UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`16/179,870
`
`11/02/2018
`
`Colin M. Ely
`
`P19347USC4
`
`2048
`
`759°
`62579
`APPLE INC./BROWNSTEIN
`
`01’3”)”
`
`e/o Brownstein Hyatt Farber Sehreek, LLP
`410 Seventeenth Street
`s mo
`Denver, CO 80202
`
`WICKLUND‘ DANIEL PM
`
`MW
`
`2833
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/31/2019
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patentdoeket @ bhfs . com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`16/179,870
`Examiner
`DANIEL P WICKLUND
`
`Applicant(s)
`Ely et al.
`Art Unit
`2833
`
`AIA Status
`Yes
`
`- 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 2 November 2018, 5 November 2018, 27 November 2018.
`[: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.
`
`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—43 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`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
`
`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
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`is/are: a)D 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):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)D AII
`
`b)[:l Some”
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
`
`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)
`
`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_
`U.S. Patent and Trademark Office
`
`3)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) D Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190116
`
`

`

`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 2
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`DETAILED ACTION
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`This office action is to additionally address claims 24—43, which are still pending in the
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`application as filed by the 5 November 2018 claim set. As the latest filed claim set controls (i.e.
`
`filed 27 November 2018), claims 1—23 are also still considered pending and should be
`
`appropriately cancelled in the applicant’s response to this action if desired. The matter in this
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`office action includes everything in the office action mailed on 28 December 2018 as well as the
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`unaddressed claims 24—43 and the IDS filed 17 January 2019. Accordingly, the statutory period
`
`for reply has been reset to 3 MONTHS from the date of this Office Action.
`
`Additionally, this application repeats a substantial portion of prior Application No.
`
`14/966719, 15/261901, 15/854310, filed 3 June 2014, 11 December 2015, 10 September 2016
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`respectively, and adds disclosure not presented in the prior application (i.e. newly claimed
`
`subject matter relating to specific details of the biometric sensor in claims 25, 27, 30, 34—38, and
`
`41). Because this application names the inventor or at least one joint inventor named in the prior
`
`application, it may constitute a continuation—in—part of the prior application. Should applicant
`
`desire to claim the benefit of the filing date of the prior application, attention is directed to 35
`
`U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
`
`Claim Objections
`
`Claims 1, 3, 13, and 14 are objected to because of the following informalities:
`
`Regarding claim 1, “the sensing element” should read “the optical sensing element”
`
`Regarding claim 3, “switch” should read “non—magnetic switch”.
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 3
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`Regarding claims 13 and 14, “first/second sensor” should read “first/second sensing
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`element”.
`
`Appropriate correction is required.
`
`Drawings
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every
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`feature of the invention specified in the claims. Therefore, the “conductive surface of the crown”
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`must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to
`
`the Office action to avoid abandonment of the application. Any amended replacement drawing
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`sheet should include all of the figures appearing on the immediate prior version of the sheet,
`
`even if only one figure is being amended. The figure or figure number of an amended drawing
`
`should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure
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`must be removed from the replacement sheet, and where necessary, the remaining figures must
`
`be renumbered and appropriate changes made to the brief description of the several views of the
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`drawings for consistency. Additional replacement sheets may be necessary to show the
`
`renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an
`
`application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet”
`
`pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will
`
`be notified and informed of any required corrective action in the next Office action. The
`
`objection to the drawings will not be held in abeyance.
`
`Claim Rejections - 35 US C § 112
`
`The following is a quotation of the first paragraph of 35 USC. 112(a):
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`

`

`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 4
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`(a) IN GENERAL.7The specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre—AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`Claims 22, 25, 27, 30, 34—38, 41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112
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`(pre—AIA), first paragraph, as failing to comply with the written description requirement. The
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`claim(s) contains subject matter which was not described in the specification in such a way as to
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`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for
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`pre—AIA the inventor(s), at the time the application was filed, had possession of the claimed
`
`invention.
`
`Regarding claim 22, based on the originally filed specification and drawings, none of the
`
`embodiments appear to show a single sensing element that can simultaneously monitor the
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`rotation and the tilting of the sensor as defined by the claim. The embodiments shown in Figs.
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`13A—15, only disclose the sensing element for monitoring tilt (i.e. dome sensor) is only operable
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`to monitor the tilting and no other sensing type (e. g. rotation, translation, etc.).
`
`Regarding claims 25, 27, 30, 34—38, 41 based on the originally filed specification and
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`drawings, the biosensor as described in [0098],[00100] and in Fig. 11 nowhere mentions the
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`crown includes a conductive surface or the biometric sensor is measured via a finger contacting
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`the conductive surface or the biometric is detected “through the crown”. Especially when the
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`originally filed claims recite nothing relating to the biometric sensor, it appears this subject
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`matter was not described in the specification in such a way as to reasonably convey to one
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 5
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`skilled in the relevant art that the inventor or a joint inventor, or for pre—AIA the inventor(s), at
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`the time the application was filed, had possession of the claimed invention.
`
`Claims 24—43 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA), first
`
`paragraph, as failing to comply with the enablement requirement. The claims contain subject
`
`matter which was not described in the specification in such a way as to enable one skilled in the
`
`art to which it pertains, or with which it is most nearly connected, to make and/or use the
`
`invention. In this case, the limitations regarding the “biometric sensor” was not described in the
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`specification in such a way as to enable one skilled in the art to which it pertains to make the
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`invention. In the specification as originally filed, the “biometric sensor” is found in three
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`portions. In [0098], where the “crown sensor 630 may be substantially any type of sensor, such
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`as... biometric sensor. . .”, in [00100], where “the crown sensor 630 may be a biometric sensor
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`that detects a user’s heart rate and/or regularity and provide that data to the processing element
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`within the enclosure 114 via the sensing element and trackable element”, and in Fig. 11. The
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`only type of support the claimed biometric sensor has in the disclosure is for the sensor to detect
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`“a user’s heart rate and/or regularity”. Nowhere in the description as originally filed is it
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`described how “heart rate and/or regularity” is monitored or how it would provide that
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`information when the crown is at a portion of the watch/wearable device not in contact with a
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`user’s wrist. Nor is there any wiring or other feature shown in the drawings to suggest it would
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`connect with a separate sensor in contact with a user’s wrist. In the art of wearable
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`devices/watches, heart rate monitors are typically sensors used to measure heart rate via the
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`user’s wrist. Examples include: US 2016/0338642, US 2015/0338642, US 6,361,502, US
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`7,468,036, US 2018/0235491. Other heart rate monitors include relatively large surfaces in
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Page 6
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`comparison with a crown which either include sensors responsive to light or ECG. Examples
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`include: US 2017/0049352, US 2014/0296658, US 6241684, US 6982930, US 2014/0135631.
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`None of these suggest any working examples in the art of what is attempted to be claimed
`
`by the instant invention (i.e. heart rate monitor/biosensor in the crown or more generally on a
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`push—button w/ a small surface area as in Fig. 11). None of these would suggest a person skilled
`
`in the art would understand how to make the claimed biosensor in light of the applicant’s
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`specification as there is no direction given by applicant at what method to implement (i.e.
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`light/ECG, on the wrist where the crown initiates the sensing via user press/input, etc.).
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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 1—17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
`
`Regarding claims 1—7, the limitation of “type” renders the claim indefinite. The addition
`
`of the word "type" to an otherwise definite expression extends the scope of the expression so as
`
`to render it indefinite, see MPEP 2173.05(b). For purposes of examination, “first type of user
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`input” is interpreted to mean “first user input” and “second type of user input” is interpreted to
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`mean “second user input”. Further regarding claim 2, “the first and second types of user input
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Page 7
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`comprise a rotational input and a non—rotational input” is interpreted to mean “the first and
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`second user inputs comprise a rotational input and a non—rotational input respectively”.
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`Regarding claims 8—17, the limitation of “different types” renders the claim indefinite.
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`The addition of the word "type" to an otherwise definite expression extends the scope of the
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`expression so as to render it indefinite, see MPEP 2173.05(b). Additionally, The term "different
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`types" is a relative term which renders the claim indefinite. The term "different types" is not
`
`defined by the claim, the specification does not provide a standard for ascertaining the requisite
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`degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the
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`invention. For purposes of examination, “different types of sensing elements” is interpreted to
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`mean “different sensing elements”.
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`Further regarding claims 8—17, reciting “a crown comprising a trackable element” renders
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`the claim indefinite. Applicant states on pgs. 5, 10—16, 18—26, 28—32 that the trackable element
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`refers to elements 146, 546, 646, 846, and the specification and the drawings as originally filed
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`disclose the trackable element is the same feature corresponding to the first sensing element. As
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`the trackable element appears to currently be recited as a different component other than the first
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`sensing element in the claims, it is currently unclear in light of the specification whether or not
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`these features are intended to be interpreted as separate components. Given the device described
`
`in the specification and the drawings originally filed only shows two “sensing elements” and no
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`embodiment disclosed appears to include three sensing elements where the “first sensing
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`element”, “second sensing element”, and “trackable element” are different, it appears applicant
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`intends for the trackable element to be the same as the first sensing element as claimed. For
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`purposes of examination, “a crown comprising a trackable element” is interpreted to mean “a
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`crown comprising the first sensing element, which comprises a trackable element”.
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 8
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`Further claim 12 recites the limitation "switch sensor". There is insufficient antecedent
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`basis for this limitation in the claim. For purposes of examination, “t
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`Claim Rejections - 35 US C § 102
`
`The following is a quotation of the appropriate paragraphs of 35 USC. 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)(l) 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.
`
`Claims 8, 14—19, and 23 are rejected under 35 USC. 102(a)(1) as being anticipated by
`
`Wuthrich US 4,031,341.
`
`Regarding claim 8, Wuthrich discloses a watch, comprising: a body (see Fig. 2); a
`
`processor disposed within the body (i.e. IC chip col. 2 lines 37—52); a first sensing element
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`operatively connected to the processor (element 30 col. 2 lines 37—52 and col. 3 lines 36—53); a
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`second sensing element operatively connected to the processor ( element 28 col. 2 lines 37—52
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`and col. 3 lines 36—53); and a crown comprising a trackable element (element 25 and element
`
`30); wherein the first sensing element is operative to detect a first direction of motion of the
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`crown (col. 2 lines 37—52 and col. 3 lines 36—53); the second sensing element is operative to
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`detection a second direction of motion of the crown; and the first and second sensing elements
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`are different types of sensing elements, see Wuthrich col. 2 lines 37—52 and col. 3 lines 36—53 i.e.
`
`they are individual and distinct elements one for sensing rotation and one for sensing translation.
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`Regarding claim 14, Wuthrich further discloses the watch, wherein the second sensor is a
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`rotational sensor, see Wuthrich col. 2 lines 37—52 and col. 3 lines 36—53.
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`

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`Application/Control Number: 16/ 179,870
`Art Unit: 2833
`
`Page 9
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`Regarding claim 15, Wuthrich further discloses the watch, wherein the crown comprises:
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`a head (element 10); and a stem connected to the head (element 12, 13, 27); wherein the
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`trackable element is connected to a bottom end of the stem (element 27), see Wuthrich col. 2
`
`lines 37—52 and col. 3 lines 36—53 .
`
`Regarding claim 16, Wuthrich further discloses the watch, wherein: the body comprises a
`
`display in communication with the processor; and the display provides a visual output to a user,
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`see abstract Wuthrich col. 2 lines 37—52 and col. 3 lines 36—53.
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`Regarding claim 17, Wuthrich further discloses the watch, further comprising at least one
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`sealing element positioned between the sensing element and the crown (element 23), see Fig. 2.
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`Regarding claim 18, Wuthrich discloses a wearable electronic device, comprising: a
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`housing (Fig. 2) defining first and second apertures (elements 24 and top where crystal is); a
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`display at least partially received within the first aperture (i.e. display is where circuitry is inside
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`the housing central to the aperture, see abstract Wuthrich col. 2 lines 37—52 and col. 3 lines 36—
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`53) ; an input device extending from an outside of the housing (element 25), through the second
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`aperture, and into an inside of the housing (see Fig. 2); a first sensing element next to a side of
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`the input device and within the housing (element 30); a second sensing element next to an end of
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`the input device and within the housing (element 28); wherein the input device is operable to
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`laterally translate with respect to the first sensing element (i.e. move to the side of the contact
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`30); the first sensing element is operable to measure a rotation of the input device (col. 2 lines
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`37—52 and col. 3 lines 36—53); the input device is operable exert a force on the second sensing
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`element; the second sensing element is operable to measure a translation of the input device (col.
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`2 lines 37—52 and col. 3 lines 36—53); and the display is operative to change a graphic (i.e. update
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 10
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`minutes or hours displayed in digital watch) in response to the first sensing element measuring a
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`rotation of the input device (see Wuthrich abstract, col. 2 lines 37—52 and col. 3 lines 36—53).
`
`Regarding claim 19, Wuthrich further discloses the wearable electronic device, wherein
`
`the display is operable to change the graphic in response to the second sensing element
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`measuring a translation of the input device, see Wuthrich abstract, col. 2 lines 37—52 and col. 3
`
`lines 36—53.
`
`Regarding claim 23, Wuthrich further discloses the wearable electronic device, further
`
`comprising a strap connected to the housing and operable to attach the electronic device to a user
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`(i.e. inherent feature of a wristwatch includes a strap/band/bracelet to enable the watch to be
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`worn on the wrist), see col. 3 lines 11—13 and col. 3 lines 36—53.
`
`Claim Rejections - 35 US C § 103
`
`The following is a quotation of 35 USC. 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.
`
`Claims 1, 2, 4, and 5 are rejected under 35 USC. 103 as being unpatentable over
`
`Washizu US 2010/0079225 in view of Ishiyama US 2007/0122076.
`
`Regarding claim 1, Washizu discloses a wearable electronic device, comprising: an
`
`enclosure having an aperture defined therethrough (element 61), a processing element housed
`
`within the enclosure (i.e. control circuit in portable telephone IC 27 [0039] [0050]—[0052]) a
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`magnetic sensing element (element 26 [0050]—[0052]) in communication with the processing
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Page 11
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`element (i.e. control circuit IC 27); a non—magnetic switch (element 24) in communication with
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`the processing element ( [0052],[0053]) and an input device at least partially received within the
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`aperture and in communication with the sensing element (element 56 and 57), the input device
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`configured to receive at least a first and a second type of user input (via element 24 [0051]—
`
`[0053]);; wherein the magnetic sensing element is operative to track a first type of movement of
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`the input device resulting from the first type of user input (i.e. configured to detect the rotational
`
`input element 26 [0051], [0052]); the non—magnetic switch is operative to track a second type of
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`movement of the input device resulting from the second type of user input (i.e. configured to
`
`detect the translational input when the tactile switch is deformed by the stem element 24
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`[0052,[0053]); and the processing element is operative to distinguish between the first and
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`second type of user input [0039]—[0040],[0050]—[0053].
`
`With respect to the preamble of claims 44—5 1: the preamble of the claim has not
`
`been given any patentable weight because it has been held that a preamble is denied the
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`effect of a limitation where the claim is drawn to a structure and the portion of the claim
`
`following the preamble is a self—contained description of the structure not depending for
`
`completeness upon the introductory clause. Pitney Bowes Inc, v. Hewlett-Packard C0.,
`
`182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). Rowe v. Dror. 112F.3d
`
`473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997), Kroya v. Robie, 88 USPQ 478
`
`(CCPA 1951) and MPEP 2111.02.
`
`In this case, none of the limitations following the preamble require the structure
`
`to be found in a wearable electronic device.
`
`Washizu does not disclose an optical sensing element for detecting the first type
`
`of user input.
`
`

`

`Application/Control Number: 16/179,870
`Art Unit: 2833
`
`Page 12
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`However, Ishiyama discloses an input device with a head and a stem configured
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`to receive a rotational input and a translational input (Fig. 17, push button switch 55 and
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`rotation input element 57), an optical sensor positioned within the enclosure and
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`conigured to detect the rotational input (elements 57,65—68).
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`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`to modify Washizu to replace the rotational switch with the optical sensor as suggested
`
`by Ishiyama because simply substituting one known means for detecting rotation of a
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`push button/rotation input device with another provides the predictable result that the
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`rotation of the device will be accurately detected.
`
`Regarding claim 2, Washizu and Ishiyama further disclose the wearable electronic
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`device, wherein the first and second types of user input comprise a rotational input and a non—
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`rotational input, see [0050]—[0053] (i.e. rotation and translation).
`
`Regarding claim 4, Washizu and Ishiyama further disclose the wearable electronic
`
`device, wherein the first movement is a rotational input, see [0050]—[0053].
`
`Regarding claim 5, Washizu and Ishiyama further disclose the wearable electronic
`
`device, wherein the input device further comprises a set of markings used by the optical sensing
`
`element to track movement of the input device, see Ishiyama element 5 6.
`
`Claims 1, 2, 4, 7, 9, 11, 21, and 22 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Wuthrich in view of Ishiyama US 2007/0122076.
`
`Regarding claim 1, Wuthrich discloses a wearable electronic device, comprising: an
`
`enclosure having an aperture defined therethrough (element 24), a processing element housed
`
`within the enclosure (i.e. IC chip col. 2 lines 37—52) a sensing element (element 30) in
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`

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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`communication with the processing element (col. 2 lines 37—52 and col. 3 lines 36—53); a non—
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`magnetic switch (element 28) in communication with the processing element (col. 2 lines 37—52
`
`and col. 3 lines 36—53) and an input device at least partially received within the aperture and in
`
`communication with the sensing element (element 25), the input device configured to receive at
`
`least a first and a second type of user input (col. 2 lines 37—52 and col. 3 lines 36—53);; wherein
`
`the magnetic sensing element is operative to track a first type of movement of the input device
`
`resulting from the first type of user input (i col. 2 lines 37—52 and col. 3 lines 36—53); the non—
`
`magnetic switch is operative to track a second type of movement of the input device resulting
`
`from the second type of user input (col. 2 lines 37—52 and col. 3 lines 36—53); and the processing
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`element is operative to distinguish between the first and second type of user input col. 2 lines 37—
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`52 and col. 3 lines 36—53.
`
`Wuthrich does not disclose an optical sensing element for detecting the first type
`
`of user input.
`
`However, Ishiyama discloses an input device with a head and a stem configured
`
`to receive a rotational input and a translational input (Fig. 17, push button switch 55 and
`
`rotation input element 57), an optical sensor positioned within the enclosure and
`
`configured to detect the rotational input (elements 57,65 —68).
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`to modify Wuthrich to replace the rotational switch with the optical sensor as suggested
`
`by Ishiyama because simply substituting one known means for detecting rotation of a
`
`push button/rotation input device with another provides the predictable result that the
`
`rotation of the device will be accurately detected.
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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Regarding claim 2, Wuthrich and Ishiyama further disclose the wearable electronic
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`device, wherein the first and second types of user input comprise a rotational input and a non—
`
`rotational input, see Wuthrich col. 2 lines 37—52 and col. 3 lines 36—53.
`
`Regarding claim 4, Wuthrich and Ishiyama further disclose the wearable electronic
`
`device, wherein the first movement is a rotational input, see col. 2 lines 37—52 and col. 3 lines 36—
`
`53.
`
`Regarding claim 7, Wuthrich and Ishiyama further disclose the wearable electronic
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`device, wherein the input device is a crown, col. 2 lines 37—52 and col. 3 lines 36—53 element 25.
`
`Regarding claim 9, Wuthrich further discloses the watch, wherein: the first sensing
`
`element comprises a rotation sensor (element 30); and the second sensing element comprises a
`
`non—magnetic switch (element 28).
`
`Wuthrich does not disclose an optical sensor for detecting the first type of user
`
`input.
`
`However, Ishiyama discloses an input device with a head and a stem configured
`
`to receive a rotational input and a translational input (Fig. 17, push button switch 55 and
`
`rotation input element 57), an optical sensor positioned within the enclosure and
`
`conigured to detect the rotational input (elements 57,65—68).
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`to modify Wuthrich to replace the rotational switch with the optical sensor as suggested
`
`by Ishiyama because simply substituting one known means for detecting rotation of a
`
`push button/rotation input device with another provides the predictable result that the
`
`rotation of the device will be accurately detected.
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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Regarding claim 11, Wuthrich and Ishiyama further disclose the watch, wherein the
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`trackable element is a pattern, see Ishiyama element 65.
`
`Regarding claim 21, Wuthrich further discloses the wearable electronic device, wherein
`
`the first sensing element is operable to measure the translation of the input device, element 30.
`
`Wuthrich does not disclose the first sensing element is operable to optically
`
`measure the translation of the input device.
`
`However, Ishiyama discloses an input device with a head and a stem configured
`
`to receive a rotational input and a translational input (Fig. 17, push button switch 55 and
`
`rotation input element 57), an optical sensor positioned within the enclosure and
`
`conigured to detect the rotational input, tilt, and translation (elements 57,65 —68) [0005]—
`
`[001 1].
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`to modify Wuthrich to replace the rotational switch with the optical sensor as suggested
`
`by Ishiyama because simply substituting one known means for detecting rotation of a
`
`push button/rotation input device with another provides the predictable result that the
`
`rotation of the device will be accurately detected furthermore including measurement for
`
`optical translation enables the device to have further inputs and increases the
`
`functionality of the device.
`
`Regarding claim 22, Wuthrich further discloses the wearable electronic device, wherein
`
`the first sensing element is operable to measure the translation of the input device, element 30.
`
`Wuthrich does not disclose the input device is operable to tilt; and the first
`
`sensing element is operable to measure the tilt.
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`Application/Control Number: 16/179,870
`Art Unit: 2833
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`Page 16
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`However, Ishiyama discloses an input device with a head and a stem configured
`
`to receive a rotational input and a translational input (Fig. 17, push button switch 55 and
`
`rotation input element 57), an optical sensor positioned within the enclosure and
`
`conigured to detect the rotational input, tilt, and translation (elements 57,65 —68) [0005]—
`
`[001 1].
`
`Therefore, it would have been obvious to a person having ordinary skill in the art
`
`to modify Wuthrich to repl