DETAILED ACTION
Claims 1-20 were canceled by preliminary amendment on 08/21/2025. New Claims 21-40 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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,074,363 (363 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite an electronic device having metal housing, body, end and antenna components defining portions of the back and side exterior surfaces and corner portions, with polymer joint structures positioned between the metal components and defining additional portions of the exterior surfaces. The differences in the instant claims concerning the number, nomenclature and particular arrangement of the metal components, polymer joint structures, corners and exterior surface portions are merely obvious variations of the patented claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,603,414 (414 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite an electronic device having multiple meatal housing components defining portions of the back, side and corner exterior surfaces, with polymer joint structures positioned between the metal housing components and including segments extending along the metal housing components and corner portions. The differences in the instant claims concerning the number, nomenclature, extent and arrangement of the metal housing components and polymer joint segments, including extending such components and segments along additional corners or providing corresponding structures at opposite ends of the device, are merely obvious variations of the patented claims.
Claim Rejections - 35 USC § 102
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.
Claim(s) 21-37 and 39-40 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Tsai et al. (US Publication 2014/0125528).
In re Claim 21, Tsai discloses a portable electronic device comprising: a display 510 (paragraphs 0035, 0042); a front cover 151 positioned over the display; a housing 300/500 at least partially enclosing the display and coupled to the front cover 151, the housing comprising: a metal body portion 152 defining a first portion of a back exterior surface of the housing (Figures 4F, 5D, 5E); a first metal end portion 151 defining a first corner of the housing (Figures 4A-5G); a second metal end portion 153 defining a second corner of the housing; a first polymer joint structure 171 between the metal body portion 152 and the first metal end portion 151 and defining a second portion of the back exterior surface of the housing (Figures 5D, 5E); and a second polymer joint structure 172 between the metal body portion 152 and the second metal end portion 153 and defining a third portion of the back exterior surface of the housing (Figures 5D, 5E).
In re Claim 22, Tsai discloses wherein: the first polymer joint structure 171 defines a first curved segment extending alongside the first corner of the housing; and the second polymer joint structure 172 defines a second curved segment extending alongside the second corner of the housing. Tsai, Figures 5A, 5D-5G; paragraphs 0041-0043 (respective corner portions of the substantially ring shaped first and second joint structures 171, 172 extending around the corners of upper and lower covers 151 and 153).
In re Claim 23, Tsai discloses wherein: the first polymer joint structure 171 structurally couples the first metal end portion 151 to the metal body portion 152; and the second polymer joint structure 172 structurally couples the second metal end portion 153 to the metal body portion 152.
In re Claim 24, Tsai discloses wherein; the first metal end portion 151 defines a first antenna of the portable electronic device; and the second metal end portion 153 defines a second antenna of the portable electronic device. Tsai, Figures 5A-5F and 10A-10G; paragraphs 0038, 0040-0042, 0051 (first metal end portion 151 forming part of a first antenna structure and second metal end portion 153 forming part of an additional antenna structure).
In re Claim 25, Tsai discloses wherein: the metal body portion 152 defines a first portion of a side exterior surface of the housing; the first metal end portion 151 defines a second portion of the side exterior surface of the housing; and the second metal end portion 153 defines a third portion of the side exterior surface of the housing. Tsai, Figures 5D-5E.
In re Claim 26, Tsai discloses wherein: the first polymer joint structure 171 defines a fourth portion of the side exterior surface of the housing; and the second polymer joint structure 172 defines a fifth portion of the side exterior surface of the housing. Tsai, Figures 5D-5E).
In re Claim 27, Tsai discloses wherein: the first metal end portion 151 defines a third corner of the housing; and the second metal end portion 153 defines a fourth corner of the housing. Tsai, Figures 5A-5F).
In re Claim 28, Tsai discloses an electronic device comprising: a transparent cover 510 defining a front exterior surface of the electronic device (Figures 5A-5G); and a housing 152 coupled to the transparent cover 510 and comprising: a first metal housing component 152 defining a portion of a back surface of the electronic device (Figures 5D-5F); a second metal housing component 151 defining: a first corner of the housing; a second corner of the housing; and a top side of the housing between the first corner and the second corner (Figures 4A-5G); a polymer joint structure 171/175 positioned between the first metal housing component 152 and the second metal housing component 151 and coupling the first metal housing component 152 to the second metal housing component 151, the polymer joint structure 171/175 defining: an elongate segment alongside the top side of the housing (Figures 4A-5G); a first curved segment alongside the first corner of the housing; and a second curved segment alongside the second corner of the housing (Figures 6A-6G).
In re Claim 29, Tsai discloses wherein the elongate segment of the polymer joint structure 171/175 defines a first additional portion of the back surface of the electronic device; the first curved segment defines a second additional portion of the back surface of the electronic device; and the second curved segment defines a third additional portion of the back surface of the electronic device. Tsai, Figures 5F-5G; paragraphs 0041-0043 (the central elongate portion and the two corner portions of the substantially ring-shaped polymer joint structures extending across the back surface and around its opposing corners).
In re Claim 30, Tsai discloses wherein the polymer joint structure 171/175 further defines a portion of a first side surface of the electronic device and a portion of a second side surface of the electronic device. Tsai, Figures 5D-5E, 5G; paragraphs 0041-0043.
In re Claim 31, Tsai discloses wherein the second metal housing component 151 defines an antenna for wireless communication. Tsai, Figures 10A-10G; paragraphs 0034, 0038, 0051.
In re Claim 32, Tsai discloses wherein the housing further comprises: a third metal housing component 153 defining: a third corner of the housing; a fourth corner of the housing; and a bottom side of the housing between the third corner and the fourth corner. Tsai, Figures 5A, 5C-5F; paragraphs 0041-0042.
In re Claim 33, Tsai discloses wherein: the polymer joint structure is a first polymer joint structure 171/175; and the housing further comprises a second polymer joint structure 172/176 positioned between the first metal housing component 152 and the third metal housing component 153 and coupling the first metal housing component 152 to the third metal housing component 153. Tsai, Figures 5A and 5D-5G.
In re Claim 34, Tsai discloses wherein the second metal housing component 151 defines a first antenna of the electronic device and the third metal housing component 153 defines a second antenna of the electronic device. Tsai, paragraphs 0038, 0040-0042.
In re Claim 35, Tsai discloses a portable electronic device comprising: a housing comprising: a conductive body portion defining a first portion of a back exterior surface of the housing (middle metal cover 152, paragraph 0042; Figure 5F); an antenna defining: at least a portion of a top exterior surface of the housing; a first portion of a side exterior surface of the housing; and a corner extending from the at least the portion of the top exterior surface of the housing to the first portion of the side exterior surface of the housing (the antenna structure comprising upper element 121, connection elements 181-183, and upper metal cover 151, wherein upper metal cover 151 forms the top, side and intervening corner portions of the housing; paragraphs 0034, 0037-0038, 0042, 0051; Figures 5A-5F and 10A-10G); a polymer joint structure 171 coupling the antenna to the conducive body portion (plastic first nonconductive partition 171 embedded, filled or injected into slit 161 between upper metal cover 151 and middle metal cover 152; paragraphs 0036, 0041-0043) and defining: a first segment positioned in a first portion of a gap between the conductive body portion and the antenna and defining a second portion of the back exterior surface of the housing (partition 171 extending across the back surface in Figure 5F); and a second segment positioned in a second portion of the gap between the conductive body portion and the antenna and defining a second portion of the side exterior surface of the housing (partition 171 extending across the side surface in Figures 5D-5E); and a front cover coupled to the housing and defining a front exterior surface of the portable electronic device (transparent panel 510; paragraphs 0042-0043; Figure 5A).
In re Claim 36, Tsai discloses wherein the polymer joint structure 171 further defines a third segment positioned alongside the corner of the antenna and defining a third portion of the back exterior surface of the housing. Tsai, Figures 5F-5G; paragraphs 0041-0043 (a corner adjacent portion of ring-shaped polymer joint structure 171 extending along a corner of upper metal cover 151).
In re Claim 37, Tsai discloses wherein the polymer joint structure 171 electrically isolates the antenna from the conductive body portion. Tsai, paragraphs 0036, 0039-0043 (nonconductive joint structure 171 is made of plastic and is positioned in first slit 161 which completely separates metal cover 151 from middle metal cover 152).
In re Claim 39, Tsai discloses wherein: the antenna is a first antenna; the corner is a first corner; and the housing further comprises a second antenna defining: at least a portion of a bottom exterior surface of the housing; a third portion of the side exterior surface of the housing; and a second corner extending from the at least the portion of the bottom exterior surface of the housing to the third portion of the side exterior surface of the housing. Tsai, Figures 5A, 5C-5F; paragraphs 0040-0042 (the additional antenna structure comprising lower metal cover 153, which defines the bottom exterior surface, a lower portion of the side exterior surface, and an intervening lower corner).
In re Claim 40, Tsai discloses wherein the polymer joint structure 171 is a first polymer joint structure; and the housing further comprises a second polymer joint structure 172 coupling the second antenna to the conductive body portion and defining: a third segment defining a third portion of the back exterior surface of the housing; and a fourth segment defining a fourth portion of the side exterior surface of the housing. Tsai, Figures 5D-5G; paragraphs 0040-0043 (second joint structure 172 is plastic and nonconductive and is positioned between lower metal cover 153 and middle metal cover 152 with a rear segment shown in Figure 5F and a side segment shown in Figures 5D-5E).
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) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsai et al. (US Publication 2014/0125528) in view of Montevirgen (US Publication 2015/0093527).
In re Claim 38, Tsai discloses the limitations as noted above but does not explicitly disclose wherein: the antenna defines a first interlock feature; the conductive body portion defines a second interlock feature; and the polymer joint structure engages the first interlock feature and the second interlock feature to structurally couple the antenna to the conductive body portion.
However, Montevirgen discloses a first housing element 101 defining a first aperture 109 and a second housing element 102 defining a second aperture 110, wherein an injection guide 104 is inserted into and extends between the first and second apertures and injection molded material 107 and/or 108 is formed around the injection guide to provide an insert molded split 100 that structurally couples the firs and second housing elements. Montevirgen, Figures 1A-1H; paragraphs 0029-0033, 0038. Montevirgen further discloses that the injection guide 104 and injection molded material 107 and/or 108 may comprise plastic. Id. at paragraph 0040, 0042.
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 interlock features between first and second metal housing portions with a polymer joint structure, as disclosed in Montevirgen, to increase the strength of the joint between the housing components and resist known stresses applied between the housing components, as taught and suggested in Montevirgen, paragraphs 0042 and 0046. The resulting device would have an aperture formed in Tsai’s upper metal cover 151 which constitutes the first interlock feature defined by the antenna because the upper metal cover 151 forms part of Tsai’s antenna structure and operates as an antenna radiation element; the aperture formed in the middle metal cover 152 constitutes the second interlock feature defined by the conductive body portion; and the plastic injection guide and surrounding injection molded material forming the modified partition 171 engage the respective apertures to structurally couple the antenna to the conductive body portion.
Conclusion
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841
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