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 1-5, 8-9, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-8, and 11-19 of U.S. Patent No. 11,786,139 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose an electronic device comprising a housing defining an aperture and at least partially defining an internal volume of the electronic device with an electromagnetic radiation emitter and electromagnetic radiation detector in the internal volume, an optical component disposed in the aperture and the optical component comprising a transparent portion and an opaque portion the opaque portion comprising sidewalls and an isolation component disposed in the internal volume and the isolation component comprising a protrusion preventing electromagnetic radiation from passing between the electromagnetic radiation emitter and the electromagnetic radiation detector within the internal volume and the protrusion having sidewalls aligned with the sidewalls of the opaque portion. Further detailed in the analysis of claims 1 below.
US Patent 11,786,139 B2 – Claim 1
App 19/011,428- Claim 1
An electronic device, comprising:
An electronic device, comprising:
a housing defining an aperture and at least partially defining an internal volume of the electronic device;
a housing defining an aperture and at least partially defining an internal volume of the electronic device;
an electromagnetic radiation emitter disposed in the internal volume;
an electromagnetic radiation emitter disposed in the internal volume;
an electromagnetic radiation detector disposed in the internal volume;
an electromagnetic radiation detector disposed in the internal volume;
and an optical component disposed in the aperture, the optical component comprising:
And an optical component disposed in the aperture, the optical component comprising:
a first transparent portion disposed above the electromagnetic radiation detector;
a transparent portion disposed above the electromagnetic radiation detector;
a second transparent portion disposed above the electromagnetic radiation emitter;
an opaque portion disposed between the first transparent portion and the second transparent portion, the opaque portion comprising sidewalls;
an opaque portion disposed adjacent the transparent portion, the opaque portion comprising sidewalls;
and the first transparent portion, the second transparent portion, and the opaque portion defining a flush exterior surface of the electronic device and an interior surface of the optical component, the opaque portion extending from the exterior surface to the interior surface;
and the transparent portion and the opaque portion define a flush exterior surface of the electronic device and an interior surface of the optical component, the opaque portion extending from the exterior surface to the interior surface;
and an isolation component disposed in the internal volume, the isolation component abutting the optical component and at least partially defining a first chamber and a second chamber, the isolation component comprising a first protrusion between the first chamber and the second chamber;
and an isolation component disposed in the internal volume, the isolation component abutting the optical component and at least partially defining a first chamber and a second chamber, the isolation component comprising a protrusion between the first chamber and the second chamber;
wherein: the electromagnetic radiation detector is disposed in the first chamber and the electromagnetic radiation emitter is disposed in the second chamber;
wherein: the electromagnetic radiation detector and the electromagnetic radiation emitter are disposed in the isolation component;
the isolation component prevents electromagnetic radiation from passing between the second chamber and the first chamber within the internal volume;
the protrusion is configured to prevent electromagnetic radiation from passing between the electromagnetic radiation emitter and the electromagnetic radiation detector within the internal volume;
and the first protrusion comprises sidewalls aligned with the sidewalls of the opaque portion.
and the protrusion comprises sidewalls aligned with the sidewalls of the opaque portion.
Allowable Subject Matter
Claims 1-20 are allowable if the Double Patenting rejection above is overcome.
The independent claim 1 contains a limitation “an isolation component disposed in the internal volume, the isolation component abutting the optical component and at least partially defining a first chamber and a second chamber, the isolation component comprising a protrusion between the first chamber and the second chamber…the protrusion comprises sidewalls aligned with the sidewalls of the opaque portion” independent claim 8 contains a limitation “an isolation component comprising a protrusion aligned with the opaque portion” and independent claim 18 contains the limitation “an isolation component disposed in the internal volume and comprising a protrusion adjacent the opaque portion, a shape of a distal portion of the protrusion corresponding to a shape of the opaque portion” detailed as allowable in the Notice of Allowance mailed 06/07/2023 in application 16/811,783.The notice of allowance details that the prior art neither teaches nor suggest, when the claims are taken as a whole an electronic device comprising a housing defining an internal volume of the electronic device, with an electromagnetic radiation emitter and an electromagnetic radiation detector disposed in the internal volume and an optical component and isolation protrusions. The optical component comprising transparent portions disposed above the electromagnetic radiation detector and emitter respectively, with an opaque portion disposed between the transparent portions containing sidewalls. The isolation protrusions comprising sidewalls/portions that are aligned with the sidewall/portions of the opaque portions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSANDRA F HOUGH whose telephone number is (571)270-7902. The examiner can normally be reached Monday-Thursday 7 am - 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at (571)270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jessandra Hough June 24, 2026
/J.F.H./Examiner, Art Unit 3796
/William J Levicky/Primary Examiner, Art Unit 3796
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