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) 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 because 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 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,085,994 (994 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. The 994 Patent claim 16 recites an electronic device having a first housing and a second housing slidable relative to one another, a first ground in the first housing, a second ground in the second housing, an a contact structure that electrically connects the first ground to the second ground in a first state, with a conductive portion of the housing electrically connected to at least one of the grounds. Instant Claim 16 is not patentably distinct because it merely recites an obvious variant of the same sliding two-housing device with conductive portions and contacts respectively connected to those conductive portions, wherein the contacts are connected in one slide position and disconnected in another. The instant claim therefore defines no patentably distinct invention over the patented claim, but instead an obvious variant of that claim.
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.
Claim(s) 1, 4-7, 16 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al. (US Publication 2020/0304613) in view of Moriki (US Publication 2003/0148795).
In re Claim 1, Cha discloses a portable communication device comprising: a housing 100 including a first housing 101 and a second housing 102 (Figures 4a, 4b) slidably connected with the first housing, the first housing including a first conductive portion (within mainboard 181) and a first contact 1451 electrically connected with the first conductive portion, and the second housing 102 including a second contact 1452; and a flexible display 151 accommodated in the first housing and the second housing such that, when the second housing is slid into the first housing (Figure 9a), a first portion of the flexible display is visible from outside of the electronic device and a second portion of the flexible display is not visible from the outside of the electronic device (Figure 9a), and that, when the second housing is slid out of the first housing, each of the first portion and the second portion are visible from the outside of the electronic device (Figures 9b, 9c), wherein, when the second housing is slid into the first housing (Figure 9a), the first contact 1451 is connected with the second contact 1452, and wherein, when the second housing is slid out of the first housing (Figures 9b or 9c), the first contact 1451 is disconnected from the second contact 1452 (note the different positions of 1452).
Cha does not explicitly disclose wherein the second contact is electrically connected with a second conductive portion. However, providing such was not new in the art. For example, Moriki discloses a plurality of contacts 201, 202, 203 or 204 within a first/second housing 2 and a first/second contact 301 within a first/second housing 3, wherein the first and second contacts are electrically connected with respective first and second conductive portions within the respective housings. See Figure 3, paragraphs 0024-0030 (showing conductive portions to electrically connect contacts 201, 202, 203, 204 with detector 205 and processor 206 as well as conductive portions to electrically connect contact 301 with keypad 301). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have provided an electrically connected second contact, as disclosed in Moriki, with the apparatus as otherwise disclosed in Cha to add to the functionality of the device. For example, electrically connecting to the second contact would allow for data to transfer from the second housing to the first housing through the contacts (such as input data as disclosed in Moriki). Also, electrically connecting the second contact to a conductive structure within the second housing enables the slide-position-dependent contact state to be used for reliable position detection and display area control.
In re Claims 4 and 19, Moriki further discloses wherein the second housing 2 includes a third contact 202, 203 or 204 electrically connected with the second conductive portion (i.e. position detector 205 or processor 206), and wherein, when the second housing is slid out of the first housing, the first contact 301 is connected with the third contact 202, 203 or 204. See Moriki, Figure 3; paragraphs 0024-0030.
In re Claims 5, 6 and 20, Moriki discloses a fourth 203 and a fifth 204 contact on housing 2 and a single/first contact 301 on housing 3. So, in the context of Claim 5, Moriki discloses fifth 203 and sixth 204 contacts electrically connected to the second conductive portion (i.e. position detector 205 or processor 206). Moriki does not explicitly disclose a fourth contact on the housing 3. However, it would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have provided an additional contact beyond what is otherwise disclosed in Moriki as a mere duplication of parts. See MPEP §2144.04 (VI).
In re Claim 7, Cha discloses wherein the first housing 101 includes a third conductive portion electrically connected to the first conductive portion (Cha discloses wherein the first conductive portion is a printed circuit board 181 which also inherently comprises other components and thus a third conductive portion connected to the first conductive portion to allow the processor to adjust the display size based on the detected amount of display exposed. See Cha, paragraphs 0096, 0130-0133).
In re Claim 16, Cha discloses a portable communication device comprising: a housing 100 including a first housing 101 and a second housing 102 slidably connected with the first housing (Figures 4a, 4b), the first housing 101 including a first conductive portion (within mainboard 181) and a first contact 1451 electrically connected with the first conductive portion, and the second housing 102 including a second contact 1452; and a flexible display 151 including a first portion and a second portion moving into or moving out of the housing by sliding of the second housing (See Figures 9a, 9b and 9c), wherein, when the second housing 102 is slid into the first housing 101 (Figure 9a), the first contact 1451 is connected with the second contact 1452, and wherein, when the second housing 102 is slid out of the first housing 101 (Figures 9b or 9c), the first contact 1451 is disconnected from the second contact 1452 (note the different positions of 1452).
Cha does not explicitly disclose wherein the second contact is electrically connected with a second conductive portion. However, providing such was not new in the art. For example, Moriki discloses a first contact 201, 202, 203 or 204 within a first housing 2 and a second contact 301 within a second housing 3, wherein the first and second contacts are electrically connected with respective first and second conductive portions within the respective housings. See Figure 3, paragraphs 0024-0030 (showing conductive portions to electrically connect contacts 201, 202, 203, 204 with detector 205 and processor 206 as well as conductive portions to electrically connect contact 301 with keypad 301). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have provided an electrically connected second contact, as disclosed in Moriki, with the apparatus as otherwise disclosed in Cha to add to the functionality of the device. For example, electrically connecting to the second contact would allow for data to transfer from the second housing to the first housing through the contacts (such as input data as disclosed in Moriki). Also, electrically connecting the second contact to a conductive structure within the second housing enables the slide-position-dependent contact state to be used for reliable position detection and display area control.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al. (US Publication 2020/0304613), Moriki (US Publication 2003/0148795) and further in view of Rohrbach et al. (US Publication 2007/0072443).
In re Claim 13, Cha as modified by Moriki discloses the limitations as noted above but does not explicitly disclose a magnetic connector. However, Rohrbach discloses wherein a first contact 158 or 160 includes a first magnet 170, and a first wall 62 covering at least a portion of the first magnet (See Figure 3), wherein the second contact 120 includes a second magnet 130, and a second wall 118 covering at least a portion of the second magnet (Figure 3), and wherein the first magnet of the first contact is in contact with the second magnet of the second contact. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have provided a magnetic connection, like that disclosed in Rohrbach with the apparatus as otherwise disclosed in Cha/Moriki. Providing a magnetic connector like that disclosed in Rohrbach will reduce the wear and tear on the contacts while also ensuring the electrical connection is maintained when the housings are in the desired position.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al. (US Publication 2020/0304613), Moriki (US Publication 2003/0148795) and further in view of Lin (US Publication 2010/0124955).
In re Claim 14, Cha as modified by Moriki discloses the limitations as noted above but does not explicitly disclose a magnet. However, providing such was not new in the art of portable electronics. For example, Lin discloses a first housing 20 slidable relative to a second housing 30, wherein a magnet 252 in the first housing is magnetically attracted to a second magnet 352 in the second housing. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have provided a magnet, as disclosed in Lin, with the apparatus as otherwise disclosed in Cha/Moriki to assist a user to holding the device in a desired position.
Lin does not explicitly disclose wherein the magnet is plated in metal. However, the office takes official notice of facts outside the record that plating a magnet in metal was known in the art of portable electronics at a time before the effective filing date and to have modified Lin to explicitly plate the magnet in metal would have been an obvious modification to a person having ordinary skill in the art to improve electrical conductivity, prevent corrosion and improve mechanical durability.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al. (US Publication 2020/0304613), Moriki (US Publication 2003/0148795) and further in view of Franzen et al. (US Publication 2003/0114022).
In re Claim 15, Cha as modified by Moriki discloses the limitations as noted above but does not explicitly disclose wherein the first contact is welded on the first housing, and wherein the second contact is welded on the second housing. However, welding a contact to a structure was known in the art before the effective filing date. For example, Franzen discloses an electrical contact 8 that is welded to a housing 101. It would have been obvious to a person having ordinary skill in the art of portable electronics to have welded a contact to a housing, as disclosed in Franzen, to permanently join a metallic contact to a conductive structure to improve connection stability and durability.
Allowable Subject Matter
Claims 2, 3, 8, 9, 11, 17 and 18 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.
The specific limitations of “wherein the first housing includes a third conductive portion corresponding to an antenna radiator, and wherein the first conductive portion and the second conducive portion correspond to a ground for the third conductive portion corresponding to the antenna radiator” in Claim 2, and similarly in Claim 17, are not anticipated or made obvious by the prior art of record in the examiner’s opinion. The specific limitations of " wherein the first conductive portion and the second conductive portion are electrically connected such that a coupling connection between a conductive material of the first housing and a conductive material of the second housing is reduced” in Claim 3, and similarly in Claim 18, are not anticipated or made obvious by the prior art of record in the examiner's opinion. The specific limitations of " a wireless communication circuitry configured to feed a power to the third conductive portion forming a portion of a lateral side of the first housing” in Claim 8 are not anticipated or made obvious by the prior art of record in the examiner's opinion. The specific limitations of "” in Claim 9 are not anticipated or made obvious by the prior art of record in the examiner's opinion. The specific limitations of "” in Claim 11 are not anticipated or made obvious by the prior art of record in the examiner's opinion.
For example, Cha et al. (US Publication 2020/0304613) and Moriki (US Publication 2003/0148795) disclose the limitations as noted above, but do not disclose the specific limitations noted in Claims 2, 3, 8, 9, 11, 17 or 18 above.
Kurihara (US Publication 2013/0009829) discloses an electronic device comprising: a housing including a first housing 10 and a second housing 20, wherein the first housing includes a ground (See Figure 1B), and the second housing 20 is connected to the first housing 10 to be slidable and includes a conductive portion (inherently); a wireless communication circuit 40/70A; and at least one contact structure comprising a conductor (inherent in either circuit boards 30 or 40, disclosed as connected in paragraph 0028), wherein in a first state, the second housing is configured to move in a first direction away from the first housing to be changed to a second state (Figure 1B), and in a second state, the second housing is configured to move in a second direction opposite the first direction to be changed to the first state (Figure 2B).
However, Kurihara also does not disclose the specific limitations of Claims 2, 3, 8, 9, 11, 17 or 18 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrian S Wilson whose telephone number is (571)270-3907. The examiner can normally be reached Monday through Friday, 9am to 5pm.
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841