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 .
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 concave and convex portions having a bent shape (for clarity, FIG. 8 purports to show the bent shape, but it only shows a bent structure and does not show a concave or convex structure that is part of the device/cover, and so does not show how the convex/concave structures of the device/cover are bent) 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 2 and 12 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 Claims 2 and 12
Although the specification generally indicates that the concave and convex portions are a “bent” shape, no detail is provided as to what this means or how they are formed as “bent” shapes. It is noted that the drawings which show these structures as part of the device/cover do not appear to show them as “bent”. 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.
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 2, 9 and 12 are 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 Claims 2 and 12
It is unclear what the scope of the term “bent” is, noting that the drawings which show the convex and concave structures show solid structures rather than something protruding with an interior bend. It is unclear whether the term “bent” should be interpreted as broadly encompassing having a curved/bent exterior surface, or if it has some other scope.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 9
The phrase “a decorative groove is provided in the side surface portion, at a position in the groove different from a position where the first concave portion and the second concave portion are provided, a hole is provided to output a sound from the speaker to an outside of the electronic device,” is unclear, noting that it appears to require the decorative groove to be provided at a different position in the decorative groove, which does not make sense.
The remainder of this office action is based on the invention as best understood by Examiner.
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.
Claims 1, 5, 11, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay).
With Respect to Claim 1
Byun discloses an electronic device cover comprising a first cover portion (23) configured to cover at least a part of an electronic device (it covers at least the sides and rear), the first cover portion being attachable to and detachable from the electronic device, wherein the first cover portion includes a first convex portion (232 or 532 or 533)) configured to fit into a first concave portion provided in the electronic device; but does not disclose a second convex portion configured to fit into a second concave portion provided in the electronic device, and when attaching the electronic device cover to the electronic device, a first insertion direction in which the first convex portion is inserted into the first concave portion and a second insertion direction in which the second convex portion is inserted into the second concave portion are different.
However, Choay discloses forming a similar cover for an electronic device/watch including multiple mating fastening structures (10/13) with one part on the device and one on the cover and locating them on different sides of the cover and device.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Choay, to add one or more additional mating fastening structures/convex portions (522/523) to one or more of the other interior walls of the cover of Byun, in order to better secure the device in position in the cover and/or as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 5
The electronic device cover according to claim 1, further comprising :a first mounting portion (21) that is connected to the first cover portion and extends to be away from the first cover portion; and a second mounting portion (22) that is connected to the first cover portion and extends to be away from the first cover portion in a direction substantially opposite to the direction in which the first mounting portion extends, wherein the electronic device cover is configured to be wound around an object by combining the first mounting portion and the second mounting portion, the first convex portion is provided adjacent to the first mounting portion, and the second convex portion is provided adjacent to the second mounting portion (FIG. 8 shows the first convex portion adjacent one of the mounting portions, and locating the second convex portion adjacent the other is obvious, particularly in view of Choay’s disclosure that these portions are located along opposing sides).
With Respect to Claim 11
A toy comprising: an electronic device (e.g. a smart phone or MPEG MP3 Player, or other examples provided); and an electronic device cover (23) that is attachable to and detachable from the electronic device, wherein the electronic device includes a first concave portion (232 or 522 or 523) and a second concave portion (per Choay), the electronic device cover includes a first cover portion configured to cover at least a part of the electronic device (noting sidewalls covering the sides of the device), the first cover portion includes a first convex portion configured to fit into a first concave portion (134, FIG. 7) and a second convex portion configured to fit into a second concave portion (per Choay), and when attaching the electronic device cover to the electronic device, a first insertion direction in which the first convex portion is inserted into the first concave portion and a second insertion direction in which the second convex portion is inserted into the second concave portion are different.
With Respect to Claim 15
The toy according to claim 11, further comprising: a first mounting portion (21) that is connected to the first cover portion and extends to be away from the first cover portion; and a second mounting portion (22) that is connected to the first cover portion and extends to be away from the first cover portion in a direction substantially opposite to the direction in which the first mounting portion extends, wherein the electronic device cover is configured to be wound around an object by combining the first mounting portion and the second mounting portion, the first convex portion is provided adjacent to the first mounting portion, and the second convex portion is provided adjacent to the second mounting portion (FIG. 8 shows the first convex portion adjacent one of the mounting portions, and locating the second convex portion adjacent the other is obvious, particularly in view of Choay’s disclosure that these portions are located along opposing sides).
Claims 2 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay) as applied to claim 1 or 11 above, either alone or further in view of either U.S. Patent #8,584,916 to Chen (Chen) or U.S. Patent #6,915,900 to Chen (Chen2).
With Respect to Claim 2
The electronic device cover according to claim 1, wherein at least one of a shape of each of the first concave portion and the first convex portion and a shape of each of the second concave portion and the second convex portion is a bent shape (noting that the protrusions and recesses have bends at the top, see angled/sloping corner portions).
Alternately, Chen discloses a similar protrusion/convex portion and recess in which the protrusion/convex portion has a bent shape (noting curved bend formed by the 33, FIG. 5) in order to allow for elastic deformation of the protrusion/convex portion; Chen2 discloses forming a protrusion (53) for fitting into a recess with a bent shape.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Chen or Chen2 to form the convex portions with a bent shape as taught by either reference in order to allow for resilient movement to assist in the protrusion entering and leaving the recess and/or as a mere substitution of one art known protrusion/convex portion shape for a fastener for another or at most a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 12
The toy according to claim 11, wherein at least one of a shape of each of the first concave portion and the first convex portion and a shape of each of the second concave portion and the second convex portion is a bent shape.
Claims 3-4 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay) as applied to claim 1 or 11 above, either alone or further in view of JP 2003234813 to Kumagai (Kumagai) or U.S. Patent #6,568,573 to Manigley (Manigley).
With Respect to Claim 3
The electronic device cover according to claim 1, wherein a third convex portion (noting Byun discloses two on one side and Choay discloses two on each side, the combination clearly renders obvious a third convex portion) configured to fit into a third concave portion provided in the electronic device is provided in the first cover portion, but does not disclose when attaching the electronic device cover to the electronic device, a third insertion direction in which the third convex portion is inserted into the third concave portion is different from the first insertion direction and the second insertion direction.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to add one or more additional convex and concave portions to the cover and device on the other sides, in order to better secure the device to the cover and/or as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04).
Alternately, Kumagai discloses the use of convex portions (22 and 23) on at least three sides of a device cover for securing the device in place or Manigley discloses the use of three spaced protrusions/convex portions to secure a watch part in place, either of which provides additional evidence of the obviousness of and/or motivation to modify the structure to include additional convex portions/protrusions.
With Respect to Claim 4
The electronic device cover according to claim 3, wherein when a first triangle is configured by connecting the first concave portion, the second concave portion, and the third concave portion as vertices with virtual straight lines, each of interior angles of the first triangle is an acute angle, and when a second triangle is configured by connecting the first convex portion, the second convex portion, and the third convex portion as vertices with virtual straight lines, each of interior angles of the second triangle is an acute angle (it is Examiner’s position that locating the protrusions and recesses so as to form such a tirangle is obvious as this encompasses most if not all of the suitable attachment locations and/or would constitute at most a mere rearrangement of parts which does not patentably distinguish over the prior art; alternately as to Manigley it discloses locating them so as to form such a triangle).
With Respect to Claim 13
The toy according to claim 11, wherein the electronic device further includes a third concave portion, in the first cover portion, a third convex portion configured to fit into a third concave portion is provided, and when attaching the electronic device cover to the electronic device, a third insertion direction in which the third convex portion is inserted into the third concave portion is different from the first insertion direction and the second insertion direction.
With Respect to Claim 14
The toy according to claim 13, wherein when a first triangle is configured by connecting the first concave portion, the second concave portion, and the third concave portion as vertices with virtual straight lines, each of interior angles of the first triangle is an acute angle, and when a second triangle is configured by connecting the first convex portion, the second convex portion, and the third convex portion as vertices with virtual straight lines, each of interior angles of the second triangle is an acute angle.
Claims 6-8, 10, 16-17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay) as applied to claim 1 or 11 above, either alone or further in view of U.S. Patent #8,345,412 to Maravilla (Maravilla).
With Respect to Claim 6
The electronic device cover according to claim 1, wherein the electronic device further includes a front surface portion, a back surface portion opposite to the front surface portion, and a side surface portion that connects the front surface portion and the back surface portion and includes the first concave portion and the second concave portion, and the electronic device cover further includes the first cover portion (vertical sidewall portion) configured to cover at least a part of the side surface portion, and a second cover portion (noting that the drawings show an upper lip that extends partially over top perimeter of the device, best seen in FIGS. 5-7 which show a central upwardly extending portion of the device forming a lowered perimetral edge and FIGS. 2 and 11 which show the lip covering this perimetral edge of the device) that is integrated with the first cover portion and covers at least a part of the front surface portion (FIGS. 2 and 11).
Alternately, although Examiner maintains the position that as discussed above the drawings show this structure, to the degree that some other interpretation might be possible and the specification does not explicitly describe/detail this structure, Maravilla discloses forming a similar user wrist attachment structure for an electronic device with a device cover having a first cover portion (perimeter gasket 82) configured to cover at least a part of the side surface portion, and a second cover portion that is integrated with the first cover portion and covers at least a part of the front surface portion (see e.g. FIGS. 8, 10-11, and description), that overlaps the upper surface of the device and provides a water resistant seal and also retain the device in the case.
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Maravilla, to add a perimeter seal as taught by Maravilla/as claimed, in order to provide a watertight seal to protect the held device from water/moisture and/or to better secure it in position in the case.
With Respect to Claim 7
The electronic device cover according to claim 6, further comprising: a first mounting portion (21) that is connected to the first cover portion and extends to be away from the second cover portion; and a second mounting portion (22) that is connected to the first cover portion at a position different from the first mounting portion and extends to be away from the second cover portion, wherein the electronic device cover is configured to be wound around an object by combining the first mounting portion and the second mounting portion, the first convex portion is provided in a first connection region where the first cover portion and the first mounting portion are connected, and the second convex portion is provided in a second connection region where the first cover portion and the second mounting portion are connected.
With Respect to Claim 8
The electronic device cover according to claim 7, wherein in the side surface portion, a connection portion for an external device is provided to electrically connect the electronic device to the external device (capable of this use with an appropriate electronic device and appropriate external device, it is noted that the electronic device is clearly only functionally recited), a first opening portion (231 or 233) is provided in the first cover portion, when the electronic device cover is attached to the electronic device, the connection portion for the external device is positioned inside the first opening portion (capable of this use with an appropriate electronic device and appropriate external device), the first convex portion is positioned closer to the first mounting portion than the first opening portion, and the second convex portion is positioned closer to the second mounting portion than the first opening portion (Byun FIG. 8, noting 232 adjacent one mounting portion and per Choay the other will be positioned opposite this closer to the other mounting portion than the opening).
With Respect to Claim 10
The electronic device cover according to claim 6, wherein a monitor (noting display which is a monitor to the extent claimed or to the degree some display may exist which is not a monitor, a monitor is a common type of display and so clearly obvious to use) that is exposed in the front surface portion is built into the electronic device, a first protrusion portion (see, e.g. FIGS. 5-7 showing central protruding section which surrounds the central display) is provided to surround the monitor in the front surface portion, a third opening portion (central opening at the top of the cover) and a second protrusion portion (noting perimetral lip) that surrounds the third opening portion are provided in the second cover portion, and when the electronic device cover is attached to the electronic device, the monitor is positioned inside the third opening portion and the second protrusion portion surrounds an outer periphery of the first protrusion portion.
With Respect to Claim 16
The toy according to claim 11, wherein the electronic device further includes a front surface portion, a back surface portion opposite to the front surface portion, and a side surface portion that connects the front surface portion and the back surface portion and includes the first concave portion and the second concave portion, and the electronic device cover further includes the first cover portion configured to cover at least a part of the side surface portion, and a second cover portion that is integrated with the first cover portion and is configured to cover at least a part of the front surface portion (see the rejection of claim 6 above for details).
With Respect to Claim 17
The toy according to claim 16, wherein the electronic device cover further includes a first mounting portion (21) that is connected to the first cover portion and extends to be away from the second cover portion, and a second mounting portion (22) that is connected to the first cover portion at a position different from the first mounting portion and extends to be away from the second cover portion, the electronic device cover is configured to be wound around an object by combining the first mounting portion and the second mounting portion, the first convex portion is provided in a first connection region where the first cover portion and the first mounting portion are connected, and the second convex portion is provided in a second connection region where the first cover portion and the second mounting portion are connected.
With Respect to Claim 19
The toy according to claim 16, but does not disclose wherein a decorative groove is provided in the side surface portion, the first concave portion and the second concave portion are provided inside the groove, and a depth of each of the first concave portion and the second concave portion is more than a depth of the groove.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to add a decorative groove as claimed, in order to enhance aesthetic appeal. There is no inventive step in the mere addition of nonfunctional adornment to a device, as such aesthetic features are a matter of obvious design choice.
With Respect to Claim 21
The toy according to claim 16, wherein a monitor (noting display which is a monitor to the extent claimed or to the degree some display may exist which is not a monitor, a monitor is a common type of display and so clearly obvious to use) that is exposed in the front surface portion is built into the electronic device, a first protrusion portion (see, e.g. FIGS. 5-7 showing central protruding section which surrounds the central display) is provided to surround the monitor in the front surface portion, a third opening portion (central opening at the top of the cover) and a second protrusion portion (noting perimetral lip) that surrounds the third opening portion are provided in the second cover portion, and when the electronic device cover is attached to the electronic device, the monitor is positioned inside the third opening portion and the second protrusion portion surrounds an outer periphery of the first protrusion portion.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay), either alone or further in view of U.S. Patent #8,345,412 to Maravilla (Maravilla) as applied to claim 6 above, either alone or also in view of U.S. Patent #9,737,123 to Wright (Wright) and U.S. Patent #10,542,338 to Ely (Ely).
With Respect to Claim 9
The electronic device cover according to claim 6, wherein a speaker is built into the electronic device (capable of use with a device having a speaker, noting also that Byun explicitly discloses its electronic device having a speaker), a hole is provided to output a sound from the speaker to an outside of the electronic device (capable of use with such a device), a second opening portion (231) is provided in the first cover portion, and when the electronic device cover is attached to the electronic device, the hole is positioned inside the second opening portion (capable of use with such an electronic device); but does not disclose that a decorative groove is provided in the side surface portion, at a position in the groove different from a position where the first concave portion and the second concave portion are provided,
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to add a decorative groove as claimed, in order to enhance aesthetic appeal. There is no inventive step in the mere addition of nonfunctional adornment to a device, as such aesthetic features are a matter of obvious design choice.
Alternately, as to the speaker and hole on the device and the second opening portion on the device cover, Wright discloses a similar watch holding case having openings for a speaker which provides sufficient motivation for and/or evidence of the obviousness of adding an opening to the cover corresponding to a speaker on the device; and Ely discloses an electronic device having a speaker aperture/hole, which provides sufficient motivation for and/or evidence of the obviousness of forming a speaker aperture for the art known obvious benefits of such (e.g. allowing the speaker’s sound to more easily reach the exterior).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay) and U.S. Patent #8,345,412 to Maravilla (Maravilla).
With Respect to Claim 18
Byun in view of Choay and Maravilla discloses the toy according to claim 17, but does not disclose wherein in the side surface portion, a connection portion for an external device is provided to electrically connect the electronic device to the external device, a first opening portion is provided in the first cover portion, when the electronic device cover is attached to the electronic device, the connection portion for the external device is positioned inside the first opening portion, the first convex portion is positioned closer to the first mounting portion than the first opening portion, and the second convex portion is positioned closer to the second mounting portion than the first opening portion.
However, Maravilla discloses a similar wrist mounted electronic device holder wherein in the side surface portion of the electronic device, a connection portion for an external device is provided to electrically connect the electronic device to the external device (noting earphone jack to connect to the earphones which are an external device), a first opening portion (opening portion closed by earphone jack clip 84) is provided in the first cover portion, when the electronic device cover is attached to the electronic device, the connection portion for the external device is positioned inside the first opening portion, the first convex portion is positioned closer to the first mounting portion than the first opening portion, and the second convex portion is positioned closer to the second mounting portion than the first opening portion (as the first and second convex portions are positioned on the interior adjacent to 21 and 22 respectively and so are respectively closer to them than the earphone jack openings which is positioned along an adjacent side).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Maravilla, to add an earphone jack to the electronic device and an earphone jack opening to the electronic device cover, in order to allow for the use of earphones with the device.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #9,918,541 to Byun (Byun) in view of U.S. Patent #5,657,298 to Choay (Choay), either alone or further in view of U.S. Patent #8,345,412 to Maravilla (Maravilla) as applied to claim 19 above, and further in view of U.S. Patent #9,737,123 to Wright (Wright) and U.S. Patent #10,542,338 to Ely (Ely).
With Respect to Claim 20
Byun in view of Choay, Wright, and Ely, either alone or further in view of Maravilla (see the rejection of claim 9 above for details of the combination of these references) discloses the toy according to claim 19, wherein a speaker is built into the electronic device (Byun discloses this), at a position in the groove different from a position where the first concave portion and the second concave portion are provided, a hole (speaker hole per Ely) is provided to output a sound from the speaker to the outside of the electronic device, a second opening portion (speaker opening per Wright) is provided in the first cover portion, and when the electronic device cover is attached to the electronic device, the hole is positioned inside the second opening portion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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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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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734