DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The present office action is made in response to the amendment filed by applicant on 06/27/2025. It is noted that in the amendment, applicant has made changes to the claims. There is not any change being made to the abstract, the drawings and the specification.
Regarding to the claims, applicant has amended claims 50 and 52.
Response to Arguments
4. The amendments to the claims as provided in the amendment of 06/27/2025, and applicant's arguments provided in the Remarks/Arguments, pages 6-9, of the mentioned amendment, have been fully considered and yielded the following conclusions:
A) Regarding the claims, because applicant has not added/canceled any claim into/from the application, thus the pending claims are claims 34-57 (Note that claims 1-20 were canceled in the Pre-amendment of 04/20/2020, and claims 21-33 were canceled in the amendment of 03/14/2023) in which claims 50-57 are examined in the present office action and claims 34-49 have been withdrawn from further consideration as being directed to non-elected invention(s).
Applicant should note that the non-elected claims 34-49 will be rejoined if each of claims 34 and 49 has all features of claim 50 if the claim 50 is later found as an allowable claim.
B) Regarding the Claim objections as set forth in the office action of 03/28/2025, the amendments to the claim 50 as provided in the amendment of 06/27/2025 are sufficient to overcome the Claim objections set forth in the mentioned office action.
C) Regarding the rejection of claims 50-57 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as set forth in the office action of 03/28/2025, the amendments to the claims as provided in the amendment of 06/27/2025, and applicant’s arguments provided in the mentioned amendment, page 6, have been fully considered and are sufficient to overcome the rejection of claims 50-57 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as set forth in the mentioned office action.
E) Regarding to the rejection of claims 50-52 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry” and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video”; the rejection of claims 53-54 and 56 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry” and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” as applied to claim 50 above, and further in view of Jones (US Patent No. 5,237,453); and the rejection of claims 55 and 57 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry” and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” as applied to claim 50 above, and further in view of Wong et al (US Patent No. 6,614,423) as set forth in the office action of 03/28/2025, the amendments to the claims as provided in the amendment of 06/27/2025, and applicant’s arguments provided in the mentioned amendment, pages 6-9, have been fully considered but they are not persuasive.
E1) Regarding to the rejection of claims 50-52 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry” and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” set forth in the office action of 03/28/2025, applicant argues that the applied art does not disclose the feature that the insert is joined to the opening of the external jacket, see Remarks/Arguments in pages 6-7. While applicant’s arguments have been fully considered but they are not persuasive.
Applicant is respectfully invited to review the claims, in particular, claim 50 which recites that the outwardly-facing surface of the insert “configured to be joined” to the opening (of the external jacket), claim 50 on line 3-8, in particular, on line 8. There is not any specific limitation/feature regarding the structure/mechanism of the so-called “configured to be joined” being provided in the claim. Applicant should note that any feature recited in a claim is given a board interpretation. In that aspect then the arrangement between the insert and the opening of the external jacket is understood as an arrangement in any manner which as a result both are joined to each other.
With the applied art, the black closed loop/ring formed on the mobile device acts as an insert is brought into a contact with the opening defined by the defender case. In a common sense/knowledge within skill in the art that the side surfaces/walls of the closed loop/ring and the opening needs to be in contact for the purpose of avoid dust, moisture, … from enter the camera. The product constituted by the defender case covering the mobile device with the closed loop/ring inserted onto the opening the defender case results in a single unit due to the joined manner between the walls of the ring and the opening.
Regarding applicant’s arguments about the shape(s) and the hindsight in combination of arts to reject the claims, see Remarks/Arguments in pages 8-9, such arguments have been fully considered but they are not persuasive.
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).
Applicant should note that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instance case, the secondary reference is used in the combination of the primary to show that a change in shape of an element is within the level of one skill in the art. See In re Dailey, 149 USPQ 47 (CCPA 1976). Applicant should further note that when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it to meet a particular application/desire.
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).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both references used in the rejections are directed to the same field of endeavor and variation of light reflection for an incident light on different shapes of a surface are common knowledge, thus one skill I the art will select any suitable shape of a surface to vary the direction/effect of light reflection.
E2) Regarding the rejections of claims 53-57, because applicant has not provided any specific arguments thus the claims are rejected based on same reasons as provided in the office action of 03/28/2025 and repeated in the present office action.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the 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.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
7. Claims 50-52 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry: and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” (all of record).
a) Regarding present claims 50-51, the Blackberry device with the defender case as provided in the article “Otterbox Product Spec Sheets Blackberry, and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, discloses a mobile device having a camera and a flash wherein a black closed loop/ring having rounded corners surrounds the camera and the flash, and a defender case for the mobile device wherein the defender case comprises an opening.
The defender case is adapted to be in direct contact with and detachable from the mobile device. In the assembled situation, i.e., when the defender case covers, i.e., in direct contact with the module device, i.e., the Blackberry, then the black closed loop/ring having a rounded corners, i.e., a black closed loop/ring having an aperture, formed on the mobile device acts as an insert onto the opening defined by the defender case. The black closed loop/ring comprises an inwardly-facing surface configured to be exposed by light emitted from the flash and an outwardly-facing surface configured to be joined to the inwardly-facing surface of the opening defined by the defender case.
It is noted that the inwardly-facing surface of the black closed loop/ring formed on a surface of the mobile device which loop/ring acts as an insert into the opening formed on the defender case as provided by the mentioned article and the YouTube video has a flat configuration; however, a similar black ring surrounding a camera and a flash of a mobile device wherein the inwardly-facing surface has a various shape configurations including a convex configuration or a concave configuration is known to one skill in the art as disclosed in “Jelly Case for Nokia Express Music 5800-Review-YouTube video”. Thus, it would have been obvious to one skill in the art at the time the invention was made to modify the noncircular black loop formed on the outer surface of the mobile device as provided by the mentioned article and the YouTube video by making the inwardly-facing surface of the loop as a convex or a concave shape/configuration to create/adjust a desired light guidance effect to meet a particular application.
b) Regarding present claim 52, it is noted that black color is a form/in a gray scale and the use of a gray as a neutral color for camera ring and a selection of such gray color would have been obvious to one skill in the art for a consumer product to meet a desired decorative effect.
8. Claims 53-54 and 56 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry: and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” as applied to claim 50 above, and further in view of Jones (US Patent No. 5,237,453, of record).
The combined product provided by the article of “Otterbox Product Spec Sheets Blackberry: and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” does not disclose that the inwardly-facing surface has a rough texture as recited in present claim 54. However, a shielding element for covering a display of an optical device wherein the inner surface of the shielding element has a rough texture and made by black material for the purpose of absorbing light is known to one skilled in the art as can be in the shielding element provided by Jones, see columns 2-3 and figs. 1 and 3. Thus, it would have been obvious to one skill in the art at the time the invention was made to modify the combined product provided by Makino and van Riel by making the inwardly-facing surface (43a) of the insert (4) in the combined product provided by the mentioned article and YouTube video as a rough as suggested by Jones for the purpose of shielding/absorbing unnecessary/harmful light.
b) Regarding the features regarding to the function of the inwardly-facing surface of the loop as recited in present claim 53 and the translucent as recited in present claim 56, such features are merely that of a preferred/option choice and not criticality has been disclosed. The support for that conclusion is found in the present claims in which applicant has claimed that the inwardly-facing surface is black which is understood as a material for absorbing light and which differs from the translucent color. It is also noted that the use of an absorbing film which has a black color, a gray color or a translucent color is known and is an optional selection to one skill in the art.
9. Claims 55 and 57 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over the article of “Otterbox Product Spec Sheets Blackberry: and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” as applied to claim 50 above, and further in view of Wong et al (US Patent No. 6,614,423, of record).
The combined product provided by the article of “Otterbox Product Spec Sheets Blackberry: and the “OTTERBOX: Review of Defender Case for Blackberry Curve”, YouTube video, in view of the “Jelly Case for Nokia Express Music 5800-Review-YouTube video” does not disclose that the insert has a notch/lip for connecting to the jacket as recited in present claim 55 or the insert is fused/bonded to the jacket as recited in present claim 57. However, the use of a notch/lip for connecting a removably element with respect to a device having an opening for securing the element with the device is known to one skill in the art as can be seen in the prior art as provided by Wong et al. In particular, in the prior art described in column 1 and shown in fig. 1, the cover (120) covering the opening (111) of the overlap (110) of the display device has notches projecting outward from its outwardly-facing surface to engage/secure/bond the cover (120) with the overlap (110) of the display device. Thus, it would have been obvious to one skill in the art at the time the invention was made to modify the combined product provided by the mentioned article and the YouTube video by utilizing notches projecting outwardly on the insert to increase the ability of securement of the mobile device with its defender case.
Conclusion
10. The US Patent No. 6,152,567 and the US Publication No. 2002/0197965 are cited as of interest in that each discloses a mechanical mechanism for connection/join two elements into a unit wherein the connection/join is made by a relationship(s) between opposite surfaces of the two elements.
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872