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 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.
Claim 8 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.
Regarding claim 8, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further regarding claim 8, the language reflects both method and structure making it unclear where the metes and bounds of the claim actually are. SEE MPEP 2172.05(p):
2173.05(p) Claim Directed to Product-By- Process or Product and Process [R-07.2022]
II. PRODUCT AND PROCESS IN THE SAME CLAIM
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). In Katz, a claim directed to "[a] system with an interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data" was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. Katz, 639 F.3d at 1318, 97 USPQ2d at 1749 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited "an input means" and required a user to use the input means was found to be indefinite because it was unclear "whether infringement … occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means."); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In contrast, when a claim recites a product and additional limitations which focus on the capabilities of the system, not the specific actions or functions performed by the user, the claim may be definite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See Mastermine Software, Inc. v. Microsoft Corp., 874 F.3d 1307, 124 USPQ2d 1618 (Fed. Cir. 2017).
The present claim is directed to the use of a specific structure, making it unclear if it is the method steps or the actual structure that would infringe the claim.
Allowable Subject Matter
Claims 1-7 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art before the effective filing date teaches many examples of waterproof/watertight devices including portable phones, cameras and tablets. It is further known to test these devices using electrical sensors, or mechanical devices which change to indicate a change in pressure and/or a loss of water tightness. For example, Rayner (US 2012/0314354 A1) discloses a device designed to be waterproof, having a transparent cover for visibility of the screen, which may use buckles for connection, which incorporates an electrical detector for watertightness. FUJITSU LIMITED (EP 2846516 A1) discloses a waterproof caps which may be used with a waterproofed device such as a smartphone.
The prior art does not teach or expressly disclose, as a whole and in combination, all the mechanical details of the waterproof self-check mechanism in combination with a mobile phone case as described in independent claim 1 and therefor claims 2-7 by incorporation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892 for further references related to the state of art of waterproofing portable devices and their related structure as well as means for testing the waterproofing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEWIS G WEST whose telephone number is (571)272-7859. The examiner can normally be reached Monday-Friday, 8:00-4:00.
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/LEWIS G WEST/Primary Examiner, Art Unit 2699