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 .
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 “adhesive element covered with an adhesive element cover” in claim 17; the “separate connectable part” in claim 19; the “adhesive element on a side facing a ground” in claim 22; the “adhesive element on a side of the contact element facing the ground” in claim 23; the “adhesive support means of which the mounting device and/pr the apparatus can adhere to the ground” in claim 24; the “plate-shaped coupling lock connected to the contact element in the frame coupling portion by means of at least one web” in claim 28; “the “central plate” in claim 30; the “apparatus holding element” in claim 35, the “operating element cut-outs” in claim 36; and the “labeling area” in claim 37 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 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 4-37 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.
Re. Cl. 4, the limitation “the positioning members have a support portion where the display and/or the apparatus contacts the mounting device,” renders the claim indefinite in the Examiner’s position. Applicant illustrates and defines the support portion as reference character 37 which is clearly shown on the contact element. It is unclear how this portion (37) could be located on the positioning members (4) or which portion of the positioning members (4) the Applicant considers the support portion. Therefore, the limitation is indefinite and appropriate clarification is requested.
Re. Cl. 8, the limitation “an alignment connection portion” renders the claim indefinite. In claim 2, which claim 8 indirectly depends, establishes a leg connecting portion which connects the legs together which appears to be the same structure as the alignment connection portion from claim 8. It is unclear what the difference is between these structures since they are separately claimed, thus rendering the claim indefinite. Appropriate clarification is requested.
Re. Cl. 14, the limitation “positioning members” in Line 1-2 renders the claim indefinite in the Examiner’s position. Claim 2 establishes a first positioning member and a second positioning member which constitute a plurality of positioning members. Claim 14 does not refer back to these positioning members by using antecedent basis terminology and therefore it is unclear if the positioning member from claim 14 is the same or different from the ones in claim 2. Appropriate clarification is requested.
Re. Cl. 15, the limitation “a positioning portion” in Line 1-2 render the claim indefinite in the Examiner’s position. Claim 2 establishes positioning portions and Claim 15 does not refer back to these positioning portions by using antecedent basis terminology and therefore it is unclear if the positioning portions from claim 15 is the same or different from the ones in claim 2. Appropriate clarification is requested.
Re. Cl. 20, the limitation “a height of a positioning member in the plate thickness direction is adjusted” renders the claim indefinite in the Examiner’s position. Firstly, Applicant does not link the mentioning of a positioning member from claim 20 to the previously established positioning members using antecedent basis language, therefore making it unclear if the structures are the same or different. Secondly, Applicant does not discuss or illustrate how the height of the positioning member is adjusted and therefore it is unclear how such a function is achieved. For instance, is the height of the positioning members designed to have different values based upon which particular apparatus is to be used with the device? Is there some sort of adjustment that the user can adjust the thickness (i.e. telescoping nature)? Therefore, the metes and bounds of the claims cannot be properly ascertained, rendering the claim indefinite.
Re. Cl. 21, the limitation “a thickness of the contact element is adjusted” renders the claim indefinite in the Examiner’s position. Applicant does not discuss or illustrate how the height of the positioning member is adjusted and therefore it is unclear how such a function is achieved. For instance, is the thickness of the plate member designed to have different values based upon which particular apparatus is to be used with the device? Is there some sort of adjustment that the user can adjust the thickness (i.e. telescoping nature)? Therefore, the metes and bounds of the claims cannot be properly ascertained, rendering the claim indefinite.
Re. Cl. 22, the limitation “a positioning member is configured to be displaceable in a coupling portion perpendicularly to the joining surface,” renders the claim indefinite in the Examiner’s position. Firstly, Applicant does not link the mentioning of a positioning member from claim 22 to the previously established positioning members using antecedent basis language, therefore making it unclear if the structures are the same or different. Secondly, it is unclear if the phrase “coupling portion” indicates a direction or how the portion (44) interacts to enable displacement as claimed. Is the Applicant intending to indicate that the portions (44) are displaceable within slots (34) in a direction perpendicular to the x-y direction? Applicant’s specification does not appear to provide guidance as to how such a function is carried out and therefore the limitation is indefinite in the Examiner’s position. Appropriate clarification is requested.
Re. Cl. 28, the limitation “the contact element has a plate-shaped coupling lock that is connected to the contact element in the frame coupling portion by means of at least one web” renders the claim indefinite in the Examiner’s position. Applicant’s figures and specification do not effectively show or disclose the lock so it is unclear how this structure works, what it is comprised of and how it effects other parts of the invention. Therefore, the limitation is indefinite since it cannot be clearly understood by the Applicant’s disclosure. Appropriate clarification is requested.
Re. Cl. 29, the limitation “a positioning member is connected to the contact element by means of at least one web” in Line 1-2 renders the claim indefinite in the Examiner’s position. Firstly, Applicant does not link the mentioning of a positioning member from claim 29 to the previously established positioning members using antecedent basis language, therefore making it unclear if the structures are the same or different. Secondly, Applicant identifies the web as reference character (33) which appears to be a wider part of the positioning member (4) as shown in Fig. 2c. It is unclear how the web (33) connects the positioning member (4) to the contact element (3) when considering the Applicant’s figures. Appropriate clarification is requested.
Re. Cls. 30-32 and 34-35, the limitation “central plate (35)” renders the claim indefinite in the Examiner’s position. Applicant’s figures do not clearly identify reference character 35 as discussed above and therefore it is unclear which structure the Applicant is referring to. Further, Applicant’s specification does not include sufficient detail to lead the Examiner to understand exactly which structure Applicant’s considers the central plate. Therefore, the metes and bounds of the claims cannot be properly ascertained. Appropriate clarification is requested.
Re. Cl. 31, the limitation “a positioning member” in Line 1-2 renders the claim indefinite in the Examiner’s position. Applicant does not link the mentioning of a positioning member from claim 31 to the previously established positioning members using antecedent basis language, therefore making it unclear if the structures are the same or different. Appropriate clarification is requested.
Re. Cl. 33, the limitation “at least one positioning member” in Line 1-2 renders the claim indefinite in the Examiner’s position. Applicant does not link the mentioning of at least one positioning member from claim 33 to the previously established positioning members using antecedent basis language, therefore making it unclear if the structures are the same or different. Appropriate clarification is requested.
Claim limitation “apparatus holding element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant’s drawings and specification do not specifically define the apparatus holding element so that the Examiner can apply the 112(f) interpretation. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Re. Cl. 36, the limitation “operating element cut-outs” renders the claim indefinite in the Examiner’s position. It is unclear what this structure is, how it works or how it would be employed in the Applicant’s positioning portion (40) since these cut-outs are not illustrated nor are they discussed in the specification with sufficient detail to enable the Examiner to clearly understand the structure. Appropriate clarification is requested.
Claim Rejections - 35 USC § 102
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 2-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chae US 2014/0047708 (hereinafter Chae).
Re. Cl. 2, Chae discloses: A mounting device (Fig. 2) for joining a display protector (see 1, Fig. 1-3) to a display (12, Fig. 1) of an apparatus (10, Fig. 1), the mounting device including: a contact element (21, Fig. 2) on which the apparatus is positionable (see Fig. 2-3) and which has a first leg (long leg of 21 with 26, Fig. 2) with a first alignment portion (portion of 22 located on the long leg of 21, Fig. 2) on which the apparatus can be aligned in a first direction (see Fig. 2-3), and a second leg (short leg of 21 with 31, Fig. 2) with a second alignment portion (portion of 22 located on the short leg of 21, Fig. 2) on which the apparatus can be aligned in a second direction (see Fig. 2-3), a leg connecting portion (see Fig. 2, corner of 21 which connects the long and short legs of 21) that connects the two legs at a fixed angle (see Fig. 2, the long and short legs of 21 are connected at a fixed angle), and at least a first positioning member (26, 28, Fig. 2) and at least a second positioning member (31, 34, Fig. 2) comprising a plurality of positioning members (see Fig. 2-3) having coupling portions which can be coupled to the legs (see Fig. 2, portion of 26, 31 which join to 21), and positioning portions (26, 34, Fig. 2) which are aligned with respect to the first alignment portion and with respect to the second alignment portion (see Fig. 2, aligned with the portions of 22) when the first positioning member is coupled to the first leg and the second positioning member is coupled to the second leg (see Fig. 2), wherein the display protector can be brought into contact with at least one positioning portion for alignment in order to align the apparatus and the display protector with respect to each other (see Fig. 3).
Re. Cl. 3, Chae discloses: the positioning members project beyond the alignment portions of the contact element (see Fig. 3, downward towards 10), when viewed against a display normal direction (see Fig. 3), when the positioning members are coupled to the legs and the apparatus is positioned with the mounting device (see Fig. 2-3).
Re. Cl. 4, Chae discloses: the contact element or the positioning members have a support portion where the display and/or the apparatus contacts the mounting device (see Fig. 2-3, portions of 26/28 and 31/34 which contact 10).
Re. Cl. 5, Chae discloses: the alignment portions are flat surfaces (see Fig. 2, surfaces of the opening 22 are flat).
Re. Cl. 6, Chae discloses: the alignment portions are arranged at an angle to a joining surface (see Fig. 2, the flat surfaces of the opening 22 form a right angle between them as shown), wherein the joining surface corresponds to the connecting surface of the display and the display protector (see Fig. 1-2).
Re. Cl. 7, Chae discloses: the alignment portions are aligned with each other at an angle in the joining surface (see Fig. 2, the flat surfaces of the opening 22 forms a right angle in the x-y direction as shown).
Re. Cl. 8, Chae discloses: the alignment portions are connected by means of an alignment connecting portion (see Fig. 2, corner portion of 21 which connects the long and short leg of 21).
Re. Cl. 9, Chae discloses: the first and second legs are arranged such that an L-shape is obtained for the contact element (see Fig. 2, the long and short legs of 21 forms and L-shape).
Re. Cl. 10, Chae discloses: the contact element has a third leg (see Fig. 2, other long leg of 21) with a third alignment portion (flat surface of the opening 22 on the long leg 21, Fig. 2),which where a leg connecting portion connects with the first and/or second leg at a fixed angle (see Fig. 2, corner connecting the short leg of 21 to the other long leg of 21).
Re. Cl. 11, Chae discloses: the legs are arranged such that a U-shape is obtained for the contact element (see Fig. 2, the long legs and interposed short leg of 21 forms a U-shape).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Chae.
Re. Cl. 12, Chae does not disclose that the legs have different lengths and are arranged such that a J-shape is obtained for the contact element. As clearly shown in Fig. 2, the contact element forms a rectangular shape which surrounds the smart phone. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the contact element of Chae to be J-shaped as claimed, since it has been held obvious to change the shape/configuration of a device absent persuasive evidence that the shape is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) Please note that in the instant application, Applicant has not disclosed any criticality for the claimed limitations.
Re. Cl. 13, Chae discloses: the mounting device includes at least one further positioning member (see Fig. 2, 26, 28 on the other long side of 21) with a positioning portion (28, Fig. 2), which is arranged on the first leg, the second leg or the third leg (see Fig. 2).
Re. Cl. 14, Chae discloses: positioning members can be coupled to one another by means of positioning member coupling portions (see Fig. 2, 26s and 31 can be coupled together indirectly using portion 25 for instance due to the integral connection of the device 20).
Allowable Subject Matter
Claims 15-37 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Withaw US 2015/0277502, Wu US 2014/0130971 and Peng disclose other known mounting devices which are presented to the Applicant for their consideration.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER E GARFT whose telephone number is (571)270-1171. The examiner can normally be reached Monday-Friday 8:00 a.m. to 5:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terrell McKinnon can be reached at (571)272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER GARFT/Primary Examiner, Art Unit 3632