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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 18 June 2026 has been entered.
Response to Amendment and Status of Application
This notice is in response to the amendments filed 23 April 2026. Claims 1-4 and 6-20 are pending in the instant application where claim 1 has been amended and claim 5 has been cancelled. Claims 17-19 have been indicated as allowed in the Final Office Action dated 07 April 2026.
Response to Arguments
Applicant's arguments filed 23 April 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument (remarks page 1 section B) directed to newly added claim limitation “wherein the processor is configured to determine the axial position… from said measure of distance of said angle”, this limitation is addressed below via a revised interpretation of the prior art of record.
Regarding applicant's arguments/comments (remarks page 2 section C) directed to whether the linear taper configuration is an arbitrary design choice, examiner notes the following: The language used to describe the consequence of a linearly varying diameter partially gets at the criticality of this component geometry - the cited paragraph of the specification ([0023] of applicant's PGPub US 2024/0159573 A1) has been indicated as lacking criticality for the linearly varying diameter geometry, but the step geometry (described in specification [0022]) does provide specific criticality for that corresponding shape (step changes indicative of a button press, ability to detect regardless of rotational orientation, etc.). For a declaration under 37 CFR § 1.132 to be persuasive, applicant should provide criticality for the linearly varying diameter geometry in a similar means to that of the step geometry (not necessarily verbatim, but similar in the detail of disclosure (i.e. more than potentially providing an additional degree of freedom for device control)), in addition to describing the significance of the one-to-one invertible mapping from a measured distance, and exploring the criticality for obtaining an axial position vs that of a step or non-monotonic profile. Examiner notes that this response was included in the Advisory Action dated 01 May 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Regarding claim 9, the claim recites the limitation “means for diverting radiation” that are coupled with functional language without reciting sufficient structure to perform the recited function and the limitation is not preceded by a structural modifier.
Accordingly, the “means for diverting radiation” is interpreted under 35 U.S.C. 112(f) as corresponding to a target itself (fig. 8a), beam splitter and mirror (fig. 8b), and/or a cover glass (fig. 8c), as described in applicant’s specification page 6 ll. 16-26 and figures 8a-8d, and any equivalents thereof.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 7-9, and 13-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0170541 A1 by Fletcher R. Rothkopf et al. (herein after “Rothkopf”) in view of US 11,036,318 B2 by Louis W. Bokma et al. (herein after “Bokma”). Examiner notes the reference Rothkopf was cited in the IDS filed 08 September 2023.
Regarding claim 1, Rothkopf discloses an apparatus for providing a control signal based on an axial position of a controller displaceable along an axis of rotation (Rothkopf fig. 1B and [0036] disclose a shaft 160 being movable in a translational axis 185 where an encoding pattern 165 is pictured along the shaft; fig. 1B shows a crown 140 [controller] attached to the shaft 160, which allows a user to provide inputs to the device 100 [a smartwatch]; [0027] the crown is rotated, pushed, pulled, pressed, etc. [the crown being pushed/pulled/pressed denotes an axial position of the controller displaceable along the axis of rotation] to provide an input to the device [i.e. apparatus provides a control signal (an input to the device) based on the axial position of the controller]), the apparatus comprising:
a component for displacement with said controller along said axis of rotation (Rothkopf fig. 1B shows the shaft 160 [component for displacement] connected with the crown 140 [controller]; when the crown is pushed/pulled, the shaft is displaced along with the crown);
a radiation source and detector arrangement configured to direct radiation towards a target region and generate a detector signal dependent upon radiation reflected from within that target region (Rothkopf fig. 1B/1C and [0031] disclose a light source 170 [radiation source] adjacent to a photodiode array 180 [detector arrangement]; fig. 5A and [0068] disclose light source 540 (equivalent to light source 170 above) emitting radiation to a target region on the shaft 510 (equivalent to shaft 160 above) and receiving reflected light from the shaft [photodiodes generate a signal based on the radiation received, in this case radiation reflected from the target region of the shaft]), and
a computer processor configured to process said detector signal to determine a measure of distance or change of distance to a reflecting surface region within said target region (Rothkopf [0023]-[0024] and fig. 1A disclose an electronic device 100, where the electronic device is a portable computing device; the device includes a processor [computer processor]; [0032] optical encoder (shaft 160, light source 170, photodiode array 180) is used to determine positional data of the crown, where the area of the shaft 160 illuminated by the light source is considered the target region; the positional data of the crown is translational and rotational movement; fig. 2A shows the stripe pattern seen on the shaft 160 in fig. 1B; [0043] the stripe pattern is used to determine a rotational, translational, or angular movement of the shaft 160, and the movement speed of the shaft 160; a “distance or change of distance to a reflecting surface region within said target region” where light is being irradiated on the shaft is inherent within the determination of the rotational, translational, angular, movement and movement speed of the shaft - the claim does not specify where the distance to the reflecting surface region is intended to begin, therefore the movement [relative to some position on the shaft] movement speed [change of position] of the shaft is indicative of a change of distance to a reflecting surface region, where the reflecting surface region may be any region within the target region where light is incident, for example may be a within a light or dark stripe of the pattern, etc.) and to use said measure to provide said control signal (Rothkopf [0032] once movement and movement speed of the shaft/crown are determined, the electronic device is updated and displays graphics, images, icons corresponding to the movement [processor provides a control signal to update the wearable device based on the measure [movement and/or movement speed of shaft]]);
wherein said component defines a reflecting surface that passes through said target region such that the reflecting surface region is present within said target region with a distance that varies with the axial position of the component along said axis of rotation(Rothkopf [0044] discloses that light is reflected off of the shaft 160 with encoding pattern (encoding pattern being pattern shown in fig. 1B and 5A [pattern 515], here fulfilling the reflecting surface); the shaft is pushed/pulled (fig. 1B axis 185) and the photodiode array receives intensity values based on the encoding pattern – either specularly reflected light or diffusely reflected light (light vs dark strips in figs 1B, 2A, 5A, etc.), which is dependent on the axial position of the component 160 along the axis 185 relative to the target region; as in the previous limitation, the reflecting surface region may be any region within the target region where light is incident, and the claim does not specify what the “distance” refers to; therefore, the reflecting surface region [selected from somewhere within the pattern 515] has associated with it a distance that varies with the axial position of the component along the axis since the pattern 515 changes as a function of axial position relative to the target region).
Rothkopf is silent to wherein said component defines a tapering of a cross-sectional shape of the component along the axis of rotation,
wherein a diameter of the cross-sectional shape varies linearly at an angle with respect to the axis of rotation, and
wherein the computer processor is further configured to determine the axial position of the component along said axis of rotation from said measure of distance and said angle.
However, Bokma does address this limitation. Rothkopf and Bokma are considered to be analogous to the present invention because they utilize a rotary optical encoding mechanism via a movable spindle.
Bokma discloses “wherein said component defines a tapering of a cross-sectional shape of the component along the axis of rotation,
wherein a diameter of the cross-sectional shape varies linearly at an angle with respect to the axis of rotation” (Bokma fig. 61 and col 76 ll. 15-20 discloses the crown 6110 of a smartwatch wherein a the crown is attached to a spindle 6112 and encoder wheel 6114 [the combination of the spindle and encoder wheel being the component, equivalent to the shaft of Rothkopf]; fig. 61 shows a tapering of the cross-sectional shape of the component along the axis of rotation after the transition between the crown 6110 and the spindle 6112; while a tapering of the cross sectional shape of the component is not explicitly disclosed as varying linearly at an angle with respect to the axis of rotation, a prima facie case of obviousness exists under MPEP 2144.04 IV. B “Changes in Shape” since the geometry of the component as having “a diameter which varies linearly at an angle with respect to the axis of rotation” does not appear to be represented in the specification as being critical to the functionality of controlling the device using the determination of axial position of the component; because there is no indication of criticality for the shape of the component, the claimed diameter of the component varying linearly with respect to the axis of rotation does not define patentable subject matter over the prior art; In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) – the court held that the configuration of a claimed disposable plastic nursing container was a matter of choice found obvious by one of ordinary skill absent persuasive evidence that the configuration of the claimed container was significant; in this case, applicant’s PGPub [0023] recites that this claimed limitation provides an additional “degree of freedom” for controlling the device, but does not provide any persuasive evidence for the significance of the additional degree of freedom), and
“wherein the computer processor is further configured to determine the axial position of the component along said axis of rotation from said measure of distance and said angle” (it has been held that claim scope is not limited by a functional recitation in the claims (e.g. “configured to”, “adapted to” or the like) if that claim language does not limit a claim to a particular structure; in this case, the computer processor within Rothkopf and Bokma is capable of performing the functional limitation “configured to determine the axial position of the component along said axis of rotation from said measure of distance and said angle”, and thus the claimed structure (i.e. the computer processor) is not limited to a particular structure with regards to the cross-sectional shape enabling a quantitative determination of the axial position – see MPEP §2111.04 I, In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014). While “configured to determine the axial position… from said measure of distance and said angle” better names the specific outputs rather than a generic “processing” function, “configured to determine” still suffers from the same issue in that it ultimately is a functional recitation in the claims. While a “determining operation” is recited in the claims, it is recited without sufficient specificity to overcome the capability to perform the claimed function with said computer processor of Rothkopf when modified by Bokma. Additionally, it has been held that the manner of operating the device does not differentiate apparatus claims from the prior art; in this case, the combination of Rothkopf and Bokma possess a computer processor which utilized for operating the device and receiving and processing the detector signal generated by the radiation source and detector arrangement – the limitation in question is a recitation of what the device does and not what the device does, the combination teaches all structural limitations of the claim, and therefore does not differentiate the claim from the combination of Rothkopf in view of Bokma. See MPEP §2114 II, Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Finally, examiner notes that for functional limitations within apparatus claims, as the limitation is drawn to, because the prior art is capable of performing the claimed functionality, the Patent Office possesses the authority to require applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied upon – in this case, the computer processor being capable of performing the functional limitation in question. See §2114 I, In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rothkopf to incorporate wherein said component defines a tapering of the cross-sectional shape of the component along the axis of rotation, wherein a diameter of the cross-sectional shape varies linearly at an angle with respect to the axis of rotation, and wherein the computer processor is further configured to determine the axial position of the component along said axis of rotation from said measure of distance and said angle as suggested by Bokma for the advantage of enabling capacitive coupling between the encoder wheel and the smartwatch touchscreen electrodes (Bokma col 78 ll. 50-57), providing a means for signal encoding in addition to optical encoding due to rotation of the crown/spindle/wheel.
Regarding claim 2, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further teaches the apparatus wherein said radiation source and detector arrangement is configured to direct radiation towards said target region in a direction substantially perpendicular with respect to said axis of rotation (Rothkopf fig. 5A shows radiation 545 being emitted from the light source 540 towards the shaft 510; in cylindrical coordinates, the radiation has at least a radial component and a z-component where the two components are orthogonal; the radial component of light is emitted in a direction substantially perpendicularly with respect to the z-component [said axis of rotation being the z-axis (see label 185 in fig. 1B along the same axis)]), and said reflecting surface of the component extends around a circumferential region of the component (Rothkopf fig. 5A discloses the encoder pattern wrapping around the circumference of the shaft).
Regarding claim 3, Rothkopf when modified by Bokma discloses the apparatus according to claim 2, and Rothkopf further teaches the apparatus wherein said component is substantially in the form of a circular or elliptical cylinder (Rothkopf at least fig. 5A shows the shaft 510 in the form of a circular cylinder).
Regarding claim 7, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further teaches the apparatus wherein said radiation source and detector arrangement comprises a radiation source and a radiation detector (Rothkopf [0031] discloses a light source 170 [radiation source] and a photodiode array 180 [i.e. a means for detecting radiation, i.e. a radiation detector]).
Regarding claim 8, Rothkopf when modified by Bokma discloses the apparatus according to claim 7, and Rothkopf further teaches the apparatus wherein said radiation source and said radiation detector are substantially co-located (Rothkopf fig. 1B/1C shows the light source 170 [radiation source] and photodiode array 180 [radiation detector] being adjacent to one another opposite the component [i.e. are co-located]).
Regarding claim 9, Rothkopf when modified by Bokma discloses the apparatus according to claim 7, and Rothkopf further teaches the apparatus wherein said radiation source and said radiation detector are provided at spaced apart locations, and the apparatus comprises a means for diverting radiation to the radiation detector (Rothkopf at least fig. 1B/1C and fig. 5A show light sources 170/540 spaced apart from the detectors 180/530; consistent with the interpretation under 35 U.S.C. 112(f) above, the apparatus’s means for diverting radiation is the shaft itself 160/510, since the shaft diverts incoming radiation to the detectors).
Regarding claim 13, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further teaches the apparatus wherein said radiation source and detector arrangement is a source and detector arrangement for one or more of visible light, infrared radiation, and ultra-violet radiation (Rothkopf [0057]-[0058] discloses that the light source may be an infrared light source, and the photodiode array receives said infrared light reflected from the infrared reflective stripe).
Regarding claim 14, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further teaches the apparatus further comprising a rotary encoder for determining an angular position, or change of angular position of said component about said axis of rotation (Rothkopf [0062] describes the shaft 160 including an encoding pattern [rotary encoder] with axial and radial components, where the optical encoder is used to detect rotational movement [i.e. a change in angular position]).
Regarding claim 15, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further teaches a watch comprising the apparatus of claim 1, said controller being a crown of the watch (Rothkopf fig. 1A and [0023]-[0024] discloses an electronic device 100, a computerized time keeping device [watch], where the crown 140 is shown; connection has been made in claim 1 regarding the controller being the crown of the watch).
Regarding claim 16, Rothkopf when modified by Bokma discloses the watch according to claim 15, and Rothkopf further teaches the watch being a smartwatch and said computer processor being configured to use a determined measure of distance or change of distance to control one or more functions of the smartwatch (Rothkopf [0032] discloses that the movement of the crown 140 [and therefore movement of the shaft and optical encoder] is detected, and based on the movement, one or more graphics, images or icons on the display 120 of the watch are updated/altered accordingly; [0028] discloses that the processor included in the electronic device 100 facilitates operation of the device, i.e. the computer processor controls the updated/altered graphics/images/icons/etc. on the display 120 due to the change in distance sensed by the encoder).
Regarding claim 20, Rothkopf when modified by Bokma discloses the apparatus according to claim 1. Rothkopf is silent to the apparatus according to claim 1, wherein a first end of the component has a larger diameter than a second end of the component.
However, Bokma does address this limitation.
Bokma discloses the apparatus according to claim 1, “wherein a first end of the component has a larger diameter than a second end of the component” (Bokma fig. 61 and col 76 ll. 15-20; as with claim 1, the crown 6110 of a smartwatch is disclosed wherein the crown is attached to the spindle 6112 and encoder wheel 6114 combination; also as with claim 1, fig. 61 shows a tapering of the cross-sectional shape of the component along the axis of rotation after the transition between the crown 6110 and spindle 6112; in that case, a first end [closest to the crown 6110] of the spindle has a larger diameter than a second end of the spindle, opposite the first end).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rothkopf to incorporate wherein a first end of the component has a larger diameter than a second end of the component as suggested by Bokma for the advantage of enabling capacitive coupling between the encoder wheel and the smartwatch touchscreen electrodes (Bokma col 78 ll. 50-57), providing a means for signal encoding in addition to optical encoding due to rotation of the crown/spindle/wheel.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rothkopf in view of Bokma, and further in view of CN 209560397 U by Sameer Pandya et al. (herein after “Pandya”).
Regarding claim 4, Rothkopf when modified by Bokma discloses the apparatus according to claim 1, and Rothkopf further discloses the apparatus wherein said radiation source and detector arrangement is configured to direct radiation towards said target region in a direction substantially parallel to said axis of rotation (Rothkopf fig. 5A shows radiation 545 being emitted from light source 540 towards the shaft 510; in cylindrical coordinates, the radiation has at least a radial component and a z-component; the z-component of light is emitted in a direction substantially parallel to the z-component [said axis being along the z-axis (see label 185 in fig. 1B)]).
Rothkopf when modified by Bokma is silent to the apparatus according to claim 1, wherein said reflecting surface is provided by a substantially transverse end region of the component.
However, Pandya does address this limitation. Rothkopf, Bokma, and Pandya are considered to be analogous to the present invention because they are related to tracking the displacement of the crowns of electronic smart watches using light emission and detection.
Pandya discloses the apparatus according to claim 1 “wherein said reflecting surface is provided by a substantially transverse end region of the component” (Pandya fig. 2C discloses a translation sensor 240 as seen in at least fig. 2C, otherwise appearing as 244, where the translation sensor 240 is disposed coaxially with the shaft 222 of the crown 200 shown at the end region of the shaft 222 (i.e. opposite the crown 200); [0100] discloses that the translation sensor includes one or more light emitters and/or light detectors (as does primary reference Rothkopf); for the light emitters/detectors disposed coaxially with the shaft, the reflecting surface would be the transverse end region of the component; this, coupled with Rothkopf’s disclosure that the light source 170 and photodiode array 180 may be aligned with the shaft in any suitable way discloses the reflecting surface provided by a transverse end region of the component, as claimed).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rothkopf in view of Bokma to incorporate wherein said reflecting surface is provided by a substantially transverse end region of the component as suggested by Pandya for the advantage of detecting translational displacements of the shaft with a detector aligned in the same axis as the translational motion is occurring, potentially increasing the accuracy of translational motion tracking.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Rothkopf in view of Bokma, and further in view of US 10,599,101 B2 by Fletcher R. Rothkopf, Jonathan Ive, et al. (herein after “Ive”).
Regarding claim 6, Rothkopf when modified by Bokma discloses the apparatus according to claim 1. Rothkopf when modified by Bokma is silent to the apparatus according to claim 1, further comprising a spring mechanism for providing a restoring force along said axis of rotation to resist a pressing of the controller.
However, Ive does address this limitation. Rothkopf, Bokma, and Ive are considered to be analogous to the present invention because they are related to radial encoders for smartwatch crowns.
Ive discloses the apparatus according to claim 1, “further comprising a spring mechanism for providing a restoring force along said axis of rotation to resist a pressing of the controller” (Ive fig. 24A-B and col 54 ll. 6-14 discloses a tactile switch 2414 which appears opposite the outer surface 2432 of a dial [i.e. analogous to the crown of a smartwatch]; the tactile switch may incorporate a spring which exerts a force against a shear plate 2456 (i.e. exerting a force in the cylindrical axis of the crown); fig 24A shows an uncompressed tactile switch 2414 [i.e. uncompressed spring] and fig. 24B shows the a compressed tactile switch 2414 [i.e. a compressed spring resisting the force F in the figure, along the cylindrical axis]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rothkopf in view of Bokma to incorporate a spring mechanism for providing a restoring force along said axis to resist a pressing of the controller as suggested by Ive for the advantage of providing a means for returning the crown to its original position after being actuated via a spring, increasing the accessibility of the smartwatch for any end users.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Rothkopf in view of Bokma, and further in view of US 2016/0258784 A1 by Paisith P. Boonsom et al. (herein after “Boonsom”). Examiner notes the reference Boonsom is a continuation of US 2020/0271483 A1, cited in the IDS filed 08 September 2023.
Regarding claim 10, Rothkopf when modified by Bokma discloses the apparatus according to claim 1. Rothkopf when modified by Bokma is silent to the apparatus according to claim 1, wherein said distance is a distance from said radiation source to said reflecting surface region
However, Boonsom does address this limitation. Rothkopf, Bokma, and Boonsom are considered to be analogous to the present invention because they are related to radial encoders for smart watch crowns.
Boonsom discloses the apparatus according to claim 1, “wherein said distance is a distance from said radiation source to said reflecting surface region” (Boonsom fig. 7A and 7B show shafts with irregular surface features, meaning the distance between the radiation source and the reflecting surface region on the shaft is not uniform; specifically fig. 7A shows the incoming radiation hitting portions of the shaft with different radial components; therefore, the distance between radiation source to reflecting surface region on the shaft varies with the axial position of the component).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Rothkopf in view of Bokma to incorporate wherein said distance is a distance from said radiation source to said reflecting surface region as suggested by Boonsom for the advantage of including surface features such that direction dependent reflective properties will arise from the incident light interacting with the shaft, helping to reduce misalignment and reduce sensitivity to manufacturing tolerances of components within the smartwatch (Boonsom [0100]).
Regarding claim 11, Rothkopf when modified by Bokma and Boonsom discloses the apparatus according to claim 10, and Rothkopf further teaches the apparatus wherein said radiation source is a vertical-cavity surface emitting laser (VCSEL) (Rothkopf [0057] discloses that the light source 170 is considered an LED, linear light source, a laser diode, a light bulb, and the like; while a VCSEL is not explicitly mentioned in Rothkopf, a VCSEL is still anticipated by Rothkopf since a laser diode constitutes a limited genus, and a VCSEL is a species laser diode, and therefore the species is taught by the genus – see MPEP 2131.02 III).
Regarding claim 12, Rothkopf when modified by Bokma and Boonsom discloses the apparatus according to claim 11, and Rothkopf further teaches the apparatus wherein said radiation detector is a photodiode (Rothkopf [0031] discloses that the detector array 180 is a photodiode array).
Allowable Subject Matter
Claims 17-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record neither anticipates nor renders obvious the claimed subject matter of the instant application as a whole either taken alone or in combination. In particular, a thorough search for pertinent prior art did not locate any prior art that discloses or suggests all limitations of the invention disclosed in the instant application.
Regarding claim 17, the concept of “a method for providing a control signal based on an axial position of the controller displaceable along an axis of rotation, the method comprising:
causing a component coupled to said controller to be displayed with said controller along said axis of rotation, wherein said component defines a tapering of a cross-sectional shape of the component along the axis of rotation,
wherein a diameter of the cross-sectional shape varies linearly at an angle with respect to the axis of rotation;
directing a beam of radiation towards a target region and generating a detector signal dependent upon radiation reflected from within that target region;
using said detector signal to determine a measure of distance or change of distance to a reflecting surface region within said target region, wherein said component defines a reflecting surface that passes through said target region such that the reflecting surface region is present within said target region with a distance that varies with the axial position of the component along said axis of rotation, and
using said measure to provide said control signal,
wherein the cross-sectional shape is configured to enable a quantitative determination of the axial position based on the angle with respect to the axis of rotation” is considered to define patentable subject matter over the prior art.
The closest prior art is generally regarded to be Rothkopf in view of Bokma, where that combination teaches a method for providing a control signal based on an axial position of the controller displaceable along an axis of rotation (Rothkopf fig. 1B and [0036] disclose a shaft 160 being movable in a translational axis 185 where an encoding pattern 165 is pictured along the shaft; fig. 1B shows a crown 140 [controller] attached to the shaft 160, which allows a user to provide inputs to the device 100 [a smartwatch]; [0027] the crown is rotated, pushed, pulled, pressed, etc. [the crown being pushed/pulled/pressed denotes an axial position of the controller displaceable along the axis of rotation] to provide an input to the device [i.e. apparatus provides a control signal (an input to the device) based on the axial position of the controller]; [0008] discloses the method associated with device described above), the method comprising:
causing a component coupled to said controller to be displayed with said controller along said axis of rotation (Rothkopf fig. 1B shows the shaft 160 [component for displacement] connected with the crown 140 [controller]; when the crown is pushed/pulled, the shaft is displaced along with the crown),
wherein said component defines a tapering of a cross-sectional shape of the component along the axis of rotation, wherein a diameter of the cross-sectional shape varies linearly at an angle with respect to the axis of rotation (Bokma fig. 61 and col 76 ll. 15-20 discloses the crown 6110 of a smartwatch wherein a the crown is attached to a spindle 6112 and encoder wheel 6114 [the combination of the spindle and encoder wheel being the component, equivalent to the shaft of Rothkopf]; fig. 61 shows a tapering of the cross-sectional shape of the component along the axis of rotation after the transition between the crown 6110 and the spindle 6112; while a tapering of the cross sectional shape of the component is not explicitly disclosed as varying linearly at an angle with respect to the axis of rotation, a prima facie case of obviousness exists under MPEP 2144.04 IV. B “Changes in Shape” since the geometry of the component as having “a diameter which varies linearly at an angle with respect to the axis of rotation” does not appear to be represented in the specification as being critical to the functionality of controlling the device using the determination of axial position of the component; because there is no indication of criticality for the shape of the component, the claimed diameter of the component varying linearly with respect to the axis of rotation does not define patentable subject matter over the prior art; In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) – the court held that the configuration of a claimed disposable plastic nursing container was a matter of choice found obvious by one of ordinary skill absent persuasive evidence that the configuration of the claimed container was significant; in this case, applicant’s PGPub [0023] recites that this claimed limitation provides an additional “degree of freedom” for controlling the device, but does not provide any persuasive evidence for the significance of the additional degree of freedom);
using said detector signal to determine a measure of distance or change of distance to a reflecting surface region within said target region (Rothkopf [0032] discloses that optical encoder (shaft 160, light source 170, photodiode array 180) is used to determine positional data of the crown, where the area of the shaft 160 illuminated by the light source is considered the target region; the positional data of the crown is translational and rotational movement; fig. 2A shows the stripe pattern seen on the shaft 160 in fig. 1B; [0043] the stripe pattern is used to determine a rotational, translational, or angular movement of the shaft 160, and the movement speed of the shaft 160; a “distance or change of distance to a reflecting surface region within said target region” where light is being irradiated on the shaft is inherent within the determination of the rotational, translational, angular, movement and movement speed of the shaft - the claim does not specify where the distance to the reflecting surface region is intended to begin, therefore the movement [relative to some position on the shaft] movement speed [change of position] of the shaft is indicative of a change of distance to a reflecting surface region, where the reflecting surface region may be any region within the target region where light is incident, for example may be a within a light or dark stripe of the pattern, etc.) wherein said component defines a reflecting surface that passes through said target region such that the reflecting surface region is present within said target region with a distance that varies with the axial position of the component along said axis (Rothkopf [0044] discloses that light is reflected off of the shaft 160 with encoding pattern (encoding pattern being pattern shown in fig. 1B and 5A [pattern 515], here fulfilling the reflecting surface); the shaft is pushed/pulled (fig. 1B axis 185) and the photodiode array receives intensity values based on the encoding pattern – either specularly reflected light or diffusely reflected light (light vs dark strips in the figs), which is dependent on the axial position of the component 160 along the axis 185 relative to the target region; as in the previous limitation, the reflecting surface region may be any region within the target region where light is incident, and the claim does not specify what the “distance” refers to; therefore, the reflecting surface region [selected from somewhere within the pattern 515] has associated with it a distance that varies with the axial position of the component along the axis since the pattern 515 changes as a function of axial position relative to the target region); and
using said measure to provide said control signal (Rothkopf [0032] once movement and movement speed of the shaft/crown are determined, the electronic device is updated and displays graphics, images, icons corresponding to the movement [processor provides a control signal to update the wearable device based on the measure [movement and/or movement speed of shaft]]).
Rothkopf when modified by Bokma does not disclose or suggest wherein the cross-sectional shape is configured to enable a quantitative determination of the axial position based on the angle with respect to the axis of rotation. While the corresponding apparatus claim to claim 17 was rejected under 35 U.S.C. 103 as being unpatentable over Rothkopf in view of Bokma, the functional limitations found in claim 1 do not differentiate it over the prior art even though the particular configuration of the component within claim 1 is not found in the prior art. In the case of claim 17 however, no such restriction on functional limitations are found within the MPEP with respect to a method claim. For this reason, “wherein the cross-sectional shape is configured to enable a quantitative determination of the axial position based on the angle with respect to the axis of rotation” within the remaining limitations of the method of claim 17 is considered to define patentable subject matter over the prior art.
Claims 18-19 are allowable due to their dependence on the allowable subject matter disclosed within claim 17 above.
Conclusion
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/JOSHUA M CARLSON/Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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