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 .
Election/Restrictions
Applicant’s election without traverse of Species 5 in the reply filed on 7/8/2025 is acknowledged.
Claims 2, 4, 8, and 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/8/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5, 7, 12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Godoy (US 10509366).
Godoy discloses a protection element for protecting an object wearable at the human body, in particular a wrist watch designed as a smartwatch, the protection element comprising: a fastening section (2) and a section capable of insulation (3), the fastening section being configured to fasten the heat protection element relative to the object to be protected (Fig. 1), the insulation section being capable of insulating the object from ambient temperature (functional/intended use recitation), and wherein the heat protection element can be manually separated from the smartwatch to be protected (functional/intended use recitation).
Godoy further discloses the fastening section includes a seat (interior of 2), and wherein the seat is designed such that the housing of the smartwatch to be protected is received (Fig. 1); the insulation section includes a different material from that of the fastening section (plastic vs. elastic); and the insulation section comprises a transparent material, so that the information displayed on a smartwatch can be constantly read (col. 2, ll. 25); the fastening section is designed such that the heat protection element can be fastened directly to the housing of the smartwatch to be protected (see Fig. 1); and the fastening section includes two springy tongues (2s, elastic material disclosed) which resiliently expandible about an outer periphery of the housing for resilient return into latched engagement with a lower edge of the housing, in the clipped- on state, on opposed sides of the housing of the smartwatch (functional/intended use limitation).
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(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godoy (US 10509366) as applied to claim 5 above, and further in view of Kulick (US 4509644).
Godoy discloses all limitations of the claim(s) as detailed above except does not expressly disclose the plastic material as claimed.
However, Kulick teaches a similar device being constructed out of plastic material (Abstract) as claimed.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Godoy device out of plastic material as taught by Kulick, since 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godoy (US 10509366) as applied to claim 1 above, and further in view of Akutagawa et al. (US 2020/0279339, hereinafter ‘Akutagawa’).
Godoy discloses all limitations of the claim(s) as detailed above except does not expressly disclose the cooling element as claimed.
However, Akutagawa teaches providing a watchcase with a cooling element (1702) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the cooling element taught by Akutagawa to the watchcase/cover taught by Godoy, in order to provide a cooling effect as taught by Akutagawa (para 0225).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godoy (US 10509366) in view of Akutagawa et al. (US 2020/0279339, hereinafter ‘Akutagawa’) as applied to claim 10 above, and further in view of Sarno et al. (US 2005/0270750, hereinafter ‘Sarno’).
Godoy as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the phase change material as claimed.
However, Sarno teaches it was known before the invention by applicant to use a phase change material as a cooling element (claim 3) as claimed.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Godoy as modified above cooling element out of phase change material as taught by Sarno, since 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Response to Arguments
Applicant’s arguments with respect to all claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER N HELVEY/Primary Examiner, Art Unit 3734
January 29, 2025