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 Objections
Claim 5 is objected to because of the following informalities: “wherein elastomeric band” should be “wherein the elastomeric band”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: in line 1, “10..” should be “10.”; in line 5, “wherein first mounting plate” should be “wherein the first mounting plate”; in line 6, “outwardly gaps” should be “outwardly facing gaps”. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: in line 5, “wherein mounting plate” should be “wherein the first mounting plate”. Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 8 recites “further comprising a removable cover” but claim 1 already recites the housing with a mutually engageable cover and a body, and the specification does not disclose any other removable cover and so does not provide proper antecedent basis for an additional cover/removable cover as recited in claim 8; claim 14 recites the functional use of a pad to attach the apparatus/housing to the phone, but claim 1 recites that the apparatus/housing is attachable to the cell phone/etc. using rails and the specification only discloses using one or the other separately does not encompass using both structures or having both be present as alternatives.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the removable cover in addition to the cover of the housing per claim 8 and the use of a pad per claim 14 in addition to the rails per claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 8 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With Respect to Claim 8
The specification only discloses a single removable cover (14) which is also the mutually engageable cover of the housing, and so does not disclose a second removable cover as required by claim 8. As such, this subject matter was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With Respect to Claim 14
The specification discloses the use of a pad as an attachment mechanism in one embodiment and the use of rails as an attachment mechanism in a different embodiment, and so the subject matter of claim 14 which in combination with claim 1 from which it depends requires rails for attachment and additionally recites the use of a pad for attachment was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 6-7, 10-13, 16 and 18-20 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.
With Respect to Claim 6
It recites the limitation "the accessory". There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the claim should be taken to depend from claim 5 to provide the proper antecedent basis and also clearly structurally recite the accessory, or if it should have some other scope.
The phrase “belt clip car mount” is unclear, and appears to be a typo meant to be “belt clip, car mount” but might also be intended to refer to a belt clip usable as a car mount or have some other scope and so it is indefinite.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 7
The phrase “one a kickstand and a wallet” is clearly a typo but it is unclear what scope is intended. For the purposes of examination on the merits, Examiner takes it to mean “one of a kickstand and a wallet”.
With Respect to Claim 9
It recites the limitation "the removable cover". There is insufficient antecedent basis for this limitation in the claim.
With Respect to Claim 10
It is unclear whether “removably attaches to” structurally recites the gaps/rails and apparatus, or if this phrase is a functional limitation, noting that “removably” means “able to be removed” which appears to be functional, but the phrase is also similar to and could arguably be interpreted as “is removably attached” which would be a structural limitation. For the purposes of Examination on the merits, Examiner takes the phrase to be a functional limitation as the broadest reasonable interpretation of the unclear claim language.
The scope of the phrases “having one of inwardly and outwardly facing rails and a plurality of gaps” and “a one of a plurality of opposing inwardly and outwardly gaps and first rails and a plurality of second rails” are unclear, noting e.g. that it is unclear whether it means having one of inwardly facing rails or outwardly facing rails, one of inwardly facing rails and outwardly facing rails or a plurality of gaps, or one of inwardly facing rails or outwardly facing rails or a plurality of gaps. Similarly it is unclear whether the second phrase requires inwardly and outwardly facing gaps or first rails or a plurality of second rails, inwardly facing gaps or outwardly facing gaps, or has some other scope.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 11
The phrase “a cover having on a side with” is not grammatically correct and is apparently a typo, but it is unclear what the phrase is meant to mean. Because of this, the scope of the entire claim is indefinite as it is unclear what the claim requires. It is noted that the claim appears to require the cover having first rails and a plurality of second rails, but this subject matter is not supported by the drawings or specification which does not disclose two pluralities of rails on the cover, and would necessitate drawing objections, specification objections, and 112 1st paragraph rejections if it were taken to have that scope.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 13
It recites the limitation "the one or more channels" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
With Respect to Claim 16
It recites the limitation " the plurality of triangularly shaped spaces". There is insufficient antecedent basis for this limitation in the claim. For the purposes of Examination on the merits, Examiner takes the claim to depend from claim 16 in order to provide the proper antecedent basis.
With Respect to Claims 11-13 and 18-20
These claims are rejected as they depend from a rejected claim and so incorporate its indefinite scope.
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.
Claims 10, 12, and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Publication #2014/0228082 to Morrow (Morrow). Morrow discloses:
With Respect to Claim 10
An apparatus comprising: a case; a first mounting plate (rear wall of case) formed integral with the case and having one of inwardly and outwardly facing rails and a plurality of gaps (it has a plurality/two inwardly facing rails and/or a plurality of gaps (gaps formed by 116 and/or gap formed by rail interior)); wherein first mounting plate removably attaches to a one of a plurality of opposing inwardly and outwardly gaps and first rails and a plurality of second rails (it attaches to outwardly facing gaps/grooves 123 and first rails which form the gaps/grooves, or a plurality of second rails as the two rails forming grooves 123 can also be considered a plurality of second rails) of a removable and connectable apparatus (hinged container 120).
With Respect to Claim 12
The apparatus of claim 10, wherein the removable cover includes one or more additional accessories attached to a top side of the cover including one of a wallet, kickstand, phone mount, charger, and a lanyard ([0049] discloses a wallet cartridge which is a wallet to the extent claimed).
With Respect to Claim 18
The apparatus of claim 10, wherein the case is for a cellular phone or a portable device (it is a cellular phone per abstract, which is also a portable device).
With Respect to Claim 19
The apparatus of claim 10, wherein the mounting plate includes a locking tab (either 116) at one end (e.g. one is on the left end, the other is on the right end, or alternately both are on the top end to the extent broadly claimed).
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 (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 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 20 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2014/0228082 to Morrow (Morrow), either alone or in view of official notice.
With Respect to Claim 20
The apparatus of claim 10, wherein mounting plate is formed by one of over molding the mounting plate into the case and a mold that has one of the inwardly and outwardly facing rails and the plurality of gaps and case formed together (as this is an apparatus claim, these recitations of how the structure is formed are only limiting as to the structure they imply and so an actual teaching of this manufacturing method are not necessary, it is Examiner’s position that the disclosure that the case/mounting plate is/can be made from plastics which are capable of being formed using a mold is sufficient to meet this limitation).
Alternately, Examiner takes official notice that it is known in the art to form similar plastic cases using molding techniques and the use of a mold having the rails/gaps formed as part of the case is inherent or would have been obvious to one of ordinary skill in the art before the filing date of this application as the case as shown is formed as a single piece with the rails and/or constitutes at most merely making integral which does not patentably distinguish over the prior art (MPEP 2144.04).
Claims 10, 12, and 18-20 are rejected under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2014/0228082 to Morrow (Morrow) in view of U.S. Patent Publication #2008/0164291 to Goradesky (Goradesky).
With Respect to Claims 10, 12, and 18-20
As an alternative to the rejection of these claims above using Morrow alone, as to the plurality of gaps, Goradesky discloses forming a similar rail attachment in which the rail(s) include a plurality of gaps (noting that the rails are formed by tabs with gaps between each tab 510 or 512).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Goradesky, to form the rails of Morrow out of tabs with gaps between them, in order to reduce the amount of motion necessary to form the interlock, to reduce costs and/or weight (i.e. the gaps reduce the amount of material used), and/or as a mere substitution of one art known fastener/slidable interlock mechanism for another.
Claims 1, 3-9, and 17 are rejected under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2015/0342324 to Zhao (Zhao) in view of U.S. Patent #10,171,639 to Hu (Hu) and U.S. Patent Publication #2014/0228082 to Morrow (Morrow).
With Respect to Claim 1
An apparatus, comprising: a housing (100) having a body, the body being selectively attachable to a cell phone or to a protective case or cover for a cell phone or another portable device ([0057], [0063]), the body having a first side; a flexible elastic band (105, [0058-0059]) disposed inside the housing (FIG. 1), the band being accessible through an opening in the housing and being and stretchable outwardly through an opening in the housing for a distance (FIGS. 1-2G and description); an array of rotatable pulleys ([0059-0060]) disposed in spaced-apart relation inside the housing (not explicitly stated but inherent in there being multiple pulleys or clearly obvious as pulleys requires some spacing to operate, and/or see spacing of reels 140 providing further evidence of spacing them apart being inherent or obvious), with each rotatable pulley having a periphery contacting and frictionally engaging the elastic band to support the elastic band in tension when a portion of the elastic band is stretched outwardly through the opening in the housing (they are a tensioning system per [0059], the periphery of the pulley contacting the band is the normal use of pulleys and so inherent/obvious, and although frictional engagement is not explicitly stated it is Examiner’s position that there will be some friction between the parts and they engage each other which is sufficient to meet the claim language or alternately having some frictional engagement is obvious as there is no disclosure of reducing or avoiding friction); but does not disclose a particular type of elastic material and so does not disclose that it is elastomeric, does not disclose details of the housing and so does not disclose it having a mutually engageable cover and a body, and does not detail a particular attachment mechanism and so does not disclose a plurality of first rails formed on the first side of the body to removably couple to a mounting plate on the cell phone, the protective case or cover for the cell phone or the portable device.
Hu discloses forming a similar portable device suspension device having a housing with a mutually engageable cover (50) and a body (10), the body being selectively attachable to a cell phone or a protective case or cover.
Morrow discloses removably attaching an accessory (120, noting also that it is a container) to a mobile device case using a plurality of first rails (rails forming grooves 123, FIG. 5) formed on the first side of the accessory body to removably couple to a mounting plate on the cell phone, the protective case or cover for the cell phone or the portable device (noting rear wall of the case including the rails 114, see also FIG. 5 and description). It is noted that Zhao discloses that similar accessories to its retractable band assembly are also formed with containers to store other items (see, e.g. [0008-0009]).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Hu, to form the housing with a mutually engageable cover and body as taught by Hu, in order to allow for access to the interior for repair/replacement/cleaning/etc and/or as a mere selection of an art appropriate housing structure to use.
It would also have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Morrow, to removably attach the mobile device or case of Zhao to the housing of Zhao using a plurality of first rails formed on the first side of the body to removably couple to a mounting plate on the cell phone, the protective case or cover for the cell phone or the portable device, for the benefits disclosed by Morrow for its structure, as a mere selection of an art appropriate attachment mechanism to use, and/or as doing so constitutes at most merely making separable which does not patentably distinguish over the prior art (MPEP 2144.04). For clarity, although the combination encompasses merely adding the Morrow rails to the housing and device/case/etc, the combination encompasses also adding a container structure similar to that of Morrow or some other container structure to the housing of Zhao/the combination, in view of the disclosure of Zhao that it is known to use similar housings to store items.
It would also have been obvious to select an elastomeric material for the elastic band for the art known benefits of a given elastomeric material, as a mere selection of an art appropriate elastic material to use, and/or as 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.
With Respect to Claim 3
The apparatus of claim 1, wherein one or more clips (120, see [0060]) are coupled to the elastomeric band.
With Respect to Claim 4
The apparatus of claim 3, and that the clips can take many forms, but does not provide details of the clip and so does not disclose wherein the one or more clips are one of rotatable, detachable, and spring loaded.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to make the one or more clips detachable, in order to allow for removal for repair/replacement/cleaning, and/or as doing so constitutes at most merely making removable which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 5
The apparatus of claim 1, and the use of clips (120) along the elastomeric band and that embodiments may comprise clips to attach various different accessories ([0063]), but does not detail where such clips are attached and so does not disclose wherein elastomeric band receives one or more clips coupled to an accessory.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to add the clips to attach accessories to the elastomeric band, in order to hold the accessories along the band and available for use and avoid interfering with the housing and/or its attachment to the mobile device or cause discomfort to the user (e.g. clips on the front would interfere with attachment of the device/case there, on the rear would contact the user, and either of these locations would also be less accessible than being along the band)
With Respect to Claim 6
The apparatus of claim 1, wherein the accessory is one of a wallet, external battery charger, a wireless charger, earbud holders, multi-tool kit, mirrors, small bag, selfie stick, belt clip carmount, camera stand, and a protective frame to seal open areas of the phone or phone case from water and dust/debris (holding earbuds is disclosed which inherently requires an attached earbud holder, the disclosure of chargers inherently indicates an external battery charger and also renders obvious a wireless charger for the art known benefits of wireless chargers and/or as a mere selection of an art appropriate charger to use).
With Respect to Claim 7
The apparatus of claim 1, further comprising one a kickstand and a wallet (the wallet cartridge per Morrow is a wallet to the extent claimed and obvious to add per Zhao’s disclosure of similar containers combined with housings and/or to obtain the benefits of the container/wallet in combination with the benefits of the Zhao apparatus).
With Respect to Claim 8
The apparatus of claim 1, further comprising a removable cover (the device case/cover is a removable cover; alternately the combination with Morrow renders obvious adding a removable cover/hinged container side 125 or alternately any of the disclosed interchangeable cartridges is a removable cover to the extent broadly claimed as they will cover some portion of the container interior and must be removable in order to be interchanged).
With Respect to Claim 9
The apparatus of claim 1, wherein the removable cover includes one or more additional accessories attached to a top side of the cover including one of a wallet, kickstand, phone mount, charger, and a lanyard (noting interchangeable cartridges includes a wallet cartridge which is a wallet and is an accessory on a top side of the cover 128).
With Respect to Claim 17
The apparatus of claim 1, wherein the mounting plate is formed integral with the case (inasmuch as the structure is capable of use with a protective case having an integrally formed mounting plate as claimed, for clarity the mounting plate is clearly only functionally recited).
Alternately, Morrow renders obvious forming the mounting plate integrally with a/the case, noting the rear wall of the Morrow case is a mounting plate to the extent claimed.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2015/0342324 to Zhao (Zhao) in view of U.S. Patent #10,171,639 to Hu (Hu) and U.S. Patent Publication #2014/0228082 to Morrow (Morrow) as applied to claim 1 above, either alone or further in view of U.S. Patent Publication #2008/0164291 to Goradesky (Goradesky).
With Respect to Claim 2
The apparatus of claim 1, wherein the mounting plate includes a plurality of second rails (114) and a plurality of gaps (noting gap formed in rail that receives the other rails; alternately gaps formed by 116).
Alternately, Goradesky discloses forming a similar rail attachment in which the rail(s) include a plurality of gaps (noting that the rails are formed by tabs with gaps between each tab 510 or 512).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Goradesky, to form the rails of Morrow out of tabs with gaps between them, in order to reduce the amount of motion necessary to form the interlock, to reduce costs and/or weight (i.e. the gaps reduce the amount of material used), and/or as a mere substitution of one art known fastener/slidable interlock mechanism for another.
Claim 13 is rejected under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2015/0342324 to Zhao (Zhao) in view of U.S. Patent #10,171,639 to Hu (Hu) and U.S. Patent Publication #2014/0228082 to Morrow (Morrow) as applied to claim 1 above, either alone or further in view of U.S. Patent #8,915,409 to Smith (Smith).
With Respect to Claim 13
The apparatus of claim 1, wherein the elastomeric band is configured to enable the phone to hang one of vertically and horizontally, but does not disclose when the elastomeric band is received in the one or more channels (e.g. Zhao does not disclose channels).
However, Hu discloses forming a similar extendable/retractable band that is located in a channel in a housing and is configured to enable the phone to hang one of vertically and horizontally, and therefore is configured to enable the phone to hang one of vertically and horizontally when the elastomeric band is received in the one or more channels.
Smith discloses forming a similar extendable and retractable band and the housing including channels (26 and/or 27, FIGS. 6B, 8-9) in order to guide the band and secure it in position.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Hu, to add internal channels as taught by Hu to the structure of Zhao/the combination, in order to guide the band internally to prevent it from tangling, to separate the band from other internal parts (e.g. if a container structure or the like is added), and/or as a mere selection of an art appropriate internal structure for the housing.
Alternately, although Examiner maintains that the combination with Hu is sufficient to meet the claim language, it would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Smith, to add channels (and slots, etc) as taught by Smith to the structure of Zhao/the combination, in order to guide the strap, provide stop structures, and/or for the other benefits disclosed by Smith for its structure.
Claim 14 is rejected under 35 U.S.C. 103 as obvious over U.S. Patent Publication #2015/0342324 to Zhao (Zhao) in view of U.S. Patent #10,171,639 to Hu (Hu) and U.S. Patent Publication #2014/0228082 to Morrow (Morrow) as applied to claim 1 above, and further in view of U.S. Patent #5,331,721 to Raum (Raum), either alone or also in view of U.S. Patent Publication #2015/0097008 to Adeyemi (Adeyemi).
With Respect to Claim 14
The apparatus of claim 1, but does not disclose wherein at least one of the front and rear covers of the housing is selectively attached to a cell phone or to a protective case for a cell phone by use of a pad treated with a pressure-sensitive adhesive that is applied to facing surfaces of the apparatus and one of the cell phone or protective case for a cell phone.
However, Raum discloses the use of a pad treated with a pressure-sensitive adhesive (Col. 1 lines 35-38 and 43-49) that is applied to facing surfaces of two parts (specifically an electronic device and a carrying/hanging structure to attach them together.
Adeyemi discloses the use of adhesive (148) to attach a similar retractor housing structure and that this is a substitute for various other attachment mechanism such as mechanical connectors (e.g. FIG. 10).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Raum, to use a pad treated with a pressure-sensitive adhesive that is applied to facing surfaces of the apparatus and one of the cell phone or protective case for a cell phone, in order to allow for attachment to a phone/case which does not include the rails for more universal applicability. Alternately, although Examiner maintains that Raum’s disclosure is sufficient, Adeyemi’s disclosure provide additional motivation for and/or evidence of the obviousness of using adhesive to attach the two parts together.
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.
Claims 1-9 and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,388,979, claims 1-16 of U.S. Patent #11,659,917, or claims 1-24 of U.S. Patent No. 11,896,100 in view of Morrow, Zhao, Goradesky, Smith, Raum, and/or Adeyemi. Claims 1-9 and 13-20 contain many of the same or similar limitations to claims 1-8 of the ‘979 patent, claims 1-16 of the ‘917 patent, or claims 1-24 of the ‘100 patent, and any limitations not present or obvious in view of those patents alone are obvious in view of the disclosures of the other cited references, see the rejections of the claims above for the teachings of each of those references, noting that the teachings of the ‘979 and/or ‘917 patents replace most or all of the teachings of Zhao.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734