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 .
This Office Action is made in response to applicant’s Response to Election of Species Requirement and Amendment, filed 08/05/2026.
Applicant’s election with traverse of species I in the reply filed on 08/05/2026 is acknowledged. The traversal is on the ground(s) that the Election/Restriction Requirement has improperly indicated that certain figures show distinct species when those figures instead show aspects or features that are present in one or more other embodiments shown in other figures, particularly the election of species requirement between species I and IV. See pages 7-8 of the Response. This is not found persuasive because, as indicated on pages 2-3 of the Election of Species Requirement, species I requires at least features, “the first set of regions comprises a first set of conductive pads 309; and the second set of regions comprises a second set of conductive pads 311,” which are not required in other species, especially species IV indicated by the Applicant, and presently recited in claim 2 and features, recited in the current claim 3, which are not required in other species, especially species IV; species II requiring at least features, "the button comprising: a core portion; opposing surfaces defined by the core portion; and a plurality of electrical conductors extending through the core portion between the opposing surfaces,” which are not required in at least species I and IV-XI; and etc.. See Figs. 3A-3E and the corresponding specification at paragraphs [0089]-[00118], for other features included in species I and not required in species IV and see Fig. 4 and the corresponding specification at paragraphs [00128]-[00133], for other features included in species IV and not required in species I and other species.
Further, the Election of Species Requirement, specifically page 3, requires: “Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.”
Note that Applicant had made an election without traverse in the same Election of Species Requirement in the continuation application 19/029643 which has the same disclosure of this application. Further, since the Applicant has used the same disclosure and filed at least seven U.S applications and five PCT applications, this disclosure clearly contains many patentably distinct species.
Applicant has further indicated claims 1-3 and 5-20 readable on the elected species I. The examiner agrees claims 1-3 and 5-15 readable on the elected species I, but respectfully disagrees claims 16-20 readable on the elected species I because at least independent claim 16 recites limitations, “the button comprising: a core portion; opposing surfaces defined by the core portion; and a plurality of electrical connectors extending through the core portion between the opposing surfaces”, which are not read in the elected species I illustrated in Figs. 3A-3E. Also, the dependent claims 17-20 further recite limitations, which are not read in the elected species I. Accordingly, claims 4 and 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or Linking claim. Applicant timely traversed the Election of Species Requirement in the reply filed on 08/05/2026. Claims 1-3 and 5-15 readable on the elected species I are considered below.
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.
Claim 8 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
As per claim 8, this claim recites a limitation, “wherein the first solder mask and the second solder mask comprise a thickness of less than 10 micrometers.” Since it is unclear whether the above underlined limitation requires (i) “wherein the first solder mask and the second solder mask comprise a combined thickness of less than 10 micrometers”, (ii) “wherein the first solder mask and the second solder mask, each comprises a thickness of less than 10 micrometers”, or (iii) other, it is considered that the invention is not clearly defined.
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 9-15 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claim 9, this claim recites a limitation, “conductors extending through the button body” in line 9, which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. The original disclosure, specifically Fig. 3C of the elected species I, discloses the conductor [316] extending through only the substrate [318], but does not explicitly discuss in detail the conductor [316] extending through the button body [207], required by the above underlined of the above limitation, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Moreover, in order to satisfy its burden under the written description requirement, a patent application must disclose the full scope of the claim. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (The purpose of the written description requirement is to “ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.”.)
Accordingly, the original disclosure does not contain such description and details regarding to the above underlined limitation of this claim, so as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 10-15, these claims are therefore rejected for at least the reason set forth in claim 9.
Double Patenting
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process ... may obtain a patent therefor ..." (Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the conflicting claims so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-3 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of prior U.S. Patent No. 12,596,400 B2. This is a statutory double patenting rejection.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-7 of U.S. Patent No. 12,596,400 B2.
As per claims 5-6, although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of claims 5-6 of the instant application are contained by the patent claims 5-6. These claims of the instant application therefore are not patentable distinct from the earlier patent claims and as such are unpatentable for obvious-type double patenting.
As per claim 7, the case according to the patent claim 1 does not explicitly recite a sapphire cap, as claimed. However, Official Notice is taken that both the concept and the advantages of providing a sapphire cap positioned over all components of a button or a button body to protect the internal components of the button are well-known and expected in the art. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of invention of the pending application to include the sapphire cap in the button of the case of the patent claim, as this sapphire cap is well-known to protect the internal components of the button.
As per claim 8, the case of the patent claim 7 further comprising However, Official Notice is taken that both the concept and the advantages of providing a solder mask including a cosmetic layer to decorate and/or prevent the visibility of the internal component in the key/button art are well-known and expected in the art. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of invention of the pending application to include a solder mask including a cosmetic layer in the case of the patent claim, as this solder mask including a cosmetic layer to decorate and/or prevent the visibility of the internal component in the key/button art is well-known to decorate and/or prevent the visibility of the internal component of the button.
Accordingly, the above modified case of the patent claim 7 contains all limitations of this claim including an inherent thickness of the first solder mask and an inherent thickness of the second solder mask, but does not include a particular thickness of the first solder mask and a particular thickness of the second solder mask (as assumed due to the above rejection of this claim under 35 U.S.C. 112(b)). However, a change in size was judicially recognized as being within the level of ordinary skill in the art, In re Larson, 340 F.2d 965,968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523 (CCPA 1961); In re Rose, 105 USPQ 237 (CCPA 1955); and In re Reven, 156 USPQ 679 (CCPA 1968). Therefore, while the above modified patent claim may not exemplify the particular thickness of the first solder mask and the particular thickness of the second solder mask, as presently claimed, one of ordinary skill in the art would have found it obvious to make the above modified case of the patent claim having the particular thickness of the first solder mask and the particular thickness of the second solder mask, as desired as claimed, in accordance with a particular application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Davison et al. (US 2015/0270734 A1), discloses a related system comprising an electronic device including a plurality of switches/ buttons; and a protective case for the electronic device, the protective case comprising: a case body [620, 640; see at least Figs. 8-9]; and a plurality of case buttons [632, 634, 636; at least Fig. 7] positioned within the case body, the case buttons being movable inward and outward relative to the case body along an axis of button travel to engage with the respective switches/ buttons of the electronic device (see at least ¶¶ 132-134.) Hoover (US 2024/0288949 A1) discloses a case [200] for an electronic device [100] (see at least Fig. 1,) the case comprising: a case body comprising an exterior surface and an interior surface, the interior surface being positioned opposite the exterior surface (see at least Figs. 1, 3, disclosing a case body [which includes elements [218, 282] and a portion of the element 280 not including the element 288] comprising an outer surface of the element 280 [as the claimed exterior surface] and an inner surface of the element 282 [as the claimed interior surface], the interior surface being positioned opposite the exterior surface;) a button body positioned at least partially within the case body between the exterior surface and the interior surface, the button body being movable inward and outward relative to the case body along an axis of button travel (see at least Fig. 3, disclosing a button body of the element 250 positioned at least partially within the case body between the [[construed]] exterior surface of the element 280 and the [[construed]] interior surface of the element 282, the button body being movable inward and outward relative to the case body along an axis of button travel shown in Fig. 5; further see Figs. 6-7; ¶¶ 41-42 and 47, if necessary;) and a biasing structure having a contact surface configured to contact the button body, the biasing structure configured to bias the button body toward the interior surface along the axis of button travel (see at least Fig. 3; ¶¶ 42, 47, disclosing a biasing structure [a biasing structure comprising an element 288] having a contact surface [an outer surface of the element 288] configured to contact the button body, the biasing structure configured to bias the button body toward the interior surface along the axis of button travel.)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jimmy H Nguyen whose telephone number is (571) 272-7675. The examiner can normally be reached on Monday-Friday 8:30AM-6PM ET.
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, Temesghen Ghebretinsae, can be reached at (571) 272-3017. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jimmy H Nguyen/
Primary Examiner, Art Unit 2626
