DETAILED ACTION
This action is responsive to the preliminary amendment filed 10 September 2024.
Status of the Claims
Claim 4 is currently amended.
Claims 1-11 are pending.
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 C.F.R. § 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 C.F.R. § 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(I)(B)(1). For a reply to a non-final Office action, see 37 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 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 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent Nos. 10,969,941 and 11,875,021. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are generic to a species or sub-genus claimed in the aforementioned patents (i.e., the entire scope of one or more of the present claims fall within the scope of one or more of the claims of the aforementioned patents).
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 of this title, 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 1-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Telek et al., US 2012/0236173 A1, in view of Ciesla et al., US 2014/0043291 A1.
Regarding claim 1, the combination of Telek with Ciesla renders obvious an electronic device configured to communicate with a display device and one or more input devices, the electronic device comprising:
One or more processors; and memory storing instructions. Telek teaches a digital camera comprising a processor and memory. Telek fig. 1.
Displaying, via the display device, a first user interface. Telek teaches displaying a graphical user interface on an image display of the digital camera. Telek ¶ 58.
While displaying the first user interface, receiving, via the one or more input devices, a first user input. Telek teaches receiving user touch input to the image display. Telek ¶ 100.
The following limitations have been interpreted to be mutually exclusive, contingent limitations:
In response to receiving the first user input: in accordance with a determination that the first user input is received while the electronic device is not underwater, performing a first operation. Telek teaches determining that a digital camera is not underwater (i.e., normal environmental conditions) and providing a corresponding user interface. Telek ¶¶ 99-103, fig. 6A. The user interface allows for receiving user input to perform various operations such as select a mode or adjust settings. Id.
[In response to receiving the first user input:] in accordance with a determination that the first user input is received while the electronic device is underwater and that the first user input is an input with an intensity above a respective intensity threshold, performing a second operation. Telek teaches determining that a digital camera is underwater and providing a corresponding user interface. Telek ¶ 106-110, figs. 6C-6B. The user interface may comprise tactile user controls that can be activated by touch input to perform corresponding operations. Id. ¶¶ 106, 109-110, fig. 6B. Telek teaches that microfluidics may be used to produce transparent physical buttons. Id. ¶¶ 106, 110, fig. 6B. Telek does not explicitly disclose the use of an intensity threshold in order to determine if a touch input has been received at a tactile user control. However, Ciesla teaches the use of a threshold amount of deformation in order to register a touch input to a microfluidic button. Ciesla ¶ 26.
[In response to receiving the first user input:] in accordance with a determination that the first user input is received while the electronic device is underwater and that the first user input is an input with an intensity below the respective intensity threshold, forgoing performing the second operation. Telek teaches determining that a digital camera is underwater and providing a corresponding user interface. Telek ¶ 106-110, figs. 6C-6B. The user interface may comprise tactile user controls that can be activated by touch input to perform corresponding operations. Id. ¶¶ 106, 109-110, fig. 6B. Telek teaches that microfluidics may be used to produce transparent physical buttons. Id. ¶¶ 106, 110, fig. 6B. Telek does not explicitly disclose the use of an intensity threshold in order to determine if a touch input has been received at a tactile user control. However, Ciesla teaches the use of a threshold amount of deformation in order to register a touch input to a microfluidic button. Ciesla ¶ 26.
It would have been obvious before the effective filing date of the claimed invention to a person with ordinary skill in the art to modify Telek’s process of providing an underwater user interface with physical buttons with Ciesla’s process of registering input to a physical button based on a threshold amount of deformation. Such a modification would prevent accidentally registering input when a user intends to merely rest his finger on the button. See Ciesla ¶ 26.
Regarding claim 2, which depends on claim 1, Telek discloses wherein the first user input comprises a touch input. Telek ¶ 100.
Telek does not explicitly disclose, but Ciesla discloses the respective intensity threshold is a touch intensity threshold. Ciesla ¶ 26.
Regarding claim 3, which depends on claim 1, Telek discloses wherein performing the first operation comprises displaying a second user interface different from the first user interface. Telek ¶ 102.
Regarding claim 4, which depends on claim 3, Telek discloses wherein performing the first operation comprises: ceasing display of the first user interface; and displaying the second user interface. Telek ¶ 102.
Regarding claim 5, which depends on claim 1, Telek discloses wherein the second operation is different from the first operation. Telek ¶ 107, fig. 6C.
Regarding claim 6, which depends on claim 5, Telek discloses wherein:
Performing the first operation comprises displaying a second user interface different from the first user interface. Telek ¶ 102.
Performing the second operation comprises displaying a third user interface different from the first user interface and the second user interface. Telek ¶ 107 (“review mode”).
Regarding claim 7, which depends on claim 1, Telek discloses wherein: performing the second operation comprises ceasing display of the first user interface. Telek ¶ 107 (“review mode”).
Regarding claim 8, which depends on claim 7, Telek discloses in response to receiving the first user input: in accordance with a determination that the first user input is received while the electronic device is underwater and that the first user input is an input with an intensity below the respective intensity threshold, maintaining display of the first user interface. Telek teaches determining that a digital camera is underwater and providing a corresponding user interface. Telek ¶ 106-110, figs. 6C-6B. The user interface may comprise tactile user controls that can be activated by touch input to perform corresponding operations. Id. ¶¶ 106, 109-110, fig. 6B. Telek teaches that microfluidics may be used to produce transparent physical buttons. Id. ¶¶ 106, 110, fig. 6B. Telek does not explicitly disclose the use of an intensity threshold in order to determine if a touch input has been received at a tactile user control. However, Ciesla teaches the use of a threshold amount of deformation in order to register a touch input to a microfluidic button. Ciesla ¶ 26.
Regarding claim 9, which depends on claim 1, Telek discloses wherein displaying the first user interface comprises: in accordance with a determination that the electronic device is underwater, displaying, within the first user interface, a first indication indicating that the electronic device is underwater; and in accordance with a determination that the electronic device is not underwater, displaying the first user interface without displaying the first indication. Telek ¶ 108, fig. 6B (current mode icon 222).
Claim 10 is drawn to instructions stored in a medium that cause a device to perform the method recited in claim 1. Accordingly, this claim is rejected for substantially the same reasons as indicated in the above rejection of the corresponding claim.
Claim Rejections - 35 USC § 102 and/or 35 USC § 103
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 11 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Telek et al., US 2012/0236173 A1, or, in the alternative, under 35 U.S.C. § 103 as obvious over Telek et al., US 2012/0236173 A1, in view of Ciesla et al., US 2014/0043291 A1.
Claim 11 is drawn to the method performed by the device recited in claim 1. Accordingly, this claim is rejected under 35 U.S.C. § 103 for substantially the same reasons as indicated in the above rejection of the corresponding claim. Nevertheless, the method has been interpreted to recited three mutually exclusive, contingent limitations. Accordingly, the claim is also rejected under 35 U.S.C. § 102(a)(1) since, as explained above with respect to claim 1, Telek anticipates “in response to receiving the first user input: in accordance with a determination that the first user input is received while the electronic device is not underwater, performing a first operation.”
Conclusion
Although particular portions of the prior art may have been cited in support of the rejections, the specified citations are merely representative of the teachings. Other passages and figures in the cited prior art may apply. Accordingly, Applicant should consider the entirety of the cited prior art for potentially teaching all or part of the claims.
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Miura et al, US 2016/0337597 A1, discloses changing the functions of an electronic device when the electronic device is underwater.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Asher D Kells whose telephone number is (571)270-7729. The examiner can normally be reached Mon. - Fri., 8 a.m. - 4 p.m..
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Asher D. Kells
Primary Examiner
Art Unit 2171
/Asher D Kells/ Primary Examiner, Art Unit 2171
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