DETAILED ACTION
Claims 1-17 were canceled by preliminary amendment on 07/25/2025. New Claims 18-37 are new and have been considered for patentability.
Claim Objections
Claim 25 is objected to because of the following informalities: “an interior surface surrounding the first periphery of the first cover assembly and the second periphery of the second cover assembly” is inaccurate. The second periphery is associated with the second cover assembly at a rear of the electronic device opposite the first cover assembly at a front of the electronic device. Therefore, it is unclear from applicant’s disclosure how a single surface interior to the device and a part of the peripheral member can surround the first and second periphery of the first cover assembly and second cover assembly at the same time. Appropriate correction is required.
Claim 33 is objected to because of the following informalities: “the rear cover assembly defines a first portion of the front surface” is incorrect. Appropriate correction is required.
Claim 34 is objected to because of the following informalities: “a metal segment forms” likely omits the word “that”. Appropriate correction is required.
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 18, 19 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 7 and 12 of U.S. Patent No. 12,185,489 (489 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other. Claims 8 + 12 in the 489 Patent claim front and rear transparent cover assemblies coupled to a peripheral member defining portions of the side, front, and rear surfaces, a touch screen beneath the front member, and a camera associated with an opening in the rear member. Claim 7 expressly claims glass front and rear members. Claim 4 expressly claims a peripheral metal member functioning as an antenna. It would have been obvious to a person having ordinary skill in the art of portable electronics to employ these claimed glass and antenna alternatives in the enclosure of Claim 12 to preserve optical access through durable covers and integrate antenna functionality into the housing. Positioning the camera beneath the rear opening provides the optical access contemplated by that claim. The additional platform and metal member limitations of the patented combinations do not distinguish the broader pending claims.
Claims 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18, 26 and 32 of U.S. Patent Application 19/026,304 (304 Application). Although the claims at issue are not identical, they are not patentably distinct. For example, the 304 Application Claim 18 recite front and rear glass assemblies coupled to a housing component defining portions of the side, front and rear surfaces of the housing with a display beneath the front glass member. Claims 26 and 32 recite a camera with a rear cover opening and a peripheral metal segment functioning as an antenna. It would have been obvious to a person having ordinary skill in the art of portable electronics to have incorporated the camera and antenna features into the enclosure of Claim 18 to provide imaging and wireless communications while using the peripheral member for both structural and antenna functions. Claims 18 and 19 of the instant application encompass the resulting combination despite omitting the additional platform and flushness limitations.
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 18, 23-25, 29-30 and 32-33 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263) and further in view of Tolbert (US Publication 2008/0304819).
In re Claim 18, Kim discloses an electronic device comprising; a display 12; a camera 61 (Figure 11); and an enclosure at least partially enclosing the display and the camera, the enclosure comprising: a front cover assembly 10 positioned over the display, defining a first portion of a front surface of the electronic device, and comprising a front transparent member 18; a rear cover assembly 30 positioned over the camera, the rear cover assembly defining a first portion of a rear surface of the electronic device and comprising a rear transparent member 62 (Figure 11); and a peripheral member 20 coupled to the front cover assembly 10 and the rear cover assembly 30 (Figure 3), the peripheral member defining: a side surface of the electronic device (Figure 1); a second portion of the front surface of the electronic device (Figure 1, note the ledge of the peripheral member 20 extends beyond the front cover assembly forming a portion of the front surface); and a second portion of the rear surface of the electronic device (Figure 1, similar to the front surface the ledge extends beyond the rear cover assembly forming a portion of the rear surface).
Kim does not explicitly disclose a front glass member. However, Yeates discloses a front cover assembly 1204a comprising a front glass member 1216 (paragraphs 0089-0090). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass front member, as disclosed in Yeates, as the front member as otherwise disclosed in Kim. Kim does suggest that the front member 18 be transparent. Kim, paragraph 0045. Using glass protects the underlying display while maintaining the required optical transmission.
Kim also does not explicitly disclose a rear glass member. However, Tolbert discloses a rear cover assembly 12 (Figure 2) comprising a rear glass member 42 (Figures 3a-4b; paragraph 0049). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass rear member, as disclosed in Tolbert, as the rear member as otherwise disclosed in Kim. Kim does suggest that the rear member 62 be transparent. Kim, paragraph 0067; Figure 11. Using glass protects the underlying camera while maintaining the required optical transmission.
In re Claim 23, Tolbert discloses wherein: the rear cover assembly 12 includes a masking layer 40 provided along an interior surface of the rear glass member 42; and the rear glass member 42 defines an opening positioned over the camera 30.
In re Claim 24, Kim discloses wherein the display 12 defines a touch screen 22. Kim, paragraph 0045.
In re Claim 25, Kim discloses an electronic device comprising: an enclosure comprising: a first cover assembly 10 defining a first portion of a front surface of the electronic device and a first periphery (Figure 1), the first cover assembly 10 comprising a first transparent member 18; a second cover assembly 30, 66 defining a first portion of a rear surface of the electronic device and a second periphery (Figure 2), the second cover assembly comprising a second transparent member 62 (Figure 11); a peripheral member 20 coupled to the first and the second cover assemblies, the peripheral member 20 defining: a side surface of the electronic device (Figure 1); a second portion of the front surface of the electronic device (Figure 1, note the ledge of the peripheral member 20 extends beyond the front cover assembly forming a portion of the front surface); a second portion of the rear surface of the electronic device (Figure 1, similar to the front surface the ledge extends beyond the rear cover assembly forming a portion of the rear surface); and an interior surface surrounding the first periphery of the first cover assembly (Figure 1) and the second periphery of the second cover assembly (Figure 2, surrounding both 30 and 66); a display 12 positioned below the first cover assembly 10; and a camera 61 (Figure 11) positioned below the second cover assembly.
Kim does not explicitly disclose a front glass member. However, Yeates discloses a front cover assembly 1204a comprising a front glass member 1216 (paragraphs 0089-0090). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass front member, as disclosed in Yeates, as the front member as otherwise disclosed in Kim. Kim does suggest that the front member 18 be transparent. Kim, paragraph 0045. Using glass protects the underlying display while maintaining the required optical transmission.
Kim also does not explicitly disclose a rear glass member. However, Tolbert discloses a rear cover assembly 12 (Figure 2) comprising a rear glass member 42 (Figures 3a-4b; paragraph 0049). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass rear member, as disclosed in Tolbert, as the rear member as otherwise disclosed in Kim. Kim does suggest that the rear member 62 be transparent. Kim, paragraph 0067; Figure 11. Using glass protects the underlying camera while maintaining the required optical transmission.
In re Claim 29, Kim discloses wherein the peripheral member 20 comprises: a first protective side portion having a first thickness (Figure 4) and defining: a first portion of the side surface of the electronic device (Figures 1 and 4); and the first portion of the front surface of the electronic device (Figures 1 and 4); and a second protective side portion having a second thickness (Figure 4) and defining: a second portion of the side surface of the electronic device (Figures 1 and 4); and the first portion of the rear surface of the electronic device (Figures 2 and 4); and an intermediate portion integrally formed with the first and the second protective side portions (Figure 4), defining a third portion of the side surface of the electronic device (Figures 1 and 4), and having a third thickness greater than the first thickness and the second thickness (Figure 4).
In re Claim 30, Kim discloses wherein: the enclosure further comprises an internal platform 34; and the internal platform 34 is coupled to the intermediate portion of the peripheral member (Figure 4).
In re Claim 32, Kim discloses an electronic device comprising: a display 12; a camera 61 (Figure 11); and an enclosure surrounding the display and the camera, the enclosure comprising: a peripheral member 20 defining: a side surface of the electronic device (Figure 1); a front opening (Figures 4 and 5); and a rear opening (Figures 4 and 6); a front cover assembly 10 positioned over the display 12 and at least partially within the front opening (Figure 5), the front cover assembly 10 defining at least a portion of a front surface of the electronic device (Figures 1 and 5), and comprising a front transparent member 18; and a rear cover assembly 30 positioned over the camera 61 and at least partially within the rear opening (Figures 4 and 6), the rear cover assembly 30 defining at least a portion of a rear surface of the electronic
device (Figures 2 and 4) and comprising a rear transparent member 62 (Figure 11).
Kim does not explicitly disclose a front glass member. However, Yeates discloses a front cover assembly 1204a comprising a front glass member 1216 (paragraphs 0089-0090). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass front member, as disclosed in Yeates, as the front member as otherwise disclosed in Kim. Kim does suggest that the front member 18 be transparent. Kim, paragraph 0045. Using glass protects the underlying display while maintaining the required optical transmission.
Kim also does not explicitly disclose a rear glass member. However, Tolbert discloses a rear cover assembly 12 (Figure 2) comprising a rear glass member 42 (Figures 3a-4b; paragraph 0049). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a glass rear member, as disclosed in Tolbert, as the rear member as otherwise disclosed in Kim. Kim does suggest that the rear member 62 be transparent. Kim, paragraph 0067; Figure 11. Using glass protects the underlying camera while maintaining the required optical transmission.
In re Claim 33, Kim discloses wherein: the front cover assembly 10 defines a first portion of the front surface (Figures 1 and 4); the rear cover assembly 30 defines a first portion of the rear surface (Figures 2 and 4); and the peripheral member 20 further defines: a second portion of the front surface of the electronic device (Figure 4); and a second portion of the rear surface of the electronic device (Figure 4).
Claim 19-20, 22 and 34-37 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263), Tolbert (US Publication 2008/0304819) and still further in view of Hill et al. (US Publication 2008/0316115).
In re Claims 19 and 34, Kim as modified by Yeates and Tolbert disclose the limitations of Claims 18 and 32 above but do not explicitly disclose wherein the peripheral member comprises at least one metal element; and the at least one metal element is part of an antenna of the electronic device. However, Hill discloses a peripheral member 12 (Figure 13) wherein at least one metal element is a part of an antenna in an electronic device. Hill, paragraphs 0009-0010, 0045-0049, 0123-0126. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a peripheral member that may also function as an antenna as disclosed in Hill. By providing a housing that may be used as portions of an antenna the overall form factor of the device may stay small. Hill, paragraphs 0003-0006.
In re Claim 20, Kim discloses wherein: the peripheral member 20 further defines: a front opening (Figures 4 and 5); and a rear opening (Figures 4 and 6); at least a portion of the front cover assembly 10 is positioned within the front opening (Figure 4); and at least a portion of the rear cover assembly 30 is positioned within the rear opening (Figure 4).
In re Claim 22, Kim discloses wherein the rear cover assembly 30 further comprises a protruding portion (See Figure 4) that protrudes with respect to the second portion of the rear surface of the electronic device.
In re Claim 35, Kim discloses an internal platform 34 that is integral with the peripheral member 20 but does not explicitly disclose a metal element. However, Hill discloses a peripheral member 12 (Figure 13) wherein at least one metal element is a part of an antenna in an electronic device. Hill, paragraphs 0009-0010, 0045-0049, 0123-0126. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s claimed invention to have provided a peripheral member that may also function as an antenna as disclosed in Hill. By providing a housing that may be used as portions of an antenna the overall form factor of the device may stay small. Hill, paragraphs 0003-0006.
In re Claim 36, Kim discloses wherein: the internal platform 34 defines at least a portion of a first pocket at a first side of the internal platform (Figures 4 and 5) and a second pocket at a second side of the internal platform opposite to the first side (Figures 4 and 6); the display 12 is positioned in the first pocket (Figure 4); and the camera 61 is positioned in the second pocket (Figures 4 and 11).
In re Claim 37, Kim discloses wherein a first surface of the front cover assembly 10 has a first appearance (Figure 1) and a second surface of the rear cover assembly 30 has a second appearance that is different from the first appearance (Figure 2).
Claim 21 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263), Tolbert (US Publication 2008/0304819), Hill et al. (US Publication 2008/0316115) and still further in view of Sorensson et al. (US Publication 2009/0227268).
In re Claim 21, Kim as modified by Yeates, Tolbert and Hill disclose the limitations of Claims 18-20 above, but do not explicitly disclose wherein the rear glass member defines a periphery of the rear cover assembly. Recall that Tolbert discloses a rear cover assembly 12 (Figure 2) comprising a rear glass member 42 (Figures 3a-4b; paragraph 0049). Sorensson discloses a rear cover assembly 110 (Figure 2) and in paragraph 0049 teaches where the entire rear cover assembly may comprise glass. The result of which would be a rear glass member that defines a periphery of the rear cover assembly as shown in Sorensson, Figure 2. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the claimed invention to have incorporated an entire rear glass member as disclosed in Sorensson for the rear cover assembly and rear glass member as otherwise disclosed in Kim as modified by Tolbert. Sorensson teaches that providing a glass rear cover assembly allows for other functional devices to be located at the rear of the portable electronic device such as a display 170. Sorensson also suggests that a camera 190 may be located at the rear of the device which further suggests to a person having ordinary skill in the art of the feasibility of the combination with features disclosed in Kim and Tolbert.
Claims 26-27 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263), Tolbert (US Publication 2008/0304819) and further in view of Mittleman et al. (US Publication 2009/0247237).
In re Claim 26, Kim as modified by Yeates and Tolbert disclose the limitations of Claim 25 above but do not explicitly disclose wherein: the enclosure further comprises an internal platform; the peripheral member comprises a first metal element, a second metal element, and a plastic element having at least a portion positioned between the first and second metal elements; and the internal platform is coupled to the first metal element.
Mittleman discloses a peripheral member comprising a first metal element 168 (paragraphs 0059, 0075 and 0081), a second metal element 14 (paragraphs 0061, 0077), a plastic element 166 between them (paragraphs 0075; Figure 8), and an internal platform 206 whose vertical portion 208 attach to struts 168 (paragraph 0074).
It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the claimed invention to have provided a peripheral member as disclosed in Mittleman with a plastic/metal composition as a feature to the peripheral member as otherwise disclosed in Kim. Using Mittleman’s composite mounting arrangement into Kim’s peripheral member, including attaching the internal platform to the inner metal support, provides a rigid support for the display assembly and facilitates assembly and servicing through releasable connections, as taught and suggested in Mittleman paragraphs 0055-0056 and 0073-0074.
In re Claim 27, Kim discloses wherein a camera 62 is positioned between an internal platform 34 and a second cover assembly 30.
Claim 28 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263), Tolbert (US Publication 2008/0304819) and further in view of Nishimura (US Publication 2010/0014232).
In re Claim 28, Kim, Yeates and Tolbert disclose the limitations as noted above in regards to the rejection to Claim 25, but do not explicitly disclose wherein: the first portion of the front surface defined by the first cover assembly is flush with the second portion of the front surface defined by the peripheral member; and the first portion of the rear surface defined by the second cover assembly is flush with the second portion of the rear surface defined by the peripheral member.
However, providing a flush cover assembly to a peripheral member is not new in the art. For example, Nishimura discloses a peripheral member 3 provided with an opening for a cover assembly 2, wherein the peripheral member 3 provides a portion of the front/rear surface (Figure 2) and allows for the cover assembly 2 to lie flush therein. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the claimed invention to have provided a flush cover assembly as disclosed in Nishimura with the device as otherwise disclosed in Kim as modified by Yeates and Tolbert. Providing a flush surface improves the ergonomic feel of the device while also reducing the footprint. Nishimura, paragraph 0079.
Claim 31 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kim et al. (US Publication 2008/0014787), Yeates (US Publication 2009/0017263), Tolbert (US Publication 2008/0304819), Nishimura (US Publication 2010/0014232) and still further in view of Sorensson et al. (US Publication 2009/0227268).
In re Claim 31, Kim as modified by Yeates and Tolbert disclose the limitations of Claim 25 above but do not explicitly disclose wherein: the first glass member defines the first periphery; and the second glass member defines the second periphery.
Nishimura discloses a first cover assembly 2 comprising a first glass member (paragraph 0074), wherein the first glass member defines a periphery of the first cover assembly. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the claimed invention to have provided a first glass member as disclosed in Nishimura in substitution of the first cover assembly as otherwise disclosed in Kim as modified by Yeates to improve the overall hardness, scratch resistance and support arrangement of the device. Nishimura, paragraphs 0003, 0082, 0085, 0090.
Kim as modified by Yeates and Tolbert disclose the limitations of Claims 25 above, but do not explicitly disclose wherein the rear glass member defines a periphery of the rear cover assembly. Recall that Tolbert discloses a rear cover assembly 12 (Figure 2) comprising a rear glass member 42 (Figures 3a-4b; paragraph 0049). Sorensson discloses a rear cover assembly 110 (Figure 2) and in paragraph 0049 teaches where the entire rear cover assembly may comprise glass. The result of which would be a rear glass member that defines a periphery of the rear cover assembly as shown in Sorensson, Figure 2. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the claimed invention to have incorporated an entire rear glass member as disclosed in Sorensson for the rear cover assembly and rear glass member as otherwise disclosed in Kim as modified by Tolbert. Sorensson teaches that providing a glass rear cover assembly allows for other functional devices to be located at the rear of the portable electronic device such as a display 170. Sorensson also suggests that a camera 190 may be located at the rear of the device which further suggests to a person having ordinary skill in the art of the feasibility of the combination with features disclosed in Kim and Tolbert.
Conclusion
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841
