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
Claims 17-19 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2025-12-09. Claims 11-16 have been canceled and so restriction with respect to group II is moot.
Claims 3, 5, 20 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2025-12-09.
Applicant's election with traverse of species A in the reply filed on 2025-12-09 is acknowledged. The traversal is on the ground(s) that claim 1 is generic, this traversal is accepted, this however does not result in all species being examined for patentability as neither the search burden nor the independence/distinctness of the species relies on whether or not claim 1 is generic. Applicant additionally argues that the species are not mutually exclusive. This is not found persuasive because applicant appears to be utilizing the common definition of “mutually exclusive” meaning that the features of one species exclude the features of the other species. When applied to species claims to different species are “mutually exclusive” if one claim recites limitations disclosed for a first species but not a second (e.g. they could sustain separate invention claims). As, for example, a screw is disclosed in group C but not group A then the claims to those groups are mutually exclusive (MPEP 806.04(c)). As the scope of the different species recite features specifically for the disclosed species, even if they relate to a set of common features (e.g. the generic claim), they are mutually exclusive (MPEP 806.04(e)).
Applicant argues the species would not result in a serious search burden, however as noted in the election/restriction dated 2025-10-22; the paragraphs cited for the separate species cite divergent subject matter of those species, and the additional classes/subclasses, electronic resources, and differing search strategies and queries required to search all the features of paragraphs 30-38, 39-41, and 42-52 (i.e. species A, B, and C), are spread across 22 paragraphs worth of differing descriptions, features, and elements that must be searched appears to be well within the definition of what would be understood to be a serious search burden.
The requirement is still deemed proper and is therefore made FINAL.
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:
“gasket” located between non-compliant and compliant of claim 7
“second slot” of claim 8
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 § 102
(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, 2, 4, 6-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobs (US 2013/0342971).
Regarding claim 1 Jacobs discloses:
A computing device comprising:
a housing (e.g. 112 FIG.11), wherein the housing includes a slot (for 114 FIG.11) along at least a portion of an interior side of the housing;
a panel (e.g. 18 FIG.11); and
a trim subassembly (e.g. between 18 and 112 FIG.11), wherein the trim subassembly includes a non-compliant component (e.g. 100 "high rigidity" paragraph [042]) and a compliant component (e.g. 114 silicone material paragraph [0007]), wherein at least a portion of the non-compliant component is attached to the panel (e.g. shown FIG.11), wherein the compliant component is inserted into the slot of the housing (e.g. shown FIG.11), and wherein the compliant component is disposed between one or more sides of the non-compliant component and the housing (e.g. shown FIG.11).
Regarding claim 2 Jacobs discloses:
the compliant component deforms into the slot (e.g. indicated/shown FIG.11) to provide a seal against at least one of water or dust intrusion into the housing (e.g. via being adhered FIG.11).
Insofar as “deforms” requires a process step of deformation this claim is regarded as a product-by-process limitation: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Insofar as a component is formed via a process utilizing a deformation step, the prior art would be understood by one of ordinary skill in the art to disclose such product for the reasons pointed out above.
Regarding claim 4 Jacobs discloses:
the trim subassembly is adhered to the panel with adhesive (e.g. 48 FIG.11).
Regarding claim 6 Jacobs discloses:
the non-compliant component and the compliant component are molded together as a single subassembly (e.g. via 48 FIG.11).
Please note this claim is regarded as a product-by-process limitation: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Insofar as a component is formed via a process utilizing a molding step, the prior art would be understood by one of ordinary skill in the art to disclose such product for the reasons pointed out above.
Regarding claim 7 Jacobs discloses:
the non-compliant component and the compliant component are attached to each other at least in part by a gasket (e.g. via 48 FIG.11) located at least in part between the non-compliant component and the compliant component.
Regarding claim 8 Jacobs discloses:
the slot is a first slot, wherein the trim subassembly is a first trim subassembly (e.g. one edge of 100 FIG.9), the panel is a first panel (e.g. one edge of 102 FIG.9), and where the computing device includes a second trim subassembly (e.g. other edge of 100 FIG.9) and a second panel (e.g. other edge of 102 FIG.9), and wherein the compliant component of the second trim subassembly is inserted into a second slot of the housing (e.g. as indicated FIG.11).
Regarding claim 9 Jacobs discloses:
the trim subassembly and the housing are not attached using presence-sensitive adhesive (e.g. silicone paragraph [0006]).
Regarding claim 10 Jacobs discloses:
the compliant component is formed at least in part of liquid silicone rubber (e.g. silicone paragraph [0007]).
Please note this claim is regarded as a product-by-process limitation: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Insofar as a component is formed via a process utilizing liquid silicone rubber, the prior art would be understood by one of ordinary skill in the art to disclose such product for the reasons pointed out above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references cited on the PTO-892 disclose/teach similar computing device housings as those disclosed in the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THERON S MILLISER whose telephone number is (571)270-1800. The examiner can normally be reached 9-6.
Limited examiner interviews are available.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Imani N. Hayman can be reached at (571) 270-5528. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THERON S MILLISER/Examiner, Art Unit 2841 /IMANI N HAYMAN/Supervisory Patent Examiner, Art Unit 2841
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