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 .
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Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first and second display units” that “overlap each other” in claim 3 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification does not provide antecedent basis for (1) the “member” recited in lines 2-3 of claim 6 and (2) the word “overlap” in claim 3. For (1), “member” is suggested to be changed to -element- in accordance with page 16, lines 13-14 of the specification. For (2), “overlap” is suggested to be changed to -overlay- in accordance with page 26, line 11.
Claim Objections
Claim 4 is objected to because of the following informalities: “a plurality physical components” in line 2 is idiomatically incorrect and should be changed to -a plurality of physical components-.
Claim 4 is objected to because “laps of time” is misspelled and should be -lapse of time-.
Claim 4 is objected to because “a virtual watch hands” is grammatically incorrect and should be changed to -virtual watch hands-.
Claims 10-11 are objected to because “displays a content” on line 2 is idiomatically incorrect and should be -displays content-.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 lacks antecedent basis for “the corresponding portion” in line 6. The limitation has been read as -the portion-.
Claim 1 lacks antecedent basis for “in closed position” in line 6. The limitation has been read as -in a closed position-. Similarly, in line 9, “in closed position” has been read as -in the closed position-.
Claim 1 lacks antecedent basis for “so that combination” in lines 9-10. The limitation has been read as -so that a combination-.
Claim 1 lacks antecedent basis for “wherein smartwatch unit” in line 11. The limitation has been read as -the smartwatch unit-.
Claim 1 lacks antecedent basis for “in open position” in the last line. The limitation has been read as -in an open position-.
Regarding claims 4-5, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Furthermore, terms inside parentheses are not considered. In claim 4, “(e.g., a current)” has been read as -a current-. In claim 5, “(e.g., a current)” has been read as -the current-.
Claim 4 lacks antecedent basis for “in a closed position” in lines 7-8. The limitation has been read as -in a closed position-. All other recitations have “in closed position” in claims 4-6 and 9 similarly lack antecedent basis and have been read as -in the closed position-.
Claim 4 lacks antecedent basis for “said screen unit” in line 8. The limitation has been read as -said screen-.
Claim 4 lacks antecedent basis for “the corresponding portion” in line 9. The limitation has been read as -a corresponding portion-.
Claim 4 has ambiguous antecedent basis for “a portion of the screen” in the penultimate line because whether the limitation refers to a new portion or the portion recited in line 9 is unclear. For the purposes of examination, the limitation has been read as -the portion of the screen-.
Claim 5 has ambiguous antecedent basis for “show time” in line 3 because claim 4 already recites a time, so whether claim 5’s “time” refers to a new time or the previous time is unclear. The limitation has been read as -show the current time-.
Claim 8 is rejected because it recites a predefined lapse of time of zero seconds. A lapse of time by definition is an interval of time, so the predefined lapse of time cannot be zero seconds. Furthermore, a zero second lapse of time is impossible because the pressing of the button must send a signal to the processor, after which the processor must receive and analyze the signal. This communication and judgment cannot take zero seconds, i.e., occur instantaneously. The claim is recommended to be cancelled.
Claim 9 has ambiguous antecedent basis for “a portion of the screen” in lines 2-3 because whether the limitation refers to a new portion or the portion recited in claim 4 is unclear. For the purposes of examination, the limitation has been read as -the portion of the screen-.
Claims 10-11 recite “said cover is in opened” in line 1. These limitations are incomplete and idiomatically incorrect. They are recommended to be changed to -said cover is in an opened position-.
Claim 10 recites “the location of said window” in line 3. There is insufficient antecedent basis for this limitation. The limitation is suggested to be changed to -a position of said window- to avoid confusion with the recited “location” in claim 10, line 2.
Claim 11 recites “the location of said window” in line 3. There is insufficient antecedent basis for this limitation. The limitation is suggested to be changed to -a position of said window-.
Claim 11 has ambiguous antecedent basis for “displays a content on practically on an entire portion” because whether the limitation refers to a new portion or the portion recited in claim 4 is unclear. For the purposes of examination, the limitation has been read as -displays content on practically an entirety of the portion-.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ghassabian (US 20190072910).
Regarding claim 1, Ghassabian teaches (Figs. 100A-100E, 101I, 101J) a smartwatch device comprising: a smartwatch unit (abstract) having a screen ([0031]); a housing ([0031]) to accommodate at least a number of components ([0006]) of said smartwatch unit, wherein said housing has a cover ([0031]) to cover at least a portion of said screen ([0006]) and wherein said cover is openable and/or closable (abstract), and wherein said cover has a window so that when said cover is in a closed position, a corresponding portion of the screen is visible to a user ([0006]), and wherein said cover includes a physical watch dial ([0006]); wherein said smartwatch unit has at least two display units wherein a first display unit ([0023]: “virtual watch face”) is dedicated to display virtual watch hands when said cover is in the closed position ([00032]) so that a combination of said physical watch dial and said virtual watch hands show time (claim 5), and wherein the smartwatch unit has a second display unit dedicated to display an output content of the smartwatch unit when the cover is in an open position ([0025]: “uncovered portion of the display surface”).
Regarding claim 2, Ghassabian teaches the device of clam 1, wherein said first and second display units function independently from each other (the two display units function independently because they display unrelated and independent things; see [0023] and [0025]).
Regarding claim 3, Ghassabian teaches the device of clam 1, wherein said first and second display units overlap each other. Fig. 100C shows the second display unit’s content on the screen, and Fig. 100E shows the first display unit’s content on the same screen. The two display units must overlap in order to display their content on the same screen.
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 3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,480,930. Regarding claim 1, reference claim 3 includes all of the limitations except for semantic differences and the output content (“second output content” in ‘930) belonging to a second display unit. ‘930 teaches (Figs. 3, 6) a first display unit (100008) and a second display unit (100007). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified reference claim 3’s second output content to be from a second display unit. One of ordinary skill in the art would have been motivated to make this modification as a known and predictable solution for outputting content.
Regarding claim 3, reference claim 3 recites the same limitations except for the first and second display unit overlapping each other.
‘930 teaches first and second display units overlapping each other. Fig. 3 shows the second display unit (100007) on a screen, and Fig. 6 shows the first display unit (100008) on the same screen. The display units must therefore overlap in order to be on the same screen.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,480,930. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 recites virtual watch hands of first output content of a smartwatch unit (equivalent to a first display unit) being unrelated to second output content.
Claim 5 does not recite a second display unit such that the first display unit and second display unit function independently.
‘930 teaches virtual watch hands of first output content of a first display unit (1010011 in Fig. 11) and second output content of a second display unit (1010021 in Fig. 11).
One of ordinary skill in the art would recognize that if two output contents created by two respective structures are unrelated, then the two structures function independently because the two structures must independently output their content without relation to one another.
As such, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have had a second display unit output the second output content such that the first and second display units of ‘930 function independently. One of ordinary skill in the art would have been motivated to make this modification so that ‘930’s watch can display multiple pieces of useful information at once for a user, which would be convenient.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,868,096. Regarding claim 1, reference claim 3 includes all of the limitations except for semantic differences and the output content (“third output content” in ‘096) belonging to a second display unit. ‘096 teaches (Figs. 3, 6) a first display unit (100008) and a second display unit (100007). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified reference claim 3’s second output content to be from a second display unit. One of ordinary skill in the art would have been motivated to make this modification as a known and predictable solution for outputting content.
Regarding claim 3, reference claim 1 recites the same limitations except for the first and second display unit overlapping each other.
‘096 teaches first and second display units overlapping each other. Fig. 3 shows the second display unit (100007) on a screen, and Fig. 6 shows the first display unit (100008) on the same screen. The display units must therefore overlap in order to be on the same screen.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,868,096. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 2 recites virtual watch hands of first output content of a display unit (equivalent to the claimed “first display unit”) being unrelated to third output content (equivalent to the claimed “output content”).
Reference claim 2 does not recite a second display unit such that the first display unit and second display unit function independently.
‘096 teaches virtual watch hands of first output content of a first display unit (1010011 in Fig. 11) and second output content of a second display unit (1010012 in Fig. 11).
One of ordinary skill in the art would recognize that if two output contents created by two respective structures are unrelated, then the two structures function independently because the two structures must independently output their content without relation to one another.
As such, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have had a second display unit output the third output content such that the first and second display units of ‘096 function independently. One of ordinary skill in the art would have been motivated to make this modification so that ‘096’s watch can display multiple pieces of useful information at once for a user, which would be convenient.
Allowable Subject Matter
Claims 4-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: regarding claim 4, Ghassabian discloses displaying virtual watch hands after a processor determines that a cover has been closed after a predefined lapse of time ([0032]), but does not show or suggest a button on a housing such that when a cover is in a closed position covering a screen of the housing, the button is pressed, which causes an operating system to inform a processor that the button has been pressed, in combination with the other limitations.
Koller (US 20200150594) discloses pressing a button to activate a display ([0037]) and the button being connected to a processor ([0040]), but does not show or suggest the button being on a housing so that a cover covering a screen of the housing presses the button.
Lee (US 5,652,736) discloses a cover of a watch pressing down on a projection (column 2, lines 47-52), but does not show or suggest the projection being a button electronically connected to a processor so that the pressing of the button activates a display of a smartwatch screen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F from 10-6 PM PT.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/EDWIN A. LEON/ Primary Examiner, Art Unit 2833