DETAILED ACTION
Claims 1-16 were canceled by preliminary amendment on 04/03/2025. Claims 17-36 have been added and are now 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.
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Claims 17-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,765,020. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims an electronic device having a touchscreen display coupled to an integral glass enclosure defining front, rear, and side surfaces and one or more openings, with glass enclosure members or end caps covering and extending into the openings. The patent claims additionally encompass radio transparent glass, wireless components, tubular and multiplayer glass structures, an ink layer defining an opaque region adjacent the display, frit bonded glass members, and a waterproof speaker opening. The presently claimed variations concerning the number, positioning, material and configuration of the enclosure members, openings, glass layers and ink layer constitute predictable structural or material variations that perform the same enclosure, sealing, display support, radio transmission and opacity functions.
Claims 21 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 12 and 19 of U.S. Patent No. 11,785,729. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a display enclosed by first and second glass members and an opaque coating, including ink, disposed on interior enclosure surfaces to define an opaque border surrounding the display and extending continuously along the front, side and rear or bottom surfaces of the enclosure. Arranging the glass members as a main glass structure and an enclosure member and describing the ink layer as extending below the rear surface constitute predictable variations in the configuration of the enclosure and placement of the same opaque ink layer.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The phrase “the ink layer extends below the rear surface of the electronic device” fails to clearly define the relationship between the ink layer and the rear surface. It is unclear whether “below” means the ink layer is positioned along an interior surface opposite the rear surface, extends beyond the rear surface, or extends around a side portion of the enclosure toward the rear surface. Accordingly, the metes and bounds of the claimed arrangement cannot be determined with reasonable certainty. Appropriate correction is required.
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 17-20, 23-28 and 30-35 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sanford et al. (US Publication 2010/0061039) in view of Amin et al. (US Publication 2010/0047521).
In re Claim 17, Sanford discloses an electronic device comprising: an enclosure 100 defining an interior cavity (Figure 2) and comprising: a first structure 120 and defining: a front surface and a rear surface of the electronic device (Figure 2); and an opening 850a; and a second structure 1100 (Figure 11) coupled to the first structure and comprising: an exterior portion 190 positioned over the opening and defining a side surface of the electronic device; and an interior portion 1120 extending into the opening 850a (Sanford, paragraphs 0038-0044, 0049-0054, 0063, 0066 and 0115-0120); and a touch screen display 830 positioned within the interior cavity and coupled to the first structure 120 (Sanford, paragraph 0103-0104).
Sanford does not explicitly disclose wherein the first structure is formed from a glass material. However, Amin discloses wherein a first structure of an enclosure for an electronic device may be formed from a glass material. Amin, paragraphs 0005-0010, 0012-0014 and 0020-0021. It would have been obvious to a person having ordinary skill in the art of portable electronics to have provided a first structure of an electronic device enclosure made of glass, as disclosed in Amin, to improve the durability, scratch and impact resistance, reduced weight, aesthetics and improved signal transparency. Amin, paragraphs 0004, 0005, 0012 and 0021. Furthermore, Sanford does disclose that the first structure may be formed from a variety of different material types as the application may require. Sanford, paragraph 0053.
In re Claim 18, Sanford discloses wherein the electronic device further comprises a component (i.e. “antenna”, paragraph 0103) of a wireless communication system positioned within the enclosure. Sanford as modified by Amin discloses wherein the first structure (120 in Sanford) is transparent to radio signals emitted. Amin, paragraph 0021.
In re Claim 19, Sanford discloses wherein the second structure 1100 is formed from a metal material. Sanford, paragraph 0116.
In re Claims 20 and 35, Sanford discloses the limitations as noted above but does not explicitly disclose wherein the second structure is made from glass. As discussed above with respect to Claim 17, Sanford in view of Amin discloses wherein the first structure may be modified to be glass. Sanford further discloses wherein the second structure 1120 may be formed from any suitable material, including metal, plastic, ceramic, a composite, or a combination of materials. Sanford, paragraph 0116. Though Sanford does not explicitly disclose glass, Amin discloses using glass as a suitable material for forming any portion of an outer shell of a portable electronic device housing, enclosure, shell or protective cover to provide added strength, resistance to impact damage and scratching, improved aesthetics and transparency for communication signals. Amin, paragraphs 0006-0010, 0012-0014 and 0020-0021. Therefore, 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 glass second structure for the recognized benefits as disclosed in Amin. The resulting modified device would comprise a first structure and a second structure both formed from a glass material.
In re Claim 23, Sanford discloses wherein the electronic device may be a phone. Sanford, 0046.
In re Claim 24, Sanford discloses an electronic device comprising: a touch screen display 830 (Sanford, paragraphs 0103-0104); and an enclosure 100 surrounding the touch screen display (Figure 10) and comprising: an integral structure 120 defining: a front wall positioned over and coupled to the touch screen display 830 (Figures 2 and 10); a rear wall (Figure 2); a side wall (Figure 2), the side wall defining a first side surface of the electronic device; and an opening 850a; and an enclosure member 1100 coupled to the integral structure 120 and comprising: a first portion 190 positioned over the opening and defining a second side surface of the electronic device; and a second portion 1120 inserted through the opening.
Sanford does not explicitly disclose wherein the integral structure is formed from a glass material. However, Amin discloses wherein a first structure of an enclosure for an electronic device may be formed from a glass material. Amin, paragraphs 0005-0010, 0012-0014 and 0020-0021. It would have been obvious to a person having ordinary skill in the art of portable electronics to have provided a first structure of an electronic device enclosure made of glass, as disclosed in Amin, to improve the durability, scratch and impact resistance, reduced weight, aesthetics and improved signal transparency. Amin, paragraphs 0004, 0005, 0012 and 0021. Furthermore, Sanford does disclose that the integral structure may be formed from a variety of different material types as the application may require. Sanford, paragraph 0053.
In re Claim 25, Sanford discloses wherein: the integral structure 120 defines a set of side walls that includes the side wall; and each side wall of the set of side walls extends from the front wall to the rear wall. Sanford, Figures 1, 2 and 10.
In re Claim 26, Sanford discloses wherein: the side wall is a first side wall; the set of side walls further comprises a second side wall that is opposite the first side wall (Sanford, Figures 1 and 2); and the opening 850a is positioned at an end of the electronic device (Sanford, Figure 8).
In re Claim 27, Sanford discloses wherein: the end of the electronic device is a first end of the electronic device (Sanford, Figure 8); and the set of side walls further defines a second end of the electronic device (Figure 8).
In re Claims 28 and 32, Sanford discloses wherein: the opening 850a is a first opening; the end of the electronic device is a first end (Sanford, Figure 8); the integral structure 120 further defines a second opening 850b positioned at a second end of the electronic device that is opposite the first end (Figure 8); and the enclosure further defines a second enclosure member (Sanford, paragraphs 0063, 0115; disclosing a second enclosure member similar to 1100 for the second opening 850b) coupled to the integral structure 120, at least a portion of the second enclosure member positioned over the second opening and defining a third side surface of the electronic device.
In re Claim 30, Amin discloses wherein the integral glass structure comprises: a first layer formed from a first glass material (chemically toughened, ion-exchanged surface glass layer; paragraph 0059); and a second layer 106 formed from a second glass material (different glass composition in lower/middle layer due to non-ion exchange; paragraph 0030), different from the first glass material. See also Amin, paragraph 0066.
In re Claim 31, Sanford discloses an electronic device comprising: an enclosure 100 defining an interior cavity (Figure 2), comprising: an integral structure 120, partly defining the interior cavity (Figure 2), and further defining: a front surface, a rear surface, and a first region of a side surface of the electronic device (Figures 1 and 2) and an open end 850a; and an enclosure member 1100 coupled to the integral structure and comprising: an exterior portion 190 configured to cover the open end and defining a second region of the side surface (Figure 1, 11); and an interior portion 1120 inserted through the open end; and a touchscreen display 830 (Sanford, paragraphs 0103-0104) positioned in the interior cavity and coupled to the integral structure.
Sanford does not explicitly disclose wherein the integral structure is formed from a glass material. However, Amin discloses wherein a first structure of an enclosure for an electronic device may be formed from a glass material. Amin, paragraphs 0005-0010, 0012-0014 and 0020-0021. It would have been obvious to a person having ordinary skill in the art of portable electronics to have provided a first structure of an electronic device enclosure made of glass, as disclosed in Amin, to improve the durability, scratch and impact resistance, reduced weight, aesthetics and improved signal transparency. Amin, paragraphs 0004, 0005, 0012 and 0021. Furthermore, Sanford does disclose that the integral structure may be formed from a variety of different material types as the application may require. Sanford, paragraph 0053.
In re Claim 33, Sanford discloses wherein the integral structure 120 defines a tube. Sanford, Figures 1, 2 and 8.
In re Claim 34, Sanford discloses wherein each of the first enclosure member 1100 and the second enclosure member 1100 (paragraph 0115 disclosing a second enclosure member substantially the same as the first enclosure member to be inserted in second opening 850b) being formed from a metal member. Sanford, paragraph 0116.
Claim 21 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sanford et al. (US Publication 2010/0061039), Amin et al. (US Publication 2010/0047521) and further in view of Nishimura (US Publication 2010/0014232).
In re Claim 21, Sanford as modified by Amin disclose the limitations as noted above, but do not explicitly disclose an ink layer formed on the interior of the first structure. However, providing such was not new in the art of portable electronics. For example, Nishimura discloses an ink layer (Nishimura, paragraphs 0082-0085 and 0122) disposed on an interior surface of a first glass structure 2 to define an opaque region along an edge of a display screen. 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 an ink layer, as disclosed in Nishimura, with the apparatus as otherwise disclosed in Sanford as modified by Amin to improve the visual output of the display to a user by reducing inadvertent light being emitted from the sides of the display.
Claim 29 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sanford et al. (US Publication 2010/0061039), Amin et al. (US Publication 2010/0047521) and further in view of Aitken et al. (US Publication 2004/0207314) (from applicant’s IDS submitted on 12/26/2024).
In re Claim 29, Sanford as modified by Amin discloses the limitations as noted above and further discloses wherein the enclosure member (1100 in Sanford) is a glass enclosure member (See the rejection to Claim 20 above) but does not explicitly disclose wherein the enclosure member is frit bonded to the integral glass structure. However, Aitken discloses an electronic device package comprising first and second glass members bonded together by a glass frit that is heated to form a hermetic glass-to-glass seal (Aitken, paragraphs 0031, 0034-0036). 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 a frit bond like that disclosed in Aitken with the apparatus as otherwise disclosed in Sanford as modified by Amin to securely join the glass components and provide a hermetic, moisture-resistant interface, with the predictable result of a sealed glass enclosure.
Claim 36 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sanford et al. (US Publication 2010/0061039), Amin et al. (US Publication 2010/0047521) and further in view of Noguchi et al. (US Publication 2004/0029530).
In re Claim 36, Sanford as modified by Amin discloses the limitations as noted above but does not explicitly disclose an opening for a speaker. However, providing such was not new in the art. For example, Noguchi discloses a housing structure 3 defining an opening 40 over a speaker 8; and an electronic device further comprises a waterproof member 44, 50 configured to seal the opening. 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 speaker hole that was waterproof as disclosed in Noguchi with the apparatus as otherwise disclosed in Sanford as modified by Amin to allow for speaker sound outputs through the housing while maintaining a waterproof housing to protect the internal electronics of the device.
Conclusion
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841
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