UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/613,980
`
`06/05/2017
`
`Yoshio Koyanagi
`
`734156.668C1
`
`5430
`
`Seed IP Law Group LLP/Panason1e
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`HERNANDEZ'MANUELJ
`
`ART UNIT
`
`2859
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/18/2019
`
`ELECTRONIC
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`US PTOeACtion @ SeedIP .Com
`
`pairlinkdktg @ seedip .eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/613,980
`Examiner
`MANUEL HERNANDEZ
`
`Applicant(s)
`Koyanagi et al.
`Art Unit
`2859
`
`AIA Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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). Responsive to communication(s) filed on 6/5/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—20 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`6
`
`)
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`7)
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1—20 is/are rejected.
`
`
`
`[:1 Claim(s)
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`is/are objected to.
`
`) )
`
`8
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10). The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 05 June 2017 and 14 July 2017 is/are: a). accepted or b)C] 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
`
`b)D Some”
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`C)D None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] 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)
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`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date See Continuation Sheet
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190107
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 15/613,980
`
`Continuation of Attachment(s) 2) Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date:
`
`6/5/2017
`
`7/17/2017
`
`9/26/2017
`
`10/27/2017
`
`6/14/2018
`
`6/27/2018
`
`9/14/2018
`
`10/9/2018
`
`11/2/2018
`
`

`

`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Priority
`
`2.
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
`
`Specification
`
`3.
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`The title of the invention is not descriptive. A new title is required that is clearly
`
`indicative of the invention to which the claims are directed.
`
`Information Disclosure Statement
`
`4.
`
`Due to the excessively lengthy Information Disclosure Statement submitted by applicant,
`
`the examiner has given only a cursory review of the listed references. In accordance with MPEP
`
`609.04(a), applicant is encouraged to provide a concise explanation of why the information is
`
`being submitted and how it is understood to be relevant. Concise explanations (especially those
`
`which point out the relevant pages and lines) are helpful to the Office, particularly where
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`documents are lengthy and complex and applicant is aware of a section that is highly relevant to
`
`patentability or where a large number of documents are submitted and applicant is aware that one
`
`or more are highly relevant to patentability. Applicant is required to comply with this statement
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`for any non—English language documents. See 37 CFR § 1.56 Duty to Disclose Information
`
`Material to Patentability.
`
`Claim Rejections - 35 US C § 102
`
`5.
`
`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
`
`

`

`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 3
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`6.
`
`The following is a quotation of the appropriate paragraphs of pre—AIA 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 ,
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent granted
`on an application for patent by another filed in the United States before the invention by the applicant
`for patent, except that an international application filed under the treaty defined in section 351(a) shall
`have the effects for purposes of this subsection of an application filed in the United States only if the
`international application designated the United States and was published under Article 21(2) of such
`treaty in the English language.
`
`7.
`
`Claim(s) l, 4, 6—11, 14, and 16—20 is/are rejected under pre—AIA 35 U.S.C. 102(e) as
`
`being anticipated by PARK (US 2013/003 8278).
`
`Regarding claim 1, PARK discloses a mobile terminal (100, Figure 1) comprising:
`
`a housing (101, Fig. 1);
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`a camera placed in the housing (119);
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`a circuit board included in the housing (‘J[ 0027, 0031, 0040);
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`a charging coil arranged in the housing (133, Fig. 2; ‘J[ 0033);
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`a wireless communication coil electrically isolated from the charging coil (135, Fig. 2; ‘J[
`
`0028,0033); and
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`a magnetic sheet (131) including a front surface (141/142, Fig. 2), on which the charging
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`coil and the wireless communication coil are arranged (‘J[ 0028), and a back surface (see
`
`annotated Fig. 2 below); wherein
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`the charging coil includes a first winding portion, a first leg portion, and a second leg
`
`portion (see annotated Fig. 2 below),
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`

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`Application/Control Number: 15/613,980
`Art Unit: 2859
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`Page 4
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`the wireless communication coil includes a second winding portion (see annotated Fig. 2
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`below),
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`the first and second leg portions of the charging coil are arranged between the second
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`winding portion of the wireless communication coil and the back surface of the magnetic sheet
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`(as shown in annotated Fig. 2 below), and
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`a minimum distance between the first and second leg portions and the camera is less than
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`a minimum distance between the first winding portion and the camera (since leg portions extend
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`from the first winding portion towards the camera as shown in Figures 1 and 4, the leg portions
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`are closer to the camera than the first winding portion, thus the minimum distance between the
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`leg portions and the camera is less than the minimum distance between the first winding portion
`
`and the camera).
`
`
`
`Baa-k Swans
`FIG_2 ........................
`€32? PARK
`
`

`

`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 5
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`Regarding claim 4, PARK discloses the first winding portion of the charging coil is
`
`wound in a shape selected from a rectangular shape, an oblong shape, a circular shape, an
`
`elliptical shape, and a polygonal shape (as shown in Figure 2, the winding portions are circular).
`
`Regarding claim 6, PARK discloses the second winding portion of the wireless
`
`communication coil is wound in a shape selected from a rectangular shape, a circular shape, a
`
`square shape, and a polygonal shape (as shown in Figure 2, the winding portions are circular).
`
`Regarding claim 7, PARK discloses a battery included in the housing (located in 111 in
`
`Figure 1), wherein the minimum distance between the first and second leg portions and the
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`camera is less than a minimum distance between the first and second leg portions and the battery
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`(as shown in Fig. 1, the leg portions extend to 149 and are therefore closer to camera 119 than to
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`the battery in recess 111).
`
`Regarding claim 8, PARK discloses a battery included in the housing (located in 111 in
`
`Figure 1), wherein the battery is placed in a first half along a longitudinal direction of the
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`housing (first half is a lower half and includes battery/recess 111) and the charging coil is placed
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`in a second half along the longitudinal direction of the housing (second half is an upper half and
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`includes camera 119, circuitry/components such as “NFC IC” as shown in Figure 5, and at least
`
`a portion of coil, e.g. at least 143).
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`Regarding claim 9, PARK discloses the camera is placed in the second half of the
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`housing (as shown in Figure 1, camera 119 is placed in the upper/second half of housing of
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`mobile terminal 100100).
`
`Regarding claim 10, PARK discloses the circuit board is placed in the second half of the
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`housing (circuitry/components including “NFC IC” as shown in Figure 5 are placed in the
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`upper/second half).
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`

`

`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 6
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`Regarding claim 11, PARK discloses a mobile terminal as applied to claim 1 and further
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`discloses the first and second leg portions extend from the first winding portion toward a side
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`where the camera is placed (leg portions extend from the first winding portion, as shown in
`
`annotated Fig. 2 above, and also extends towards the camera as shown in Figures 1 and 4).
`
`Regarding claim 14, PARK discloses the first winding portion of the charging coil is
`
`wound in a shape selected from a rectangular shape, an oblong shape, a circular shape, an
`
`elliptical shape, and a polygonal shape (as shown in Figure 2, the winding portions are circular).
`
`Regarding claim 16, PARK discloses the second winding portion of the wireless
`
`communication coil is wound in a shape selected from a rectangular shape, a circular shape, a
`
`square shape, and a polygonal shape (as shown in Figure 2, the winding portions are circular).
`
`Regarding claim 17, PARK discloses the mobile terminal as applied to claim 7.
`
`Regarding claim 18, PARK discloses the mobile terminal as applied to claim 8.
`
`Regarding claim 19, PARK discloses the mobile terminal as applied to claim 9.
`
`Regarding claim 20, PARK discloses the mobile terminal as applied to claim 10.
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`Claim Rejections - 35 US C § 103
`
`8.
`
`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, 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.
`
`9.
`
`The factual inquiries set forth in Graham v. John Deere C0., 383 U.S. l, 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:
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`1. Determining the scope and contents of the prior art.
`
`

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`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 7
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`10.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre—AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the
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`various claims was commonly owned at the time any inventions covered therein were made
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`absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and invention dates of each claim that was not commonly owned at the
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`time a later invention was made in order for the examiner to consider the applicability of pre—
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`AIA 35 U.S.C. 103(c) and potential pre—AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre—AIA
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`35 U.S.C. 103(a).
`
`11.
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`Claims 2, 3, 5, 12, 13, and 15 rejected under pre—AIA 35 U.S.C. 103(a) as being
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`unpatentable over PARK as applied to claims 1, 4, 6—11, 14, 16—20 above, and further in view of
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`PARTOVI (US 2012/0235636).
`
`Regarding claim 2, PARK discloses the mobile terminal as applied to claim 1 but fails to
`
`disclose the first winding portion of the charging coil has an internal dimension spanning at least
`
`15.5 mm. PARTOVI discloses the first winding portion of the charging coil has an internal
`
`dimension spanning at least 15 .5 mm (see Figure 12 and corresponding disclosure; ‘J[ 0141, 0170,
`
`0174, 0207). It would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to include the internal dimension as recited in order to provide desired wireless power
`
`transfer characteristics.
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`

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`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 8
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`Regarding claim 3, PARK as modified by PARTOVI teaches the first winding portion
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`of the charging coil defines an internal hollow portion sized to receive a circle having a diameter
`
`of 15.5 mm (the coil of PARTOVI has an “internal hollow portion” which is greater than 15.5
`
`mm, therefore capable of “receiving a circle having a diameter of 15.5 mm”).
`
`Regarding claim 5, PARK as modified by PARTOVI teaches the first winding portion
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`of the charging coil is wound in a circular shape and an internal diameter of the circular shape is
`
`greater than 15.5 mm (PARTOVI, see Figure 12 and corresponding disclosure; ‘J[ 0141, 0170,
`
`0174, 0207).
`
`Regarding claim 12, PARK as modified by PARTOVI teaches the mobile terminal as
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`applied to claim 2.
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`Regarding claim 13, 12, PARK as modified by PARTOVI teaches the mobile terminal
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`as applied to claim 3.
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`Regarding claim 15, 12, PARK as modified by PARTOVI teaches the mobile terminal
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`as applied to claim 5.
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`Conclusion
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`12.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MANUEL HERNANDEZ whose telephone number is (571)270—
`
`7916. The examiner can normally be reached on Monday—Friday 7a — 3p.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`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.
`
`

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`Application/Control Number: 15/613,980
`Art Unit: 2859
`
`Page 9
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Richard Isla can be reached on (571) 272—5056. The fax phone number for the
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`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. 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). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/Manuel Hernandez/
`
`Examiner, Art Unit 2859
`1/14/2019
`
`/NATHANIEL R PELTON/
`
`Primary Examiner, Art Unit 2859
`
`