DETAILED ACTION
In view of the Appeal Brief filed on 04/15/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ALLEN L PARKER/ Supervisory Patent Examiner,
Art Unit 2841
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) 1-6, 8-9, 12-14, 16-18, 20-21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Publication 2014/0036420), Namminga et al. (US Patent D718,293) and further in view of Sanford et al. (US Patent 8,023,261).
In re Claim 1, Chen discloses a case for a portable electronic device, the case comprising: a shell 1 comprising a back panel 3, a front panel 4 opposite the back panel and defining a closed perimeter of a window, and at least one side wall (See Figure 1, for example) extending between the back panel and the front panel, wherein the back panel, front panel, and at least one side wall define a cavity for receiving and holding the portable electronic device 5 within the shell and further define a side opening 13, separate from the window, between the back panel and the front panel for insertion of the portable electronic device through the side opening into the cavity; and a removable endpiece 2, wherein the removable endpiece is configured for, after insertion of the portable electronic device, insertion through the side opening 13 into the cavity and between the front panel and the back panel for engagement with, and retention of, the portable electronic device 5 within the cavity.
Chen does not explicitly disclose an adapter coupled to the base, the adapter comprises a male plug configured for insertion into a female port of the portable electronic device, a contactor opposite the male plug, a plurality of first contacts disposed on the male plug, and a plurality of second contacts disposed on the contactor and electrically coupled to the first contacts. However, providing such was not new in the art of portable electronics. For example, Namminga discloses an adapter (See Figures 19 and 20) on a removable endpiece comprising a male plug (See Figure 20) configured for insertion into a female port of a portable electronic device, a contactor (See Figure 19) opposite the male plug, and inherently discloses first contacts on the male plug and second contacts on the contactor to allow for electrical connection with the portable electronic device. It would have been obvious to a PHOSITA at a time before the effective filing date of this application to have provided an adapter, like that disclosed in Namminga, with the apparatus as otherwise disclosed in Chen to allow for electrical connection with the portable device while in the case.
Chen as modified by Namminga does not explicitly disclose wherein the removable endpiece defines at least one hole for receiving a fastener to attach the removable endpiece to the shell using the fastener and at least one fastener independent of the shell and removable endpiece to attach the removable endpiece to the shell. However, providing such was not new in the art of portable electronics. For example, Sanford discloses a removable endpiece 1120 (Figure 11) defining at least one hole 1140b, 1140d for receiving a fastener 1150b, 1150d to attach the removable endpiece 1120 to a shell 120 using the fastener and the at least one fastener is independent of the shell and removable endpiece to attach the removable endpiece to the shell (See Figure 11). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have used fasteners received through holes in an endpiece, as disclosed in Sanford, to attach the removable endpiece to the shell as otherwise disclosed in Chen as modified by Namminga. A person having ordinary skill in the art would find motivation because Sanford teaches that using fasteners ensures adequate retention of the endpiece to the shell and ensures the electrical connections to the electronics within the shell are maintained. Sanford, col. 20, ll. 17-62.
In re Claim 2, Chen discloses wherein the removable endpiece 2 is configured for, after insertion of the portable electronic device 5, insertion through the side opening 13 so that at least 50% of the volume of the removable endpiece is disposed in the cavity. See Chen, Figures 6 and 7.
In re Claim 3, Chen as modified by Namminga and Sanford disclose the limitations as noted above but do not explicitly disclose wherein, when inserted into the cavity after insertion of the portable electronic device, no portion of the removable endpiece is exposed through the window. However, even if the combination were considered to require an enlarged endpiece, it would have been obvious to a person having ordinary skill in the art to have sized and shaped the endpiece and the window such that no portion of the endpiece is exposed through the window since a changing in size or shape is generally recognized as being within the level of ordinary skill in the art. See MPEP §2144.04 (IV). Here, where the claimed configuration merely keeps the endpiece outside the perimeter of the window (a configuration already shown in Chen alone) the case would not perform differently as a result and therefore the recited arrangement does not patentably distinguish over the disclosed combination.
In re Claim 4, Chen as modified by Namminga discloses wherein, when inserted into the cavity after insertion of the portable electronic device (5 in Chen), no portion of the removable endpiece (2 in Chen, end piece shown in Figures 19 and 20 in Namminga), except the male plug, is disposed in a region of the cavity that is below the window (See Figures 13 and 19 in Namminga).
In re Claim 5, Chen discloses wherein an entirety of the base of the removable endpiece 2 is configured for insertion through the side opening 13 into the cavity. See Figures 6 and 7.
In re Claim 6, Chen discloses wherein an entirety of the base of the removable endpiece 2 is configured for insertion through the side opening 13 and disposition between the front panel 4 and the back panel 3. See Figures 6 and 7.
In re Claim 8, Chen as modified by Namminga discloses wherein the contactor comprises a female positioning interface recessed with respect to a surface of the base with the second contacts disposed on the female positioning interface. See Namminga, Figures 19, 21 and 23.
In re Claim 9, Chen as modified by Namminga and Sanford discloses wherein a surface of the contactor (Figure 19 in Namminga), at which the second contacts are exposed, is flush with a surface of the base.
In re Claims 12 and 16, Chen discloses wherein the portable electronic device 5 is configured for insertion into the case 1.
In re Claim 13, Chen discloses a case for a portable electronic device, the case comprising: a shell 1 comprising a back panel 3, a front panel 4 opposite the back panel and defining a closed perimeter of a window, and at least one side wall (See Figure 1, for example) extending between the back panel and the front panel, wherein the back panel 3, front panel 4, and at least one side wall define a cavity for receiving and holding the portable electronic device 5 within the shell and further define a side opening 13, separate from the window, between the back panel and the front panel for insertion of the portable electronic device through the side opening into the cavity; and a removable endpiece 2 comprising a base wherein at least 50% of a volume of the removable endpiece 2 is configured for insertion through the side opening into the cavity 13 for engagement with, and retention of, the portable electronic device within the cavity (See Figures 6 and 7).
Chen does not explicitly disclose an adapter coupled to the base, the adapter comprises a male plug configured for insertion into a female port of the portable electronic device, a contactor opposite the male plug, a plurality of first contacts disposed on the male plug, and a plurality of second contacts disposed on the contactor and electrically coupled to the first contacts. However, providing such was not new in the art of portable electronics. For example, Namminga discloses an adapter (See Figures 19 and 20) on a removable endpiece comprising a male plug (See Figure 20) configured for insertion into a female port of a portable electronic device, a contactor (See Figure 19) opposite the male plug, and inherently discloses first contacts on the male plug and second contacts on the contactor to allow for electrical connection with the portable electronic device. It would have been obvious to a PHOSITA at a time before the effective filing date of this application to have provided an adapter, like that disclosed in Namminga, with the apparatus as otherwise disclosed in Chen to allow for electrical connection with the portable device while in the case.
Chen as modified by Namminga does not explicitly disclose wherein the removable endpiece defines at least one hole for receiving a fastener to attach the removable endpiece to the shell using the fastener and at least one fastener independent of the shell and removable endpiece to attach the removable endpiece to the shell. However, providing such was not new in the art of portable electronics. For example, Sanford discloses a removable endpiece 1120 (Figure 11) defining at least one hole 1140b, 1140d for receiving a fastener 1150b, 1150d to attach the removable endpiece 1120 to a shell 120 using the fastener and the at least one fastener is independent of the shell and removable endpiece to attach the removable endpiece to the shell (See Figure 11). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have used fasteners received through holes in an endpiece, as disclosed in Sanford, to attach the removable endpiece to the shell as otherwise disclosed in Chen as modified by Namminga. A person having ordinary skill in the art would find motivation because Sanford teaches that using fasteners ensures adequate retention of the endpiece to the shell and ensures the electrical connections to the electronics within the shell are maintained. Sanford, col. 20, ll. 17-62.
In re Claim 14, Chen discloses wherein at least 80% of the volume of the removable endpiece 2 is configured for insertion through the side opening 13 into the cavity for engagement with, and retention of, the portable electronic device 5 within the cavity. See Chen, Figures 6 and 7.
In re Claim 17, Chen discloses a case for a portable electronic device, the case comprising: a shell 1 comprising a back panel 3, a front panel 4 opposite the back panel and defining a closed perimeter of a window, and at least one side wall (See Figure 1, for example) extending between the back panel and the front panel, wherein the back panel 3, front panel 4, and at least one side wall define a cavity for receiving and holding the portable electronic device 5 within the shell and further define a side opening 13, separate from the window, between the back panel and the front panel for insertion of the portable electronic device through the side opening into the cavity; and a removable endpiece 2 configured for, after insertion of the portable electronic device, insertion through the side opening into the cavity and between the front panel and the back panel for engagement with, and retention of, the portable electronic device within the cavity.
Chen does not explicitly disclose wherein the removable endpiece provides an electrical connection to the portable electronic device. However, providing such was not new in the art of portable electronics. For example, Namminga discloses an adapter (See Figures 19 and 20) on a removable endpiece comprising a male plug (See Figure 20) configured for insertion into a female port of a portable electronic device, a contactor (See Figure 19) opposite the male plug, and inherently discloses first contacts on the male plug and second contacts on the contactor to allow for electrical connection with the portable electronic device. It would have been obvious to a PHOSITA at a time before the effective filing date of this application to have provided an adapter, like that disclosed in Namminga, with the apparatus as otherwise disclosed in Chen to allow for electrical connection with the portable device while in the case.
Chen as modified by Namminga does not explicitly disclose wherein the removable endpiece defines at least one hole for receiving a fastener to attach the removable endpiece to the shell using the fastener and at least one fastener independent of the shell and removable endpiece to attach the removable endpiece to the shell. However, providing such was not new in the art of portable electronics. For example, Sanford discloses a removable endpiece 1120 (Figure 11) defining at least one hole 1140b, 1140d for receiving a fastener 1150b, 1150d to attach the removable endpiece 1120 to a shell 120 using the fastener and the at least one fastener is independent of the shell and removable endpiece to attach the removable endpiece to the shell (See Figure 11). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before the effective filing date to have used fasteners received through holes in an endpiece, as disclosed in Sanford, to attach the removable endpiece to the shell as otherwise disclosed in Chen as modified by Namminga. A person having ordinary skill in the art would find motivation because Sanford teaches that using fasteners ensures adequate retention of the endpiece to the shell and ensures the electrical connections to the electronics within the shell are maintained. Sanford, col. 20, ll. 17-62.
In re Claim 18, Chen discloses wherein the removable endpiece 2 is configured for, after insertion of the portable electronic device 5, insertion through the side opening 13 so that at least 50% of the volume of the removable endpiece is disposed in the cavity. See Chen, Figures 6 and 7.
In re Claim 20, Chen discloses wherein the portable electronic device 5 is configured for insertion into the case 1.
In re Claims 21 and 23, Sanford discloses wherein each of the at least one hole 1140b, 1140d is threaded. Sanford, Figure 11.
Claim(s) 7, 10 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Publication 2014/0036420), Namminga et al. (US Patent D718,293), Sanford et al. (US Patent 8,023,261) and further in view of Carnevali (US Patent 11,029,731).
In re Claim 7, Chen in view of Namminga and Sanford disclose the limitations of Claim 1 above, Namminga disclosing inherently first and second contacts on a male plug and a contactor opposite the male plug (Namminga, Figures 19 and 20), but they do not explicitly disclose wherein the contactor comprises a male positioning interface extending away from the base with the second contacts disposed on the male positioning interface. However, Carnevali discloses a contactor 106 comprising a male positioning interface 112 extending away from a base (Figures 1 and 2A) with a plurality of second contacts 108 disposed on the male positioning interface (Figures 1 and 2A). It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s effective filing date to have provided a male positioning interface like that disclosed in Carnevali in place of the female connector as otherwise disclosed in Namminga to allow for the case (with phone inserted) to be connected to other types of external devices (such as a docking cradle as disclosed in Carnevali). This extended interface provides positive physical positioning and alignment of the contactor within a corresponding female socket of the external device, thereby ensuring reliable electrical coupling between the second contacts and the external device while the portable electronic device remains in the case. Moreover, Namminga and Carnevali together demonstrate that recessed (female) and protruding (male) contactor configurations were both known arrangements for electrically coupling a cased portable electronic device to an external device, and the substitution of the male positioning interface of Carnevali for the recessed contactor arrangement of Namminga amounts to no more than the simple substitution of one known contactor configuration for another to obtain the predictable result of electrical coupling to an external device.
In re Claim 10, Chen as modified by Namminga and Sanford disclose the limitations as noted above but do not explicitly disclose wherein the removable endpiece further comprises a female connector spaced apart from the contactor, the female connector comprising a plurality of third contacts electrically coupled to the first contacts. However, Carnevali discloses wherein an endpiece further comprises a female connector 110 spaced apart from a contactor 106, the female connector comprising a plurality of third contacts 162 electrically coupled to a first contact 109. It would have been obvious to a person having ordinary skill in the art of portable electronics at a time before applicant’s effective filing date to have provided additional connection points as disclosed in Carnevali with the apparatus as otherwise disclosed in Chen as modified by Namminga and Sanford. This would allow for the connection to other external devices. Carnevali, col. 5 ll. 27-37.
In re Claim 22, Chen as modified by Namminga, Sanford and Carnevali further discloses wherein the male plug (Namminga Figure 20; Carnevali 109 Figure 2B) extends into the cavity and the contactor (Carnevali, 106 Figures 1 and 2A) defines a flat surface perpendicular to a direction that the male plug extends into the cavity (Carnevali, Figures 1 and 2A), wherein the second contacts (Carnevali 108) are disposed on the flat surface of the contactor.
Response to Arguments
Applicant’s arguments have been considered but are moot because of the new ground of rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrian S Wilson whose telephone number is (571)270-3907. The examiner can normally be reached Monday through Friday, 9am to 5pm.
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841
Prosecution Insights