DETAILED ACTION
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 1 is currently pending and prosecuted.
Response to Arguments
Applicant's arguments filed 17 December 2025 have been fully considered but they are not persuasive. Applicant provides amendments to the claims which are wholly unsupported by the original disclosure, which the Examiner will address in turn.
First, as noted previously, the Specification does not support a Bluetooth connection between the case and the electronic smart device because there is no NFC or Bluetooth communication module.
Second, there is no software module, program module or non-transitory computer readable medium residing within the case according to the original disclosure.
Third, as previously noted, there is no support within the Specification that the case contains any form of display module or functionality. There is no display associated with the case. There is no method or manner of providing a display on the touch sensitive pad (T) nor is there any guidance as to the complex circuitry required to provide a touch sensitive display pad within the case. Every mention of a display within the Specification is with respect to the separate electronic device.
Lastly, there is no support for “a display element cursor viewable upon said touch sensitive display pad.” As noted above, there is no support for a touch sensitive display pad associated within the case, as currently claimed. As such, there is similarly no support for a display element cursor being viewable upon a touch sensitive display pad that does not exist within the original disclosure.
As such, Applicant’s amendments are not considered persuasive.
Please note the Examiner has provided further prior art references in which a backside control keyboard and touch screen are provided within the pertinent prior art section of this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 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.
Claim 1 is 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 claim(s) contains 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. Specifically, Claim 1 recites the limitations “an electronic case that mates to an electronic smart device via Bluetooth.” While it is commonly known for smart devices to be considered Bluetooth compatible, the Specification notes in a single location that the case “mates” to the electronic smart device through a Bluetooth connection. However, as noted in the previous Office Action, the case does not contain a NFC or Bluetooth communication module nor is there any circuitry one would utilize for this connection. As such, there is no support for the case mating with the electronic smart device through a Bluetooth connection.
Additionally, as noted in the Response to Arguments above, there is no mention of a software module, program module or non-transitory computer readable medium associated with or residing within the case within the original disclosure. The only mention of a circuit within the original disclosure is in [0040]-[0041], which notes powering off the electronic device power switch will turn off the touch pad circuit. This could be argued to mean the case receives power from the device but does not have any circuitry for software or programming within itself, as currently claimed. There is no teaching or suggestion within the original disclosure of how or where a software or programming module would be located within the case. As such, this limitation constitutes New Matter.
Third, as previously noted, there is no support within the Specification that the case contains any form of display module or functionality. There is no display associated with the case. There is no method or manner of providing a display on the touch sensitive pad (T) nor is there any guidance as to the complex circuitry required to provide a touch sensitive display pad within or on the case itself. While the term display is mentioned approximately 17 times in the Specification, every mention of a display within the Specification is with respect to the separate electronic device. There is no teaching or suggestion that a touch sensitive display pad is part of the case. As such, the limitation “a touch sensitive display pad” constitutes new matter.
Lastly, there is no support for “a display element cursor viewable upon said touch sensitive display pad.” As noted above, there is no support for a touch sensitive display pad associated within the case, as currently claimed. While there is a display cursor provided on the display of the separate electronic device, there is no teaching or suggestion within the applicant’s original disclosure that the case itself utilizes “a display element cursor viewable upon said touch sensitive display pad.” As such, there is no support for a display element cursor being viewable upon a touch sensitive display pad that does not exist within the Specification. Thus, the limitation “a display element cursor viewable upon said touch sensitive display pad” constitutes New Matter.
Additionally, the case portion of the claims contain the limitations “a display element cursor” and “a display element graphical user interface taskbar.” The original disclosure does not provide the display element necessary within the case itself in order for this to function.
Thus, Claim 1 remains rejected for lack of enablement and new matter.
For purposes of Examination, the claims will be reviewed without the “a software application resident on said case,” “a touch sensitive display pad” and “a display element cursor viewable upon said touch sensitive display pad” limitations as there is no explicit or inherent support for these limitations within the original disclosure.
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 1 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.
Regarding Claim 1, it is unclear to the Examiner how the case can “mate” with the electronic device in a manner to allow the case to manipulate the display cursor on the display of the electronic smart device as an NFC or Bluetooth connection is not provided for within the case itself.
Additionally, it is unclear to the Examiner how the case may provide “a display element cursor” and “a display element graphical user interface taskbar” when the case does not include a display itself. The original disclosure notes how the user provides an input on the touchpad on the back of the case, which in turn controls the display element cursor or display element graphical user interface taskbar on the electronic smart device. However, there is no clear teaching within the Specification as to how this is done, given the case does not comprise a display, or how the case is used to control the electronic smart device.
As such, Claim 1 remains rejected as indefinite.
Claim Rejections - 35 USC § 103
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Filomio, JR., US PG-Pub 2021/0132712, hereinafter Filomio, in view of Hu et al., US PG-Pub 2019/0129473, hereinafter Hu.
Regarding Claim 1, Filomio teaches an electronic case (Figs. 1-2, and corresponding descriptions, showing a case on a smart phone) that mates to an electronic smart device (electronic hand-held device) comprising:
a touch sensitive pad (force sensitive touch surface T);
said touch sensitive pad having either a center clicker button or two clicker buttons housed on a side of said case ([0009], “The said inventions clicker button (aka a mouse click) may also be separate from the force-sensitive touch surface (T) and positioned along the side of the device's housing (R) for easier use and reach for the user. There may also be multiple clicker buttons, one on each side, that work in the same manner as the touch surface clicker button”);
a display element cursor viewable upon said touch sensitive display pad (cursor A);
two snap action switches ([0014], “The said invention is not limited to physical buttons or switches, (e.g., power, mute)”);
a display element graphical user interface taskbar ([0016]-[0017], “Illustrative operational states include, but are not limited to—on, off, locked, phone mode, video mode, audio play mode, calendar mode, email mode, address book mode and image capture mode; thus, a signal user action may have cause different control elements to be displayed (or no control element at all), depending on the device's current operational state”);
power switches ([0004], “The on/off switch (B), that shuts off power to the touch surface”); and
a case housing (housing R).
However, Filomio does not explicitly teach mat[ing] to the electronic smart device via Bluetooth.
Hu teaches mat[ing] to the electronic smart device via Bluetooth (Hu: [0034]-[0035], “The communication unit 110 receives, from the antenna 105, an incoming RF signal transmitted such as a BLUETOOTH or WI-FI signal from an access point (such as a base station, WI-FI router, BLUETOOTH device) of a network (such as a WI-FI, Bluetooth, cellular, 5G, LTE, LTE-A, WiMAX, or any other type of wireless network)”).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to incorporate the Bluetooth compatibility taught by Hu into the device taught by Filomio in order to allow devices to wirelessly connect to the computing device (Hu: [0080]), thereby providing a more versatile user device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bledsoe et al., U SPG-Pub 2014/0078086, teaches a smart device with a touch pad on the rear of the device for controlling a display cursor on the front display;
Chechelniker, U SPG-Pub 2008/0246731, teaches a backside control unit for a handheld electronic device that utilizes a keyboard and touchpad on the back side of the case; and
Luo et al., U SPG-Pub 2017/0017393, teaches a method of controlling and interacting with objects on an electronic device display utilizing a back side touch pad.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN T REED whose telephone number is (571)272-7234. The examiner can normally be reached M-F: 0800-1800.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ke Xiao can be reached at 571-272-7776. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Stephen T. Reed/Primary Examiner, Art Unit 2627