DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-20 are presented for examination on the merits.
Double Patenting
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
3. Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of US Patent No. (US 12287680). Although the conflicting claims are not identical, they are not patentably distinct from each other because a case accessory for an electronic device, the case accessory comprising: a case accessory body comprising an exterior surface and an interior surface, the interior surface being positioned opposite the exterior surface, wherein the case accessory body is configured to protect an electronic device positioned adjacent the interior surface; and a ceramic case button positioned at least partially within the case accessory body between the exterior surface and the interior surface, the ceramic case button being movable inward and outward relative to the case accessory body along an axis of button travel, the ceramic case button being configured to charge couple a user finger and a button of the electronic device are conventional prior art features and the use of such features in the claims of application 18660105 would have been obvious and would not have involved a patentable invention.
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”).
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 05/19/2026 and 02/20/2026 prompted the new ground(s) of rejection presented in this Office action.
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.
4. Claims 1, 2, 7, 16, 17, 18, and 20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As to Claim 1: The phrase “configured to charge couple a user finger and a button of the electronic device” is indefinite. The term “charge couple” is improperly used as a transitive active verb to describe a functional state. In the relevant art, “charge-coupled” is conventionally understood as an adjective designating a specific class of semiconductor architecture (e.g., a charge-coupled device). Its application here as an action verb fails to clarify the precise structural boundaries or physical mechanisms required to achieve this state, leaving the metes and bounds of the claim unclear.
As to Claim 2: The limitation “configured to abut button on...” lacks a proper indefinite article (“a”) preceding the initial introduction of the structural element “button.” The omission creates an ambiguous and structurally defective limitation that lacks clear grammatical meaning.
As to claim 7, The limitation “spaced laterally inward to define a gap...” and “...and spaced laterally inward to define a gap between the non-metallic button insert and the electric ground” and “Laterally inward” is structurally ambiguous because the claim lacks a clear frame of reference. Inward relative to what? The outer surface of the case frame? The exterior of the electronic device? The touch sensor? Without an explicit, objective baseline establishing what constitutes "inward" (e.g., relative to a longitudinal centerline of the electronic device or towards the interior surface of the frame), the metes and bounds of this spatial relationship are vague and fail to distinctly point out the invention.
Claim 7 further rejected: “a device case interface” mixed Component vs. System framework. The preamble recites “A system comprising:” but then introduces a component called “a device case interface” which comprises a frame and a button.
The Issue: “Interface” is an amorphous term that can mean a software layer, a functional connection point, or a physical object. While the claim details physical sub-elements (a frame and a button), using the abstract term “interface” instead of a concrete structural term (like a protective case or an accessory housing) introduces unnecessary ambiguity. An “interface” fails to define a distinct, physical, three-dimensional article of manufacture or system component.
As to claim 12: "larger along a width... than a length" The Text: "...wherein the gap is larger along a width of the non-metallic button insert than a length of the non-metallic button insert." The Issue: This introduces an unresolvable orientation ambiguity. A "gap" is a three-dimensional spatial void between two objects (here, the insert and the electric ground). Measuring a gap along the width or along the length of a completely separate component (the insert) fails to define which dimension of the gap is actually changing or how it is oriented. Does it mean the gap's thickness varies across the lateral profile of the insert, or is the physical boundaries of the gap's footprint wider than it is long? Without an explicit geometric coordinate system or clearer cross-sectional reference, the boundaries of this limitation are completely vague.
As to claims 13 & 14: "...of a width/length of the button." The Text: "...wherein the width of the non-metallic button insert is between 50% and 80% of a width of the button." (Claim 13) "...wherein the length of the non-metallic button insert is between 70% and 95% of a length of the button."
(Claim 14) The Issue: In independent Claim 7, the button is defined as comprising the non-metallic button insert ("a button... the button comprising a non-metallic button insert").
If the insert is a sub-component inside or making up the button, calculating a mathematical percentage relative to "the button" as a whole creates an interlocking structural loop that lacks clarity. Furthermore, using the indefinite phrase "a width of the button" rather than "the width of the button" implies the button might possess multiple distinct widths, creating an improper antecedent basis challenge for a feature that should be a singular structural baseline dimension.
As to claim 15: "signal attenuation factor" The Text: "...wherein the non-metallic button insert comprises a signal attenuation factor greater than 0.6." The Issue: "Signal attenuation factor" is an amorphous functional term in this context. The claim does not specify the type of signal being attenuated (e.g., an electromagnetic RF signal, an acoustic signal, or a capacitive electric field signaling mechanism). Additionally, it does not provide a unit of measurement (e.g., decibels, percentages, or a normalized ratio) or a specified testing frequency. Because an attenuation factor changes drastically depending on the operating frequency of the sensor and the exact baseline calculation method, this open-ended limitation fails to particularly point out the boundaries of the invention.
As to Claim 16: The limitation “wherein an electronic device is positionable within the frame internal to the back wall” is indefinite and structurally unclear. A secondary device cannot be positioned "internal to" a solid structural wall member of the claimed accessory unless it is embedded within the material itself. If the applicant intended to mean adjacent to or against the inner surface of the back wall, the claim fails to distinctly point out this spatial relationship.
As to Claims 17 and 18: In Claim 17, the phrase "defining a plurality of pockets” appears to contain a typographical error, omitting the initial letter “p” in the term “plurality.” Consequently, the recitation of “the plurality of pockets” in dependent Claim 18 lacks a proper, unambiguous antecedent basis in the preceding claim.
As to Claim 20: The phrase "substantially charge-insulated" is a term of degree that lacks a clear structural definition or quantifiable baseline in the art. The term "charge-insulated" is non-standard. Because the claim fails to provide an objective standard or threshold for determining what constitutes being "substantially" insulated against charge, a person skilled in the art cannot ascertain the boundary of the exclusion.
Claim Rejections - 35 USC § 112
5. 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.
6. Claims 1, 5, 7, and 16 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.
Claims 1, 5, and 16 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description and/or enablement requirements. The specification does not reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter, nor does it enable one skilled in the art to make and use the invention across its full scope without undue experimentation.
As to Claim 1: The claim recites a generic "ceramic case button" configured to achieve an electrical bridging state ("charge couple"). In the mechanical and electrical engineering arts, standard structural ceramics are recognized as excellent electrical insulators rather than conductive mediums. The claim broadens the scope to any generic ceramic material achieving an electrical coupling function without detailing the structural modifications, doping parameters, or integrated conductive pathways necessary to accomplish this.
As to Claims 5 and 16 (Scope Disconnect): Claim 5 defines a ceramic case button comprising an ultra-high dielectric constant ranging between 1000 and 3000 (characteristic of specialized, high-permittivity electro-ceramics like Barium Titanate). Conversely, independent
As to claim 7, is rejected under USC 112(a) Enablement for functional broadness
“having a dielectric constant greater than 20.” The term “...a non-metallic button insert having a dielectric constant greater than 20...” This is an open-ended range with no upper limit (i.e., from 21 to infinity). While open-ended functional limitations are permitted if the specification enables the full scope, a dielectric constant that approaches extreme values changes the fundamental material behavior (moving from basic engineering ceramics/ polymers into specialized supercapacitors or ferroelectric crystals). The specification does not enable or possess materials across this entire open-ended spectrum that can still function as a physical button insert.
Claim 16 claims a button material spanning a completely different mid-high range between 20 and 200 (characteristic of distinct material classes such as engineered polymers or low-fire ceramics). The specification fails to provide adequate written description or enabling disclosure to support both of these wildly diverging, mutually exclusive ranges of material performance across the independent claim groupings. The examiner asserts that the disclosure does not demonstrate possession or enablement of the full breadth of these distinct material limits.
Claims 9-11 directly or indirectly depend on claim 7, they inherit the rejection of claim 7.
Citation of pertinent Prior Arts
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
i. Deng (US 20250023971 A1) discloses in an assistive touch button and an electronic device protective case are provided. The assistive touch button includes an insulation button block and a plurality of conductive columns; a bottom surface of the insulation button block is attached to a touch surface of a capture button; the plurality of conductive columns are arranged in a spacing manner on the insulation button block; head ends of the plurality of conductive columns extend to a top surface of the insulation button block; and tail ends of the plurality of conductive columns extend to the bottom surface of the insulation button block and abut against touch points of the touch surface. The electronic device protective case includes a case body and an assistive touch button that is mounted on the case body and corresponds to the capture button, and
ii. Barnett (US 20240393830 A1) discloses in a case which includes a case body configured to equip a mobile electronic device. The case includes an actuator, and the mobile electronic device includes a physical button. The case further includes an actuator switch coupled to the case body and movable between at least a first unengaged position and a second engaged position, where the switch is connected to an engagement member. The engagement member activates a corresponding physical button of the mobile electronic device when the mobile electronic device is equipped with the case and the actuator switch is moved to the second position. The engagement member is configured to not activate the mobile electronic device button when the actuator is moved to the first position.
Response to Arguments
8. Applicant's arguments with respect to claims 1-42 have been considered but are moot in view of the new ground(s) of rejection that was necessitated by Applicant's amendment.
Allowable Subject Matter
9. As to claims 1-20, there is no prior art to reject claims 1-20. However, applicant should resolve the USC 112 rejection and the Double patent rejection prompted by applicant's submission of an information disclosure statement on 05/19/2026 and 02/20/2026 to place the application in condition for allowance. An update search needs to be performed after the next response from applicant.
Conclusion
10. Applicant's amendment necessitated the new ground(s) 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Fekadeselassie Girma whose telephone number is (571) 270-5886. The examiner can normally be reached on Monday thru Friday, 8:30 – 5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Davetta Goins can be reached on (571) 272-2957. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Fekadeselassie Girma/
Primary Examiner Art Unit 2689
Prosecution Insights