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.
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Claim 16 - 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12, 455, 451 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation in the application is taught in the patent.
Claim 17 of the application is similarly rejected over patent claim 14.
Claim 18 of the application is similarly rejected over patent claim 15.
Claim 19 of the application is similarly rejected over patent claim 1.
Claim 20 of the application is rejected over patent claim 1 (an increase of negative power).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 – 5, 8 – 10, and 13 - 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grutman et al; (Publication number: US 2020/0285062 A1), hereafter Grutman, in view of HONG et al; (Publication number: US 2010/0181988 A1), hereafter HONG.
Regarding claim 1:
Grutman discloses an electronic device (Grutman ABSTRACT; Figure 1A 12), comprising:
a display configured to present an image (Grutman display screen 16); and wireless communication circuitry (Grutman Figure 1A interface 17 includes wireless link; [0076]) configured to communicate with a device (Gurtman spectacles 10) having an adjustable lens (Grutman tunable lens 22 and 24; [0077]), wherein the wireless communication circuitry is configured to transmit information to the device that causes an adjustment to the adjustable lens in the device (Grutman [0085] command signal)
Grutman does not disclose wherein the transmission is in response to an activation of the display.
However, HONG discloses a method for reducing power consumption based on motion sensor and portable terminal using the same. More particularly, HONG discloses a portable terminal in which the display screen if in the OFF state when downwards (when facing an object) and is in the ON state when not facing the object (HONG Figure 6 [0073 – 0075]).
It would have been obvious to modify the mobile device 12 wherein the transmission is in response to an activation of the display (i.e., when the display is switched from the OFF state to the ON state), as claimed, those skilled in the art would appreciate the ability to reduce the power consumption of the mobile device when not in use.
Regarding claim 2:
Grutman (in view of HONG) discloses the electronic device of claim 1, wherein the device is a head-mounted device (Grutman Figure 1A 12).
Regarding claim 3:
Grutman (in view of HONG) discloses the electronic device of claim 1, further comprising: a sensor configured to detect a gesture, wherein a detection of the gesture by the sensor causes activation of the display (HONG Figure 6 motion sensor 120 detects movement of the device).
Regarding claim 4:
Grutman (in view of HONG) discloses the electronic device of claim 3, wherein the gesture comprises a raise-to-wake gesture (HONG [0073 – 0075]).
Regarding claim 5:
Grutman (in view of HONG) discloses the electronic device of claim 3, wherein the gesture indicates that a user has picked up the electronic device (implied by HONG Figure 6 when the portable terminal is changed from downward facing to upward facing).
Regarding claim 8:
Grutman (in view of HONG) discloses the electronic device of claim 1, further comprising: a sensor configured to obtain user attention information in response to the activation of the display, wherein the wireless communication circuitry is configured to, based on the user attention information, transmit the information to the device that causes the adjustment to the adjustable lens in the device (disclosed in combination of Grutman [0085] and HONG [0073 – 0075] when display is turned over and activated such that the sensor determines the relative position between the mobile device and the spectacles).
Regarding claim 9:
Claim 9 is similarly rejected for those reasons discussed above in claim 1.
Regarding claim 10:
Claim 10 is similarly rejected for those reasons discussed above in claim 2.
Regarding claim 13:
Claim 13 is similarly rejected for those reasons discussed above in claim 8.
Regarding claim 14:
Grutman (in view of HONG) discloses the electronic device of claim 9, further comprising: a sensor configured to obtain sensor information (HONG Figure 6 motion sensor 120 detects movement of the device), wherein the wireless communication circuity is configured to, based on the sensor information, transmit an instruction to the device that causes a disablement of the adjustment to the adjustable lens in the device (HONG Figure 6 [0073 – 0075]; display switched from ON to OFF).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grutman et al; (Publication number: US 20200285062 A1), hereafter Grutman, in view of HONG et al; (Publication number: US 2010/0181988 A1), hereafter HONG, in view of Crowley et al; (Publication number: US 2021/0349618 A1), hereafter Crowley.
Regarding claim 6:
Grutman (in view of HONG) does not disclose the electronic device of claim 3, wherein the sensor comprises a digital crown and wherein the gesture comprises a rotation of the digital crown.
However, Crowley discloses a system, method, and user interface for supporting scheduled mode changes on electronic device. More particularly, Crowley discloses wherein the sensor comprises a digital crown and wherein the gesture comprises a rotation of the digital crown (Crowley [0330] Figure 11P).
It would have been obvious to further modify Grutman (in view of Hong) wherein the sensor comprises a digital crown and wherein the gesture comprises a rotation of the digital crown, as claimed, because such a modification would be based on combining prior art elements according to known methods to yield predictable results. Modifying Grutman (in view of HONG) is known to yield the predictable result of allowing the user to wake the screen. Thus a person of ordinary skill in the art would have appreciate further including wherein the sensor comprises a digital crown and wherein the gesture comprises a rotation of the digital crown, as claimed, because the invention is a combination of old elements, in the combination each element performs the same function as separately, and one of skilled in the art would have recognized the results were predictable.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grutman et al; (Publication number: US 20200285062 A1), hereafter Grutman, in view of HONG et al; (Publication number: US 2010/0181988 A1), hereafter HONG, in view of Xintian Li (Publication number: US 2014/0055369 A1), hereafter Li.
Regarding claim 7:
Grutman (in view of HONG) does not disclose the electronic device of claim 3, wherein the sensor comprise a button and wherein the gesture comprises a press or a touch of the button.
However, Li discloses a single-gesture mobile computing device. More particularly, Li discloses wherein the sensor comprise a button and wherein the gesture comprises a press or a touch of the button (Li [0026] wakeup mode 192; touch button 120 pressed in 100b).
It would have been obvious to further modify Grutman (in view of HONG) wherein the sensor comprise a button and wherein the gesture comprises a press or a touch of the button, as claimed. Those skilled in the art would appreciate limiting the need for multiple buttons on the mobile device (Li [0006]).
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grutman et al; (Publication number: US 20200285062 A1), hereafter Grutman, in view of HONG et al; (Publication number: US 2010/0181988 A1), hereafter HONG, in view of KIM et al; (Publication number: US 2015/0123898 A1), hereafter KIM.
Regarding claim 11:
Grutman (in view of HONG) does not disclose the electronic device of claim 9, wherein the content comprises an incoming notification.
However, KIM discloses a digital device and control method thereof. More particularly, KIM discloses wherein the content comprises an incoming notification (KIM [0044]).
It would have been obvious to further modify Grutman (in view of HONG) wherein the content comprises an incoming notification, as claimed. Those skilled in the art would appreciate the ability to inform the user of incoming calls.
Regarding claim 12:
Grutman (in view of HONG) discloses the electronic device of claim 11, wherein the incoming notification is selected from the group consisting of: an incoming text message, an incoming email, and an incoming phone call (KIM [0044]).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grutman et al; (Publication number: US 20200285062 A1), hereafter Grutman, in view of HONG et al; (Publication number: US 2010/0181988 A1), hereafter HONG, in view of Douglas David Gravino (Publication number: US 2012/0001843 A1), hereafter Gravino.
Regarding claim 15:
Grutman (in view of HONG) does not disclose the electronic device of claim 14, wherein the sensor information indicates that the electronic device is traveling at a speed greater than a threshold.
However, Gravino discloses a mobile device user interface change based on motion. More particularly, Gravino discloses sensor information indicates that the electronic device is traveling at a speed greater than a threshold (Gravino [0027]).
It would have been obvious to further modify Grutman (in view of HONG) wherein the sensor information indicates that the electronic device is traveling at a speed greater than a threshold, as claimed. Those skilled in the art would appreciate applying an appropriate user interface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIHIR K RAYAN whose telephone number is (571)270-5719. The examiner can normally be reached Monday - Friday 9 - 5pm (EST).
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/MIHIR K RAYAN/ 24 July 2026Primary Examiner, Art Unit 2622
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