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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-10 of U.S. Patent No. 12,353,652. Although the claims at issue are not identical, they are not patentably distinct from each other.
Application 19/241,293
Patent No. 12,353,652
1. A pen-shaped device having a pen tip, the pen-shaped device comprising:
a relative coordinate detecting device that, in operation, detects relative coordinates indicating changes in a position of the pen tip; and
a signal transmitter circuit that, in operation, transmits a signal usable to detect absolute coordinates of the pen tip in a predetermined region,
wherein the relative coordinate detecting device includes an optical device including a light source that, in operation, emits light and an imaging part that, in operation, images reflected light of the light emitted from the light source.
6. A pen-shaped device having a pen tip, the pen-shaped device comprising:
a relative coordinate detecting device that, in operation, detects relative coordinates indicating change in a position of the pen tip; and
a signal transmitter circuit that, in operation, transmits a signal usable to detect absolute coordinates of the pen tip in a predetermined region,
wherein the signal transmitter circuit includes a coil that, in operation, transmits the signal by an alternating magnetic field.
7. The pen-shaped device according to claim 6, wherein: the relative coordinate detecting device includes an optical device including a light source that, in operation, emits light and an imaging part that, in operation, images reflected light of the light emitted from the light source.
Application 19/241,293
Claim 2
Claim 3
Claim 4
Patent No. 12,353,652
Claim 8
Claim 9
Claim 10
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,353,652 in view of Ivascu et al. (US 2015/0310255 A1 hereinafter Ivanscu). U.S. Patent No. 12,353,652 fails to particularly disclose wherein the absolute coordinates of the pen tip are detected with an active capacitive system. Ivanscu teaches wherein the absolute coordinates of the pen tip are detected with an active capacitive system (see paragraph 0033, the capacitive touchscreen captures the absolute coordinates of the tip of the electronic pen). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of U.S. Patent No. 12,353,652 and Ivanscu, thereby using known techniques to yield predictable results.
Conclusion
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/CHRISTOPHER J KOHLMAN/Primary Examiner, Art Unit 2628