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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-9 in the reply filed on 9/30/2026 is acknowledged.
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/30/2026.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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,
“a shell brace that is substantially optically transparent and is coupled to the passthrough region of the housing shell to structurally reinforce the region of the housing shell that is thinner than the adjoining region of the housing shell” 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.
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 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 15, 16 and 19 of copending Application No. 19/072304 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application No. 19/072304 teaches everything except minor difference in wording, such as a first region is the same as a passthrough region.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (US 10,732,051; hereinafter “Zhang”).
Regarding claim 1, Zhang discloses an apparatus (Figs. 9A, 9B) comprising:
a housing (120, Figs. 9A, 9B) comprising a housing shell (wall of 120 is same as shell), the housing shell being configured to permit light to pass through a passthrough region (900 of 120 in Figs. 9A, 9B) of the housing shell; and
an ambient light sensor (910, Fig. 9B), positioned to detect light that passes through the passthrough region of the housing shell (col. 11, lns. 6-31; col. 16, ln. 65- col. 17, ln. 26: “… The thinned portion 900 of the housing 120 may be thin enough to allow light to pass through the material of the housing 120…”).
Regarding claim 2, Zhang discloses the apparatus of claim 1, and Zhang further discloses wherein the passthrough region comprises a region (same as region at 900, Figs. 9A, 9B) of the housing shell that is thinner than an adjoining region of the housing shell (see col. 16, ln. 65- col. 17, ln. 26).
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, and further in view of Andre et al. (US 2008/0024470; hereinafter “Andre”).
Regarding claim 3, Zhang teaches the apparatus of claim 2. Zhang does not teach a shell brace that is substantially optically transparent and is coupled to the passthrough region of the housing shell to structurally reinforce the region of the housing shell that is thinner than the adjoining region of the housing shell. However, Andre teaches a shell brace (same as 1402, Fig. 14) that is substantially optically transparent and is coupled to a passthrough region (802, Fig. 13) of a housing shell (same as 700, Fig .14) to structurally reinforce the region of the housing shell that is thinner than the adjoining region of the housing shell (as shown in Fig. 14; also see [0096-0097]: “…a transparent or translucent structural reinforcing element, like the structural plug 1402, may be used to reinforce any portion of a light-transmissive display pattern…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a shell brace that is substantially optically transparent and is coupled to the passthrough region of the housing shell to structurally reinforce the region of the housing shell that is thinner than the adjoining region of the housing shell in Zhang, as taught by Andre, in order to improve structural integrity at the thinned region of the housing shell.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, and further in view of Tateda (US 10,738,965; hereinafter “Tateda”).
Regarding claim 4, Zhang teaches the apparatus of claim 1. Zhang does not teach wherein the ambient light sensor is mounted on a substrate that is colored with a similar color to the housing shell. However, Tateda teaches a sensor (13b, Fig. 10) is mounted on a substrate (13c and/or 14, Fig. 10; “ col. 9, lns. 47-57 “… colored transparent…”) that is colored with a similar color to a housing shell (12, Fig. 3; col. 7, lns. 21-30: “… color is substantially the same …”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the ambient light sensor is mounted on a substrate that is colored with a similar color to the housing shell in Zhang, as taught by Tateda, in order to blend in with the surrounding so the ambient light sensor does not stand out from the apparatus.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang, and further in view of Wilson et al. (US 11,226,444; hereinafter “Wilson”).
Regarding claims 5 and 6, Zhang teaches the apparatus of claim 1. Zhang does not teach wherein an outer surface of the housing shell is textured to improve light scattering of light passing through the housing shell; wherein an inner surface of the housing shell is textured to improve light scattering of light passing through the housing shell. However, Wilson teaches an outer surface (same as outer 46) of a housing shell (col. 3, lns. 50-56: “…form a housing for device 10… may form optical component covering structures…”; ) is textured to improve light scattering of light passing through the housing shell; wherein an inner surface (same as inner 46) of the housing shell is textured to improve light scattering of light passing through the housing shell (col. 9, lns. 7-12: “…Light may also be diffused by providing some or all of a inner or outer polymer or other layer… light-scattering texture…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an outer surface of the housing shell is textured to improve light scattering of light passing through the housing shell; wherein an inner surface of the housing shell is textured to improve light scattering of light passing through the housing shell in Zhang, as taught by Wilson, in order to help reduce the sensitivity of ambient light measurement by even out the light toward the ambient light sensor.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, and further in view of Pollack et al. (US 11,014,502; hereinafter “Pollack”).
Regarding claim 7, Zhang teaches the apparatus of claim 1. Zhang does not teach wherein a surface of the housing shell is shaped to act as a light-guiding material to direct light to the ambient light sensor. However, Pollack teaches a surface (surface of 28 of 18, Figs. 2-3) of a housing shell (12, Figs. 2-3; col. 2, ln. 67-col. 3, ln. 4: “… 18 is integrally formed as part of the housing 12 proximate the ambient light sensor 16…”) is shaped to act as a light-guiding material (34, Figs. 2-3; col. 3, lns. 33-35: “…The ridge 34 are configured to aid in directing ambient light into the light sensor 16…”) to direct light to an ambient light sensor (16, Fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a surface of the housing shell is shaped to act as a light-guiding material to direct light to the ambient light sensor in Zhang, as taught by Pollack, in order to aid in directing ambient light into the ambient light sensor.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
Regarding claim 8, Zhang teaches the apparatus of claim 1. Zhang does not explicitly teach wherein the housing shell comprises a single contiguous piece of material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the housing shell comprises a single contiguous piece of material in Zhang, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). In this case, making the housing shell a single contiguous piece of material provide a sleek appearance and also simplify the manufacturing process, and this yields predictable results to one of ordinary skill in the art.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang, and further in view of Lu et al. (US 2020/0382739; hereinafter “Lu”).
Regarding claim 9, Zhang teaches the apparatus of claim 1. Zhang does not explicitly teach wherein the passthrough region of the housing shell is configured to allow an average of 12% of light to pass through the passthrough region to the ambient light sensor. However, Lu teaches a passthrough region (region at 84R, Fig. 4) of a housing shell (12, Fig. 4) is configured to allow an average of 12% of light ([0034]: “… at least 10%... less than 20%”) to pass through the passthrough region to an ambient light sensor (20R, Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the passthrough region of the housing shell is configured to allow an average of 12% of light to pass through the passthrough region to the ambient light sensor in Zhang, as taught by Lu, in order to allow ambient light to pass through while keeping the appearance of the passthrough region match closely to the housing shell.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WU whose telephone number is (571)270-7974. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen Parker can be reached at (303)297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WU/ Primary Examiner, Art Unit 2841
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