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 .
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 1-7, 9, and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoo (JP 2019086333).
Regarding claim 1, Yokoo teaches (Figs. 4-7) a device case comprising: a first exterior (13) that is placed on an upper surface side of a case body (5); a second exterior (17) that covers at least an upper portion of the first exterior (Fig. 7); a first position buffer (14) disposed between the first exterior and the second exterior, and a third buffer (21) disposed between a side surface of the first exterior (lower side of 13) and a side surface of the case body (upper side of 5), wherein a stepped portion in which part of the third buffer is disposed (21 is formed on a step of 5 in Fig. 7) is formed on the side surface of the first exterior (Fig. 7), and wherein an edge of the stepped portion (inner corner of 13) facing a side surface of the third buffer is rounded.
Regarding claim 2, Yokoo teaches the device case according to claim 1, wherein, on at least part of a circumferential surface of the case body, the second exterior covers from the upper portion of the first exterior to an outer circumferential side surface of the case body and is fixed to the case body (see 17 covering 20 and 5 in Fig. 7).
Regarding claim 3, Yokoo teaches the device case according to claim 1, wherein the case body, the first exterior, and the second exterior are formed of a metallic material ([0012], [0022], [0071], and [0083] of the translation.)
Regarding claim 4, Yokoo teaches (Fig. 7) the device case according to claim 1, wherein a recess (17d) that houses at least part of the first position buffer (14) is formed in at least one of the first exterior or the second exterior (17).
Regarding claim 5, Yokoo teaches (Fig. 7) the device according to claim 1, further comprising a second position buffer (20) disposed between the case body (5) and the first exterior (13).
Regarding claim 6, Yokoo teaches (Fig. 7) the device according to claim 5, wherein the second position buffer includes a second buffer (20) that is disposed to contact an upper surface of the case body (5 and Fig. 7), and wherein the second buffer (20) and third buffer (21) are disposed apart from each other (Fig. 7).
Regarding claim 7, Yokoo teaches (Fig. 7) the device according to claim 6, wherein the second and third buffer are formed of materials having quality different from each other. The second and third position buffers have the material quality of being formed from different atoms.
Regarding claim 9, Yoko teaches (Fig. 7) the device case according to claim 1, wherein at least part of the first position buffer (14) is formed with a protrusion (the buffer 14 protrudes from the surface of 13).
Regarding claim 15, Yokoo teaches (Fig. 7) the device case according to claim 1, further comprising a second position buffer (20) between the case body (5) and the second exterior (17).
Regarding claim 16, Yokoo teaches a timepiece comprising the device case according to claim 1 ([0001]).
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.
Claims 8 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoo.
Regarding claim 8, Yokoo discloses the device according to claim 5.
Yokoo does not show a recess that houses at least part of the second position buffer formed in at least one of the case body or the first exterior.
Yokoo teaches (Fig. 7) a recess (17d) that houses at least part of a position buffer (14) formed in an exterior (17).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have housed at least part of the second position buffer in a recess of the first exterior, as suggested by Yokoo. One of ordinary skill in the art would have been motivated to make this modification to specifically arrange the position of the second position buffer to ensure it protects and seals
Regarding claim 21, Yokoo discloses the device case according to claim 1, wherein the first exterior (13) includes an inclined surface (Fig. 7) on an upper surface side, and the first position buffer (14) is disposed in a recess (17d) of the second exterior.
Yokoo does not show the recess being formed on the inclined surface of the first exterior.
One of ordinary skill in the art would understand that to fit a structure A between two other structures B and C, a recess may be formed in either B, C, or both B and C.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yokoo’s recess to be formed on the first exterior instead of the second exterior. One of ordinary skill in the art would have been motivated to make this modification as an obvious choice borne from a predictable and finite number of solutions.
Regarding the recess being disposed on the inclined surface, changing the location of the recess from Yokoo’s disclosed location on the first exterior to the inclined surface, absent any criticality, is only considered to be an obvious modification that a person having ordinary skill in the art at the time the invention was made would be able to provide using routine experimentation since the courts have held that there is no invention in shifting the position if the operation of the device would not be thereby modified. See In re Japikse, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04 VI.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have moved Yokoo’s recess to be disposed on the inclined surface of the exterior. One of ordinary skill in the art would have been motivated to make this change in location to protect the inclined surface from damage.
Regarding claim 22, Yokoo discloses (Fig. 7) the device according to claim 6, wherein a gap is formed by the second buffer (20) between a lower surface of the first exterior (13) and the upper surface of the case body (5), and the side surface of the third buffer (right edge of 21) contacts the stepped portion (right edge of raised protrusion on 5) at a portion of the gap (Fig. 7).
Yokoo does not show the side surface of the third buffer not contacting the stepped portion.
One of ordinary skill in the art would recognize that having the side surface of the third buffer not contact the stepped portion requires only shortening the horizontal length of the third buffer.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yokoo’s side surface of the third buffer so that it does not contact the stepped portion at a portion of the gap, as the courts have held that such a change in relative dimensions, absent any criticality, is within the level of skill in the art as the relative dimension claimed by Applicant is nothing more than a desired size that a person having ordinary skill in the art would have found obvious to provide using routine experimentation based on its suitability of the intended use of the invention. See In Gardner v. TEC Syst., Inc., 220 USPQ 777 and MPEP 2144.04.
Claims 10-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoo in view of Hirayama (US 20210232096) and Ozawa (US 20190179265).
Regarding claim 10, Yokoo discloses (Fig. 7) the device case according to claim 5, wherein the second position buffer (20) is disposed at a different position from that of the first position buffer (14).
Yokoo does not show the first and second position buffers having different hardnesses.
Hirayama teaches a buffer formed of rubber ([0064]).
Ozawa teaches a buffer formed of resin ([0012]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Yokoo’s first buffer material to be rubber and Yokoo’s second buffer material to be resin. One of ordinary skill in the art would have been motivated to make this substitution as known and predictable materials that protect against shocks and impacts.
Regarding claim 11, Yokoo discloses (Fig. 7) the device case according to claim 10, wherein the first position buffer (14) and the second position (20) buffer are formed of materials having quality different from each other. The first and second position buffers have the material quality of being formed from different atoms.
Regarding claim 14, Yokoo discloses the device case according to claim 10.
Yokoo does not show the first and second position buffers having thicknesses different from one another.
The courts have ruled that a change in the relative dimensions between two structures disclosed by the prior art is, without any criticality, within the level of skill in the art that a person of having ordinary skill in the art would have found obvious to provide using routine experimentation based on its suitability for the intended use of the invention. See In Gardner v. TEC Syst., Inc., USPQ 777 and MPEP 2144.04.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yokoo’s first and second position buffers to have different thicknesses. One of ordinary skill in the art would have been motivated to make this modification so as to custom-fit the buffers into the dimensions of their target locations and to achieve a desired resistance to shocks.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoo in view of Hirayama (US 20210232096) and Ozawa (US 20190179265).
Regarding claim 12, Yokoo discloses the device according to claim 6.
Yokoo does not show the first position buffer and the second buffer being formed of fluorinated rubber, and the third buffer formed of fluorinated resin.
Hirayama discloses a buffer formed of fluorinated rubber ([0064]).
Ozawa discloses a buffer formed of fluorinated resin ([0012]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Yokoo’s first and second position buffers’ material for fluorinated rubber and Yokoo’s third buffer’s material for fluorinated resin. One of ordinary skill in the art would have been motivated to make this substitution as predictable, known materials for making buffers for device cases.
Regarding claim 13, Yokoo in view of Hirayama, and Ozawa discloses the device case according to claim 12.
The combination of Yokoo and Hirayama does not show an upper corner on a first exterior side of the third buffer rounded off.
Ozawa teaches a lower corner (bottom right) on a case body side and an upper corner (top left) on a first exterior side of a buffer (14 in Fig. 2) being rounded off.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the third buffer of Yokoo’s device case to have a rounded off upper and lower corners, as suggested by Ozawa. One of ordinary skill in the art would have been motivated to make this modification because a rounded corner would create play that allows for elastic deformation in case of shocks and thermal expansion.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The rejection set forth in this rejection cites Fig. 7 of Yokoo instead of Fig. 2.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2831
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