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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/5/26 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/369,700, fails to provide adequate enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for Claim 21 of this application. The ‘700 application provides, e.g., no diagrams or direction in terms of how the claimed mechanisms would function. Only a single sentence, instead, appears in the ‘700 directing how to make and/or use the claimed “activation of pins that transition the plurality of resilient domes from the second concave position to the first convex position.” Therefore, the effective filing date of Claim 21 is that of the non-provisional Application, namely 7/28/23.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 is directed to an apparatus (“handheld electronic device”) and method steps of using that device (“turns off…when…transitions from…position”) and is thereby indefinite. See MPEP 2173.05(p)(II).
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.
Claims 1, 4, 6-7, 9, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PGPUB US 20130116050 A1 by Albrecht et al (“Albrecht”).
In regard to Claim 1, Albrecht teaches a handheld electronic device comprising:
a housing and a printed circuit board assembly thereinside;
(see, e.g., F1, 18 in regard to “housing” and, e.g., F8, 30 in regards to PCB);
a plurality of resilient domes protruding from the housing, wherein each of the plurality of resilient domes covers a light emitting diode and a touch sensitive input, each of the resilient domes transitionable from a first convex position to a second concave position;
(see, e.g., F1, 18 and, e.g., p51-53 in regard to the buttons being “formed of a single material such a silicone, rubber, or other suitable material” that is “domed” and has a “crush zone”, and which are, thereby, capable of transforming from a concave shape to a convex one when depressed; see, e.g., F8, 32 and p28 in regard to LED’s);
a programmable, interactive system including a microprocessor and the touch sensitive inputs mounted within the housing, wherein the touch sensitive inputs are electrically connected to the microprocessor and operative to sense when one or more of the plurality of resilient domes transitions from the first convex position to the second concave position; and
(see, e.g., F8, 31 (“microprocessor”); and, e.g., p53);
the light emitting diodes mounted within the housing, electrically connected to the printed circuit board assembly
(see, e.g., F8, 32 and p28).
In regard to Claim 4, Albrecht teaches these limitations. See, e.g., F8, 32 and p28.
In regard to Claim 6, Albrecht teaches these limitations. See, e.g., p69.
In regard to Claim 7, Albrecht teaches the buttons having certain decorative indicia printed on them (see, e.g., p52). To the extent that this may not necessarily teach the claimed visual appearance as a “discrete letter of the English alphabet” there is no functional relationship between that appearance and the button/dome upon which it appears and, thereby, it fails to distinguish over the cited prior art. See MPEP 2111.05.
In regard to Claim 9, Albrecht teaches these limitations. See, e.g., p69.
In regard to Claim 20, Albrecht teaches these limitations. See, e.g., p64.
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.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by PGPUB US 20230249093 A1 by Zhan (“Zhan”), in view of admitted prior art.
In regard to Claim 1, Zhan teaches a handheld electronic device comprising:
a housing and a printed circuit board assembly thereinside;
(see, e.g., F1, 1 in regard to “housing” and, e.g., F4, 4 in regards to PCB);
a plurality of resilient domes protruding from the housing, wherein each of the plurality of resilient domes covers a light […] and a touch sensitive input, each of the resilient domes transitionable from a first convex position to a second concave position;
(see, e.g., F1, 2 in regard to the buttons; see, e.g., F4, 5 in regard to lights);
a programmable, interactive system including a microprocessor and the touch sensitive inputs mounted within the housing, wherein the touch sensitive inputs are electrically connected to the microprocessor and operative to sense when one or more of the plurality of resilient domes transitions from the first convex position to the second concave position; and
(see, e.g., F4, 4 and p59-60 (“microprocessor” and F4, 42 (“operative to sense”));
the light[s] mounted within the housing, electrically connected to the printed circuit board assembly
(see, e.g., F5, 5 and p71-72)
Furthermore, to the extent that Applicant claims “light emitting diodes” these were rendered admitted prior art in the prior Office action and it would have been obvious to have employed these as the lights of the device otherwise taught by Zhan, in order to save power.
In regard to Claim 21, Zhan teaches these additionally claimed limitations. See, e.g., F4, 33 and p36.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
Prosecution Insights