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 .
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.
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Response to Amendment
Claims 1 and 12 are amended in the response filed 02/06/2026. Claims 1-19 are under examination herein.
Response to Arguments
Applicant’s arguments, see Remarks pages 7-8, filed 02/06/2026, with respect to the rejections of claims 1 and 15 under U.S. Patent No. 12,144,123 have been fully considered and are persuasive. This U.S. Patent does not describe the amended claimed limitation “A wearable device comprising: … a flexible printed circuit board… and is configured to be in contact with at least a portion of a body of a user of the wearable device”. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Kang (US Patent Publication 2019/0311172).
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 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 15 of U.S. Patent No. 12,144,123 in view of Kang (U.S. Patent Publication 2019/0311172).
Regarding claims 1 and 12, although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 12 of the instant application describe the same invention as claims 1 and 15 of the reference application. Specifically, the independent claims 1 and 12 describe a housing with a first, second, and third surface that are opposite directions to one another, with a printed circuit board, electrode, and conductive connectors (in the form of a soldering part). Claims 1 and 15 of the reference application include the same limitations, and while they are not verbatim recitations of the instant application, the reference application does describe the same claimed invention. For this reason, it is the Examiner’s position that the instant application is subject to a non-statutory double patenting rejection.
However, the additional claimed limitation of both claims 1 and 12 “and is configured to be in contact with at least a portion of the body of a user of the wearable device” is not taught by U.S. Patent No. 12,144,123. Kang does teach this limitation in an analogous wearable device. Kang teaches in claim 3 of “a printed circuit board interposed between the fingerprint sensor and the pressure sensor,” suggesting that it is known to use printed circuit boards in wearable devices. Moreover, Kang teaches in p.[0230] that “A user may perform a “touch” (including a contact using an electronic pen) on the window 2610 by contacting the window 2610 by contacting the window 2610 by using a portion of his/her body”, suggesting that it is known to have a wearable device with a printed circuit board that is configured to be in contact with at least a portion of the device. Note that the Examiner is considering the fingerprint sensor is an electrode, given that it fits the broadest reasonable interpretation of an electrode (wherein an electrode is a “a conductor through which electricity enters or leaves an object, substance, or region according to Meriam Webster Dictionary). This is further supported by Kang p.[0072] which states that the fingerprint sensor may include electrodes. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a printed circuit board within a wearable device, and moreover, an electrode that is configured to be in contact with at least a portion of the wearable device. As stated in Kang, the use of the fingerprint sensor allows for fingerprint recognition and may perform a function of authenticating a fingerprint of a user based on the fingerprint sensor (p.[0002]).
Allowable Subject Matter
Claims 1-11 and 13-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Abigail M Bock whose telephone number is (571)272-8856. The examiner can normally be reached M-F 7:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 5712724764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABIGAIL BOCK/Examiner, Art Unit 3794
/LINDA C DVORAK/Primary Examiner, Art Unit 3794