REISSUE NON-FINAL OFFICE ACTION
This is a Non-Final Office Action in Reissue Application 18/229,614 (“the ‘614 application”) for U.S. Patent No. 8,560,031 (“the ‘031 Patent”).
A preliminary amendment was filed August 2, 2023 that canceled claims 1-53 and added new claims 54-72.
Continuation
The ‘614 application is a continuation of reissue application 17/105,794, now RE49,702 (“the Reissue Patent ‘702”). The Reissue Patent ‘702 is a reissue of the ‘031 Patent.
Specification
The specification is objected to. The specification should be amended to include that reissue application 17/105,794 is now RE49,702.
Reason for Reissue
This is a non-broadening reissue. The new Declaration By The Inventor (“New Reissue Dec”) filed August 2, 2023, states,
“One error upon which reissue is based is the patentee claiming less than he had a right to claim, including not reciting specific features of the accordion found in new claims 23-44, such as pleated folds and walls that fold next to one another. None of the additional claims broaden the scope of claims in 8,560,031 B1.”
35 USC 251 Rejection – Defective Declaration
The reissue declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414. The error statement refers to features recited in canceled claims 23-44. The error statement should refer to at least one of new pending claims 54-72 and explain what limitations are in the new claims.
Claims 54-72 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
Prior Proceedings
The ‘031 Patent was the subject of two inter partes review proceedings.
IPR2018-00497 resulted in a Final Written Decision that found claims 9-11, 16 and 17 unpatentable as anticipated by GB 2316263 to Grinfas. Claims 9-11, 16 and 17 have been cancelled in the Inter Partes Review Certificate issued March 12, 2021.
IPR2018-01294 did not result in a Final Written Decision.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
Claims
Functional Phrase #
Functional Phrase
Corresponding Structure or Algorithm in the Specification of the ‘388 Patent
62
1
securing element for attaching the socket to the back of the portable media player or portable player case
5:33-35; 7:1-17; Figs. 12A and 12B
72
2
means for attaching the socket including an accordion forming a tapered shape to the back of the portable media player
5:33-35; 7:1-17; Figs. 12A and 12B
72
3
means for extending the socket outward generally along its axis from the portable media player
2:6-10; 4:66-5:6; 5:50-53; 6:10-16; Figs. 1B, 3A, 3B
72
4
means for retracting the socket back toward the portable media player by collapsing the socket generally along its axis
4:44-49; 5:50-53; 6:10-16; Figs. 3A, 3B and 5
Table 1: Identification of § 112 ¶ (f) Claim Limitations
and Corresponding Structure
Because these claim limitations are interpreted under § 112 ¶ (f), they are “construed to cover the corresponding structure … described in the specification and equivalents thereof.” § 112 ¶ (f).
Double Patenting
Nonstatutory
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 54-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40 of RE49702. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claims 54, 62, and 69 of the ‘614 application omit the details relating to the material of the accordion and thickness of the walls of the accordion compared with claims 1, 12, and 32 of RE49702, respectively. See Table 2 provided below, which shows the comparison of claims 54 and 1, as exemplary. Elimination of a step or an element and its function is obvious if the step or function of the element is not desired. See MPEP 2144.04 II. A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989) In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)
Claim 54 of the ‘614 application
Claim 1 of RE49702
A portable media player case for housing a portable media player, comprising:
A portable media player case for housing a portable media player, comprising:
a case body for housing the portable media player; and
a case body for housing the portable media player; and
an extendable socket attached to the case body, the socket including:
an extendable socket attached to a back of the case body, the socket including:
an accordion forming a tapered shape capable of extending outward from the case body generally along its axis and retracting back toward the case body by collapsing generally along its axis, the accordion maintaining pleated folds when fully extended and having walls folding in a generally parallel configuration next to one another, rather than stacking on top of one another, when fully collapsed, and
an accordion forming a tapered shape capable of extending outward from the case body generally along its axis and retracting back toward the case body by collapsing generally along its axis, wherein the accordion comprises rigid walls interspersed with flexural hinges, and
a foot disposed at the distal end of the accordion.
a foot disposed at the distal end of the accordion;
wherein the tapered shape comprises a cone shape constructed and arranged such that the walls fold generally parallel to the axis of the accordion when the accordion is collapsed, and
wherein the accordion is formed of polyester-based thermoplastic polyurethane elastomer, the walls are about 1 to 2 mm thick and 2 to 4 mm long, and the flexural hinges are about 0.2 to 0.4 mm thick and 1 to 2 mm long.
Table 2: Comparing the Limitations of Claim 54 of the
‘614 application with Claim 1 of RE49702
Statutory
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 72 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 37 of prior U.S. Patent No. RE49,702. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 54, 56, 59, 62, 69-71 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by U.S. Pub. No. 20120042476 to Karmatz (“Karmatz”).
As per claim 54, Karmatz discloses a portable media player case for housing a portable media player (¶27, “The handheld device 140 may be an electronic device such as a mobile phone, Personal Digital Assistant (PDA), portable music player, portable video player, handheld computer, tablet computer, electronic book reader, netbook computer, etc., but is not limited thereto.”), comprising:
a case body for housing the portable media player (¶29, “The base 110 may also be integrated into a removable protective case, clip-on, or slide-on attachment/accessory for the handheld device 140.”); and
an extendable socket attached to the case body (“extension” 120 shown attached to the back in Figs. 18-25), the socket including:
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466
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Fig. 20 of Karmatz showing an extendable socket 120
attached to the handheld device
an accordion forming a tapered shape capable of extending outward from the case body generally along its axis and retracting back toward the case body by collapsing generally along its axis, the accordion maintaining pleated folds when fully extended (see pleated folds of the walls 124 in Fig. 20) and having walls folding in a generally parallel configuration next to one another, rather than stacking on top of one another, when fully collapsed (¶43, “In this case the extension 120 may be constructed as a single piece or a series of telescopic pieces 124 that expand/collapse together as the grip device moves from the open to the closed position. Further, a spring (e.g., such as the spring 123 of FIG. 18) may be used in conjunction with a single piece sliding bar or the series of telescopic pieces 124 in FIG. 20.”), and
a foot disposed at the distal end of the accordion (item 130 or the end of item 120 adjacent to item 130 illustrates a foot based on the disclosure of the ‘031 Patent, which reads at 2:10-12, “The buttons may snap onto the ends of the accordions, be glued on, or be feet integrally formed with the accordions.”).
Claim 62 recites substantially similar subject matter to that of claim 54; therefore, claim 62 is rejected based on the same rationale as claim 54.
Additionally, with regard to the securing element for attaching the socket to the back of the portable media player or portable media player case, Karmatz discloses this (¶29, “The base 110 may be formed as a plate or other shape, removably or permanently affixed to the handled device by an adhesive or other mounting hardware such as screws or rivets (not shown). An upper surface of the base 110 may have a flat or curved upper and/or lower surfaces, which may correspond to the shape of adjacent surfaces of the handheld device 140. Although the base 110 illustrated in FIG. 2 is flat and has a substantially rectangular shape, various other shapes, such as a circle, ellipse, or other irregular shapes, including ergonomic shapes designed to rest against a user's fingers, may be used in accordance with embodiments of the present invention. The base 110 may also be integrated into a removable protective case, clip-on, or slide-on attachment/accessory for the handheld device 140.”).
Claims 69-72 recite substantially similar subject matter to that of claim 54; therefore, claims 69-72 are rejected based on the same rationale as claim 54.
As per claim 59, Karmatz discloses the case of claim 54 further comprising a button attached to the foot, the button formed of a rigid material and extending radially past the foot (Fig. 20, where button 130 extends radially past the foot, which can be the top part of 120 adjacent to button 130 as discussed above, and ¶33, “The grip device may be constructed of various materials including hard and flexible materials, such as various metals, plastics, or textiles.”).
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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 55-56, 58, 63, 64 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Karmatz and GB 2316263 A to Grinfas et al. (“Grinfas”).
As per claim 55, while Karmatz discloses “the extension 120 may be constructed as a single piece or a series of telescopic pieces 124 that expand/collapse together as the grip device moves from the open to the closed position,” Karmatz does not expressly disclose the case of claim 54 wherein the accordion comprising rigid walls interspersed with flexural hinges. Grinfas discloses this in Figs. 7A and 7B where items 82 and 84 represent the rigid walls and flexural hinges, respectively; p. 9, “Collapsible sound conduit 80 preferably includes a resilient portion 82 which, as seen particularly in Fig. 7B, is collapsible and foldable into itself.” “Resilient portion 82 may include recesses 84 that increase the foldability of collapsible sound conduit 80.” Fig. 7B also shows walls folded in a generally parallel configuration next to one another when fully collapsed.).
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860
486
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Figs. 7A and 7B of Grinfas illustrating the rigid walls interspersed with flexural hinges
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to modify the extendable socket of Karmatz with rigid walls interspersed with flexural hinges as taught by Grinfas. Karmatz contemplates several variations of a socket that can attach to the back of a portable device and extend and collapse as shown in Figs. 11-24. Some examples of Karmatz’s sockets are shown Figs. 11, 18, 20, and 21 below.
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562
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671
551
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663
547
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549
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Figs. 11, 18, 20, and 21 of Karmatz showing the different types of sockets
Grinfas teaches additional types of sockets that can extend and collapse as discussed above. A person of ordinary skill in the art could have pursued yet another variation of a socket that supported the desired extending and collapsing features as taught by Grinfas with a reasonable expectation of success because doing so is a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007) Furthermore, such a combination would help solve the problem identified in Karmatz of “a need for an apparatus for securely holding devices such as bar-shaped devices, with a single hand while allowing greater range of movement of a user's fingers while holding the device.” (¶10)
Claim 63 recites substantially similar subject matter to that of claim 55; therefore, claim 63 is rejected based on the same rationale as claim 55.
As per claim 56, Karmatz discloses the case of claim 55 wherein the tapered shape comprises a cone shape constructed and arranged such that the walls fold generally parallel to the axis of the accordion when the accordion is collapsed (¶43, “In this case the extension 120 may be constructed as a single piece or a series of telescopic pieces 124 that expand/collapse together as the grip device moves from the open to the closed position.” Fig. 20) Grinfas also discloses this in Figs. 7A and 7B.
Claim 64 recites substantially similar subject matter to that of claim 56; therefore, claim 64 is rejected based on the same rationale as claim 56.
As per claim 58, Karmatz discloses the case of claim 56 wherein the case body forms a cavity for housing the socket when the accordion is retracted (¶36, “the grip device fits into a recess within the handheld device 140 in a closed position, such that an upper surface of the grip device in the closed position is substantially coplanar with an adjacent surface of the handheld device 140.” Fig. 8C).
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418
512
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Fig. 8C of Karmatz showing a cavity for housing the socket
Claims 60-61 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Karmatz and U.S. Pub. No. 2010/0155550 to Weiss-Vons (“Weiss-Vons”).
As per claim 60, while Karmatz contemplates ways to attach the socket to the media player or media player case (¶29), Karmatz does not expressly disclose the case of claim 54 further comprising a suction cup attached to the foot.
Weiss-Vons discloses a portable device accessory that uses two suction cups, one of which is used to attach to the portable device (¶36-37).
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660
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Fig. 1 of Weiss-Vons showing the suction cup attached to the portable device
At the time of the invention, it would have been obvious to a person of ordinary skill in the art to modify Karmatz to have one of its solutions for attaching to the portable device be a suction cup because a suction cup enables the accessory to not be permanently attached to the portable device. This affords users convenience by enabling the suction cup to be easily attached when the user desires to use the suction cup and be easily removed from the device when the user is not in need of the suction cup. (Weiss-Vons ¶5, “An object of the accessory device is to serve as an intermediary surface wherein a portable device can be removably attached to the accessory device and can also be removably attachable to a surface.”)
Weiss-Vons also explains another benefit of the suction cup is that users can use it to hold the portable device between their fingers (Weiss-Vons ¶6, “A portable device accessory of the present invention includes dual suction cups connected by a neck used to hold, grip or manipulate a portable device such as and not limited to mobile phones…”).
Claim 61 recites substantially similar subject matter to that of claim 60; therefore, claim 61 is rejected based on the same rationale as claim 60.
Allowable Subject Matter
Claims 57 and 65-66 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Notification of Prior or Concurrent Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the ‘031 Patent is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Information Material to Patentability
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to C. Michelle Tarae whose telephone number is (571)272-6727. The Examiner can normally be reached on M-F 8:00-4:30.
If attempts to reach the Examiner by telephone unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, can be reached on 571-272-6779.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Signed:
/C. MICHELLE TARAE/Reexamination Specialist, Art Unit 3992
Conferees:
/RACHNA S DESAI/Primary Examiner, Art Unit 3992 /ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992