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 .
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,125,650 in view of Yang et al. [Yang hereinafter, US 2013/0043115]. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include the claimed subject matter of the present claims, except for the limitations below.
Regarding claims 1-3 of the instant application, claim 1 of ‘650 discloses the claimed invention except for a decorative sheet provided across the manipulation surface and the surface of the panel, wherein the decorative sheet has a predetermined elasticity with which the vibration is absorbed, and wherein the decorative sheet is attached to the manipulation surface and to the surface of the panel with an adhesive. Yang teaches [in Figs. 2-3B and par. 0022] a decorative sheet [14] provided across the manipulation surface [of 1211] and the surface of the panel [13], wherein the decorative sheet [14] has a predetermined elasticity with which the vibration is absorbed, and wherein the decorative sheet [14] is attached to the manipulation surface and to the surface of the panel with an adhesive [par. 0022]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the decorative sheet of Yang with the switch module of ‘605 in order to protect the parts of the switch module.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,125,650 in view of Brown et al. [Brown hereinafter, US 2020/0117274] in view of Yang et al. [Yang hereinafter, US 2013/0043115]. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include the claimed subject matter of the present claims, except for the limitations below.
Regarding claim 8 of the instant application, claim 2 of ‘650 discloses claimed invention except for the manipulation member, the base portion, the vibration element, and the stationary member are placed in a direction from the surface of the panel toward a rear surface side opposite to the surface of the panel, starting from the manipulation member, followed by the base portion, followed by the vibration element, followed by the stationary member. Brown teaches [in Figs. 8-11] the manipulation member [52], the base portion [51], the vibration element [60], and the stationary member [55] are placed in a direction from the surface of the panel [54] toward a rear surface side opposite to the surface of the panel [54], starting from the manipulation member [52], followed by the base portion [51], followed by the vibration element [60], followed by the stationary member [55]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to arrange manipulation member, base portion, vibration element and stationary member as taught by Brown in order to actuate the switch and achieve the tactile feedback as desired. Brown and ‘650 also do not disclose a decorative sheet provided across the manipulation surface of the manipulation member and the surface of the panel. Yang teaches [in Figs. 2-3B] a decorative sheet [14] provided over the switch module and across the manipulation surface of the manipulation member [1211] and the surface of the panel [13]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the decorative sheet of Yang with the switch module of ‘625, as modified by Brown, in order to protect the parts of the switch module.
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.
Claims 1-3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. [Brown hereinafter, US 2020/0117274] in view of Yang et al. [Yang hereinafter, US 2013/0043115].
In regard to claims 1-3, Brown discloses [in Figs. 8-11] a switch module comprising: a panel [54] having an opening [56] in a surface; a switch to be attached to the panel, the switch comprising: a stationary member [55] to be attached to the panel [54]; a movable member [52] to be placed at a distance from the panel [54], the movable member having a manipulation surface separated from the panel in the opening [56] with a gap intervening between the manipulation surface and the panel [54], the manipulation surface being exposed from the opening [56]; and a vibration element [60] disposed between the stationary member [55] and the movable member [52], the vibration element [60] being configured to vibrate the movable member [52]. Brown does not disclose a decorative sheet provided across the manipulation surface and the surface of the panel, wherein the decorative sheet has a predetermined elasticity with which the vibration is absorbed, and wherein the decorative sheet is attached to the manipulation surface and to the surface of the panel with an adhesive. Yang teaches [in Figs. 2-3B] a disclose a decorative sheet [14] provided across the manipulation surface [of 1211] and the surface of the panel [13], wherein the decorative sheet [14] has a predetermined elasticity with which the vibration is absorbed, and wherein the decorative sheet [14] is attached to the manipulation surface and to the surface of the panel [13] with an adhesive [par. 0022]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the decorative sheet of Yang with the switch module of Brown in order to protect the parts of the switch module.
In regard to claim 8, Brown discloses [in Figs. 8-11] switch module comprising: a panel [54] having an opening [56] in a surface; and a switch to be attached to the panel having an opening in a surface, the switch comprising: a stationary member [55] to be attached to the panel [54]; a manipulation member [52] to be placed at a distance from the panel [54], the manipulation member [52] having a manipulation surface separated from the panel [54] in the opening [56] with a gap intervening between the manipulation surface and the panel [54], the manipulation surface being exposed from the opening [56]; a base portion [51] disposed between the manipulation member [52] and the stationary member [55], the base portion [51] being fixed together with the manipulation member [52], the base portion [51] being configured to be movable together with the manipulation member [52], relative to the stationary member [55]; and a vibration element [60] configured to vibrate the manipulation member [52]; wherein the manipulation member [52], the base portion [51], the vibration element [60], and the stationary member [55] are placed in a direction from the surface of the panel [54] toward a rear surface side opposite to the surface of the panel [54], starting from the manipulation member [52], followed by the base portion [51], followed by the vibration element [60], followed by the stationary member [55]. Brown does not disclose a decorative sheet provided across the manipulation surface of the manipulation member and the surface of the panel. Yang teaches [in Figs. 2-3B] a decorative sheet [14] provided over the switch module and across the manipulation surface of the manipulation member [1211] and the surface of the panel [13]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the decorative sheet of Yang with the switch module of Brown in order to protect the parts of the switch module.
Allowable Subject Matter
Claims 4-7 and 9 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.
In regard to claim 4, in combination with other limitations, a non-existence area on which the adhesive is not present, the non-existence area being provided across: the gap; a first portion on a first area adjacent to the gap, the first area being on the manipulation surface; and a second portion on a second area adjacent to the gap, the second area being on the surface of the panel is neither disclosed nor suggested by the prior art.
In regard to claim 9, in combination with other limitations, a case member fixed together with the base portion, wherein the decorative sheet, the manipulation member, the base portion, the vibration element, the stationary member, and the case member are placed in a direction from the surface of the panel toward a rear surface side opposite to the surface of the panel, starting from the decorative sheet, followed by the manipulation member, followed by the base portion, followed by the vibration element, followed by the stationary member, followed by the case member is neither disclosed nor suggested by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LHEIREN MAE A CAROC whose telephone number is (571)272-2730. The examiner can normally be reached Monday-Friday, 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LHEIREN MAE A CAROC/Primary Examiner, Art Unit 2831
Prosecution Insights