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 Objections
Claim 15 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 14. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 102
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 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.
(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 7-11, 13-16 and 18-20s/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maehashi (JP 2014-219631 A, English machine translation attached).
With regard to claim 7: Maehashi discloses a magnetically attractable body which is formed of a structural material (formed of an organic polymer, see ¶0017) and a plurality of particles distributed throughout the structural material, the plurality of particles comprising a ferrous material and being at least seventy percent of the body by weight (see ¶0017-0018 disclosing the magnetic powder content of the body, note per ¶0035 and ¶0041 that powder content in the disclosed volume ranges results in %wt content of roughly 85%, well over the claimed 70% minimum). The claim preamble statement that the body is used as “a target for attaching an optical scope to an electronic accessory via a scope mount” is a statement of intended use which does not impart significant structure to the positively claimed limitations of the rest of the claim (see MPEP 2111.02 II).
With regard to claims 8-10: Maehashi discloses the use of a nonmagnetic polymer resin as the structural material (see ¶0035 disclosing the use of a Vinyl chloride/vinyl acetate copolymer solution as a resin component).
With regard to claim 11: The body of Maehashi is disclosed as being a thickness of less than 0.012 inches (disclosed thickness of 50-100µm, see ¶0017).
With regard to claims 13-15: Maehashi discloses forming the particles out of a corrosion resistant material, specifically magnetic stainless steel (see ¶0018).
With regard to claim 16: Maehashi discloses a configuration where the average size of the particles is less than 0.02 inches (see ¶0035 and ¶0041 disclosing use of particles of approximately 20µm).
With regard to claim 18: The particles of Maehashi have sizes smaller than the thickness of the target (average particle sizes of 15µm and 23µm, see ¶0035 and ¶0041, which are less than the taught target thickness of the resulting film of 50-100µm per ¶0017).
With regard to claim 19: Maehashi discloses a magnetically attractable body which is formed of a structural material (formed of an organic polymer, see ¶0017) and a plurality of particles distributed throughout the structural material, the plurality of particles comprising a ferrous material and being at least seventy percent of the body by weight (see ¶0017-0018 disclosing the magnetic powder content of the body, note per ¶0035 and ¶0041 that powder content in the disclosed volume ranges results in %wt content of roughly 85%, well over the claimed 70% minimum). Maehashi discloses the average size of the particles being less than 0.02 inches (see ¶0035 and ¶0041 disclosing use of particles of approximately 20µm) and the body being a thickness of less than 0.012 inches (disclosed thickness of 50-100µm, see ¶0017). The claim preamble statement that the body is used as “a target for attaching an optical scope to an electronic accessory via a scope mount” is a statement of intended use which does not impart significant structure to the positively claimed limitations of the rest of the claim (see MPEP 2111.02 II).
With regard to claim 20: The particles of Maehashi have sizes smaller than the thickness of the target (average particle sizes of 15µm and 23µm, see ¶0035 and ¶0041, which are less than the taught target thickness of the resulting film of 50-100µm per ¶0017).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over the MAGVIEW B1 Binocular Adapter (Archive.org copy of product page at https://magviewgear.com/product/binocular-adapter/ attached, URL https://web.archive.org/web/20220914045727/https://magviewgear.com/product/binocular-adapter/ dated 09/14/2022) in view of Wang (CN 213693809 U), Maehashi (JP 2014219631 A), and Barnett et al (US PGPUB 2019/0140682 A1).
The examiner notes that the MAGVIEW B1 (hereafter “Magview”), despite appearing to be inventor’s own product, was made available or shown to the public over one year before the effective filing date of the claimed invention (July 5th, 2023) and does not appear to be eligible for the exception in 102(b)(1)(A) for Inventor-Originated Disclosures. See the Rokslide.com Forum post titled “New Digiscoping Option” dated July 1st, 2022 at (https://rokslide.com/forums/threads/new-digiscoping-option-magview-review-added-8-3-22.269147/) and the Youtube video titled “MAGVIEW Streamlined Digiscoping Adapter” dated July 1st 2022 at (https://www.youtube.com/watch?v=o4CHKT7zeR4). The examiner notes that the Rokslide post and Youtube video are being cited as they unambiguously establish public availability of both the “S1” adapter and the “B1” binocular adapter as of July 1st, 2022 (one year and four days before the effective filing date), and the archived product page is being used as a primary reference as it most clearly shows and describes the product.
With regard to claims 1-2 and 4-7: Magview discloses a scope mount assembly for attaching an optical scope having first and second eyepieces (a pair of binoculars) to an electronic accessory having a lens (a smartphone). The scope mount assembly comprises a scope mount configured to engage the first eyepiece of the optical scope, the scope mount including an aperture for viewing the optical scope through the first eyepiece when the optical scope is not attached to the electronic accessory and a magnet positioned near the aperture (the scope mount is an annular member which mounts around one eyecup of a pair of binoculars, allowing for the binoculars to be used normally when mounted, the scope mount including a magnetic member to attract a magnetic target). Magview further discloses the inclusion of a rectangular magnetic target which is positionable on the electronic accessory so that the second eyepiece of the optical scope aligns with the lens of the electronic accessory when the scope mount magnetically engages the target. This target is in the form of a very thin rectangular plate-like body which is attached to the lens-side surface of the electronic device (or electronic device case, as shown in the Rokslide video).
Magview does not disclose that the body is formed of a nonmagnetic structural material and a powder particulate distributed throughout the structural material, the powder particulate having a maximum dimension less than a thickness of the target and having particles with an average size of 0.02” or less, the powder being configured to be attracted to the magnet and being at least seventy percent of the body by weight.
Magview indicates that it is known that the target body used is not compatible with wireless charging systems (“*Please note the MAGVIEW Phone Plate is not compatible with wireless phone chargers*”). Wang teaches that in a magnetic attachment system for an electronic device it is possible to form an attraction target from a soft magnetic material (“the magnetic sheet is made of soft magnetic material, does not affect the data wireless charging”), but does not indicate what soft magnetic material should be used.
Maehashi teaches a soft magnetic material which can be formed into a planar shape and readily repositioned relative to the magnetic element to which it will be adhered, the material being formed from a nonmagnetic structural material and a powdered particulate distributed throughout the structural material (see ¶0017-0018), with the powdered particulate having average sizes less than 0.02” (examples include average particle sizes of 15µm and 23µm, see ¶0035 and ¶0041) which are less than the taught thicknesses of the resulting film (50-100µm per ¶0017). Maehashi teaches making the sheet with a powder content of 40-65% by volume (emphasis added), and in the examples given this results in a weight percentage of well over 70% (in the examples given, a powder content of 50% by volume is indicated as being 85.7% by weight). Additionally the material is capable of being provided with a printable layer upon it, which can be used to receive a decorative design, as noted by Barnett in ¶0003 users of mobile devices often desire to decorate their devices with various designs.
A person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have used a soft magnetic sheet as the target body of Magview because Wang indicates that such a target body allows for wireless charging. Said person would have found it obvious to have formed the magnetic target out of the soft magnetic composite material of Maehashi because Maehashi indicates that the soft magnetic material is able to adhere to a magnetic element and Maehashi includes a printable layer on the sheet which would allow for the incorporation of a decorative element on the target.
With regard to claim 3: Maehashi indicates that the thickness of the soft magnetic film can be adjusted to adjust the adhesion force generated between the film and a magnet. Maehashi teaches thicknesses significantly below 0.012 (50-100µm) with the primary downside of thicker films disclosed by Maehashi is potentially excessive adhesion force. A person having ordinary skill in the art before the effective filing date of the claimed invention would recognize that the magnetic target for securely holding a smartphone to a binocular mount would likely need to be on the thicker side of that range, but there is not an indication that the thickness would need to be increased by 30x (3000µm being approximately equal to the claimed maximum thickness) to accomplish sufficient adhesion strength.
With regard to claim 12: The Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device, see MPEP 2144.04 IV A, citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In addition, a person having ordinary skill in the art before the effective filing date of the claimed invention would have found the claimed dimensions obvious as a matter of adapting the target plate to be able to fit on the lens-side face of a large number of smartphone devices.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Maehashi in view of Heroux (US Patent 10,920,929 B1).
Maehashi does not disclose the provision of a bevel on the body.
Heroux indicates that a beveled edge on a device body can help create a smooth edge which helps alleviates snagging of the edge of things (see column 3 lines 2-6).
A person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have provided the body of Maehashi to have a bevel around the edge of the formed body in order to create a smooth edge which is less prone to snagging on other objects.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Leon W Rhodes Jr whose telephone number is (571)270-5774. The examiner can normally be reached M-F 9:00AM - 6:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Walter Lindsay can be reached at (571) 272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEON W RHODES, JR/Examiner, Art Unit 2852
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