DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are:
i. Claim 9, “film applicator device”, which has not been interpreted under pre-AIA 35 USC 112, sixth paragraph in view of the structural modifier “applicator”. The person of ordinary skill in the art would have understood “applicator” as it is used here to indicate the name for a broad class of structures capable of applying a film.
ii. Claims 1, 6-9 and 13, “mobile device”, which has not been interpreted under pre-AIA 35 USC 112, sixth paragraph for two reasons. First, “mobile” is not a function, and accordingly, the limitation is not written in means plus function format required for pre-AIA 35 USC 112, sixth paragraph interpretation. Second, the term “mobile device”, in light of the specification, is being used as the name for a broad class of structures which are portable and provide a function such as communication. This is consistent with common usage of the term “mobile device” in the related art.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 2-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject 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 2, in the previous office action the examiner suggested inserting --of the body surrounding the cavity-- after “surfaces”. It is unclear why “define a depth of” was deleted, and only a portion of the suggested language was inserted. The current language “wherein one or more side surfaces of the body surrounding the cavity” is confusing because it is not clear what further limitation is being recited. This clause lacks language which sets forth a positive or functional limitation. The examiner suggests --wherein one or more side surfaces of the body surrounding the cavity define a depth of the cavity.--.
Double Patenting
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.
As detailed below, nonstatutory double patenting grounds of rejection are detailed with respect to the following U.S. Patent Numbers:
US 9,010,396 B2
US 9,089,085 B2
US 9,931,823 B2
US 10,021,818 B2
US 10,399,315 B2
US 10,555,445 B2
US 11,155,067 B2
Claims 1-8 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-10 of U.S. Patent No. 9,010,396 (the ‘396 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘396 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘396 Patent.
Claims 1-8, 11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-11 of U.S. Patent No. 9,089,085 (the ‘085 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘085 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘085 Patent.
Claims 1-8, 11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12, 15 and 17-18 of U.S. Patent No. 9,931,823 (the ‘823 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘823 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘823 Patent.
Claims 1-9 and 11-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,021,818 (the ‘818 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘818 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘818 Patent.
Claims 1-8, 11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-14 of U.S. Patent No. 10,399,315 (the ‘315 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘315 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘315 Patent.
Claims 1-8, 11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 14-18 of U.S. Patent No. 10,555,445 (the ‘445 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘445 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘445 Patent.
Claims 1-8, 11 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,155,067 (the ‘067 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the current claims is clearly explicitly or implicitly satisfied by a corresponding claim in the ‘067 Patent. It is noted that the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the body, the tab or the screen protector because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115. These limitations do not distinguish over the implicit or recited structure of the corresponding claims of the ‘067 Patent.
Allowable Subject Matter
A terminal disclaimer is required to overcome the nonstatutory double patenting rejections of claims 1-9 and 11-14. Claims 1-9 and 11-14 have only been rejected over nonstatutory double patenting grounds. A minor correction to claim 2 is also required to overcome the 35 USC 112 (pre-AIA ), second paragraph rejection of claims 2-5.
Regarding claims 1 and 8, in combination with the claimed limitations, no teaching or suggestion was found in the prior art of record to provide the combined limitations of the claimed body having the claimed cavity or area, and the claimed tab. Liu (US 2013/0020020 A1) teaches a body having the claimed cavity and surface (Figure 1) and Muramatsu (US 2012/0076967 A1) teaches a tab 52 capable of the claimed functionality (Figures 6a-d and 7; paragraphs 55-58 and 61-69). However, the examiner does not find motivation to combine Liu and Muramatsu to arrive at the above noted allowable subject matter. In particular, the top layer 1 of Liu is not designed to work with such a tab and it unclear how or why the body of Liu would be used to modify Muramatsu. As noted above, the claimed screen protector is not part of the claimed apparatus since it is a material worked upon and the claims are also not limited to the recited manner of using the tab because a claimed apparatus is not limited to recited process steps or functional capability, but rather is only limited to structure implied thereby. See MPEP 2114, 2115.
Response to Arguments
Applicant's arguments filed 15 September 2025 have been fully considered but they are not persuasive.
Applicant argues device indicates structure in itself. The examiner respectfully disagrees. The term “device” may be considered a generic placeholder. See MPEP 2181(I)(A). However, upon further consideration of the film applicator device, the examiner agrees that this term should not be interpreted under pre-AIA 35 USC 112, sixth paragraph in view of the structural modifier “applicator”.
Regarding claim 2, this claim was not amended as suggested by the examiner in the prior office action, mailed 13 March 2025. The examiner’s suggestion did not involve deleting any language. However, only a minor correction is needed for claim 2, as detailed in 35 USC 112 (pre-AIA ), second paragraph rejection above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A TOLIN whose telephone number is (571)272-8633. The examiner can normally be reached 9:30 am - 6 pm.
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, Phillip C. Tucker can be reached on (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745