www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`
`16/122,811
`
`“656
`
`09/05/2018
`
`Michael B. Wittenberg
`
`090911-
`P35141US4—1100896
`
`7395
`
`759°
`
`12/19/2019
`
`KILPATRICK TOWNSEND & STOCKTON LLP/Apple
`Mailstop: IP Doeketing - 22
`1100 Peachtree Street
`Suite 2800
`Atlanta, GA 30309
`
`HENZE'GONGOLA'DAVID V
`
`PAPER NUMBER
`
`2859
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/19/2019
`
`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):
`
`KTSDoeketing2@kilpatriekfoundationip.eom
`ipefiling @ kilp atriektownsend. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Claim Rejections - 35 USC § 1 12
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`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.
`
`Claims 9-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
`
`Claim 9 recites “an antenna disposed between at least part of the first inductor
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`coil and the second inductor coil”. The “first inductor coil” and the “second inductor coil”
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`lack proper antecedent basis.
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`Claim 11 recites “wherein the secondary coil is positioned on opposite ends of
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`the antenna”. However, claim 11 depends from claim 9 which recites “a secondary coil
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`including a first sub-coil and a second sub-coil, each sub-coil formed of a plurality of
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`turns of stranded wire wound about a portion of respective first and second
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`ferromagnetic structures”. It is unclear how the limitation of 11 applies to the entire
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`

`

`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page3
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`structure of the secondary coil which includes two sub-coils wound about separate
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`ferromagnetic structures.
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`Claim 14 has similar issues with the recitation of the secondary coil.
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`Claim 13 recites “a sensor module”. Claim 12 already recites “a sensor module”.
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`Thus, claim 13 lacks proper antecedent basis.
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`Claim Rejections - 35 USC § 103
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`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 effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
`
`Claims 1-9, 11-18 and 20 are rejected under 35 U.S.C. 103 as being
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`unpatentable over Jeong US PGPUB 2016/0111887 in view of Esser et al. US
`
`Patent 5,814,900.
`
`

`

`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page4
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`Regarding claims 1, 9 and 18, Jeong discloses a wireless charging receiver
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`system, comprising:
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`a primary coil formed of a plurality of turns of stranded wire wound about a
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`primary axis and configured to receive wireless power from time-varying magnetic fields
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`generated at a first frequency and in a first direction [figs. 4, 8-9; coil 836 consists of a
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`planar coil with a plurality of turns wound about a center of the circle; pars. 72-78; the
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`coil receives AC power at a frequency; pars. 50-51];
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`a primary ferromagnetic shield disposed on a top surface of the primary coil
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`[pars. 77-78; ferromagnetic tape/material can be “between” coil 836 and the electronics,
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`thus on top of the coil 836];
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`a pair of secondary ferromagnetic structures disposed coplanar with one another
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`and positioned apart from the primary coil, the pair of secondary ferromagnetic
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`structures include a first ferromagnetic structure and a second ferromagnetic structure
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`[figs. 8-9; coils 732 and 734 are coplanar and positioned apart from the coil 836; pars.
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`72-78; par. 56; the coils may include ferrite cores]; and
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`a secondary coil including a first sub-coil and a second sub-coil, each sub-coil
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`formed of a plurality of turns of stranded wire wound about a portion of respective first
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`and second ferromagnetic structures [figs. 8-9; coils 732 and 734 are coplanar and
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`positioned apart from the coil 836; pars. 72-78; par. 56; the coils may include ferrite
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`cores], and configured to receive wireless power from time- varying magnetic fields
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`generated at a second frequency different from the first frequency and in a second
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`direction different from the first direction [pars. 72-78; figs. 8-9; the coils are configured
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`to receive magnetic fields in a different direction; both the primary coil and the side coils
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`

`

`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page5
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`can would be able to receive the magnetic fields at multiple frequencies beyond any one
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`frequency, even if it is not ideal].
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`Jeong does not explicitly disclose the coils are wound about a center portion of
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`the ferromagnetic structures.
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`However, Esser discloses an inductive power system where the coils are wound
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`about a center portion of the ferromagnetic structures [fig. 8, coils 2 wound about
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`centers of cores 4; col. 7, lines 28-60].
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`It would have been obvious to one of ordinary skill in the art at the time the
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`application was filed to modify Jeong to further include the coils are wound about a
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`center portion of the ferromagnetic structures for the purpose of providing symmetry in
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`the production of magnetic fields and since it has been held that rearranging parts of an
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`invention involves only routine skill in the art.
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`In re Japikse, 86 USPQ 70 (CCPA 1950).
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`Regarding claim 9, Jeong discloses a housing including top and bottom portions
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`defining an internal cavity [unlabeled figure between 5 and 6, metal casing 40; pars. 62-
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`63] a wireless receiver system disposed within the internal cavity [pars. 62-63] and an
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`antenna disposed between at least part of the first inductor coil and the second inductor
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`coil [unlabeled figure between 5 and 6; areas 44a and 44b can be used for
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`communications antennas; pars. 61 -62].
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`Regarding claim 18, the method steps disclosed therein would have been
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`obvious to one of ordinary skill based on the teachings of the prior art references
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`applied above, since the prior art of record herein is construed as teaching or
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`suggesting all of the elements recited in the method claim, as pointed out in the above
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`rejection of claim 9. The claim is accordingly rejected.
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`

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`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page6
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`Regarding claim 2, Jeong discloses wherein the first direction is vertical and the
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`second direction is horizontal [figs. 8-9]
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`Regarding claim 3, Jeong discloses wherein the primary coil has a first central
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`axis that is oriented vertically, and the first sub-coil and the second sub-coil of the
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`secondary coil have second central axes that are oriented horizontally [figs. 8-9].
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`Regarding claims 4 and 15, Jeong discloses further comprising an
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`electromagnetic shield disposed on a bottom surface of the primary coil opposite of the
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`top surface [unlabeled figure between 5 and 6, metal casing 40; pars. 62-63].
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`Regarding claims 5 and 16, Jeong discloses wherein the first and second sub-
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`coils are connected in series and wound in the same direction [pars. 72, wound in the
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`same direction; pars. 74, in series].
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`Regarding claim 6, Jeong discloses wherein the first and second sub-coils are
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`separate structures from the first inductor coil [figs. 8-9].
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`Regarding claims 7 and 17, Jeong disclose wherein the primary ferromagnetic
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`shield covers an entire circumference of the surface of the primary coil [fig. 4,
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`ferromagnetic tape 43a surrounds the entire coil 41 a; pars. 62-63].
`
`Regarding claim 8, Jeong does not explicitly disclose wherein the primary
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`ferromagnetic shield further covers a side surface of the primary coil adjacent to the top
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`surface.
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`However, Examiner takes Official Notice that it is well known in the inductive
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`charging arts to provide a ferromagnetic shield which covers a side surface of the
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`

`

`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page7
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`primary coil adjacent to the top surface. Therefore, it would have been obvious to one of
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`ordinary skill in the art at the time the application was filed to modify Jeong to further
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`include wherein the primary ferromagnetic shield covers a side surface of the primary
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`coil adjacent to the top surface for the purpose of concentrating magnetic fields and
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`since such a modification would have involved a mere change in the size of a
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`component. A change in size is generally recognized as being within the level of
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`ordinary skill in the art.
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`In re Rose, 105 USPQ 237 (CCPA 1955).
`
`Regarding claims 11 and 20, Jeong discloses wherein the secondary coil is
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`positioned on opposite ends of the antenna [unlabeled figure between 5 and 6; areas
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`44a and 44b can be used for communications antennas, thus the secondary coils 41 b
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`would be on opposite ends of the antenna; pars. 61 -62].
`
`Regarding claim 12, Jeong discloses a first external contact disposed on the top
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`portion [fig. 10a-1; display emits light to the external, thus is an external contact];
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`a window attached to the bottom portion [figs. 7-10; camera opening; par. 77];
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`a second external contact disposed on the window [figs. 7-10, camera lens; par.
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`77]; and
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`a sensor module disposed within the internal cavity and coupled to the first
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`external contact and the second external contact [figs. 7-10; camera; par. 77].
`
`Regarding claim 13, Jeong does not explicitly disclose further comprising a
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`sensor module disposed within the internal cavity and electrically coupled to the first
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`and second external contacts, the sensor module configured to send a signal from the
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`second external contact into an external structure and receive the signal from the first
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`external contact once it has passed through the external structure.
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`

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`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page8
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`However, Examiner takes Official Notice that including a plurality of sensors to
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`send and receive signals is well known in the portable electronic arts, including in
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`medical devices, stud-finders and multi-meters. Thus, it would have been obvious to
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`one of ordinary skill in the art at the time the application was filed to modify Jeong to
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`further include a sensor module disposed within the internal cavity and electrically
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`coupled to the first and second external contacts, the sensor module configured to send
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`a signal from the second external contact into an external structure and receive the
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`signal from the first external contact once it has passed through the external structure
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`for the purpose of emitting a signal and measuring the effects of an external structure
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`on the signals.
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`Regarding claim 14, Jeong discloses wherein the primary coil has a first central
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`axis that is oriented vertically, and the secondary coil has a second central axis that is
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`oriented horizontally [figs. 7-9].
`
`Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Jeong US PGPUB 2016/0111887 in view of Esser et al. US Paten 5,814,900,
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`and further in view of Lee et al. US PGPUB 2013/0113422.
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`Regarding claims 10 and 19, Jeong does not explicitly disclose wherein the
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`antenna includes an opening and wherein the primary coil is disposed in the opening.
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`However, Lee discloses an inductive power system where the antenna includes
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`an opening and wherein the primary coil is disposed in the opening [fig. 8, receive coil
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`310 is within the data coil 340; pars. 49 & 56-59].
`
`

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`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page9
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`It would have been obvious to one of ordinary skill in the art at the time the
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`application was filed to modify the combination of Jeong and Esser to further include
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`wherein the antenna includes an opening and wherein the primary coil is disposed in
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`the opening for the purpose of preventing an increase in thickness of the assembly, as
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`taught by Lee (par. 59).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DAVID V HENZE-GONGOLA whose telephone number
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`is (571)272-3317. The examiner can normally be reached on M to F, 9am to 7pm.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Richard lsla can be reached on (571) 272-5056. The fax phone number for
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`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.
`
`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
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`

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`Application/Control Number:16/122,811
`Art Unit:2859
`
`Page10
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/DAV|D V HENZE-GONGOLA/
`
`Primary Examiner, Art Unit 2859
`
`

`

`Application No.
`
`Applicant(s)
`
`DAVID V HENZE-GONGOLA
`
`2859
`
`Yes
`
`The MAILING 0/? N077F/CA 770/V DA TE of this communication appears on the cover sheet wit/7 the correspondence address.
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`THE SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE TWO MONTHS FROM THE MAILING
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`OR NOTIFICATION DATE OF THIS COMMUNICATION.
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`This time period for reply is extendable under 37 CFR 1.136(a) for only TWO additional MONTHS.
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`D Applicant's request to not have a first-action interview is acknowledged (or the time period for reply set forth in the Pre-
`lnterview Communication has expired and the Office did not receive any reply).
`Status
`
`1)
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`Responsive to communication(s) filed on 9/5/2018 and interview conducted on 13 December 2019.
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`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2) [:1 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Expar/‘e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`3)
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`Claim(s) fl is/are pending in the application.
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`3a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`4) Cl Claim(s) _ is/are allowed.
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`5)
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`Claim(s) fl is/are rejected.
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`6) D Claim(s)
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`is/are objected to.
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`7) [:1 Claim(s)
`
`are subject to restriction and/or election requirement.
`
`Application Papers
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`8) [:1 The specification is objected to by the Examiner.
`
`9)
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`The drawing(s) filed on 9/5/2018 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( ).
`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
`
`10) [:1 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119( )-(d) or (f).
`a) Cl All
`b) C] Some * c) 1:] None of:
`
`1. 1:]
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`Certified copies of the priority documents have been received.
`
`2.
`[:1
`Certified copies of the priority documents have been received in Application No.
`3- D 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( )).
`
`*See the attached detailed Office action for a list of the certified copies not received.
`Contact Information
`
`
`
`Examiner's Telephone Number: g571)272—3317
`
`Examiner's Typical Work Schedule: M to F, 9am to 7pm
`
`Supervisor‘s Name: Richard lsla
`
`Attachment(s)
`
`1) .Notice of References Cited (PTO-892)
`
`Supervisor‘s Telephone Number:
`{571) 272—5056
`
`3) .lnterview Summary (PTO-413)
`Paper No(s)/Mail Date. 20191213 .
`_
`4) C]Other. _-
`
`2) [jlnformation Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`.
`U.S. Patent and Trademark Office
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`PTOL-413FA (Rev. “-1 3)
`
`First Action Interview Office Action Summar
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`y
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`Part Of Paper No./Mail Date 20191213
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`Page 1 of 2
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`

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`First Aclion Interview
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`16/122,811
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`Wittenberg et al.
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`Office Action Summary
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`Examiner
`
`Art Unit
`
`AIA (FITF) Status
`
`Claim(S)
`
`Reference 5
`A
`v
`(if applicable)
`
`Notification of Reiection(s) and/or Objection(s)
`Re'ection
`Statutory Basis
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`Brief Explanation of Reiection
`
`
`
`See Office Action appendix.
`
`Expanded Discussion/Commentary
`
`DATE:
`13 December 2019
`
`/DAV|D V HENZE—GONGOLA/
`Primary Examiner, Art Unit 285
`
`IDAVID V HENZE—GONGOLA/
`Primary Examiner, Art Unit 2859
`
`”'5' Patent and Trademark Office
`PTOL-413FA (Rev. 11-13)
`
`First Action Interview Office Action Summary
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`Part Of Paper No./Mai| Date 20191213
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`Page 2 of 2
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