Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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.
Claim 19 is 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 matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With Respect to Claim 19
The phrase “wherein the has a unitary structure that does not fold” and “wherein area of the front surface” are clearly typos, but it is unclear what they should mean.
The remainder of this office action is based on the invention as best understood by Examiner.
Claim Rejections - 35 USC § 103
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 statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 7, 12, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent #9,277,804 to Gennodie (Gennodie), and either or both of Chinese Patent #CN108023992 to ZHU (ZHU) (for clarity, all references to ZHU refer to the English translation provided by Applicant) and/or U.S. Patent Publication #2016/0018849 to Tilney (Tilney).
With Respect to Claim 1
Lamb discloses a wallet, comprising: a layered front section (noting layered section adjacent the device/case) including a plurality of front layers (see e.g. FIG. 6); a layered back section (noting layered section opposite the device/case) including a plurality of back layers (see, e.g. FIG. 6) wherein the layered front section and the layered back section are arranged to form a compartment defined by the permanent coupling of the front section to the back section (see FIG. 6, noting e.g. stitching 60, or heat treatment, [0025], [0029]); and wherein the wallet is couplable to at least one of an external object and an external surface without any additional mechanical interconnection (noting disclosure of adhesive to do so and no disclosure of any additional mechanical interconnection); but does not disclose a first plurality of magnets disposed within the layered front section so as not to be physically exposed on a front surface of the wallet; a second plurality of magnets disposed within the layered back section so as not to be physically exposed on a back surface of the wallet; and wherein the wallet is magnetically couplable to at least one of an external object and an external surface without any additional mechanical interconnection.
However, DeChant discloses a similar wallet structure attached to a mobile device and that a magnetic attachment comprising a two part magnetic structure with one part on the device and one part on the wallet is a substitute for an adhesive connection between the two ([0038]).
Tilney discloses forming a magnetic connection between a device case and another structure using a first plurality of magnets embedded in the device case and in the other structure ([0023]) and disposing a second plurality of magnets within a layered section so as not to be physically exposed on either surface ([0022] indicating magnets are between the layers, see also FIG. 7), as well as the magnetic coupling being without any additional mechanical interconnection ([0028] indicating that there are no inset areas to provide mechanical interconnection and that this facilitates ease of removal).
ZHU discloses forming a magnetic connection between a device case (100) and another structure (e.g. 200) using a first plurality of magnets embedded in the device case (noting location in concave cavities and covered by layer 150 [0024-0025]) and a second plurality of magnets located on the other structure as well as the magnetic coupling being without any additional mechanical interconnection (noting that no mechanical interconnection is disclosed and so is not present).
Gennodie discloses forming a wallet/carrier (40) attachable to a device case (30) with a removable attachment such as adhesive on a front section and also on a back section of the wallet/carrier (40), in order to allow for attachment of additional carriers/structures to the back section in addition to the attachment of structures to the front section.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of DeChant, to replace the adhesive connection of Lamb with a magnetic connection in order to allow for easier repeated detachment and reattachment, as a mere substitution of one art known fastening mechanism for another, and/or as doing so constitutes at most merely making separable which does not patentably distinguish over the prior art (MPEP 2144.04). It would also have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Tilney and/or ZHU, to use a plurality of magnets disposed within the layered section adjacent to the device/case so as not to be physically exposed and without any additional mechanical interconnection, in order to reduce costs by requiring only a single connection type (i.e. not requiring additional costs to add a mechanical connector), to protect the magnets from damage (due to internal location), and/or as a mere selection of an art appropriate magnetic connector structure to use. For clarity, although ZHU does not detail how the magnets are connected to the object (200), and so does not disclose that those magnets are disposed in a layered section, it would have been obvious in view of ZHU’s disclosure to locate the first magnets on the device case in concavities and a covering layer over them to locate them in similar fashion on the object (200) (i.e. the wallet of the combination) for the benefits disclosed by ZHU for this structure (e.g. fixing them in place, providing an anti-slip and anti-wear function) and/or as a mere selection of an art appropriate attachment method to use or as doing so constitutes at most merely making integral which does not patentably distinguish over the prior art (MPEP 2144.04). Alternately, Tilney provides sufficient motivation to locate the magnets per ZHU within the layered front section.
It would further have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Gennodie, to add a second plurality of magnets within the layered back section (i.e. located on/in the opposite outer side wall of the wallet from the first plurality of magnets), in order to allow for attachment of additional carriers or other structures for their benefits, and/or as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
For clarity, as claim 1 does not specify a particular orientation for the front/back section/layers and only functionally recites magnetically coupling, it is Examiner’s position that either side of a given structure meeting the claim language can be considered the front or back layer/section; however, different dependent claims may reference one or the other as being the front or back layer/section (e.g. one dependent claim may reference the front as being adjacent a device/case while another might reference the front as being opposite a device/case, though noting that the claim does not structurally require a device/case).
With Respect to Claim 2
The wallet of claim 1 wherein the plurality of front layers include an exteriorly exposed front portion (e.g. leather layer 40 or alternately rigid plastic film 54 noting that the adhesive 56 is no longer present per the combination) and an interiorly disposed front support (paperboard layer 50 is a front support to the extent broadly claimed as it provides support to the portional/wall it forms a part of), the front support being a substantially stiff structure (it is Examiner’s position that paperboard is substantially stiff or to the degree that it is not specified using stiff paperboard would be obvious in order to provide a stiffener for that wall of the wallet to avoid it bending out of shape during use and/or as a mere selection of an art appropriate paperboard to use and/or as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416).
With Respect to Claim 7
The wallet of claim 1 wherein the external object comprises a case for a portable electronic device including a first plural set of magnets (per ZHU and/or Tilney) and the external surface comprises a mounting surface to which is affixed a surface-side attachment including a second plural set of magnets (per ZHU and/or Tilney) and wherein the wallet is configured to magnetically couple the case to the surface attachment through the interaction of the first and second plurality of magnets with the first and second plural set of magnets (inasmuch as the wallet is capable of magnetically attaching to either of these; alternately, although the portable electronic device is only functionally recited, ZHU and/or Tilney discloses a device case having a first plural set of magnets for this purpose which renders obvious using it for the purpose).
Alternately, ZHU or Tilney discloses an external surface comprising a mounting surface to which is affixed a surface-side attachment including a second plural set of magnets and wherein an object magnetically couples to the surface attachment through the interaction of a first or second plurality of magnets with the second plural set of magnets; and Gennodie discloses attaching the surface of the wallet opposite the case to a surface via mating fasteners on the wallet and the surface. It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of ZHU and/or Tilney and/or Gennodie, to magnetically mount the wallet to a surface having a mating plural set of magnets, as a mere selection of an art appropriate structure to attach it to and/or as a mere selection of an art appropriate mating/magnetic structure to attach it to. For clarity, it is noted that the surface of the accessory (50) per Gennodie modified to replace the hook and loop fastener with plural magnets or the surface of the Tilney band and docking area (1/2) constitute a surface as claimed.
With Respect to Claim 12
The wallet of claim 1 wherein the layered front section (noting section opposite the device case) defines a content removal slot (noting angled top defining a front upper opening/slot) facilitating visual access to the compartment (see, e.g. FIG. 1).
With Respect to Claim 14
A mounting system, comprising: a device-side attachment including a first plurality of magnets disposed in a protective cover for an electronic device (magnets per ZHU and/or Tilney and DeChant); a wallet (per Lamb) including a second plurality of magnets and a third plurality of magnets (per ZHU, Tilney, DeChant, and Gennodie for the second set of magnets) wherein at least one of the first plurality of magnets is arranged to attractively couple with at least one of the second plurality of magnets; and a surface-side attachment (it is obvious in view of Gennodie to include another structure such as a container or in view of Gennodie and Tilney to allow for attachment to a worn item as taught by Tilney with a mating magnetic connector) including a fourth plurality of magnets wherein at least one of the fourth plurality of magnets is arranged to attractively couple with at least one of the third plurality of magnets and wherein the wallet includes a layered front section having a first plurality of layers and a layered back section having a second plurality of layers arranged to form a compartment (see e.g. Lamb FIG. 6) and wherein the second plurality of magnets are disposed within the layered front section and the third plurality of magnets are disposed within the layered back section so that neither the second plurality of magnets nor the third plurality of magnets are physically exposed on a surface of the wallet and wherein the surface side attachment, the wallet, and the protective cover couple together without any additional mechanical interconnect (not being physically exposed and no additional mechanical interconnect per ZHU and/or Tilney).
With Respect to Claim 19
The wallet of Claim 1 wherein the____ (it is noted that no term is present and so it is unclear to which it should refer, Examiner takes it to be “wallet”) has a unitary structure that does not fold (it is unitary as the parts are heat sealed or sewn together into a unit, and as shown the wallet of Lamb/the combination does not fold) and wherein area of the front surface and the back surface have substantially a same footprint and the footprint has an area less than an area of a surface of a mobile device to which the wallet attaches (capable of this use which is also the intended use, see, e.g. FIG. 1 showing the front and back surface having footprints with an area less than that of the mobile device it attaches to; and the front and rear surfaces have substantially the same footprint to the extent claimed, noting that one wall is only slightly taller than the other which is within the broadest reasonable interpretation of “substantially”, and also the disclosure that the width difference between the pockets can be about 0.1 inches while the pockets about 3 inches and so the disclosed height difference includes a range with only about a 3% difference which is substantially the same size/area).
Alternately, [0024] discloses that the openings (22) are “generally offset from each other”, “generally spaced apart by a width. . .”, and that the depths of the pockets can be chosen as desired, which indicates that the openings may have no space between them at all, or alternately clearly renders making the distance between the openings smaller and/or having no such distance, which results in the areas of the front and back surface being identical or having an even more similar footprint, and/or doing so would be obvious as a mere change in shape or a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04).
Claims 2-3 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent #9,277,804 to Gennodie (Gennodie), and either or both of Zhu and/or U.S. Patent Publication #2016/0018849 to Tilney (Tilney) as applied to claim 1, and further in view of U.S. Patent #8,358,513 to Kim (Kim), either alone or also in view of U.S. Patent Publication #2007/0125931 to Slappay (Slappay).
With Respect to Claim 2
As an alternative to the rejection of claim 2 above using Lamb in view of DeChant, Tilney, and Gennodie alone, Kim discloses retaining magnets (M) held in position using a front support/plate (111) both of which are interiorly disposed. Kim does not disclose a particular material or rigidity for its front support/plate. It is noted that Lamb discloses the use of a substantially rigid material (noting rigid plastic film) for one of its layers.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Kim, to secure the magnets in position using a front support/plate (111) as taught by Kim, as a mere selection of an art appropriate way to secure the magnets in position or at most a mere substitution of one art known magnet securement/attachment method for another, noting that a multi-layered structure is already disclosed by Lamb and so is part of the combination, and/or doing so is merely the opposite of making integral which does not patentably distinguish over the prior art (MPEP 2144.04) (i.e. it is generally obvious to form separate parts integrally, it is similarly generally obvious to take a single part such as the single layer structure like 63 per Tilney and separate it into two layers, see also the similar case law related to making separable in MPEP 2144.04).
As to the front support/plate being substantially stiff, it is Examiner’s position that it is obvious to select a material that is substantially stiff for the plate in order to provide stiffness to that wall of the wallet to better hold the magnets in the desired position, particularly in view of Lamb’s disclosure of other stiff/rigid layer materials, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Also/alternately, rigidity/stiffness is a results effective variable with the results being how much the structure allows for flexing/movement or how securely held in a particular position the magnets will be. It would have been obvious to one having ordinary skill in the art before the filing date of this application to form the front support/plate from a substantially stiff material, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Furthermore, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Alternately, as to the plate being substantially stiff, Slappay discloses forming a bottom plate for securing magnets (35/37/39, see e.g. FIG. 5) in position out of a substantially stiff material such as nickel/iron alloy or stainless steel ([0011]), which provides additional motivation for and/or evidence of the obviousness of selecting a substantially stiff material (such as the examples provided by Slappay) for the reasons disclosed above, the benefits disclosed by Slappay for these materials/structures, and/or the art known benefits of such materials.
For clarity, although not required by this claim, this combination also encompasses forming the back layers in the same fashion for similar reasons.
With Respect to Claim 3
The wallet of claim 2 wherein the plurality of back layers include an exteriorly disposed back portion (e.g. leather layer 40 or alternately rigid plastic film 54 noting that the adhesive 56 is no longer present per the combination) and an interiorly disposed back support (plate 111 per Kim), the back support being a substantially stiff structure (obvious material selection or per Slappay), but does not disclose wherein the front portion and the back portion are formed of a same material (noting that one is rigid plastic film 56 and the other is leather 40).
However, Lamb [0029] discloses that the FIG. 6 layering is only one example and a leather outer layer (40).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Lamb to use different layerings and of a leather outer layer, to add a leather outer layer to the other outer side (i.e. over the plastic film 54), as a mere selection of an art appropriate layer to use or a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 8
The wallet of claim 1 wherein the plurality of front layers include a front portion (layered wall on either side) and a front support (plate 111 per Kim), and wherein the plurality of back layers include a back portion (layered wall on the other side) and a back support (plate 111 per Kim), and wherein the front and back supports are formed of a substantially stiff material (obvious material selection or per Slappay), and wherein the first plurality of magnets is attached to the front support and the second plurality of magnets are attached to the back support (per Kim).
With Respect to Claim 9
The wallet of claim 8 wherein a first plural subset of the first plurality of magnets is attached proximate a top end of the front support and a second plural subset of the first plurality of magnets is attached proximate a bottom end of the front support (see ZHU FIG. 4 showing magnets in these locations, and/or Tilney demonstrates first and second plural subsets of magnets on the docking state attached proximate a top and bottom respectively of the device case during use and so locating the mating magnets similarly on the wallet/carrier of the combination is inherent or clearly obvious).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent Publication #2016/0018849 to Tilney (Tilney), and U.S. Patent #9,277,804 to Gennodie (Gennodie), either alone or further in view of U.S. Patent #8,358,513 to Kim (Kim) and/or U.S. Patent Publication #2007/0125931 to Slappay (Slappay) as applied to claim 2 above, and further in view of Slappay and/or U.S. Patent Publication #2015/0027831 to Case (Case).
With Respect to Claim 4
The wallet of claim 2 but does not disclose wherein the plurality of front layers further include a metallic front shield that blocks a magnetic field of the first plurality of magnets from the compartment.
However, Slappay discloses forming a holder including magnets and the use of a metallic anti-magnetic shield (5, FIG. 5) to protect items held by the Slappay holder/carrier from damage due to the magnets ([0022-0023]), i.e. it blocks a magnetic field of the first plurality of magnets from the compartment.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Slappay, to add a metallic anti-magnetic shield to the layers of the wallet of the combination, in order to protect the wallet contents from damage due to the magnets.
Alternately, Case discloses forming a wallet/card carrier with a metallic lining in order to protect/shield RF enabled cards from being read.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Case, to add a metallic interior lining to the plurality of front layers in order to act as a shield to prevent scanning of personal information on RF enabled cards as taught by Case.
As to the combination including both Slappay and Case, Case provides additional evidence of the obviousness of and/or motivation for including a metallic shield on a wallet, and Slappay discloses an additional benefit of a metallic shield. For clarity, as to the combination including both references it is Examiner’s position that it would be obvious to add either or both of an internal shield or an interior lining shield for the benefits disclosed by either or both references. It is Examiner’s position that the lining taught by either reference will block a magnetic field of the first plurality of magnets from the compartment, as a metallic lining will serve to block magnetic fields, and noting also that the metallic shield of Slappay explicitly does so as that is its purpose.
With Respect to Claim 5
The wallet of claim 3 wherein the plurality of back layers further include a metallic back shield that blocks a magnetitic field of the second plurality of magnets from the compartment (it is obvious to add the lining to the back layers for the same purpose/reason as to the front layers, see the rejection of claim 4 above for details).
Claims 6 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent #9,277,804 to Gennodie (Gennodie), U.S. Patent #8,358,513 to Kim (Kim), U.S. Patent Publication #2015/0027831 to Case (Case), and either or both of U.S. Patent Publication #2016/0018849 to Tilney (Tilney) and ZHU, either alone or also in view of Slappay.
With Respect to Claim 6
The wallet of claim 5 wherein the metallic front shield and the metallic back shield form opposing interior surfaces of the compartment (i.e. per Case they are an interior lining which inherently means they form opposing interior surfaces or to the degree that some other construction might be possible, having them do so is clearly obvious).
With Respect to Claim 10
The wallet of claim 6 wherein the front support (internal plate 111 per Kim) is interposed between the metallic front shield (the metallic front shield being either a liner per Case or between the front support and the lining 44 of Lamb per Slappay) and the front portion (exteriorly exposed portion, this location is used per Slappay and/or Case) and wherein the back support (internal plate 111 per Kim on the other side) is interposed between the metallic back shield and the back portion (per Slappay and/or Case).
With Respect to Claim 11
The wallet of claim 6 further including a divider (noting central divider section dividing it into two pockets/compartments, see FIG. 6) interposed between the metallic front shield and the metallic back shield, the divider being positioned to divide the compartment into a first compartment space and a second compartment space (FIG. 6).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent #9,277,804 to Gennodie (Gennodie), and either or both of ZHU and U.S. Patent Publication #2016/0018849 to Tilney (Tilney) as applied to claim 1 above, and further in view of U.S. Patent Publication #2018/0234126 to Yeo (Yeo).
With Respect to Claim 13
The wallet of claim 1 but does not disclose wherein the layered back section includes a loop element and defines a loop slot wherein the loop element is configured to slide between a looped position and a flattened position within the loop slot.
However, Yeo discloses forming a device case attached wallet with a layered back section that includes a loop element (120) and defines a loop slot (slot of 141) wherein the loop element is configured to slide between a looped position and a flattened position within the loop slot (FIGS. 1-4) in order to assist in gripping ([0037]) and/or function as a stand ([0039]).
It is noted that Gennodie also discloses attaching a carrying structure/strap on the side of the wallet opposite the device case.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Yeo (or Yeo and Gennodie) to add a loop element/strap as taught by Yeo to the layered back section of the combination, in order to provide a stand and/or assist in gripping the device and wallet. For clarity, this modification encompasses either using the magnetic connection to attach the loop element (noting that the loop element uses a gel/adhesive which it would be obvious to substitute for a magnetic connection) or attaching the loop element via other means such as the gel/adhesive disclosed by Yeo.
Claims 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), and either or both of ZHU and U.S. Patent Publication #2016/0018849 to Tilney (Tilney).
With Respect to Claim 16
Lamb in view of DeChant and either or both of ZHU and Tilney (see the rejection of claim 1 above for details of the combination, noting that the teachings of Gennodie are not necessary to meet the limitations of claim 16) discloses a system, comprising: a device-side attachment including a first plurality of magnets disposed in a protective cover for an electronic device (per ZHU and/or Tilney); a wallet (per Lamb as modified) including a layered front section having a first plurality of layers, a layered back section having a second plurality of layers (per Lamb, see e.g. FIG. 6) and a second plurality of magnets disposed within at least one of the layered sections so as not to be physically exposed on a back surface of the wallet (per Dechant and ZHU and/or Tilney); wherein at least one of the first plurality of magnets is arranged to attractively couple with at least one of the second plurality of magnets and wherein the layered front section and the layered back section form a compartment (per Lamb) and wherein the protective cover and the wallet couple together without any additional mechanical interconnection (per Tilney).
With Respect to Claim 16
The system of claim 16 wherein an area of a surface of the wallet that couples to the cover is less than an area of a surface of the cover to which the wallet couples (see, e.g. Lamb FIG. 1).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant) and either or both of ZHU and/or U.S. Patent Publication #2016/0018849 to Tilney (Tilney) as applied to claim 16 above, and further in view of U.S. Patent #9,277,804 to Gennodie (Gennodie).
With Respect to Claim 17
The system of claim 16 wherein the second plurality of magnets includes a first plural subset of magnets disposed within the layered front section, but does not disclose a second plural subset of magnets disposed within the layered back section.
However, Gennodie renders obvious a second plural subset of magnets disposed within the layered back section (see the rejection of claim 1 above for details).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication #2018/0235338 to Lamb (Lamb) in view of U.S. Patent Publication #2014/0262853 to DeChant (DeChant), U.S. Patent #9,277,804 to Gennodie (Gennodie), and either or both of ZHU and U.S. Patent Publication #2016/0018849 to Tilney (Tilney) as applied to claim 1 above, either alone or further in view of U.S. Patent #8,358,513 to Kim (Kim).
With Respect to Claim 18
The wallet of Claim 1, and that the particulars of the structure shown and disclosed are merely exemplary (i.e. that other structures are possible), but does not disclose wherein regions of the front and the back surface overlying the magnets are contiguous and substantially planar with the adjacent regions of the respective surfaces that do not overly the magnets (noting the disclosure of wells 75, FIG. 8 of Tilney).
However, Kim discloses retaining magnets (M) in position such that regions of the surfaces that overly the magnets are contiguous and substantially planar with the adjacent regions of the respective surfaces that do not overly the magnets (see, e.g. FIG. 3), i.e. retaining the magnets in place without the use of wells (75) or other structure on the exposed surface; it is noted that Kim also discloses the use of a central plate layer between an outer and inner layer to hold the magnets (M) in position.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Kim, to secure the magnets in place without the indentations (75) in order to allow for a uniform outer layer to simplify construction and/or save on costs (i.e. it is simpler to and cheaper to form a material without particularly located and shaped indentations), and/or as doing so constitutes at most a mere omission of an element and its function (MPEP 2144.04, noting that the indentations’ function is to further secure the magnets in position under the protrusions, and as the protrusions are not part of the combination, this function is no longer necessary). Alternately it would have been obvious to secure the magnets in position using a central plate layer with the magnets inside the plate and having uniform outer and inner layers as taught by Kim, in order to better secure the magnets in position, as a multi-layered structure is already disclosed by Lamb and so is part of the combination, and/or doing so is merely the opposite of making integral which does not patentably distinguish over the prior art (MPEP 2144.04) (i.e. it is generally obvious to form separate parts integrally, it is similarly generally obvious to take a single part such as the single layer structure like 63 and separate it into two layers, see also the similar case law related to making separable in MPEP 2144.04).
Response to Arguments
Applicant's arguments filed 12/30/25 have been fully considered but they are largely not persuasive.
In response to Applicant’s arguments that the Office impermissibly rejects claims under multiple different combinations of art and is obligates to cite the best references at his or her command, and that the Office violates this rule by setting forth multiple different combinations to reject the same claims but imposes an undue burden on Applicant by repeated use of disjunctives such as “and/or” expanding the rejections Applicant must address, Examiner respectfully disagrees and maintains the position that the alternative grounds of rejection in this Office action are reasonable as different references present the best rejection for different claims. Additionally, the disjunctive is suitable where each of two references provide different teachings that separately are sufficient to meet the claim language, but also can operate together to meet the claim language in a different fashion. Additionally, in some cases (e.g. for claims 6 and 10-11) the teachings of two references (e.g. Slappay and Case) may be used, while for other claims the teachings of either reference is sufficient. It is noted also that some of the disjunctive additions are present due to Applicant’s arguments (e.g. ZHU is added in part because it discloses a structure similar to a wallet having magnets embedded between two layers of material to attach to a portable device case, which is in part responsive to Applicant’s arguments that Tilney is non-analogous art, as even if the office disagrees with this assertion, the rejection might be considered stronger with this additional evidence provided for the obviousness of this structure).
In response to Applicant’s arguments regarding the office’s shifting interpretations of the claim elements, the interpretation of the claim elements and what prior art structures meet those elements is based upon the language of the claims and the teachings of the prior art. As the claims have been amended, different parts of the prior art may be used to meet the amended limitations. As such, there is no error in merely interpreting different parts of the prior art to meet different elements of the claims than they have previously been used for, as long as that structure of the prior art meets the limitations related to all of those elements.
In response to Applicant’s argument that Applicant believes the claimed existence of magnets that are internal to and not exposed on the surface of a wallet to be carried with a mobile device is novel and nonobvious, Examiner respectfully disagrees, and maintains the position that the use of magnets to connect a wallet to a mobile device is known in the art and locating magnets internally on the structures the magnets connect so that the magnets are not exposed is also known in the art, and so forming the structure as claimed is obvious, see the rejections above for details.
In response to Applicant’s arguments that Tilney is the only reference that teaches magnets internal to a structure, ZHU also clearly teaches this, as does Kim.
In response to Applicant’s argument that ZHU does not add anything to the combination that is not already present in Tilney, although Tilney clearly discloses fully embedded magnets in the structure that the portable device case is attached to and the use of various magnetic structure on the device case including integrated magnets, it does not explicitly detail that the integrated magnets on the case are within a layered section so as not to be physically exposed on either surface (for clarity, the integrated magnets on the accessory/docking station are explicitly detailed as internal, but those on the case are not, and although the Office does take the position that this construction is obvious in view of Tilney the addition of ZHU provides additional evidence of the obviousness of internal magnets between layers on a device case), which detail is explicitly disclosed by ZHU. Although Examiner maintains the position that a person of ordinary skill in the art would likely understand Tilney to disclose or render obvious such structure, the ZHU reference’s explicit detailing of such adds additional evidence of the obviousness of this structure. Examiner also notes that Applicant argues that the other references are not suitable for incorporation of the Tilney structure, while ZHU discloses a structure similar to a wallet (i.e. a relatively flat structure designed to be carried with the device), which is an additional motivation and purpose of the ZHU reference. Examiner notes that ZHU also provides evidence of multiple groups of adjacent magnets of opposite polarity on a phone case and accessory to attach the two together, which provides additional evidence that this type of structure is also known in the art and/or obvious to use as an art known type of magnetic connection.
In response to Applicant’s argument that ZHU’s folio cover is a mechanical connector as it encloses the device when closed, the ZHU folio is designed to be opened and closed and will clearly secure the device to the folio when it is opened so as to allow use of the device, i.e. the folio cover does not serve to mechanically connect it in this position. Examiner maintains the position that a person of ordinary skill in the art, reading the disclosure of ZHU, would understand that the magnets alone secure the device case to the folio cover without additional mechanical connection (even if mechanical connection between the two can be made by folding the cover closed).
In response to applicant's argument that Tilney, Slappay, and Kim are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Applicants field of endeavor is attaching a wallet to a mobile device and/or to another surface (i.e. it is clearly not strictly limited to only attachment to the mobile device as the disclosure and claims also recite attachment on the other side to a surface), and so references related to wallet and mobile device attachment both fall within this field of endeavor (i.e. a wallet attached to a mobile device may be found either amongst wallets attached to any of various objects or amongst various objects attachable to a mobile device); alternately, they are clearly reasonably pertinent to the particular problem with which the inventor was concerned which here at least includes magnetic attachment of/to a mobile device/case. Examiner further notes the DeChant reference disclosing the use of a magnetic connection which provides no details as to the particulars of the magnetic structure, thus necessitating a person of ordinary skill in the art to look to other references for details of magnetic connection details (e.g. magnet type, how to locate the magnets, etc). In the interests of advancing prosecution and as further evidence that a person of ordinary skill in the art would consider a fastener used to attach a holder/docking station like that of Tilney relevant to a wallet, Examiner has cited U.S. Patent #9,554,632, which discloses a plurality of magnets in a device case and a mating plurality of magnets on an accessory, example accessories including a wallet, stand or docking station (Col. 1 lines 53-63) as well as many other options. Examiner maintains the position that a person of ordinary skill in the art would consider fasteners for any of numerous accessories to be relevant to attaching a wallet or other accessory to a phone case or other object.
In response to Applicant’s arguments that the field of endeavor is specifically wallets attached to mobile device cases and the office has construed the field of endeavor overly broadly, Examiner maintains the position that Applicant’s definition of the field of endeavor is overly narrow, particularly noting the breadth of the claim language (i.e. many of the claims do not even functionally require the mobile device). Examiner also maintains the position that many similar fasteners can be used to attach different types of objects, and so a person of ordinary skill in the art would consider fasteners designed to attach similar items (e.g. a docking station, stand, or the like) to also be within the field of endeavor and/or clearly relevant to attaching wallets (see also cited U.S. Patent #9,554,632 which provides additional evidence that magnets used to attach to a docking station or the like are also applicable to attach a wallet).
In response to Applicant’s argument that the prior art references are not relevant to the particular problem that Applicant was trying to solve, Examiner respectfully disagrees, and maintains the position that a person of ordinary skill in the art would clearly consider magnetic attachment structures on electronic device cases (particularly those used to attach the device case and any of various accessories together) reasonably pertinent to the problem of attaching a wallet to an electronic device case.
In response to Applicant’s argument that a functional wallet for attachment to a mobile phone could not reasonably employ the structure disclosed by Tilney even on a single side, no evidence is provided for this assertion. Examiner maintains that Tilney’s magnet structure (i.e. magnets located between layers) is an art known magnetic attachment mechanism and suitable and obvious to employ with the Lamb structure, given the disclosure of DeChant, Kim, and the other references of record. It is noted that if a stronger magnetic connection were desired, there are solutions for this issue other than mechanical interconnection, such as using stronger magnetic material for the magnets, using larger magnets (i.e. larger diameter and/or greater length and/or width rather than thicker, and/or using more magnets particularly per Tilney [0022]’s disclosure to use different numbers of magnets). No evidence is provided that the Tilney magnets would need to be overly thick in order to function, particularly as part of the combination with the other references which merely hold a wallet and phone case together during largely static situations, and do not necessarily require as strong a connection as securing together parts while a person is running or jogging.
In response to Applicant’s arguments that Tilney discloses protrusions and recesses and the office proposes doubling that structure, this argument is clearly spurious as Tilney indicates in [0026] that the protrusions and inset areas may be omitted in other implementations, and [0028] which is referenced in the office action indicates a lack of such mechanical attachments. As such, the combination clearly does not include the mating protrusions and inset areas. Applicant’s argument that the Office Action and combination should make use of the embodiment(s) of Tilney which does not meet the claim language rather than the embodiment(s) which do is mere sophistry and ignores the clear teachings of the reference indicating that the magnetic connection alone is sufficient and mechanical connection is optional/not necessary. Examiner notes that the office action references [0022-0023] for the disclosure of magnets between layers, and those paragraphs refer to having mechanical interconnection, but the explicit reference to [0028] and the teachings in [0026] and other areas that the mechanical connections are optional and benefits of doing without them clearly indicate that the combination does not include such mechanical connection. Examiner considers this sufficient response to all of Applicant’s clearly arguments related to Tilney’s expressly optional teachings of including mechanical connections and that magnetic connection alone is sufficient somehow indicating that such mechanical connections are necessary as part of the combination.
In response to Applicant’s arguments that the office appears to tacitly imagine that the magnets are dimensionless and would not change the dimension or structural integrity of the structures they are added to, the adhesive of Lamb is not dimensionless, and Lamb also includes multiple layers of material that the magnets could be embedded in without taking up extra space. Although Applicant appears to tacitly imagine that the internal layers of the walls of the Lamb wallet are dimensionless, Examiner maintains that they provide space for appropriately sized magnets. Examiner alternately maintains the position that adding appropriately powerful and appropriately sized magnets and recesses or similar structures within the layered wallet of Lamb as modified would not impact the size of the Lamb wallet to the degree as to change its functionality. Examiner maintains the position that Lamb’s general disclosure of the desirability of the wallet being thin is merely common knowledge within the art (i.e. it is generally desirable for wallets and similar objects to be small/thin so as to not take up too much room) and does not teach away or render nonobvious every modification that would add any thickness to the wallet. It is noted that Lamb’s wallet has multiple layers, and if the sole consideration was being as thin as possible the Lamb wallet could be made thinner by eliminating some of those layers.
In further response to Applicant’s arguments that Tilney’s magnets would be overly thick for use with the wallet that Lamb discloses is preferably thin, no evidence is provided for the assertion that the magnets use to attach the wallet would make the wallet substantially thicker than that disclosed by Lamb. Even assuming that were the case, as noted above many obvious modifications have some drawbacks associated with them (e.g. making something thinner to make it lighter will also result in it being weaker, making something out of a stronger material may result in it being more costly or heavier), and a person of ordinary skill in the art is capable of selecting modifications that result in improvements in one area at the cost of drawbacks in another. Examiner notes that magnetic connections have the benefit over adhesive of being more reusable, automatic alignment, and the like, and maintains the position that a person of ordinary skill in the art would consider the substitute of internal magnets for an adhesive connection obvious in view of the disclosures of the prior art, see the rejection of the claims above for details.
In further response to Applicant’s argument that the combination ignores dimensional requirements and the magnets added per Tilney would be too thick, Tilney does not disclose a particular thickness, and discloses that a person of ordinary skill in the art is capable of selecting appropriate thickness to generate a desired level of magnetic bonding ([0028]), and Examiner maintains the position that a person of ordinary skill in the art is similarly capable as part of the combination of selecting appropriate magnets to minimize the thickness of the wallet while provided a desired level of magnetic bonding.
In response to Applicant’s arguments/clarification that the magnets could increase the size of the wallet relative to an adhesive connection, and that this increase would necessarily be too large and undesirable to be obvious, although the magnetic interconnection might be somewhat thicker than the adhesive connection (which is assuming the magnets were thicker than the internal layers of the walls of Lamb which may not be necessary), no evidence is provided that it would be unduly thick, and Examiner maintains that the benefits of a magnetic connection (e.g. reusability) can outweigh the drawbacks of this modification (e.g. a slight increase in thickness). Examiner maintains the position that a person of ordinary skill in the art is capable of choosing whether they prefer the benefits of a magnetic connection (e.g. reusability) without an additional mechanical interconnection or of adhesive or other fasteners (e.g. hook and loop). “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine [teachings].” Medichem v Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006); see Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”). Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).
In response to Applicant’s arguments that a strong hold is essential when attaching a wallet to a mobile device that will be transported and so inserting material between corresponding magnets would be nonobvious and that Tilney introduces mechanical interconnections to create a sufficiently strong hold, no evidence is provided for the assertion that magnets alone will not provide a sufficiently strong hold, or that Tilney discloses that the mechanical interconnection is necessary to compensate for the magnets being covered. Examiner notes that Tilney discloses that the magnetic bond alone is sufficient to secure the device to the accessory/docking station ([0025]), and that a person of ordinary skill in the art is capable of selecting and varying the strength of the magnets to achieve desired results (see, e.g. [0025], [0028], [0029]) including using less magnet strength for certain benefits (e.g. easier to remove from certain locations). Examiner maintains the position that a person of ordinary skill in the art is capable of making appropriate decisions regarding the strength of the magnets and the thickness of the layer over them so as to have an appropriately strong hold, which may be less than the maximum strength hold that would be possible.
In response to Applicant’s arguments regarding claim 7 that it is unclear how the references are interpreted to yield the required case for a mobile device to which one side of the wallet connects and a surface side attachment/surface mount to which the other side of the device attaches, Examiner maintains the position that the office action made the combination sufficiently clear, but has added some further clarificatory language. For clarity, as stated in the previous rejection as well, Gennodie discloses the use of a removable connection such as adhesive (for clarity, it also discloses hook and loop fastener and that adhesive is only one example type of connection) on both outer side walls of a wallet (40) in order to allow for attachment to a device case on one side and another accessory on the other side (see, e.g. FIG. 3), and this provides sufficient motivation to add a removable connection to the other side wall of the wallet for this purpose, and it is also obvious to have this removable connection be a magnetic connection as claimed per Tilney/ZHU and the other references and/or as it is a mere duplication of parts to duplicate the fastening structure on one side on the other side for a similar purpose.
In response to Applicant’s arguments regarding claim 12, Examiner believes that Examiner has appropriately used the broadest reasonable interpretation of the phrase “content removal slot” and that if Applicant believes the prior art’s “content removal slot” differs from that of the invention that Applicant add limitations to the claim to that effect. Examiner maintains that the phrase “content removal slot” is broad enough to encompass a slot through which contents are removed, and also that as the slot is open it “facilitates visual access to the compartment” to the degree claimed (i.e. a user can look through the top opening of the slot to see if there is anything in the compartment).
In further response to Applicant’s arguments regarding claim 12, particularly that the slanted opening reduces the side of the compartment and provides visual access to things that as a result protrude from the compartment, it is first noted that even if the argument that the slanted opening reduces the side of the compartment and only provides visual access to things that as a result protrude from the compartment, it would still constitute a “content removal slot” that “facilitates visual access to the compartment” as even if the visual access is due to objects protruding through the slot it still facilitates visual access.
In alternate response to Applicant’s arguments regarding claim 12, it is Examiner’s position that the slanted top of the compartment is effectively a cutout/window at the top of the compartment that provides visual and physical access to the card or similar object held in the compartment, and that the cutout/window happens to extend to the top edge and side edge does not impact that this is its purpose and effect. It is noted that the same argument could be applied to Applicant’s “content removal slot”, i.e. that it merely reduces the size of that side of the compartment and allows the contents to protrude above that side to allow for visual access to them.
In response to Applicant’s arguments regarding the rejection of claim 14, Examiner maintains the position that the rejection is sufficiently clear, noting that the combination of the references is substantially the same as that of claim 1 and other claims. As to how the ZHU reference is applied, see the rejection of claim 1 for details of the combination and claim 14 where it specifies which limitations are met by the combination with ZHU.
In response to applicant's argument that the examiner has combined an excessive number of references (e.g. that the sheer volume of references is reflective of the non-obviousness of the claims), reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991). Although Applicant argues that the reliance on Gorman is no longer valid, Examiner maintains the position that the same reasoning applies under the KSR standard, and that the number of references does not in and of itself weight against the obviousness of the combination, as many references will disclosed broad structures (e.g. DeChant merely disclosing that magnets can be used as the connector instead of adhesive without details of how the magnetic connection is to be structured) and so claims directed to detailed structures (e.g. particulars of the magnets and the magnetic connection, magnetic connection on both outer side walls) may necessitate multiple references for different such details.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, the rejection takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure and so the construction is proper. Examiner notes, for example, that DeChant discloses using a magnetic connection, between a wallet and an electronic device case, which provides motivation to look to other prior art references disclosing magnetic connections to determine appropriate details for the magnets to form the magnetic connection. Examiner considers this sufficient response to all similar unsupported statements that the office action relies on hindsight reconstruction.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Examiner considers this sufficient response for all arguments related to a reference not teaching a specific feature that that reference is not used for and is not purported to teach (e.g. that Slappay’s bottom “plate” 28 is externally exposed and the magnets are externally exposed, that Kim or other references disclose the use of mechanical connectors in addition to mechanical interconnection).
In response to Applicant’s arguments that the “features to which the Office latches, in many cases, are seemingly unrelated to the aspect of Applicant’s claims to which the Office refers”, Examiner respectfully disagrees, and maintains that the features which are used in the rejection are based on the features of the prior art and the language of the claims.
In response to Applicant’s arguments that the “plate 111” of Kim does not correspond to Applicant’s front and back supports, no evidence is provided as to how the plate 111 of Kim (specifically its teachings related to the plate 111 to modify the structure of Lamb, as the Kim structure is not used in its entirety) does not correspond to the front/back support as claimed. Although Applicant argues that the existence of the plate is “driven by the unanalogous function of the expansion module. . .to allow the expansion module to support the mobile device in a use configuration”, even if this were the case, it is unclear how this is an unanalogous function as the invention and many of the prior art references also support attached devices in a use configuration. Additionally, the plate also serves the purpose of securing the magnets in place, similar to the invention. Kim is used for its disclosure of attaching magnets internally between two layers of a structure such that they are covered, and also the use of an internal support plate structure (111) that the magnets are embedded in which holds the magnets in position. Examiner maintains the position that, as stated in the rejection, Kim’s disclosure is sufficient to motivate a person of ordinary skill in the art to secure the magnets in place using a similar plate.
In response to Applicant’s argument that there is no motivation to replicate the plate per Kim on the other side of the wallet of Lamb/the combination using the teachings of Gennodie, no evidence is provided for this assertion. Examiner maintains the position that Gennodie provides sufficient motivation for/evidence of the obviousness of having a fastener on both sides of a wallet, and adding the plate per Kim to support the magnets and secure them in place is obvious as the plate forms part of the magnetic connection structure of the combination. It is noted that it is generally obvious to duplicate parts to provide the same or substantially the same function to other parts (see, e.g. MPEP 2144.04), and that there is no inventive step in merely adding a similar support plate and magnets to the opposite sidewall of the device to allow for securing objects/accessories thereto (particularly in view of the teachings of Gennodie).
In response to Applicant’s arguments regarding Slappay, Examiner believes Applicant’s arguments relate to previous arguments referring to other parts/features (e.g. arguments related to the plate 5 of claim 6). Slappay’s bottom panel (28) is a plate used to support magnets and is disclosed as being of a stiff material, and provides sufficient evidence/motivation to make the plate of Kim stiff for a similar purpose. It is noted that Slappay is primarily present for its teaching of a plate (5) between an interiorly held electronic device in a case and magnets (34/36/38) to protect the device from damage due to the magnets, but its teachings are also used to reject other claims where they are relevant. As to claim 2, Slappay is merely used for its general disclosure of using a rigid/stiff material for a plate/panel that secures magnets in place as further evidence of forming the plate of the combination out of such a material.
In response to Applicant’s arguments regarding claim 3, Examiner agrees with Applicant’s argument that the primary rejection used an overly broad interpretation of the phrase “exteriorly exposed back portion”. As such, that particular rejection is no longer present in the rejection above. However, Examiner maintains that the alternate rejection presented which adds an exteriorly exposed leather layer to the back portion is obvious and still meets the limitations of the claims. In response to Applicant’s arguments that Lamb in every form is intended to permanently attach to the device and has a different exteriorly exposed layer/material, Examiner maintains that it would have been obvious to one of ordinary skill in the art before the filing date of this application, as part of the combination which replaces the permanent attachment of Lamb with a removable attachment, to add an external/outer leather layer to the side of Lamb between the wallet and the case, per Lamb’s disclosure of having the externally exposed layer on the other side be leather, for the art known benefits of such construction and/or as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
Examiner notes Applicant’s footnote on page 12 related to Slappay as an alternative reference in the rejection heading and also adding further in view of Slappay and/or Case. Although this has been mentioned previously, it is not an error, it is the simplest way to have the rejection heading include all possibilities. The previous rejection has Slappay as an alternative, and so the combination used to reject claims 4-5 includes Lamb in view of Dechant, Tilney, and Gennodie, alone or further in view of Kim and/or Slappay as applied to claim 2, further in view of Slappay and/or Case. As the rejection of claim 2 includes combinations which do not include Slappay, those combinations require the addition of the Slappay reference, and so it is added as part of the rejection heading in both locations. If the base combination used in the previous rejection already included Slappay, then the only added reference will be Case. Examiner maintains that the combinations used in the rejection and their teachings are sufficient clear, and breaking it out into a much longer heading to specify each is unnecessary and would arguably be more confusing.
In response to Applicant’s argument that Slappay is a caddy/case for electronic devices and the shield of Slappay protects electronic devices from the magnets, and so is not relevant to the invention which is not a carrier for electronic devices, Examiner respectfully disagrees with this assertion. Slappay’s shield protects the contents of its container from the magnets, and so is also relevant to the purpose of protecting the contents of a container such as a wallet like that of Lamb/the combination from interference by the magnets. Examiner notes that a wallet can contain appropriately sized electronic devices as well as other items that can similarly be affected by magnetic fields (e.g. credit cards), and maintains that the disclosure of Slappay to use a plate/shield internal to a sidewall of the interior of a container is relevant to the invention and renders the modification obvious, see the rejection of the claims above for further details. Even if the electronic device case of Slappay were considered a different field of endeavor, “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417, 82 USPQ2d at 1396.” It is noted that alternately, the combination with Case provides additional evidence of the obviousness of adding a metallic shield to a wallet in order to protect the contents of the wallet.
In response to Applicant’s arguments that Case teaches a metallic liner for bags to prevent RF intrusion, Case explicitly discloses the use of its metallic liner on a wallet and its purpose of preventing RF intrusion indicates that it is a shield within the ordinary meaning of that term (i.e. it shields the contents from RF intrusion).
In response to applicant's argument that Case does not disclose its liner blocking a magnetic field, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Examiner maintains that the magnetic liner of Case will block magnetic fields in similar fashion to the Case structure, or alternately the combination of Case and Slappay will result in such.
In response to Applicant’s arguments that Case does not detail the structure of its liner or distinct shielding layers, Examiner maintains that Case discloses its liner covering the interior of the bag, which indicates that it is an interior layer, and that this is sufficient structure to add the metallic liner of Case (or alternately an internal plate like Slappay) as one of the layers of the wallet of Lamb/the combination (e.g. the innermost layer of the front wall and/or innermost layer of the back wall) for the benefits disclosed by either reference for its shielding structure (e.g. either protecting the contents from the magnets or providing RF shielding which will also produce a structure that will protect from the magnetic fields).
In response to Applicant’s arguments regarding claims 6 and 10-11 that Case teaches a liner and that there is no evidence that the liner is structurally a “wall”, Examiner first notes that the claims do not use the term “wall”, and claim 6 only requires that the metallic front and back shield form opposing interior surfaces of the compartment, and Examiner maintains the position that the liner per Case which is explicitly stated as covering the entire interior of the bag clearly does so. In response to Applicant’s arguments that the Case liner does not provide distinct shields forming opposing walls, Examiner maintains that even if the liner is a monolithic structure, it would still constitute front and back shields as the portion on the front is one shield and the portion on the rear is the back shield, even if they are connected via monolithic formation. If Applicant desires the shields to specifically not be connected as such, Applicant should add such details to the claim language, although it is noted that this is not an admission that Case does not teach such, merely that Applicant’s arguments are not coextensive with the claim language.
In response to Applicant’s argument that Case does not use reference number 44 for its lining, the reference to the lining 44 refers to the non-elastic polyester lining 44 per Lamb. It is noted that the reference to the lining 44 presents it as an alternative to the Case lining, and Examiner believes this was sufficiently clear, but has added some clarificatory language to the rejection to more clearly specify what parts are referred to.
In response to Applicant’s argument that Kim uses additional mechanical structures to maintain its device in position, Kim is not used for the mechanical structures or lack thereof. Kim is used for its disclosure of securing magnets in place internally between layers using a support plate. As such, it is not relevant to the rejection whether Kim includes mechanical connectors and its teaching of the optional use of mechanical connectors clearly has no impact on the obviousness of the rejection or the combination not including such mechanical connectors.
In further response to Applicant’s argument that Kim uses additional mechanical structures and one would not conclude that a planar arrangement would work in the absence of those mechanical connectors, no evidence is provided for this assertion, which is not relevant to the rejection which does not make use of every extraneous detail of the Kim structure. However, Examiner notes to the contrary of Applicant’s unsupported assertions, that Kim indicates that the expansion module (100) “may include an auxiliary securing portion 150. . .” with fixing hooks 113 as one example. As the mechanical connector is disclosed as something the structure “may include”, Examiner believes it is clear that Kim does not consider the mechanical connection necessary, but merely an optional inclusion.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734