BSTZ I EXAMINER BLAKELY SOKOLOFF TAYLOR ...
UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTIVIENT OF COMIVIERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS PO. Box 1450 Alexandria1 Virginia 22313- 1450 wwwnsptogov
APPLICATION NO.
FILING DATE
12/950,461
45217
11/19/2010
7590
FIRST NAMED INVENTOR
I ATTORNEY DOCKET NO.
Ching Yu John Tam
CONFIRMATION NO.
4860P10017
7792
06/04/2014
APPLE INC./BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY
I
SUNNYVALE, CA 94085-4040
I
EXAMINER HU,RU1MENG ARTUNIT
I
PAPER NUMBER
I
DELIVERY MODE
2649
I
MAIL DATE
06/04/2014
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication.
PTOL—90A (Rev. 04/07)
Office Action Summary
Application No. 12/950,461
Applicant(s) TAM, CHING YU JOHN
Examiner
Art Unit
AIA (First Inventor to File)
RUIMENG HU
2649
fig“
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF THIS COMMUNICATION. -
Extensions of time may be available under the provisions of 37 CFR1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication. If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1 .704(b).
Status 1)IZI Responsive to communication(s) filed on W.
El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on _. 2a)|:l This action is FINAL.
2b)|ZI This action is non-final.
3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on _; the restriction requirement and election have been incorporated into this action.
4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
Disposition of Claims*
5)IZI Claim(s) fl is/are pending in the application. 5a) Of the above claim(s)
is/are withdrawn from consideration.
6)]XI Claim(s) 1-21 23 and 24 is/are allowed.
7)|Z| Claim(s) 2_2 is/are rejected. 8)|:I Claim(s) is/are objected to. 9)I:I Claim(s)
are subject to restriction and/or election requirement.
* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information, please see
hitszilwww.usctoeov/natents/init events/nnh/indexjsr) or send an inquiry to PPI-ifeedback{®usgtc.00v.
Application Papers 10)I:l The specification is objected to by the Examiner. 11)|Xl The drawing(s) filed on 11/19/2010 is/are: a)IXI accepted or b)|:l objected to by the Examiner. Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
Priority under 35 U.S.C. § 119 12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
Certified copies: a)I:l All b)|:l Some” c)I:l None of the: 1.I:I Certified copies of the priority documents have been received. all
Certified copies of the priority documents have been received in Application No.
3.|:|
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau (PCT Rule 17.2(a)).
** See the attached detailed Office action for a list of the certified copies not received.
Attachment(s)
1) E Notice of References Cited (PTO-892) .
3) D Interview Summary (PTO-413)
.
Paper No(s)/Mai| Date.
2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) Paper No(s)/Mai| Date See Continuation Sheet. US. Patent and Trademark Office PTOL—326 (Rev. 11-13)
Office Action Summary
.
4) D other: —'
Part of Paper No./Mai| Date 20140527
Continuation Sheet (PTOL-326)
Continuation of Attachment(s) 2). Information Disclosure Statement(s) (PTO/SB/OS), Paper No(s)/Mai| Date
:11/19/2010,05/14/2012,06/18/2013,07/01/2013,11/26/2013.
Application No. 12/950,461
Application/Control Number: 12/950,461
Page 2
Art Unit: 2649 1.
The present application is being examined under the pre-AIA first to invent
provisions.
DETAILED ACTION Claim Rejections - 35 USC § 103 2.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
3.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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. 4.
Claim 22 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181). Consider claim 22, Fadell et al. disclose (Abstract, figure 13) an electronic device comprising: means for housing electronic components (figure 13, covering 1326);
means for transmitting said radiation out of the housing means (figure 13, emitter 1322);
Application/Control Number: 12/950,461
Page 3
Art Unit: 2649
means for receiving said radiation that has been scattered outside of the housing means (figure 13, detector 1324); means for blocking stray radiation from impinging on the receiving means (figure 13, fence 1310).
However Fadell et al. fail to disclose means for physically protecting the electronic components while passing radiation therethrough; means for taking up stray
radiation so as to prevent it from impinging on the receiving means. In the same field of endeavor, Costello et al. (Abstract, figure 4) disclose an infrared proximity sensor package comprising means for physically protecting the electronic components while passing radiation therethrough (figure 4, shield 110); means for transmitting said radiation out of the housing means (figure 4, emitter 70);
means for receiving said radiation that has been scattered outside of the housing means (figure 4, detector 60); means for blocking stray radiation from impinging on the receiving means (figure 4, blocking element 45); means for taking up stray radiation so as to prevent it from impinging on the receiving means (abstract, an infrared-absorbing
material on top or below shield 110). Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to incorporate the selection techniques taught by
Costello et al. into the art of Fadell et al. as to improve proximity detection.
Allowable Subject Matter 5.
Claims 1-21, 23 and 24 are allowed.
6.
The following is an examiner’s statement of reasons for allowance:
Application/Control Number: 12/950,461
Page 4
Art Unit: 2649
Consider claim 1, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, a cold
mirror positioned between the shield and the bottom surface of the radiation passing layer, covering said opening in the visibly opaque layer, a radiation absorber being a separate piece and of a different material than the shield and positioned to provide a
radiation seal between a top surface of the shield and a bottom surface of the cold mirror.
Consider claim 9, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, a cold
mirror positioned between the internal frame member and the bottom surface of the cover, covering said opening in the opaque layer, an infrared absorber formed between
a top surface of the frame member and a bottom surface of the cold mirror. Consider claim 23, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, applying an infrared absorber to a cold mirror, wherein the cold mirror covers an opening in a visible light opaque layer that has been applied to a cover, the absorber having the following characteristics in an infrared band 700 nm to 1100 nm, namely transmittance less than 5% and reflectance less than 10%.
Application/Control Number: 12/950,461
Page 5
Art Unit: 2649 Therefore, claims 1-21, 23 and 24 of the present application are considered novel and non-obvious over the prior art and, consequently, are allowed.
Conclusion
Any response to this Office Action should be faxed to (571) 273-8300 or mailed to:
Commissioner for Patents PO. Box 1450 Alexandria, VA 22313-1450 Hand-delivered responses should be brought to
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rui Meng Hu whose telephone number is 571 -2701105. The examiner can normally be reached on Monday - Thursday, 8:00 am. - 5:00
pm, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Edward Urban can be reached on 571-272-7899. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
Application/Control Number: 12/950,461
Page 6
Art Unit: 2649 For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).
/RuiMeng Hu/ R.H./rh May 27, 2014
/Edward Urban/
Supervisory Patent Examiner, Art Unit 2649
APPLICATION NO.
FILING DATE
12/950,461
45217
11/19/2010
7590
FIRST NAMED INVENTOR
I ATTORNEY DOCKET NO.
Ching Yu John Tam
CONFIRMATION NO.
4860P10017
7792
06/04/2014
APPLE INC./BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP 1279 OAKMEAD PARKWAY
I
SUNNYVALE, CA 94085-4040
I
EXAMINER HU,RU1MENG ARTUNIT
I
PAPER NUMBER
I
DELIVERY MODE
2649
I
MAIL DATE
06/04/2014
PAPER
Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication.
PTOL—90A (Rev. 04/07)
Office Action Summary
Application No. 12/950,461
Applicant(s) TAM, CHING YU JOHN
Examiner
Art Unit
AIA (First Inventor to File)
RUIMENG HU
2649
fig“
-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF THIS COMMUNICATION. -
Extensions of time may be available under the provisions of 37 CFR1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing date of this communication. If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133). Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1 .704(b).
Status 1)IZI Responsive to communication(s) filed on W.
El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on _. 2a)|:l This action is FINAL.
2b)|ZI This action is non-final.
3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on _; the restriction requirement and election have been incorporated into this action.
4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
Disposition of Claims*
5)IZI Claim(s) fl is/are pending in the application. 5a) Of the above claim(s)
is/are withdrawn from consideration.
6)]XI Claim(s) 1-21 23 and 24 is/are allowed.
7)|Z| Claim(s) 2_2 is/are rejected. 8)|:I Claim(s) is/are objected to. 9)I:I Claim(s)
are subject to restriction and/or election requirement.
* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information, please see
hitszilwww.usctoeov/natents/init events/nnh/indexjsr) or send an inquiry to PPI-ifeedback{®usgtc.00v.
Application Papers 10)I:l The specification is objected to by the Examiner. 11)|Xl The drawing(s) filed on 11/19/2010 is/are: a)IXI accepted or b)|:l objected to by the Examiner. Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a). Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
Priority under 35 U.S.C. § 119 12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
Certified copies: a)I:l All b)|:l Some” c)I:l None of the: 1.I:I Certified copies of the priority documents have been received. all
Certified copies of the priority documents have been received in Application No.
3.|:|
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau (PCT Rule 17.2(a)).
** See the attached detailed Office action for a list of the certified copies not received.
Attachment(s)
1) E Notice of References Cited (PTO-892) .
3) D Interview Summary (PTO-413)
.
Paper No(s)/Mai| Date.
2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b) Paper No(s)/Mai| Date See Continuation Sheet. US. Patent and Trademark Office PTOL—326 (Rev. 11-13)
Office Action Summary
.
4) D other: —'
Part of Paper No./Mai| Date 20140527
Continuation Sheet (PTOL-326)
Continuation of Attachment(s) 2). Information Disclosure Statement(s) (PTO/SB/OS), Paper No(s)/Mai| Date
:11/19/2010,05/14/2012,06/18/2013,07/01/2013,11/26/2013.
Application No. 12/950,461
Application/Control Number: 12/950,461
Page 2
Art Unit: 2649 1.
The present application is being examined under the pre-AIA first to invent
provisions.
DETAILED ACTION Claim Rejections - 35 USC § 103 2.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
3.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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. 4.
Claim 22 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181). Consider claim 22, Fadell et al. disclose (Abstract, figure 13) an electronic device comprising: means for housing electronic components (figure 13, covering 1326);
means for transmitting said radiation out of the housing means (figure 13, emitter 1322);
Application/Control Number: 12/950,461
Page 3
Art Unit: 2649
means for receiving said radiation that has been scattered outside of the housing means (figure 13, detector 1324); means for blocking stray radiation from impinging on the receiving means (figure 13, fence 1310).
However Fadell et al. fail to disclose means for physically protecting the electronic components while passing radiation therethrough; means for taking up stray
radiation so as to prevent it from impinging on the receiving means. In the same field of endeavor, Costello et al. (Abstract, figure 4) disclose an infrared proximity sensor package comprising means for physically protecting the electronic components while passing radiation therethrough (figure 4, shield 110); means for transmitting said radiation out of the housing means (figure 4, emitter 70);
means for receiving said radiation that has been scattered outside of the housing means (figure 4, detector 60); means for blocking stray radiation from impinging on the receiving means (figure 4, blocking element 45); means for taking up stray radiation so as to prevent it from impinging on the receiving means (abstract, an infrared-absorbing
material on top or below shield 110). Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to incorporate the selection techniques taught by
Costello et al. into the art of Fadell et al. as to improve proximity detection.
Allowable Subject Matter 5.
Claims 1-21, 23 and 24 are allowed.
6.
The following is an examiner’s statement of reasons for allowance:
Application/Control Number: 12/950,461
Page 4
Art Unit: 2649
Consider claim 1, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, a cold
mirror positioned between the shield and the bottom surface of the radiation passing layer, covering said opening in the visibly opaque layer, a radiation absorber being a separate piece and of a different material than the shield and positioned to provide a
radiation seal between a top surface of the shield and a bottom surface of the cold mirror.
Consider claim 9, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, a cold
mirror positioned between the internal frame member and the bottom surface of the cover, covering said opening in the opaque layer, an infrared absorber formed between
a top surface of the frame member and a bottom surface of the cold mirror. Consider claim 23, the best prior art of record found during the examination of the present application, Fadell et al. (US Patent 7,714,265) in view of Costello et al. (US Pub 2011/0121181) fails to specifically disclose, teach, or suggest as a whole, applying an infrared absorber to a cold mirror, wherein the cold mirror covers an opening in a visible light opaque layer that has been applied to a cover, the absorber having the following characteristics in an infrared band 700 nm to 1100 nm, namely transmittance less than 5% and reflectance less than 10%.
Application/Control Number: 12/950,461
Page 5
Art Unit: 2649 Therefore, claims 1-21, 23 and 24 of the present application are considered novel and non-obvious over the prior art and, consequently, are allowed.
Conclusion
Any response to this Office Action should be faxed to (571) 273-8300 or mailed to:
Commissioner for Patents PO. Box 1450 Alexandria, VA 22313-1450 Hand-delivered responses should be brought to
Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rui Meng Hu whose telephone number is 571 -2701105. The examiner can normally be reached on Monday - Thursday, 8:00 am. - 5:00
pm, EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
supervisor, Edward Urban can be reached on 571-272-7899. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
Application/Control Number: 12/950,461
Page 6
Art Unit: 2649 For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free).
/RuiMeng Hu/ R.H./rh May 27, 2014
/Edward Urban/
Supervisory Patent Examiner, Art Unit 2649
