Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
2. Claims 1-20 are pending.
Double Patenting
3. 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.
Independent claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over respectively independent claims 1 and 16 of U.S. Patent No. 12,474,804. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 12 of the current application and respectively claims 1 and 17 of said patent are substantially identical with the exception of the patent claiming a power storage circuit for both claims while the current application respectively claims a battery in claim 1 and an electrical energy storage in claim 12. A battery is within the scope of a power storage circuit. The scope of a power storage circuit is broader and most commonly includes the use of a battery. It is noted the current application’s originally filed specification paragraphs [0106] and [0137] describes a power storage circuit as a capacitor to replace the battery. However, claim 9 of the current application describes the battery that stores the driving voltage to be a capacitor, further emphasizing that the battery and power storage circuit are the same.
Similarly, an electrical energy storage does not comprise a patentably distinct difference from a power storage circuit. The current application’s originally filed specification does not recite “electrical energy storage” outside of the original claims themselves. While electrical energy and power have particular distinct definitions, an electrical energy storage and power storage do not inherently or by definition have distinct differences. Additionally, claim 12 states a power supply control circuit to control “the battery” instead of “an electrical energy storage”.
The following claims are identical:
Current application Claims
Patent 12,474,804 Claims
1
Address above: claim 1
2
none
3
2
4
3
5
4
6
5 (with difference of battery described above)
7
6
8
7
9
8
10
9
11
10
12
Address above: claim 17
13
17
14
18
15
19
16
20 (with difference of energy storage described above)
17
24 (with addition of TFT)
18
21
19
22
20
none
Claim Rejections - 35 USC § 112
4. 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 20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The entirety of the current application’s specification regards the wireless transmission of power from external device to be the portable terminal/position detection sensor (figure 7 paragraph [0138]). At no point in the specification is it implied or specifically described that the external device is the same device as the pen. Further, there is no inherent understanding by one skilled in the art to wireless transmit induction energy to the same device.
5. 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, 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.
Claim 12 recites the limitation "the battery" in itself. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
6. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 1, Vuppu et al. (US Patent Application Publication 2012/0154340) discloses a position pointer for indicating a position on a sensor of a position detection device (abstract), the position pointer comprising:
a pointer body having a distal end (figure 1 reference elongated stylus/pointer body 104 having distal end and proximal end);
a central electrode disposed near the distal end of the pointer body (figure 1 reference center electrode 101 depicted to extend beyond the distal end of the elongate stylus/pointer body 104);
a detection circuit configured to output a control signal indicative of a result of detecting a first signal transmitted from the position detection device (Figure 4 depicts an active circuit 403 which receives a signal (positive or negative) via the center electrode 401 from the touch-sensitive interface 201 as described in paragraph [0049] to toggle buffer 441 (control signal).);
a battery configured to store driving power supplied from an external device (paragraph [0034] describes power in regards to energy harvesting circuits which may take a plurality of different forms including: capacitive coupling circuitry, battery which is periodically charged, mechanical strain component, heat sensor for absorbing heat, and USB); and
a power supply control circuit configured to control the battery, in response to the control signal indicating detection of the first signal by the detection circuit (Figure 4 reference active circuit 403 utilizes buffer 441 to toggle (control signal) and change the potential of the shroud electrode 402 corresponding to the input of the second signal to the buffer 441 as described in paragraph [0049].), [ ].
Vuppu does not specifically disclose in response to the control signal exhibiting a first control to indicate detection of the first signal by the detection circuit to supply the stored driving power to a predetermined circuit (Patent Board decision on Appeal filed 11/14/2024 of application 17/369,648).
Claim 1 is rejected via double patenting as shown above. Claim 2 is dependent upon claim 1.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER E LEIBY whose telephone number is (571)270-3142. The examiner can normally be reached 11-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amr Awad can be reached at 571-272-7764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER E LEIBY/Primary Examiner, Art Unit 2621
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