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 Arguments
Applicant's arguments filed 2/26/26 have been fully considered but they are not persuasive.
Applicant asserts that Piquerez and O’Brien fail to describe the electrical component conductively coupled to the metal cap and the metal base. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The grounds of rejection set forth a clear reason why the feature was obvious. Providing grounding is an essential feature in portable electronic device design. Applicant’s argument does not persuasively address the combination.
Applicant asserts the combination would likely result in damage. This argument is not persuasive. There is no basis to draw such a conclusion. Applicant’s position that compression would somehow cause damage is not well founded. The combination in question is about electrical connection, not physical connection. The compression structure would provide excellent structural and physical protection and support. Electrical connection can be achieved a wide number of different ways. One such common technique is to employ a flexible electrical connection such as a conductive wire or trace. Nothing in the references or applicant’s argument would overcome the simple state of the art as viewed by one having ordinary skill in the art. The argument is not persuasive and the rejection is maintained. Applicant asserts the microprocessor could be placed in a position where it could become crushed/damaged during tightening. This argument is not persuasive. That is speculation and there’s no evidence to that end. Moreover, the motivation does not override the motivations of record. Those skilled in the art are fully capable of designing sufficient structural features to prevent damage. A compressible body would even improve structural protection by providing protection against shocks and impacts as a well-established field in the art of horology and watch design. Moreover, the aspect applicant has the biggest issue with – compressibility - would expressly prevent damage because it would be compressed rather than convey an excessive force to the structure.
Applicant asserts that the rejection is formed in hindsight. This argument is not persuasive. The concept of grounding is exceptionally well established in the electrical arts. 35 USC 103 requires “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”. Emphasis is provided to the phrases as a whole and to one having ordinary skill in the art. See for instance US 2014/0016443 – Klopfenstein – paragraphs 10-11: [0010] a printed circuit board for carrying the resonator case and including electrical connection terminals for connection to the electrical connection pads of the resonator case, [0011] wherein the resonator case is fixedly held in a case structure of the electronic module, sandwiched between two elements for damping mechanical shocks, and wherein the damping elements hold the resonator case and are compressed between two internal walls of the case structure of the electronic module.
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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(s) 1, 3, 5, 6, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piquerez (US 2951332) in view of O’Brien (US 20240085854).
With regard to claim 1 Piquerez teaches a portable electronic device comprising:
a housing (22 figure 5) defining an external side surface (figures 1-6); and
a button assembly (30-32 figure 6) positioned along the external side surface of the housing (figures 1-6) and comprising a button portion (31), the button portion comprising:
a metal base (32) movably coupled to the housing (figure 6; column 2 lines 44-47);
a metal cap (31) coupled to the metal base and defining a user input surface (column 1 lines 49-52);
an intermediate structure (26) comprising a dielectric material (column 2 lines 25-30) positioned between the metal cap and the metal base (figure 6), the intermediate structure bonding the metal cap to the metal base (figure 6).
Piquerez does not disclose the claimed:
an electrical component positioned in the intermediate structure and between the metal cap and the metal base, the electrical component conductively coupled to the metal cap and the metal base.
O’Brien teaches an integrated tracking module. O’Brien teaches the tracking module includes a transmitter, a microprocessor, and optionally a GPS module and a power source. The components of the tracking module are integrated into the watch by embedding them within one or more components of the mechanical watch. If a watch is lost or stolen, the tracking module may be actuated to provide location data over a network to a software application. To conserve power, the tracking module only actively receives and/or transmits signals periodically during intermittent windows of time. Abstract.
Paragraph 11: They can be incorporated into various mechanical components inside a watch such as, for example, embedded within the gears, the balance wheel, the bezel, the crown, the watch link, or concealed within a watch strap.
Paragraph 13: In another embodiment, the transmitter is embedded within the bezel of the watch, the microprocessor is embedded within the head of the crown, and the battery is hidden within replacement watch backing.
Figure 9: FIG. 9 is an exploded view of a crown of another alternative embodiment of a mechanical watch having an integrated tracking module in accordance with principles of the invention
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See also paragraph 57.
Before the earliest effective filing date it would have been obvious to one having ordinary skill in the art to configure Piquerez’s system to comprise an electrical component positioned in the intermediate structure and between the metal cap and the metal base, the electrical component conductively coupled to the metal cap and the metal base, as taught in part by O’Brien. The reason for doing so would have been to locate an integrated tracking module in a mechanical watch as taught by O’Brien for improved security and identification utilizing the obviously ideal circumstances of Piquerez’s dielectric crown with metal outward appearance, as taught as being desirable by Piquerez. The dielectric crown would be ideal because the processor could be shorted out if located in an entirely conductive element. A reason for connection to the elements is to provide proper grounding for the electrical components preventing build up of electrical charge which may endanger operation and safety of the electrical components. Static build up and its effects are a well established consideration of both horological design in general as well as electrical design in general.
With regard to claim 3 Piquerez and O’Brien teach the portable electronic device of claim 1, wherein the dielectric material at least partially encapsulates the electrical component (see Piquerez figure 6; see modification in view of O’Brien).
With regard to claim 5 (depends from claim 1) Piquerez does not disclose the claimed:
wherein the electrical component comprises a fuse.
Before the earliest effective filing date it would have been obvious to one having ordinary skill in the art to configure Piquerez’s system as previously modified to comprise wherein the electrical component comprises a fuse. The reason for doing so would have been to protect the microprocessor or equivalent electronic component from an overload of current or voltage. The use of fuses to protect against overload is notoriously well known in the field of electrical engineering. The entirety of the information required to draw such a conclusion is in the definition of the name fuse, i.e. a safety device consisting of a strip of wire that melts and breaks an electric circuit if the current exceeds a safe level.
With regard to claim 6 Piquerez and O’Brien teach the portable electronic device of claim 1, wherein:
the button assembly further comprises a printed circuit board at least partially embedded in the intermediate structure (figure 6 of Piquerez and paragraph 43 of O’Brien and figure 3 of O’Brien; and
the electrical component is coupled to the printed circuit board (paragraph 43 of O’Brien and figure 3 of O’Brien).
With regard to claim 7 Piquerez and O’Brien teach the portable electronic device of claim 1, wherein:
the user input surface protrudes from the external side surface (figure 6); and
the metal base is recessed with respect to the external side surface (figure 6).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piquerez (US 2951332) in view of O’Brien (US 20240085854) in further view of Pandya (US 20190072912)
With regard to claim 2 (depends from claim 1) Piquerez does not disclose the claimed: wherein:
the portable electronic device further comprises:
an electrode positioned along the external side surface of the housing and configured to contact a first portion of a user's finger; and
a biometric sensing system configured to measure a physiological parameter of a user based at least in part on a signal from the electrode; and
the intermediate structure of the button portion electrically isolates a second portion of the user's finger that is in contact with the user input surface from the housing.
Pandya teaches a portable electronic device (title, figure 2a) further comprises:
an electrode (abstract, figure 2a) positioned along the external side surface of the housing and configured to contact a first portion of a user's finger (abstract, figure 2a); and
a biometric sensing system (abstract, figure 2a) configured to measure a physiological parameter of a user based at least in part on a signal from the electrode (abstract, figure 2a); and
the intermediate structure of the button portion electrically isolates a second portion of the user's finger that is in contact with the user input surface from the housing (1108 figure 11a; paragraph 147).
Before the earliest effective filing date it would have been obvious to one having ordinary skill in the art to configure Piquerez’s system to comprise: wherein: the portable electronic device (as taught by Piquerez and Pandya) further comprises:
an electrode positioned along the external side surface of the housing and configured to contact a first portion of a user's finger (as taught by Pandya); and
a biometric sensing system configured to measure a physiological parameter of a user based at least in part on a signal from the electrode (as taught by Pandya); and
the intermediate structure of the button portion electrically isolates a second portion of the user's finger that is in contact with the user input surface from the housing (as taught by Piquerez and Pandya).
The reason for doing so would have been to utilize Piquerez advantages in element packing in a crown with excellent external appearance(s) in combination with Pandya’s sensor technology. A reason for doing so would have been to allow a user to obtain and display personal biometric information, as taught by Pandya. Another reason for doing so would have been to combine the sensor technology with the microprocessor tracking technology in a packaging that affords excellent electrical characteristics while electrically isolating the processor parts such that they can function successfully.
Claim(s) 8, 9, 11, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piquerez (US 2951332) in view of Pandya (US 20190072912) and O’Brien (US 20240085854).
With regard to claim 8 Piquerez discloses an electronic watch comprising:
a display (top side figures 1, 2);
a housing at least partially surrounding the display (22 figure 5; 12 figure 3) the housing defining an external side surface (figures 1-6);
a second input member (crown figures 1-6) positioned along the external side surface of the housing (figures 1-6) and comprising:
a metal cap (31) defining a second user input surface (figure 6; column 1 lines 49-52);
a metal base (32 figure 6) movably coupled to the housing (figure 6; column 2 lines 44-47); and
an intermediate structure (30) between the metal cap and the metal base, the intermediate structure comprising a dielectric material configured to conductively isolate the metal cap from the metal base (figures 1-6; column 2 lines 25-30).
Piquerez does not disclose the claimed: a first input member defining a first user input surface, the first input member positioned along the external side surface of the housing, the first input member configured to receive a signal from a portion of a user's skin in contact with the first user input surface; an electrical component electrically coupled to the metal cap and the metal base, the electrical component embedded in the intermediate structure.
Pandya teaches a portable electronic device (title, figure 2a) further comprises:
an electrode (abstract, figure 2a) positioned along the external side surface of the housing and configured to contact a first portion of a user's finger (abstract, figure 2a); and
a biometric sensing system (abstract, figure 2a) configured to measure a physiological parameter of a user based at least in part on a signal from the electrode (abstract, figure 2a); and
the intermediate structure of the button portion electrically isolates a second portion of the user's finger that is in contact with the user input surface from the housing (1108 figure 11a; paragraph 147).O’Brien teaches an integrated tracking module. O’Brien teaches the tracking module includes a transmitter, a microprocessor, and optionally a GPS module and a power source. The components of the tracking module are integrated into the watch by embedding them within one or more components of the mechanical watch. If a watch is lost or stolen, the tracking module may be actuated to provide location data over a network to a software application. To conserve power, the tracking module only actively receives and/or transmits signals periodically during intermittent windows of time. Abstract.
Paragraph 11: They can be incorporated into various mechanical components inside a watch such as, for example, embedded within the gears, the balance wheel, the bezel, the crown, the watch link, or concealed within a watch strap.
Paragraph 13: In another embodiment, the transmitter is embedded within the bezel of the watch, the microprocessor is embedded within the head of the crown, and the battery is hidden within replacement watch backing.
Figure 9: FIG. 9 is an exploded view of a crown of another alternative embodiment of a mechanical watch having an integrated tracking module in accordance with principles of the invention
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See also paragraph 57.
Before the earliest effective filing date it would have been obvious to one having ordinary skill in the art to configure Piquerez’s system to comprise: a first input member defining a first user input surface, the first input member positioned along the external side surface of the housing, the first input member configured to receive a signal from a portion of a user's skin in contact with the first user input surface as taught by Pandya, and an electrical component electrically coupled to the metal cap and the metal base, the electrical component embedded in the intermediate structure, as taught by O’Brien.
The reason for doing so would have been to utilize Piquerez advantages in element packing in a crown with excellent external appearance(s) in combination with Pandya’s sensor technology. A reason for doing so would have been to allow a user to obtain and display personal biometric information, as taught by Pandya.
The reason for doing so would have been to locate an integrated tracking module in a mechanical watch as taught by O’Brien for improved security and identification utilizing the obviously ideal circumstances of Piquerez’s dielectric crown with metal outward appearance, as taught as being desirable by Piquerez. The dielectric crown would be ideal because the processor could be shorted out if located in an entirely conductive element. A reason for connection to the elements is to provide proper grounding for the electrical components preventing build up of electrical charge which may endanger operation and safety of the electrical components. Static build up and its effects are a well established consideration of both horological design in general as well as electrical design in general.
With regard to claim 9 (depends from claim 8) Piquerez does not disclose the claimed: wherein:
the first input member is a crown configured to receive a rotational input;
the signal received is detected by an electrocardiogram sensor configured to measure a physiological parameter of the user; and
the second input member is a button configured to receive a translational input.
Pandya teaches the first input member is a crown (210 figure 2a) configured to receive a rotational input (abstract, figure 2; paragraph 53);
the signal received is detected by an electrocardiogram sensor configured to measure a physiological parameter of the user (abstract); and
the second input (212) member is a button configured to receive a translational input (figure 2a; abstract; paragraph 53).
Before the earliest effective filing date it would have been obvious to one having ordinary skill in the art to configure Piquerez’s system to comprise: the first input member is a crown configured to receive a rotational input, as taught by Pandya;
the signal received is detected by an electrocardiogram sensor configured to measure a physiological parameter of the user, as taught by Pandya; and
the second input member is a button configured to receive a translational input, as taught by Pandya.
an electrode positioned along the external side surface of the housing and configured to contact a first portion of a user's finger (as taught by Pandya); and
a biometric sensing system configured to measure a physiological parameter of a user based at least in part on a signal from the electrode (as taught by Pandya); and
the intermediate structure of the button portion electrically isolates a second portion of the user's finger that is in contact with the user input surface from the housing (as taught by Piquerez and Pandya).
The reason for doing so would have been to utilize Piquerez advantages in element packing in a crown with excellent external appearance(s) in combination with Pandya’s sensor technology. A reason for doing so would have been to allow a user to obtain and display personal biometric information, as taught by Pandya. Another reason for doing so would have been to combine the sensor technology with the microprocessor tracking technology in a packaging that affords excellent electrical characteristics while electrically isolating the processor parts such that they can function successfully.
With regard to claim 11 Piquerez, Pandya, and O’Brien teach the electronic watch of claim 8, wherein:
the dielectric material comprises a molded polymer material (column 1 lines 40-50; column 2 lines 40-45 that bonds the metal cap to the metal base (figure 6); and the dielectric material separates the metal cap and the metal base (31, 32 figure 6).
With regard to claim 14 Piquerez, Pandya, and O’Brien teach the electronic watch of claim 8, wherein the electrical component is configured to conductively couple the metal cap to the metal base in response to a voltage condition (as stated in the modification the elements are connected such that a voltage would allow current to flow to form a ground) between the metal cap (figure 6) and the metal base (figure 6 – 31, 32).
Allowable Subject Matter
Claims 4, 12, 13, 21 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.
Claims 15-20 allowed.
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 SEAN KAYES whose telephone number is (571)272-8931. The examiner can normally be reached 10-6.
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, 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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/SEAN KAYES/Patent Examiner, Art Unit 2831
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