DETAILED ACTION
Claims 1-20 have been considered for patentability.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 8,654,524 (524 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. For example, both sets of claims are directed to electronic devices where a user input is detected via an exterior housing surface and an output is generated back through the housing, including visual output. For example, Claim 1 in the current application recites “the housing having an exterior surface … a touch sensor configured to detect touch input on the exterior surface of the housing … the controller is configured to generate an output signal based on the touch input from the touch sensor.” This corresponds closely with Claims 1 and 2 in the 524 Patent where one or more sensors are recited positioned proximate a housing wall to sense interactions via an exposed surface and a controller communicatively coupled to the sensors to interpret the interactions and generate an output signal.
Claims 1-20 are also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,248,221 (221 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. For example, Claim 1 in the instant application claims detecting user input on an exterior surface of the housing and generating an output signal via a controller, which corresponds to Claim 1 of the 221 Patent which recites a virtual keyboard including sensors hidden by a housing and output devices that generate output through the housing in response to the input. Additionally, Claims 3, 13 and 14 of the current application recite adjusting displayed images, brightness, or displayed content in response to the output signal, which corresponds most closely to Claims 6, 14 and 15 of the 221 Patent which recite illuminated symbols that change based on an input mode of the device.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,105,557 (557 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. For example, Claim 9 in the instant application recites generating different output signals in response to different touch inputs on the exterior surface which corresponds to Claims 1, 18 and/or 19 of the 557 Patent which recites generating different output signals based on different inputs. Also, Claims 13 and 14 of the instant application recite adjusting brightness or displaying different images in response to an output signal which corresponds most closely with Claims 2, 5 and 16 of the 557 Patent which claims adjusting displayed images and symbols in response to sensor inputs.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 10-12 and 14 is/are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by Bogward (US Publication 2004/0049743).
In re Claim 10, Bogward discloses an electronic device, comprising: a housing 1001 (Figures 1, 2, 26) with first 1010 and second 1020 portions coupled by a hinge 1030, the housing having an exterior surface; a first display (“Display” Figure 26) in the first portion of the housing and configured to display a first image; a second display 26010 (Figures 1, 2, 26; paragraphs 0037-0041, 0198) in the second portion of the housing and configured to display a second image (Figure 28); a pressure sensor (paragraph 0311, Figure 77) configured to detect a press on the exterior surface 77030 of the housing; and a controller (paragraphs 0161, 0166, 0198, 0307-0316) enclosed in the housing and communicatively coupled to the pressure sensor, wherein the controller is configured to generate an output signal based on the press on the exterior surface of the housing.
In re Claim 11, Bogward discloses wherein the housing has an interior surface and wherein the first and second displays emit light through the interior surface of the housing. Bogward discloses wherein the first display is a conventional notebook display which inherently comprises layers which would satisfy the limitation that the first display emits light through the interior surface of the housing since the exterior surface of the housing in the first display area will comprise the outer layers/cover glass of the display. Bogward, paragraphs 0003-0007, 0012. Bogward further discloses wherein the second display 26010 is positioned within housing and projects an image through an opening. See Figure 32. Bogward also discloses wherein the second display is itself also an LED display (paragraph 0387) which inherently comprises layers, the outer layers comprising transparent portions such as a cover glass that allow light to emit therethrough.
In re Claim 12, Bogward discloses throughout wherein a controller (paragraphs 0161, 0166, 0198, 0307-0316) is configured to provide output signals to at least one of the first or second displays (touch inputs to the pressure sensor disclosed in paragraph 0311, Figure 77, change images on the first display as well as change menu/icon options on the second display).
In re Claim 14, Bogward discloses wherein at least one of the first (“Display” Figure 26) or second 26010 displays is configured to display a third image different from the first or second image in response to the output signal. See for example Figure 28 showing various different icons being displayed on the second display depending on modes and inputs chosen by the pressure sensor (paragraph 0311, Figure 77).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1-8 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bogward (US Publication 2004/0049743) in view of Caldwell (US Publication 2003/0122794).
In re Claim 1, Bogward discloses an electronic device, comprising: a housing 1001 (Figures 1, 2, 26) with first 1010 and second 1020 portions coupled by a hinge 1030, the housing having an exterior surface; a first display (“Display” Figure 26) in the first portion of the housing and configured to display a first image; a second display 26010 (Figures 1, 2, 26; paragraphs 0037-0041, 0198) in the second portion of the housing and configured to display a second image (Figure 28); a touch sensor configured to detect touch input (paragraphs 0055, 0198; Figures 1, 2, 41B showing user touching input area); and a controller (paragraphs 0161, 0166, 0198) enclosed in the housing and communicatively coupled to the touch sensor, wherein the controller is configured to generate an output signal based on the touch input from the touch sensor (See Figure 41B and associated description).
Bogward does not explicitly disclose wherein the touch sensor is configured to detect touch input on the exterior surface of the housing. However, providing a “hidden” touch sensor was known in the art of electronics prior to applicant’s claimed invention. For example, Caldwell discloses a touch sensor 31 configured to detect touch input on the exterior surface 40 of a housing 10 (See Caldwell, Figure 1 for example). It would have been obvious to a person having ordinary skill in the art of electronics at a time before applicant’s claimed invention to have provided a hidden touch sensor, as disclosed in Caldwell, in place of the touch sensor or incorporated with the other types of touch sensors as otherwise disclosed in Bogward. The addition of a hidden touch sensor would add to the aesthetic appeal of the device. Bogward teaches that the touch input region as shown in Figures 1, 2 and 41B may be comprised of various types of touch input regions (See Figures 32, 34-37 for example) which suggests that a “hidden” type of touch input like that disclosed in Caldwell could be desirable as an alternative to improve aesthetics.
In re Claims 2 and 3, Bogward discloses wherein the controller (paragraphs 0161, 0166, 0198) is configured to provide the output signal to at least one of the first or second displays (Bogward discloses wherein inputs to the touch sensor may control images on the first display, as shown in Figure 41A, as well as change the images in the form of icons on the second display 26010 as shown in Figure 28).
In re Claims 4 and 5, Bogward discloses a speaker with a volume (paragraph 0221), wherein the controller (paragraphs 0161, 0166, 0198) is configured to provide the output signal to the speaker to adjust volume (paragraphs 0221, 0410, 0441).
In re Claim 6, Bogward discloses wherein the controller (paragraphs 0161, 0166, 0198) is configured to initiate a sleep function (i.e. “standby” mode) of the electronic device in response to the touch input. Bogward, paragraph 0046.
In re Claim 7, Bogward discloses wherein the controller (paragraphs 0161, 0166, 0198) is configured to initiate a wake function of the electronic device in response to the touch input. Bogward, paragraphs 0048, 0217.
In re Claim 8, Caldwell discloses wherein the controller 30 is configured to turn off the electronic device in response to the touch input on the exterior surface of the housing. Caldwell, paragraph 0008.
Claim 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bogward (US Publication 2004/0049743), Caldwell (US Publication 2003/0122794) and further in view of Carroll (US Publication 2007/0136064).
In re Claim 9, Bogward as modified by Caldwell disclose the limitations as noted above but do not explicitly disclose single and double touch distinct inputs. However, providing such was not new at a time before the claimed invention. For example, Carroll discloses wherein a single touch is distinguishable from a double or multiple touches (i.e. “taps”). Carroll, paragraph 0068. It would have been obvious to a person having ordinary skill in the art of electronics at a time before applicant’s claimed invention to have provided a gesture-based type of input distinction as disclosed in Carroll with the touch sensors as otherwise disclosed in Bogward as modified by Caldwell to allow for more input choices of a user which makes the device more ergonomic.
Claim 13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Bogward (US Publication 2004/0049743) in view of Carroll (US Publication 2007/0136064).
In re Claim 13, Bogward discloses the limitations as noted above, but does not explicitly disclose brightness control of the images on the displays. However, providing such was not novel at the time of applicant’s claimed invention. For example, Carroll discloses a sensor 202 detecting a user’s touch input, wherein the sensor controls a brightness level of a display 214. Carroll, paragraph 0065; Figure 8A. It would have been obvious to a person having ordinary skill in the art of electronics at a time before applicant’s claimed invention to have provided a brightness control feature, as disclosed in Carroll, with the sensor and apparatus generally as otherwise disclosed in Bogward. The addition of a brightness control would allow a user to easily adjust the brightness of the display from an external input without having to navigate into the settings interface of the operating system. This would improve user ergonomics.
Claim 15-17 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Carroll (US Publication 2007/0136064) in view of Caldwell (US Publication 2003/0122794).
In re Claim 15, Carroll discloses a portable electronic device, comprising: a housing 500 (Figures 14A, 14B) having a surface (50, Figure 1A; 380, Figure 11A; 502, Figure 14A) with first and second portions (e.g. top half portion and bottom half portion); a display 36, 374, 504 configured to display an image, wherein the display overlaps the first portion of the surface (See Figures 1A, 11A or 14A); and a sensor (202, Figure 8A; 508, 510 Figures 14A, 14B) configured to detect user input (note also that Carroll discloses wherein the sensors might be located on any of the surfaces, including “on or at the viewing region”, paragraph 0064).
Carroll does not explicitly disclose at least one light source configured to illuminate the second portion of the surface or wherein the at least one light source is configured to illuminate the second portion of the surface in response to the sensor detecting the user input. However, Caldwell teaches illuminating a second portion of a surface 40 (See Figures 5A-5C; paragraphs 0018, 0032) and wherein at least one light source 50 is configured to illuminate in response to a sensor 31, 32 detecting a user input (paragraph 0031). It would have been obvious to a person having ordinary skill in the art of electronics at a time before the claimed invention to have provided illuminated indicators on a non-display touch surface as otherwise disclosed in Carroll using the techniques as taught by Caldwell to improve user feedback and discoverability of various control functions of the apparatus (i.e. to provide a “hidden” touch surface that only appears when a user approaches).
In re Claim 16, Carroll discloses wherein the first and second portions are non-overlapping (See Figures 14A, 14B wherein the display 504 is on a first portion and the sensor 508 is on another portion that does not overlap with the first portion; Carroll also explicitly disclosing where the sensors are distinct from the display and therefor must be on a different portion and not overlap with the display).
In re Claim 17, Caldwell discloses wherein the at least one light source 50 is configured to illuminate an icon (or symbol) on the second portion of the surface. Caldwell, paragraph 0030.
Claims 18-20 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Carroll (US Publication 2007/0136064), Caldwell (US Publication 2003/0122794) and further in view of Yun et al. (US Publication 2007/0080818).
In re Claim 18, Carroll as modified by Caldwell discloses the limitations as noted above, Carroll further disclosing a port (at the very least inherently as Carroll discloses the device therein functioning as a portable “personal computer” which must have ports for peripherals 32, charging 30, etc. Carroll, paragraphs 0002, 0007, 0046). Carroll and/or Caldwell do not explicitly disclose wherein an icon indicates a type of port. However, providing such a feature was not novel at a time before applicant’s claimed invention. For example, Yun discloses at least one port 20 (Figure 1) on a surface of an electronic device 100, wherein an icon 34 is illuminated to indicate a type of port. Yun, paragraphs 0053, 0064. One of ordinary skill in the art of electronics would have found it obvious to place a port indicating icon as disclosed in Yun on a surface of a device as otherwise disclosed in Carroll as modified by Caldwell. Providing a port indicating icon allows a user to quickly identify which ports are which in a region of the device where multiple ports may be present. Yun, paragraph 0053. Caldwell does suggest that the light source 50 may project an icon or symbol to a user to provide information about the functions of the device (e.g. port information). Caldwell, paragraphs 0005, 0008. Carroll further suggests various functions and uses of the sensors disclosed therein, particularly as being used to provide unique inputs depending on location on a device surface (Figure 9B) which suggests the use of a lighted icon to assist a user to know which region of the sensor has which function.
Yun also suggest the electronic device therein may have a processor, which implies that the electronic device therein may be a portable computer. Yun, paragraph 0005.
In re Claim 19, Carroll as modified by Caldwell and Yun discloses the limitations as noted above but does not explicitly disclose wherein the port is on a second surface of the housing orthogonal to the second portion of the surface. Carroll does disclose wherein the sensors may be located on any of the surfaces of the device. Carroll, 0064. Caldwell and Yun disclose generally that the light source/icons are on the same surface as the sensors and/or ports. See Caldwell, Figures 4B, 5C; Yun, Figures 4A, 4B. However, it would have been obvious to a person having ordinary skill in the art of electronics at a time before the claimed invention to have placed the port on a housing surface that was orthogonal to the illuminated surface, as such a placement is a common and predicable design choice in a portable electronic device to improve accessibility of connectors while maintaining visibility of an associated icon. See MPEP §2144.04(I); (VI)(C).
In re Claim 20, Carroll and Caldwell disclose the limitations as noted above, but do not explicitly disclose a proximity sensor. However, Yun discloses a proximity sensor (paragraphs 0018-0022, 0030-0035). It would have been obvious to a person having ordinary skill in the art to have substituted or supplemented the sensors as other disclosed in Carroll as modified by Caldwell with a proximity sensor as taught in Yun to improve useability and improve the ergonomics of the apparatus by more accurately determining user intent when providing user input. Carrol explicitly teaches that different types of sensors may be used in the disclosed invention. Carroll, paragraph 0064. Caldwell also suggests a proximity sensor as therein is disclosed illuminating icons or surface regions only when appropriate based on user interaction (e.g. when a user gets close to a sensor). Caldwell, paragraph 0005 (“responds to changes to the electric field when the electric field is disturbed by a stimulus such as a user’s touch or proximity”).
Conclusion
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841