 9 of Sayem are two different embodiments. Fig. 5 of Sayem shows the electrical connections of Fig. 9’s embodiment. Even if Applicant intends for the claimed microcircuit to be part of the antenna, Sayem meets the claim’s limitations because element 18 is a microcircuit that is disposed on a same side of the axis of symmetry as the antenna.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at (571) 272-2009.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/EDWIN A. LEON/ Primary Examiner, Art Unit 2833