Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Summary
2. The continuation application filed on November 11, 2025, has been received and made of record. There are 1-16 claims in the application of which claim 1 is independent claim. claims 2-16 are dependent claims. Therefore, claims 1-16 are pending for consideration.
Information Disclosure Statement
3. The information disclosure statement(IDS) submitted was filed along with the mailing date of the continuation application on November 11, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
4. 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.
5. Claims 1-4, and 9-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of published US patent No. US 11,940,301 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because except for minor wording and insignificant change in terminology, each and every limitation of claims 1-16 of the US published Patent No. US 11,940,301 B2 reads on corresponding limitation of claims 1-4 and 9-16 of the current application 19/385,923. Both the current application and the published patent No. US 11,940,301 B2 disclose position indicator(active pen-stylus) used in a position detection device.
Comparing the claims 1-4 and 9-16 of the current application and claims 1-16 of the published US patent No. US 11,940,301 B2 is given below:-
19/385,923
US 11,940,301 B2
Claim 1: A position indicator of an electromagnetic induction type comprising:
a first resonant circuit including a first capacitor and a first coil wound around a magnetic core arranged on one end of the position indicator in an axial direction of the position indicator;
a second coil that is independent of first coil, at a position where the second coil, in operation, is magnetically coupled to the first coil; and a switch connected electrically to the second coil, wherein a closed circuit including the second coil is formed when the switch is turned on.
Claim 3: The position indicator according to claim 2, wherein the first coil of the first resonant circuit and the second coil of the second resonant circuit are magnetically coupled while the switch is turned on and the closed circuit is formed.
Claim 4: The position indicator according to claim 1, wherein mutual induction occurs between the second coil and the first coil of the first resonant circuit while the switch is turned on and the closed circuit is formed.
Claim 1: A position indicator of an electromagnetic induction type comprising:
a position indicator cartridge housed in a hollow portion of a first housing, wherein the position indicator cartridge includes a first resonant circuit including a first coil wound around a magnetic core arranged on one end of the position indicator cartridge in an axial direction of the position indicator cartridge and a first capacitor,
a second coil that is independent of the position indicator cartridge provided outside of the position indicator cartridge, at a position where the second coil, in operation, is magnetically coupled to the first coil of the position indicator cartridge, and
a switch turned on and off by an operation portion provided outside of the position indicator cartridge, wherein the operation portion, in operation, receives an operation made by a user, and wherein a closed circuit including the second coil is formed when the switch is turned on.
Claim 2 corresponds to a part of claim 2 of the published US Patent No. US 11,940,301 B2;
Claim 9 corresponds to claim 10 of the published US Patent No. US 11,940,301 B2;
Claim 10 corresponds to claim 11 of the published US Patent No. US 11,940,301 B2;
Claim 11 corresponds to claim 12 of the published US Patent No. US 11,940,301 B2;
Claim 12 corresponds to claim 13 of the published US Patent No. US 11,940,301 B2;
Claim 13 corresponds to claim 14 of the published US Patent No. US 11,940,301 B2;
Claim 14 corresponds to claim 15 of the published US Patent No. US 11,940,301 B2;
Claim 15 corresponds to claim 6 of the published US Patent No. US 11,940,301 B2; and
Claim 16 corresponds to claim 7 of the published US Patent No. US 11,940,301 B2.
6. Claims 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of published US patent No. US 11,940,301 B2 in view of MASAKI et al.(JP 2015/141687 A)(here in after MASAKI).
Regarding claim 5, claim of published US patent No. US 11, 940,301 B2 teaches the position indicator according to claim 1, wherein: first coil is wound such that a direction of the magnetic core is winding center direction of the first coil(part of claim 1) but fails to recite the limitations, “wherein the second coil is wound such that a direction crossing the axial direction of the magnetic core is a winding center direction of the second coil.
However, MASAKI teaches a system for wireless charging antenna and co-ordinate input device(stylus 1, fig.1), wherein a coil(loop coil 211, fig.1, Page-3, Lines 35-37) is placed in inner side wall of a cylindrical casing of the input device.
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the application, to have modified the claim of the published US patent No. US 11,940,301 B2 with the teaching of MASAKI to include the feature in order to provide an active input device/stylus pen, where loop coil is formed along an inner wall of wireless cylindrical shaped housing so that space to allocate another function to input device is secured effectively.
Regarding claim 6, claim of the published US patent No. US 11,940,301 B2 as modified by MASAKI teaches the position indicator according to claim 1, further comprising: a jacket member(fig.1, MASAKI), wherein the second coil(loop coil 211, fig.1, MASAKI) is provided on the jacket member(fig.1)(for motivation see the rejection of claim 5).
Regarding claim 7, claim of the published US patent No. US 11,940,301 B2 as modified by MASAKI teaches the position indicator according to claim 6, wherein: a side surface of the jacket member has at least a portion of a curved surface, and the second coil is wound along the curved surface(fig.1, MASAKI).
Regarding claim 8, claim of the published US patent No. US 11,940,301 B2 as modified by MASAKI teaches the position indicator according to claim 7, wherein the side surface of the jacket member tapers toward one end along the axial direction of the position indicator(fig.1, MASAKI).
7. Claims 1-4, and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of published US patent No. US 12,492,919 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because except for minor wording and insignificant change in terminology, each and every limitation of claims 1-19 of the US published Patent No. US 12,492,919 B2 reads on corresponding limitations of claims 1-4 and 9-16 of the current application 19/385,923. Both the current application and the published patent No. US 12,492,919 B2 disclose position indicator(active pen-stylus) used in a position input device.
Comparing the claims 1-4 and 9-16 of the current application and claims 1-19 of the published US patent No. US 12,492,919 B2 is given below:-
Claim 1 corresponds to part of claims 1 and 5 of the published US Patent No. US 12,492,919 B2;
Claim 2 corresponds to part of claim 5 of the published US Patent No. US 12,492,919 B2;
Claims 3-4 correspond to part of claims 1 and 5 of the published US Patent No. US 12,492,919 B2;
Claim 9 corresponds to part of claim 13 of the published US Patent No. US 12,492,919 B2;
Claim 10 corresponds to part of claim 14 of the published US Patent No. US 12,492,919 B2;
Claim 11 corresponds to part of claim 15 of the published US Patent No. US 12,492,919 B2;
Claim 12 corresponds to part of claim 16 of the published US Patent No. US 12,492,919 B2;
Claim 13 corresponds to part of claim 17 of the published US Patent No. US 12,492,919 B2;
Claim 14 corresponds to part of claim 5 of the published US Patent No. US 12,492,919 B2(it is obvious that when circuit closed there would be current);
Claim 15 corresponds to part of claim 4 of the published US Patent No. US 12,492,919 B2; and
Claim 16 corresponds to part of claim 10 of the published US Patent No. US 12,492,919 B2.
Claim Rejections - 35 USC § 102
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claims 1-4 and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mao et al.(US 2011/0297458 A1)(herein after Mao).
Regarding claim 1, Mao teaches a position indicator (electromagnetic pens 100, figs.1A-1C) of an electromagnetic induction type comprising:
a first resonant circuit(resonance circuit 208, figs.2A&2B) including a first capacitor(one of capacitor of circuit 208 in fig.2A) and a first coil(second coil 110) wound around a magnetic core(permeability material 108 or 112, figs.1A-1C, Para-15, 16) arranged on one end of the position indicator (electromagnetic pens 100) in an axial direction of the position indicator(figs.1A-1C) and;
a second coil(first coil 106, figs1A-2A) that is independent of the first coil(110, figs.1A-2A), at a position where the second coil(as seen from fig.1A, first coil 110 and second coil 106 are separated from each other), in operation, is magnetically coupled to the first coil(Para-17); and
a switch(switch 114, figs.1A-1C) connected electrically to the second coil(first coil 106, fig.2A),
wherein a closed circuit(fig.2A-2B) including the second coil (first coil 106) is formed when the switch(switch 114, figs.1A-2B and related text) is turned on(Para-19).
Regarding claim 2, Mao teaches the position indicator according to claim 1, wherein the closed circuit formed when the switch(114, 1141, 1142, fig.2A) is turned on is a second resonant circuit formed by connecting a second capacitor(C5 or C6, fig.2A, Para-19) to the second coil(first coil 106).
Regarding claim 3, Mao teaches the position indicator according to claim 2, wherein the first coil of the first resonant circuit and the second coil of the second resonant circuit are magnetically coupled while the switch is turned on and the closed circuit is formed(Para 19-23).
Regarding claim 4, Mao teaches the position indicator according to claim 1, wherein mutual induction occurs between the second coil and the first coil of the first resonant circuit while the switch is turned on and the closed circuit is formed(Para 19-23).
Regarding claim 14, Mao teaches the position indicator according to claim 1, wherein: the second coil(first coil 106) and the closed circuit formed when the switch(114) is turned on apply a current to the second coil(106)(it is inherent that in an electrical and/or inductive circuit, current flows in closed circuit when in operation).
Regarding claim 15, Mao teaches the position indicator according to claim 1, further comprising: a circuit board, wherein the switch(114) is on the circuit board(116, fig.1A) (claim does not say that switch is placed directly on the circuit board).
Regarding claim 16, Mao teaches the position indicator according to claim 1, wherein the second coil(first coil 106) surrounds at least part of the magnetic core(108).
Claim Rejections - 35 USC § 103
10. 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.
11. 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.
12. 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.
13. Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Mao et al.(US 2011/0297458 A1) in view of MASAKI et al.(JP 2015/141687 A)(here in after MASAKI).
For mapping and motivation, see the rejection of claims 5-8 on the ground of nonstatutory double patenting rejection above.
14. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mao et al.(US 2011/0297458 A1) in view of Obata (US 2014/006 9532 A1).
Regarding claim 9, Mao is not found to teach expressly the position indicator according to claim 1, further comprising: a pressure detector which, in operation, detects a pressure applied to a part of the position indicator, wherein the position indicator, in operation, transmits, through the first resonant circuit, a position indication signal and information regarding the pressure detected by the pressure detector.
However, Obata teaches a position indicator, further comprising:
a pressure detector(pressure sensitive element, Para-20) which, in operation, detects a pressure applied to a part of the position indicator(Para-76),
wherein the position indicator, in operation, transmits, through the first resonant circuit, a position indication signal and information regarding the pressure detected by the pressure detector(Para-76, 151).
Therefore, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the application, to have modified Mao with the teaching of Obata to include the feature in order to provide an electromagnetic pen capable of detecting pressure applied to electromagnetic pen.
Examiner Note
15. The Examiner cites particular figures, paragraphs, columns and line numbers in the references, as applied to the claims above. Although the particular citations are representative teachings and
are applied to specific limitations within the claims, other passages, internally cited references, and figures may also apply.
In preparing a response, it is respectfully requested that the Applicants fully consider the references, in their entirety, as potentially disclosing or teaching all or part of the claimed invention, as well as fully consider the context of the passage as
taught by the references or as disclosed by the Examiner.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MD SAIFUL A SIDDIQUI whose telephone number is (571)270-1530. The examiner can normally be reached on Mon-Fri: 9:00AM - 5:30PM.
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/MD SAIFUL A SIDDIQUI/Primary Examiner, Art Unit 2626
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