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 .
Priority
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,282,614. Although the claims at issue are not identical, they are not patentably distinct from each other because all claimed limitations of the claims 1-19 are encompassed by claims 1-16 of the patent as follow:
Instant application (claims 1 and 6)
U.S. 12,282,614 (claim 1)
An electronic pen, comprising:
An electronic pen, comprising:
a housing having an opening at one end;
a tubular housing having an opening at one end;
a core body portion including: a core body protruding from the opening of the housing with one end serving as a pen
tip, and a pressure member that holds a rear end of the core body and transmits a force applied to the core body;
a core body portion including: a rod-shaped core body protruding from the opening of the housing with one end serving as a pen tip, and a pressure member that holds a rear end of the core body and transmits a force applied to the core body;
a writing pressure detector that is fixed inside the housing, wherein the writing pressure detector, in operation, detects a writing pressure applied to the core body; and
a writing pressure detector that is fixed inside the housing, wherein the writing pressure detector, in operation, detects a writing pressure applied to the core body; and
a holding member that is fixed inside the housing and accommodates and holds the core body portion,
a tubular holding member that is fixed inside the housing and accommodates and holds the core body portion,
wherein the pressure member includes a front-side portion having a front-end surface with a core-body holding hole formed in the front-end surface, and
wherein the pressure member includes a front-side portion having a front-end surface with a core-body holding hole formed in the front-end surface,
wherein the rear end of the core body is inserted into the pressure member from the front-end surface of the front-side portion of the pressure member.
wherein the rear end of the core body is inserted into the pressure member from the front-end surface of the front-side portion of the pressure member.
Regarding claims 2 and 7, see claim 1 of the patent.
Regarding claim 3, see claim 2 of the patent.
Regarding claim 4, see claim 3 of the patent.
Regarding claim 5, see claim 4 of the patent.
Instant application (claim 8)
U.S. 12,282,614 (claim 6)
An electronic pen, comprising:
An electronic pen, comprising:
a housing having an opening at one end;
a tubular housing having an opening at one end;
a core body that is attached inside the housing and protrudes from the opening of the housing with one end serving as a pen tip; and
a rod-shaped core body that is attached inside the housing and protrudes from the opening of the housing with one end serving as a pen tip;
a writing pressure detector that is fixed inside the housing, wherein the writing pressure detector, in operation, detects a writing pressure applied to the core body;
a writing pressure detector that is fixed inside the housing, wherein the writing pressure detector, in operation, detects a writing pressure applied to the core body;
a pressure member that holds a rear end of the core body inserted from the opening of the housing, wherein the writing pressure detector, in operation, presses the writing pressure detector
according to the writing pressure applied to the core body; and
a pressure member that holds a rear end of the core body inserted from the opening of the housing and presses the writing pressure detector according to the writing pressure applied to the core body; and
a holding member that is fixed inside the housing and accommodates and holds the pressure member,
a tubular holding member that is fixed inside the housing and accommodates and holds the pressure member,
wherein the pressure member includes a front-side portion and a rear-side portion, and has a core-body holding hole into which a rear end side of the core body is inserted from a front-end surface of the front-side portion,
wherein the pressure member has a substantially cylindrical shape, includes a front-side portion and a rear-side portion having a diameter larger than a diameter of the front-side portion, and has a core-body holding hole into which a rear end side of the core body is inserted from a front-end surface of the front-side portion,
wherein the holding member includes a front-side fitting portion into which the front-side
portion of the pressure member fits and a rear-side fitting portion into which the rear-side portion of the pressure member fits,
wherein the holding member includes a front-side fitting portion into which the front-side portion of the pressure member fits and a rear-side fitting portion into which the rear-side portion of the pressure member fits,
wherein an end of the front-side fitting portion on a pen tip side has an insertion hole into which the core body is inserted, while an end of the rear-side fitting portion on the rear end side has a rear-end opening into which the pressure member is inserted, and
wherein an end of the front-side fitting portion on a pen tip side has an insertion hole into which the core body is inserted, while an end of the rear-side fitting portion on the rear end side has a rear-end opening into which the pressure member is inserted, and
wherein an inner edge of the front-side fitting portion of the holding member and an outer edge of the front-side portion of the pressure member enable the front-side portion of the pressure member to fit into the front-side fitting portion of the holding member, inhibit the front-side portion of the pressure member from rotating about an axis in the front-side fitting portion of the holding member, and allow an inner wall surface of the front-side fitting portion of the holding member and a side surface of the front-side portion of the pressure member to partially contact with each other, while no mutually fitting recessed and protruding portions are provided on the inner wall surface of the front-side fitting portion of the holding member and the side surface of the front-side portion of the pressure member.
wherein an inner edge of the front-side fitting portion of the holding member and an outer edge of the front-side portion of the pressure member are shaped to enable the front-side portion of the pressure member to fit into the front-side fitting portion of the holding member, inhibit the front-side portion of the pressure member from rotating about an axis in the front-side fitting portion of the holding member, and allow an inner wall surface of the front-side fitting portion of the holding member and a side surface of the front-side portion of the pressure member to partially contact with each other, while no mutually fitting recessed and protruding portions are provided on the inner wall surface of the front-side fitting portion of the holding member and the side surface of the front-side portion of the pressure member.
Regarding claim 9, see claim 6 of the patent.
Regarding claim 10, see claim 7 of the patent.
Regarding claim 11, see claim 8 of the patent.
Regarding claim 12, see claim 9 of the patent.
Regarding claim 13, see claim 10 of the patent.
Regarding claim 14, see claim 11 of the patent.
Regarding claim 15, see claim 12 of the patent.
Regarding claim 16, see claim 13 of the patent.
Regarding claim 17, see claim 14 of the patent.
Regarding claim 18, see claim 15 of the patent.
Regarding claim 19, see claim 16 of the patent.
Claim Objections
Claim 8 is objected to because of the following informalities:
In claim 8, line 8, “wherein the writing pressure detector, in operation, presses the writing pressure detector” should have read –wherein the pressure member, in operation, presses the writing pressure detector--.
Appropriate correction is required.
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 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ninomiya et al. (US 2021/0318766).
Regarding claim 1, Ninomiya discloses an electronic pen (1, figs. 1A, 1B and 2, para. 0043), comprising:
a housing (10) having an opening (12a) at one end (paras. 0043-0044);
a core body portion (20, para. 0044) including:
a core body (21, para. 0045) protruding from the opening (12a) of the housing with one end serving as a pen tip (21), and
a pressure member (53, paras. 0054 and 0057) that holds a rear end (22b) of the core body (20) and transmits a force applied to the core body;
a writing pressure detector (50, paras. 0054 and 0057) that is fixed inside the housing (10), wherein the writing pressure detector (50), in operation, detects a writing pressure applied to the core body (20); and
a holding member (403, para. 0052) that is fixed inside the housing (10) and accommodates and holds the core body portion (20),
wherein the pressure member (53, para. 0054) includes a front-side portion having a front-end surface (front surface of the conductive elastic member 53) with a core-body holding hole (53a) formed in the front-end surface, and
wherein the rear end of the core body (22b) is inserted into the pressure member (53) from the front-end surface of the front-side portion of the pressure member (para. 0057).
Regarding claim 6, Ninomiya discloses an electronic pen (1, figs. 1A, 1B and 2, para. 0043), comprising:
a housing (10) having an opening (12a) at one end (paras. 0043-0044);
a core body portion (20, para. 0044) including:
a core body (21, para. 0045) protruding from the opening (12a) of the housing with one end serving as a pen tip (21), and
a pressure member (53, paras. 0054 and 0057) that holds a rear end (22b) of the core body (20) and transmits a force applied to the core body;
a writing pressure detector (50, paras. 0054 and 0057) that is fixed inside the housing (10), wherein the writing pressure detector (50), in operation, detects a writing pressure applied to the core body (20); and
a holding member (403, para. 0052) that is fixed inside the housing (10) and accommodates and holds the core body portion (20),
wherein the pressure member (53, para. 0054) includes a front-side portion having a front-end surface (front surface of the conductive elastic member 53) with a core-body holding hole (53a) formed in the front-end surface, and
wherein the rear end of the core body (22b) is inserted into the pressure member (53) from the front-end surface of the front-side portion of the pressure member (para. 0057).
Claim Rejections - 35 USC § 103
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 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.
Claims 2-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomiya in view of Ninomiya (US 2018/0024657), hereinafter Ninomiya’657.
Regarding claims 2 and 7, Ninomiya does not specifically disclose “at least part of a side surface … of the holding member face each other”.
In a similar field of endeavor of electronic pen, Ninomiya’657 discloses at least part of a side surface of the core body portion (3) includes a flat surface portion (such as the insert portion of the core body portion parallel to an axial direction of the electronic pen (figs. 5A-5C),
wherein an inner edge of the holding member has a cylindrical shape (62a) and at least part of the inner edge includes a protruding portion (62) (paras. 0039-0040), and
wherein, with the core body portion mounted in the housing, the flat surface portion of the core body portion and the protruding portion of the holding member face each other (para. 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before effective filling date of the claimed invention to incorporate the surface of the core body portion as taught by Ninomiya’657 in the system of Ninomiya in order to surely fit the core body portion into the holding member, therefore the pressure detection is improved.
Regarding claim 3, the combination of Ninomiya and Ninomiya’657 discloses the flat surface portion of the core body portion is provided on the core body 9paras. 0040-0041 of Ninomiya’657).
Regarding claim 4, the combination of Ninomiya and Ninomiya’657 discloses the flat surface portion of the core body portion is provided on the pressure member (8, fig. 2 of Ninomiya’657, paras. 0061-0062).
Regarding claim 5, the combination of Ninomiya and Ninomiya’657 discloses the holding member holds the pressure member of the core body portion and the writing pressure detector (paras. 0061-0062 of Ninomiya’657).
Allowable Subject Matter
Claims 8-19 are allowed if the above Double Patenting is overcome. Independent claim 8 identifies the distinct limitations “wherein the holding member includes a front-side fitting portion into which the front-side portion of the pressure member fits and a rear-side fitting portion into which the rear-side portion of the pressure member fits, wherein an end of the front-side fitting portion on a pen tip side has an insertion hole into which the core body is inserted, while an end of the rear-side fitting portion on the rear end side has a rear-end opening into which the pressure member is inserted, and wherein an inner edge of the front-side fitting portion of the holding member and an outer edge of the front-side portion of the pressure member enable the front-side portion of the pressure member to fit into the front-side fitting portion of the holding member, inhibit the front-side portion of the pressure member from rotating about an axis in the front-side fitting portion of the holding member, and allow an inner wall surface of the front-side fitting portion of the holding member and a side surface of the front-side portion of the pressure member to partially contact with each other, while no mutually fitting recessed and protruding portions are provided on the inner wall surface of the front-side fitting portion of the holding member and the side surface of the front-side portion of the pressure member”. Claims 9-19 are allowed for their dependence upon claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hashimoto et al. (US 2021/0263613) disclose a housing 10 of the electronic pen 1 is configured such that a front cap 12, which is a conically-shaped cylindrical body, is fitted and mounted into an opening in a pen tip end of a cylindrical housing main body section 11 (figs. 1A, 1B, para. 0028).
Kaneda et al. (US 2021/0405786) disclose a housing 1 of the electronic pen of this embodiment is cylindrical. As illustrated in FIGS. 1A and 1C, a pen tip side of the housing 1 is tapered, and a tip portion includes an opening 1h. The core body 2 described later is inserted and removed through the opening 1h (fig. 1A, para. 0020).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER T NGUYEN whose telephone number is (571)272-7696. The examiner can normally be reached Mon-Fri 7:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin C Lee can be reached at 5712722963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER T NGUYEN/Primary Examiner, Art Unit 2629