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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,346,505 or, alternatively, U.S. Patent No. 12,346,50 in view of the obviousness of separation of parts (MPEP 2144.04(V)(C)), as explained below.
US Application 19/222,814
US Patent No. 12,346,505
Claim 1: A coordinate input device, comprising: a position detection sensor which, in operation, detects a position indicated by an indicator; a casing including a rear surface and housing the position detection sensor between the rear surface and an input surface, the rear surface being opposite the input surface, the input surface being a surface on which an input operation for inputting the position indicated by the indicator is performed and corresponding to a position detection region of the position detection sensor; at least one grip part disposed on the rear surface of the casing; one or more operation parts disposed on the at least one grip part; a first recessed portion formed in the rear surface of the casing adjacent to the at least one grip part; and a second recessed portion disposed at a longitudinal side of the coordinate input device, wherein, in operation, a finger of an operator is inserted into the second recessed portion disposed at the longitudinal side of the coordinate input device and into the first recessed portion formed in the rear surface of the casing when the operator grips the at least one grip part so as to operate the one or more operation parts.
Claim 1: A coordinate input device, comprising: a position detection sensor which, in operation, detects a position indicated by an indicator; a casing including a rear surface and housing the position detection sensor between the rear surface and an input surface, the rear surface being opposite the input surface, the input surface being a surface on which an input operation for inputting the position indicated by the indicator is performed and corresponding to a position detection region of the position detection sensor; and at least one grip part disposed on the rear surface of the casing, wherein the at least one grip part includes a projecting portion that projects in a direction intersecting the rear surface, and one or more operation parts are disposed on the projecting portion, wherein the projecting portion is shaped and sized so as to be grippable by an operator, wherein a recessed portion is formed in the rear surface of the casing adjacent to at least part of a periphery of the projecting portion and adjacent to the one or more operation parts disposed on the projecting portion, wherein the recessed portion is disposed at approximately a middle of a longitudinal side of the coordinate input device, and wherein, in operation, a finger of the operator is inserted into the recessed portion disposed at approximately the middle of the longitudinal side of the coordinate input device and formed in the rear surface of the casing adjacent to at least one of the one or more operation parts disposed on the projecting portion when the operator grips the projecting portion.
Note: Recessed portion may be considered inherently divisible into two (or any number of) recessed portions. Alternatively, it would have been obvious to make the recessed portion separable into two (or any number of) recessed portions, according to legal rationale of making parts separable. See MPEP 2144.04(V)(C).
Claim 2: wherein the at least one grip part is disposed adjacent to an end edge of the rear surface of the casing.
Claim 2: wherein the at least one grip part is disposed adjacent to an end edge of the rear surface of the casing.
Claim 3: wherein part of a side portion of the at least one grip part is a surface along a side surface of the casing between the rear surface and the input surface.
Claim 3: wherein part of a side portion of the projecting portion in the direction intersecting the rear surface is a surface along a side surface of the casing between the rear surface and the input surface.
Claim 4: wherein the at least one grip part is shaped and sized so as to be grippable by an operator.
Claim 4: wherein the projecting portion is shaped and sized so as to be grippable by an operator.
Claim 5: wherein the first recessed portion includes a first side surface on which an index finger of the operator is positioned when the operator grips the at least one grip part, and wherein the first recessed portion includes a second side surface on which a middle finger, a ring finger, and a little finger of the operator are positioned when the operator grips the at least one grip part.
Claim 5: wherein the recessed portion includes a first side surface on which an index finger of the operator is positioned when the operator grips the projecting portion, and wherein the recessed portion includes a second side surface on which a middle finger, a ring finger, and a little finger of the operator are positioned when the operator grips the projecting portion.
Claim 6: wherein the one or more operation parts are disposed on a portion of the at least one grip part.
Claim 6: wherein the one or more operation parts are disposed on a portion of the projecting portion on the rear surface adjacent to the recessed portion.
Claim 7: wherein the one or more operation parts include an operation part disposed on a surface of the at least one grip part in a direction intersecting the rear surface.
Claim 7: wherein the one or more operation parts include an operation part disposed on a surface of the projecting portion in the direction intersecting the rear surface.
Claim 8: wherein the one or more operation parts include an operation part disposed across both a side portion of the at least one grip part in a direction intersecting the rear surface and an upper surface portion of the at least one grip part facing the rear surface.
Claim 8: wherein the one or more operation parts include an operation part disposed across both a side portion of the projecting portion in the direction intersecting the rear surface and an upper surface portion of the projecting portion facing the rear surface.
Claim 9: wherein a stand part holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed.
Claim 9: wherein a stand part holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed.
Claim 10: wherein the at least one grip part is disposed near an end edge of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed.
Claim 10: wherein the at least one grip part is disposed near an end edge of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed.
Claim 11: wherein the at least one grip part includes two grip parts, and wherein the two grip parts are disposed adjacent respective opposite end edges of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed.
Claim 11: wherein the at least one grip part includes two grip parts, and wherein the two grip parts are disposed adjacent respective opposite end edges of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed.
Claim 12: wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges and the one or more operation parts disposed on each of the two grip parts are assigned identical functions.
Claim 12: wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges and the one or more operation parts disposed on each of the two grip parts are assigned identical functions.
Claim 13: wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges and the one or more operation parts disposed on each of the two grip parts are assigned different functions.
Claim 13: wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges and the one or more operation parts disposed on each of the two grip parts are assigned different functions.
Claim 14: wherein the stand part includes a mechanism which, in operation, changes an angle of the input surface in the direction intersecting the surface on which the coordinate input device is placed.
Claim 14: wherein the stand part includes a mechanism which, in operation, changes an angle of the input surface in the direction intersecting the surface on which the coordinate input device is placed.
Claim 15: wherein the one or more operation parts are assigned a function related to an input of the position indicated by the indicator.
Claim 15: wherein the one or more operation parts are assigned a function related to an input of the position indicated by the indicator.
Claim 16: further comprising: a display device including a display screen overlapping with the position detection region of the position detection sensor.
Claim 16: a display device including a display screen overlapping with the position detection region of the position detection sensor.
Claim 17: wherein the position detection sensor detects the position indicated by the indicator using an electromagnetic induction system.
Claim 17: wherein the position detection sensor detects the position indicated by the indicator using an electromagnetic induction system.
Claim 18: wherein the position detection sensor detects the position indicated by the indicator using a capacitive coupling system.
Claim 18: wherein the position detection sensor detects the position indicated by the indicator using a capacitive coupling system.
Claim 19: wherein the one or more operation parts include any of an operation button, a touch sensor, and a trackball, and the one or more operation parts are operatable by a user without the user visually checking the one or more operation parts.
Claim 19: wherein the one or more operation parts include any of an operation button, a touch sensor, and a trackball, and the one or more operation parts are operatable by a user without the user visually checking the one or more operation parts.
Claim 20: wherein the longitudinal side of the coordinate input device extends between two lateral sides of the coordinate input device, and wherein a length of the longitudinal side of the coordinate input device is less than a length of each of the lateral sides of the coordinate input device.
Claim 20: wherein the longitudinal side of the coordinate input device extends between two lateral sides of the coordinate input device, and wherein a length of the longitudinal side of the coordinate input device is less than a length of each of the lateral sides of the coordinate input device.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the limitation “a second recessed portion disposed at a longitudinal side of the coordinate input device” is an example of a broad genus claim being presented but the disclosure only describing a narrow species with no evidence that the genus is contemplated. MPEP 2163(II)(A)(3)(ii). The original specification only teaches that both the first and second recessed portions are adjacent to one grip part of the at least one grip part. The original specification does not provide any evidence for a second recessed portion, through which a finger is inserted into the first recessed portion, that is not adjacent to one grip part. Claims 2-20 depend from claim 1 and share the rejection.
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.
Claims 11-13 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 11, the limitation “wherein the at least one grip part includes two grip parts” makes the earlier claim 1 limitation “a first recessed portion formed in the rear surface of the casing adjacent to the at least one grip part” unclear as to whether the first recessed portion is adjacent to one grip part or two grip parts. It is suggested to amend claim 1 to state “a first recessed portion formed in the rear surface of the casing adjacent to one grip part of the at least one grip part”. Claims 12-13 depend from claim 11 and share the rejection.
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.
Note that citations to figures and elements should be understood to also implicitly refer to any pertinent explanatory text in the reference.
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 1-4, 6-11, 16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0106041 A1 (“Ashida”).
Regarding claim 1, Ashida teaches a coordinate input device (Fig. 8), comprising:
a position detection sensor which, in operation, detects a position indicated by an indicator ([59], [168]-[169]);
a casing including a rear surface and housing the position detection sensor between the rear surface and an input surface, the rear surface being opposite the input surface, the input surface being a surface on which an input operation for inputting the position indicated by the indicator is performed and corresponding to a position detection region of the position detection sensor (Fig. 8);
at least one grip part disposed on the rear surface of the casing (Fig. 8 at 59);
one or more operation parts disposed on the at least one grip part (Fig. 8 at 54L, 54K);
a first recessed portion formed in the rear surface of the casing adjacent to the at least one grip part (Fig. 8 at central recessed portion above 59); and
a second recessed portion disposed at a longitudinal side of the coordinate input device (Fig. 8 at edge recessed portions above 54K, 54L),
wherein, in operation, a finger of an operator is inserted into the second recessed portion disposed at the longitudinal side of the coordinate input device and into the first recessed portion formed in the rear surface of the casing when the operator grips the at least one grip part so as to operate the one or more operation parts (Fig. 8 at edge and central recessed portions above 59).
Regarding claim 2, Ashida teaches wherein the at least one grip part is disposed adjacent to an end edge of the rear surface of the casing (Fig. 8 at 59).
Regarding claim 3, Ashida teaches wherein part of a side portion of the at least one grip part is a surface along a side surface of the casing between the rear surface and the input surface (Fig. 8 at 59).
Regarding claim 4, Ashida teaches wherein the at least one grip part is shaped and sized so as to be grippable by an operator (Fig. 8 at 59).
Regarding claim 6, Ashida teaches wherein the one or more operation parts are disposed on a portion of the at least one grip part (Fig. 8 at 59, 54K, 54L).
Regarding claim 7, Ashida teaches wherein the one or more operation parts include an operation part disposed on a surface of the at least one grip part in a direction intersecting the rear surface (Fig. 8 at 59, 54K, 54L).
Regarding claim 8, Ashida teaches wherein the one or more operation parts include an operation part disposed across both a side portion of the at least one grip part in a direction intersecting the rear surface and an upper surface portion of the at least one grip part facing the rear surface (Fig. 8 at 59, 54K, 54L).
Regarding claim 9, Ashida teaches wherein a stand part (Fig. 20 at 210) holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed (Fig. 20).
Regarding claim 10, Ashida teaches wherein the at least one grip part is disposed near an end edge of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed (Fig. 9 at 59, Fig. 20).
Regarding claim 11, Ashida teaches wherein the at least one grip part includes two grip parts (Fig. 9 at 59 left and 59 right), and wherein the two grip parts are disposed adjacent respective opposite end edges of the rear surface of the casing in a direction parallel to the surface on which the coordinate input device is placed (Fig. 9 at 59 left and 59 right, Fig. 20).
Regarding claim 16, Ashida teaches a display device including a display screen overlapping with the position detection region of the position detection sensor ([59], [168]).
Regarding claim 18, Ashida teaches wherein the position detection sensor detects the position indicated by the indicator using a capacitive coupling system ([168]).
Regarding claim 19, Ashida teaches wherein the one or more operation parts include an operation button (Fig. 8 at 54L, 54K) and the one or more operation parts are operatable by a user without the user visually checking the one or more operation parts (Fig. 8 at 54L, 54K).
Regarding claim 20, Ashida teaches wherein the longitudinal side of the coordinate input device extends between two lateral sides of the coordinate input device, and wherein a length of the longitudinal side of the coordinate input device is less than a length of each of the lateral sides of the coordinate input device (Figs. 8, 9).
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 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0106041 A1 (“Ashida”) as applied to claim 11 above, and further in view of obviousness to try.
Regarding claim 12, Ashida teaches wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges (Fig. 8 at 54L, 54K). Ashida does not expressly teach that the one or more operation parts disposed on each of the two grip parts are assigned identical functions. There is a problem of which functions to assign to each operation part. There are two possible categories of assignment, identical or different. Therefore, for one of ordinary skill in the art, before the effective filing date of the current application, it would have been obvious to try that the one or more operation parts disposed on each of the two grip parts are assigned identical functions.
Regarding claim 13, Ashida teaches wherein the one or more operation parts are disposed on the two grip parts disposed adjacent to the respective opposite end edges (Fig. 8 at 54L, 54K). Ashida does not expressly teach that the one or more operation parts disposed on each of the two grip parts are assigned different functions. There is a problem of which functions to assign to each operation part. There are two possible categories of assignment, identical or different. Therefore, for one of ordinary skill in the art, before the effective filing date of the current application, it would have been obvious to try that the one or more operation parts disposed on each of the two grip parts are assigned different functions.
Claims 9 and 14 are rejected, claim 9 in the alternative, under 35 U.S.C. 103 as being unpatentable over US 2012/0106041 A1 (“Ashida”) as applied to claim 1 above, and further in view of US 10890944 B1 (“Tien”).
Regarding claims 9 and 14, Ashida does not teach wherein a stand part holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed, wherein the stand part includes a mechanism which, in operation, changes an angle of the input surface in the direction intersecting the surface on which the coordinate input device is placed. Tien teaches wherein a stand part holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed (Figs. 1-3), wherein the stand part includes a mechanism which, in operation, changes an angle of the input surface in the direction intersecting the surface on which the coordinate input device is placed (Figs. 1-3). The suggestion to combine the teachings of Ashida and Tien is present as Ashida teaches an interface device and Tien teaches a stand for a computer interface device. Further suggestion is provided by Ashida, which teaches that different stands may be used (Figs. 15, 20). The motivation is to provide additional versatility for the stand. The combination would have been unsurprising and had a reasonable expectation of success because Ashida teaches an interface device and Tien teaches a stand for a computer interface device, while Ashida teaches that different stands may be used. Thus, before the effective filing date of the current application, the combination of Ashida and Tien would have rendered obvious, to one of ordinary skill in the art, wherein a stand part holding the casing is disposed on the rear surface such that the input surface is in a direction intersecting a surface on which the coordinate input device is placed and such that a space is created between the rear surface and the surface on which the coordinate input device is placed, wherein the stand part includes a mechanism which, in operation, changes an angle of the input surface in the direction intersecting the surface on which the coordinate input device is placed.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0106041 A1 (“Ashida”) as applied to claim 11 above, and further in view of US 2001/0040551 A1 (“Yates”).
Regarding claim 15, Ashida does not expressly teach wherein the one or more operation parts are assigned a function related to an input of the position indicated by the indicator. Yates teaches wherein one or more operation parts are assigned a function related to an input of the position indicated by the indicator ([49]-[50]). The suggestion to modify the teaching of Ashida by the teaching of Yates is present as both teach input devices. The motivation is to provide increased input versatility and functionality to a user. The combination would have been unsurprising and had a reasonable expectation of success because both Ashida and Yates teach input devices with operation parts. Thus, before the effective filing date of the current application, the combination of Ashida and Yates would have rendered obvious, to one of ordinary skill in the art, wherein the one or more operation parts are assigned a function related to an input of the position indicated by the indicator.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0106041 A1 (“Ashida”) as applied to claim 11 above, and further in view of US 2010/0108409 A1 (“Tanaka”).
Regarding claim 17, Ashida does not expressly teach wherein the position detection sensor detects the position indicated by the indicator using an electromagnetic induction system. Tanaka teaches wherein the position detection sensor detects the position indicated by the indicator using an electromagnetic induction system ([6]). The suggestion to modify the teaching of Ashida by the teaching of Tanaka is present as Ashida teaches that different types of touch panel technologies may be used ([168]). The motivation is to implement touch detection. The combination would have been unsurprising and had a reasonable expectation of success because Ashida teaches that different types of touch panel technologies may be used ([168]). Thus, before the effective filing date of the current application, the combination of Ashida and Tanaka would have rendered obvious, to one of ordinary skill in the art, wherein the position detection sensor detects the position indicated by the indicator using an electromagnetic induction system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0140752 A1 teaches a coordinate input device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENE W LEE whose telephone number is (571)270-7148. The examiner can normally be reached M-F 9:30am-6:00pm.
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/Gene W Lee/Primary Examiner, Art Unit 2624