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
This application discloses and claims only subject matter disclosed in prior Application No.18780311, filed 7/22/2024, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12386460. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite substantially similar claim limitations.
19/269950
U.S. Patent No. 12386460
A position detection method for detecting positions of an electronic pen and positions of a passive pointer on a touch surface disposed on a capacitive touch sensor constituted by a plurality of sensor electrodes arranged two-dimensionally, the electronic pen being configured to transmit a pen signal, the passive pointer not transmitting any signal, the position detection method comprising:
determining that a first position of the electronic pen is detected;
after the determining that the first position of the electronic pen is detected:
determining that a first touch position is detected, wherein the first touch position is indicative of a first position of the passive pointer;
in response to the determining that the first touch position is detected, inhibiting output of the first touch position by invalidating the first touch position;
detecting a transition of a state of the electronic pen from a contact state to a hover state;
in response to the detecting the transition of the state of the electronic pen from the contact state to the hover state, continuing the inhibiting output of the first touch position by invalidating the first touch position.
11. A position detection method for detecting a position of an electronic pen and a position of a passive pointer on a touch surface disposed on a capacitive touch sensor constituted by a plurality of sensor electrodes arranged two-dimensionally, the electronic pen being configured to transmit a pen signal, the passive pointer not transmitting any signal, the position detection method comprising:
determining that the electronic pen becomes detached from the touch surface;
after the determining that the electronic pen becomes detached from the touch surface, detecting a first touch position indicative of a first position of the passive pointer;
determining a first size of a first touch region corresponding to the first position of the passive pointer,
in response to the determining that the first size of the first touch region corresponding to the first position of the passive pointer is greater than or equal to a threshold value, inhibiting output of the first touch position;
after the inhibiting the output of the first touch position, detecting a second touch position indicative of a second position of the passive pointer;
determining a second size of a second touch region corresponding to the second position of the passive pointer, wherein the second touch region is different from the first touch region; and
in response to determining that the second size of the second touch region corresponding to the second position of the passive pointer is less than the threshold value, outputting the second touch position.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lehtinen et al. (U.S. Patent Publication 6518957 B1) discloses input device detached from position on c1:48-58
Lapp et al. (U.S. Patent Publication 20140298266 A1) discloses inhibit output of touch position on [0843]
Nakahara et al. (U.S. Patent Publication 20210157446 A1) discloses touch region on [0031].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN-NAN LIN whose telephone number is (571)272-5646. The examiner can normally be reached Monday - Thursday 7:30am - 6pm.
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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 571-2722963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUN-NAN LIN/Primary Examiner, Art Unit 2629
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