DETAILED ACTION
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 “one or more additional cavities and corresponding magnetic elements to accommodate different styles of protective cases” 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.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for one particular configuration/location of a metallic or magnetic element that would configuration to position and align with a particular configuration of a protective case, does not reasonably provide enablement for all other possible configurations for magnetic alignment with the retention device and a litany of other protective case structures. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to provide the invention commensurate in scope with these claims.
Claim language is non-enabled when it "merely described a particular end result [“positioned to align with the metallic or magnetic element of the protective case”, did not set forth any specific structure, and would encompass any and all structures for achieving that result, including those which were not what the applicant had invented." Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).
Claims 2 and 4 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In respect to claim 2, the claim recites “at least one cavity…allowing for adjustment of the magnetic element’s orientation” however, there is no structure shown whatsoever on how this functionality is effectuated.
In respect to claim 4, the claim recites “one or more additional cavities and corresponding magnetic elements to accommodate different styles of protective cases” however, there is no disclosure of how or where the magnetic elements may be configured (also see Drawing Objection).
In respect to claim 8, the claim recites “the first top end and the opposing bottom end are configured to support the protective case in a manner that maintains the card as the centerpiece of the display” which is structurally indefinite. The nebulous recitation “in a manner that maintains the card as the centerpiece of the display” does enable a person of ordinary skill to fashion the top and bottom ends in any particular structural configuration.
Claims 1-13 are additionally 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.
The “protective case” mentioned throughout the claims, in which the retention device is shaped and configured to support, is not described in the specification. Particularly, the location of the magnet on the protective case to “align” with elements of the retention device are completely absent from the Specification and Drawings. It is further noted that the protective case not only lacks any structural description (other than the existence of a metallic or magnetic element) but it’s intended purpose is varied (claim 10).
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 1-13 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.
In respect to independent claim 1, the claim recites “wherein the at least one magnetic element is positioned to align with a metallic or magnetic element of the protective case when the protective case is installed against the back plate” is indefinite. The structure of the “protective case” is completely undefined in the Specification and unclaimed, particularly the nature and structure of the “metallic or magnetic element”. Thus, a recitation which relies upon the intended placement of the structurally indefinite (devoid of any structure in the Specification or claims) to indicate a “position” and “alignment” of the magnetic element is indefinite since the term “protective case” has no particular plain meaning or standards wherein a location of the metallic or magnetic element would be known or inferred. The recitation that the first and second retaining structures are “flush” with the protective case are further indefinite for the same reasons above.
In respect to claim 2, the recitation “at least one cavity…allowing for adjustment of the magnetic element’s orientation” is unclear since there is no structure shown for enabling this functionality (see enablement rejection above).
In respect to claim 4, the recitation “one or more additional cavities and corresponding magnetic elements to accommodate different styles of protective cases” is indefinite for similar reasons to claim 1, wherein the structure of one protective case, or a plurality of “different styles” is structurally undefined and thus any configuration of the cavities/magnetic elements in claimed relation to these protective cases is indefinite.
In respect to claim 8, the claim recites “the first top end and the opposing bottom end are configured to support the protective case in a manner that maintains the card as the centerpiece of the display” which is structurally indefinite. The nebulous recitation “in a manner that maintains the card as the centerpiece of the display” is indefinite and unclear (see enablement).
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (US 2023/0127622).
In respect to claims 1 and 4, the claims are impossible to ascertain for several reasons detailed in both the 35 USC 112(a) and 35 USC 112(b) rejections above, however, as best can be construed by the Examiner, Williams discloses a retention device comprising: a body 300 having a back plate 320 define a flat surface (vertical being orientation and not structure; vertical when hung via 330); the body having a first top end having at least one first retaining structure (socket) 370 and an opposing bottom end having at least one second retaining structure (slot) 360; cavities 380 are formed within the back plate and magnetic elements 600 are configured to be installed in the cavities; the magnets are positioned to align with magnetic elements 610 in a protective case 200 (0022-0028; Fig. 2A-2B).
In respect to claims 2 and 3, Williams discloses a cavity 380 as detailed above, which is functionally capable of “adjustment” i.e. adding a different strength magnet. The term “permanently installed” can be construed as an intended use i.e. the original magnets are not removed by a user.
In respect to claim 5, Williams discloses the first and second retaining devices above, a “socket” and a “slot” either of which can be construed to be a “ledge” or “shelf”.
In respect to claim 6, Williams discloses that the body may comprise metal or plastic (0019).
In respect to claims 7 and 9, Williams discloses mounting hardware 330 on the opposing side of the back plate 320 (Fig. 2B), this mounting hardware further includes an aperture (Fig. 2B),
In respect to claim 8, Williams discloses that the body is substantially rectangular (Fig. 2A-2B).
In respect to claim 10, Williams disclose that the retention device is configured to hold any flat planar objects.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 2023/0127622) in view of Forbis (US 2013/0160338).
Williams substantially discloses the claimed invention including the magnetic elements, but does not disclose the type of magnetic element, particularly neodymium, however Forbis teach a very similar retaining device which utilizes magnets; the magnets may be made from neodymium (0025). It would have been obvious to one of ordinary skill in the art to provide the magnets taught in Williams as neodymium magnets in view of Forbis. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, selecting a magnetic material well-known for its strong magnetism.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 2023/0127622) in view of Newman et al. (US 2024/0346955).
Williams substantially discloses the claimed invention but does not disclose particular materials of the body and components, particularly “transparent acrylic materials” or “a corrosion-resistant finish”, however Newman et al. teach a similar retaining device with components of the body comprising transparent acrylic (e.g. transparent panels 48) (0046) or corrosion resistant metal (0047). It would have been obvious to provide select components of the body taught in Williams with the known materials taught in a very similar device in view of Newman et al. it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637