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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 18416418. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 1 represents a broader form of that in the ‘418 patent.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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. Specifically, claim 14 requires “to transmit a message to the user device indicative that the at least some of the second data is shown on the digital ink screen.” There does not appear to be support for this in the instant specification. Specific citations are respectfully requested.
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.
Claim(s) 1, 6, 9, 14-16, 18, 19, is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893).
In regard to claim 1, Dark teaches an apparatus comprising: a first memory device configured to store first data (see Page 1, memory stick with e-ink display); and a display device mechanically coupled to the first memory device (see Page 1, memory stick with e-ink display housed together), the display device including:
a digital ink screen (see Page 1, e-ink screen).
Dark is not relied upon to teach a second memory device configured to store second data, anda display controller communicatively coupled to the second memory device and the digital ink screen, the display controller configured to transmit control signals to the digital ink screen to display at least some of the second data, wherein the mechanical coupling between the first memory device and the display device provides electrical isolation that prevents the second data from affecting a storage integrity or reliability of the first data.
However, Andon teaches a second memory device configured to store second data (see Fig. 9, 74), and a display controller communicatively coupled to the second memory device and the digital ink screen, the display controller configured to transmit control signals to the digital ink screen to display at least some of the second data (see Para. 37 and Figs. 9 and 4).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the update of Andon to update the display wirelessly (see Para. 40 and 68).
Dark and Andon are not relied upon to teach wherein the mechanical coupling between the first memory device and the display device provides electrical isolation that prevents the second data from affecting a storage integrity or reliability of the first data.
Dark as discussed above already discloses the concept of first memory device.
However, Lu teaches wherein the mechanical coupling between the device and the display device provides electrical isolation that prevents the second data from affecting a storage integrity or reliability of the first data (see Figs. 2-3 and Para. 7-10, 33-34 EMI and ESD protection using isolation pads).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the update of Andon with the isolation of Lu to provide ESD protection for electronics with communication data (see Para. 2-4). Examiner also notes Dark as modified by Andon discloses the base product/process of communicating memory data of an electrophoretic display with another device memory while Lu teaches the known technique of electrical isolation of sensitive communication electronics so as to yield predictable results of isolating the memory to protect data in the device of Dark as modified by Andon.
Regarding claim 6, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark further teaches wherein the first memory device is a universal serial bus ("USB") flash drive, a Secure DigitalTM ("SD") card, a micro-SD card, a hard disk drive ("HDDs"), or a solid-state drive ("SSD") (See page 1, thumb drive).
Regarding claim 9, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark is not relied upon to teach wherein the display device further comprises: an antenna or a half-inductor configured to receive wireless signals from a user device; and a transponder communicatively coupled to the antenna or the half-inductor and configured to convert the wireless signals into the second data, wherein the display controller is further configured to: receive the second data from the transponder, and store the second data to the second memory device before transmitting the control signals to the digital ink screen.
However, Andon teaches wherein the display device further comprises: an antenna (See Para. 68, antenna) or a half-inductor configured to receive wireless signals from a user device; and a transponder (See Para. 84, 85, NFC) communicatively coupled to the antenna or the half-inductor and configured to convert the wireless signals into the second data (see at least Figs. 3, 7, 15, 16, wirelessly changing image on display using NFC), wherein the display controller is further configured to: receive the second data from the transponder (see Para. 85-86), and store the second data to the second memory device before transmitting the control signals to the digital ink screen (see Figs. 4, 9; Para. 37).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the antenna of Andon to update the display wirelessly (see Para. 40 and 68).
Regarding claim 14, Dark in view of Andon and Lu teach all the limitations of claim 9. Andon further teaches wherein the display controller is further configured to transmit a message to the user device indicative that the at least some of the second data is shown on the digital ink screen (see Fig. 1).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the confirmation of Andon to update the display wirelessly (see Para. 40 and 68).
Regarding claim 15, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark further teaches wherein the second data includes label data that describes contents of the first data stored in the first memory device (see Page 1).
Regarding claim 16 Dark in view of Andon and Lu teach all the limitations of claim 1. Dark further teaches further comprising a case configured to at least partially enclose the first memory device (See a page 1, memory stick housing with display).
Regarding claim 18 Dark in view of Andon and Lu teach all the limitations of claim 16. Dark further teaches wherein the display device is integrally formed with the case (see Page 1).
Regarding claim 19 Dark in view of Andon and Lu teach all the limitations of claim 16. Dark in view of Andon and Lu are not relied upon to teach wherein the case is formed from silicon, rubber, soft plastics, hard plastics, or combinations thereof.
However, Examiner takes official notice that it was well known at the time of filing to a person of ordinary skill to have the case is formed from silicon, rubber, soft plastics, hard plastics, and/or combinations thereof. A housing of a single or combination of these elements as non-conductive would yield predictable results in reducing signal propagation/electrical interference in the device of Dark as modified by Andon and Lu.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of Yu (US Pat. 5495390).
Regarding claim 17, Dark in view of Andon and Lu teach all the limitations of claim 16. Dark, Andon, and Lu are not relied upon to teach wherein the case includes a recess section configured to receive the display device.
However, Yu teaches wherein the case includes a recess section configured to receive the display device (see Col. 1, Ln 35-50).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu with the recess of Yu for convenient attachment (See Col. 1, Ln 30-50).
Claim(s) 2-5, is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of Paolini et al. (US Pat. 8040594 hereinafter referred to as “Pao”).
Regarding claim 2, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark, Andon, and Lu are not relied upon to teach wherein the digital ink screen includes pixels having micro-capsules containing at least two differently charged pigments.
However, Pao teaches wherein the digital ink screen includes pixels having micro-capsules containing at least two differently charged pigments (see Figs. 9A-10C).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu with the colored display of Pao to allow for a multi-color electrophoretic media display with low energy consumption (see Col. 1, Ln 50-67).
Regarding claim 3, Dark in view of Andon and Lu and Pao teach all the limitations of claim 2. Dark further teaches wherein the digital ink screen is at least one of electronic paper or an electrophoretic display (see Page 1, E-ink).
Regarding claim 4, Dark in view of Andon and Lu and Pao teach all the limitations of claim 2. Andon further teaches wherein the display controller is configured to causing the pixels to reset or refresh to remove prior data and ghost artifacts before the second data is displayed (see at least Figs. 3, 7, 15, 16, wirelessly changing image on display using NFC and Para. 84-86).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the update of Andon to update the display wirelessly (see Para. 40 and 68).
Dark in view of Andon, Lu and Pao are not relied upon to teach transmit a refresh signal to the digital ink screen. However, official notice is taken that it was well known in the art to a person of ordinary skill to use refresh signals on a display. A refresh signal to the display would yield predictable results in the display in updating/changing the display contents in the display device of Dark as modified by Andon, Lu and Pao.
Regarding claim 5, Dark in view of Andon and Lu and Pao teach all the limitations of claim 2. Pao further teaches wherein the micro-capsules contain three or more differently charged pigments or the pixels include different micro-capsule types that collectively provide for the display of three or more pigments or color (See Figs. 9A-10C).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu with the colored display of Pao to allow for a multi-color electrophoretic media display with low energy consumption (see Col. 1, Ln 50-67).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of
Pruckner et al. (US Pat. 11227203 hereinafter referred to as “Pruck”).
Regarding claim 7, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark, Andon, and Lu are not relied upon to teach further comprising an insulation layer or clay adhesive provided between the first memory device and the display device.
As discussed above, Lu does teach the concept of isolation pads.
However, Pruck teaches further comprising an insulation layer or clay adhesive provided between the first memory device and the display device (see Col. 6, Ln 40-45 electrically insulating protective layer of memory).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu with the insulating layer of Pruck since Pruck teaches the known technique of electrically isolating the memory and other connections so as to yield predictable results of protecting the memory from unintended electrical interference in the device of Dark as modified by Andon and Lu.
Claim(s) 8 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of Shingai et al. (US App. 20080061152 hereinafter referred to as “Shin”).
Regarding claim 8, Dark in view of Andon and Lu teach all the limitations of claim 1. Dark, Andon, and Lu are not relied upon to teach wherein the display device is removably connected to the first memory device.
However, Shin teaches wherein the display device is removably connected to the first memory device (see Figs. 2 and 8).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu to be removeable of Shin to allow for readings of other chips in a contactless manner (see Abstract and Para. 3). In the interests of furthering prosecution, Examiner also notes according to MPEP 2144.04, modifying a device to make a part separable or removable is often considered an obvious, routine design choice rather than a patentable invention, especially if it allows for easier access, cleaning, or portability.
Regarding claim 20, Dark in view of Andon and Lu teach all the limitations of claim 16. Dark in view of Andon and Lu are not relied upon to teach wherein the case is configured to enable the first memory device to be removable.
However, Shin teaches wherein the case is configured to enable the first memory device to be removable (see Figs. 2 and 8).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu to be removeable of Shin to allow for readings of other chips in a contactless manner (see Abstract and Para. 3). In the interests of furthering prosecution, Examiner also notes according to MPEP 2144.04, modifying a device to make a part separable or removable is often considered an obvious, routine design choice rather than a patentable invention, especially if it allows for easier access, cleaning, or portability.
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of Rossl (US App. 20230012967).
Regarding claim 10, Dark in view of Andon and Lu teach all the limitations of claim 1. Andon further teaches wherein the transponder is further configured to convert the wireless signals (see at least Figs. 3, 7, 15, 16, wirelessly changing image on display using NFC), and the display controller (see Para. 85-86); second memory device (see Para. 37 and Figs. 9 and 4).
Dark in view of Andon and Lu are not relied upon to teach into a regulated output voltage, and wherein configured to use the regulated output voltage for storing the second data to the second memory device and transmitting the control signals to the digital ink screen.
However, Rossl teaches into a regulated output voltage (see Para. 122, 137, and 138 first and second voltage regulators and updating display with NFC data for shelf label), and wherein configured to use the regulated output voltage for storing the second data to the device and transmitting the control signals to the digital ink screen (see Para. 122, 137, and 138 first and second voltage regulators and updating display with NFC data for shelf label).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu and regulated voltage of Rossl for controlling the epaper screen (see Para. 105). Examiner also notes Dark as modified by Andon and Lu discloses the base product/process of a color electrophoretic display attached to memory while Rossl teaches the known technique of voltage regulation so as to yield predictable results of display data using regulated voltage in the device of Dark as modified by Andon and Lu.
Regarding claim 11, Dark in view of Andon and Lu and Rossl teach all the limitations of claim 10. Andon further teaches wherein the antenna or the half-inductor is configured to receive second wireless signals from the user device at a later time (see at least Figs. 3, 7, 15, 16, wirelessly changing image on display using NFC); the transponder is configured to convert the second wireless signals into third data
and the display controller is configured to receive the and the third data from the transponder,store the third data to the second memory device, andtransmit second control signals to the digital ink screen causing at least some of the third data to be displayed.
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the update of Andon to update the display wirelessly (see Para. 40 and 68).
Dark in view of Andon and Lu are not relied upon to teach and a second regulated output voltage; second regulated output voltage
However, Rossl teaches and a second regulated output voltage; second regulated output voltage (see Para. 122, 137, and 138 first and second voltage regulators and updating display with NFC data for shelf label as part of NFC communications).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu and regulated voltage of Rossl for controlling the epaper screen (see Para. 105). Examiner also notes Dark as modified by Andon and Lu discloses the base product/process of a color electrophoretic display attached to memory while Rossl teaches the known technique of voltage regulation so as to yield predictable results of display data using regulated voltage in the device of Dark as modified by Andon and Lu.
Regarding claim 12, Dark in view of Andon and Lu and Rossl teach all the limitations of claim 11. Andon further teaches wherein the display controller is configured to the digital ink screen causing pixels to reset or refresh to remove the display of the at least some of the second data and ghost artifacts before the third data is displayed (see at least Figs. 3, 7, 15, 16, wirelessly changing image on display using NFC and Para. 84-86).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark to include the update of Andon to update the display wirelessly (see Para. 40 and 68).
Dark in view of Andon, Lu and Rossl are not relied upon to teach transmit a refresh signal. However, official notice is taken that it was well known in the art to a person of ordinary skill to use refresh signals on a display. A refresh signal to the display would yield predictable results in the display in updating/changing the display contents in the display device of Dark as modified by Andon, Lu and Rossl.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Darksaber (“Lexar to use Electronic paper display on USB Stick”; Darksaber; “https://www.techpowerup.com/7767/lexar-to-use-electronic-paper-display-on-usb-stick”; 2006 hereinafter referred to as “Dark”) in view of Andon et al. (US App. 20240012915) in view of Lu et al. (US App. 20140055893) in further view of Rossl (US App. 20230012967) in further view of Greene (US App. 20150116296).
Regarding claim 13, Dark in view of Andon and Lu and Rossl teach all the limitations of claim 11. Dark in view of Andon, Lu, and Rossl are not explicitly relied upon to teach wherein the display controller is configured to overwrite the second data stored in the second memory device with the third data.
However, Greene teaches wherein the display controller is configured to overwrite the second data stored in the second memory device with the third data (see Para. 45-47, 80-84 writing data to memory for display).
It would have been obvious to a person of ordinary skill in the art to modify the display of Dark as modified by Andon and Lu and regulated voltage of Rossl with memory overwrite of Green for updating displays (see Para. 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW YEUNG whose telephone number is (571)272-4115. The examiner can normally be reached M-F 9am-5pm EST.
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/MATTHEW YEUNG/Primary Examiner, Art Unit 2625