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 14-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,108,142. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially the same claim elements, for example the elements of independent claim 14 are listed below next to a corresponding claim element from the ‘142 patent.
Claim 14 of instant application 18/815095
Corresponding claim element from U.S. Patent No. 12,108,142
a plurality of built-in camera lenses having different focal lengths
a plurality of built-in camera lenses having different focal lengths (claim 1 of ‘142)
a hardware key on a side surface of the electronic device, wherein the hardware key is configured to perform a shutter operation
a camera key on a side surface of the electronic device, and the camera key performs a shutter operation (claim 8 of ‘142)
a touch screen
a touch screen (claim 8 of ‘142)
a processor configured to: control the touch screen to display a first item to select a photographing mode, a second item to select a photographing camera lens for photographing from the plurality of built-in camera lenses, and a third item to set an exposure control parameter
displaying a photographing mode selection screen to select a photographing mode, a lens selection screen to select a photographing camera lens for photographing from the plurality of built-in camera lenses, and an exposure control parameter setting screen to set an exposure control parameter (claim 1 of ‘142)
in a case where one side of the touch screen of the electronic device that faces the hardware key is an upper side, control the touch screen to display the third item on a right side of the touch screen
when one side of the touch screen of the electronic device facing the camera key is an upper side, the exposure control parameter setting screen is displayed in an operation area along a right side of the touch screen
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY R HSU whose telephone number is (571)270-3012. The examiner can normally be reached 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lin Ye can be reached at (571)272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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AMY R. HSU
Examiner
Art Unit 2664
/AMY R HSU/Primary Examiner, Art Unit 2638
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