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 .
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The certified copy was electronically retrieved by the USPTO on August 19, 2025.
Election/Restrictions
Applicant elected, without traverse, Group I (currently pending claims 1-8 and 11) in the reply filed on August 14, 2025.
Claims 9 and 10 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 14, 2025.
Examiner Comments
The Examiner has cited particular columns and line numbers, paragraphs, or figures in the reference(s) as applied to the claims for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the Applicant, in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamoto (JP 2005-276304 A).
As per claim 1, Yamamoto (JP 2005-276304 A) discloses a magnetic tape cartridge (e.g., 10 - see Fig. 1) comprising: a magnetic tape (e.g. T); and a case (e.g., 11) that is a housing of which a first case member (e.g., 13) and a second case member (e.g., 12) are fastened to each other to form an internal space (e.g., internal space in which the tape reel (17) is provided) in which a magnetic tape (t) is accommodable, the case (e.g. 11) including a first fastening hole (e.g., at least one of the four fastening holes (12d, 13d), of which there are four proximate each corner) to which a first fastening member (e.g., non-special screw (26c)) fastening the first case member (e.g., 13) and the second case member (e.g., 12) to each other is attached and a second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) to which a second fastening member (e.g. special screw (e.g., 26A, 26B)) that is attached through a method different from a method through which the first fastening member (e.g., non-special screw (26c)) is attached and that fastens the first case member (e.g., 13) and the second case member (e.g., 12) to each other for suppression of decomposition of the housing is attachable - see, inter alia, abstract; p. 2, ll. 12-29; p. 3, ll. 1-5; p. 4, l. 31 through p. 5, l. 12 of the attached English machine translation of Yamamoto (JP 2005-276304 A).
Additionally, as per amended claim 1, wherein a plurality of the first fastening holes (e.g., at least one of the four fastening holes (12d, 13d), of which there are four proximate each corner) are formed, and at least one first fastening hole is formed at each of positions corresponding to four corners of the housing. See Fig. 1.
Additionally, as per amended claim 1, wherein the second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) is formed at at least one of the positions corresponding to the four corners of the housing. See Fig. 1.
Additionally, as per amended claim 1, wherein the second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) is formed at a position that is separated from the first fastening hole (e.g., another of the at least one of the four fastening holes (12d, 13d)), which is formed at the at least one of the positions, i.e., positions at the four corners, )by a predetermined distance (e.g., distance between any of the two holes (12d-13d) of the four.
For example, the aforementioned first fastening hole(s) correspond to the holes formed in boss(es) (13d) that define the hole(s), and/or the second positioning hole(s) correspond to the hole(s) formed and defined by the corresponding boss(es) (12d), providing a total of eight fastening holes, two at each of the four corners of the cartridge.
As per claim 4, wherein the second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) is formed at any one of the positions corresponding to the four corners of the housing.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP 2005-276304 A) in view of Kataoka (US 2021/0241796 A1).
See the description of Yamamoto (JP 2005-276304 A), supra.
As per claim 6, Yamamoto (JP 2005-276304 A) remains silent with respect to wherein the
second fastening hole is formed at a corner that is diagonally opposite to a corner at which a contactless type communication medium is accommodated in the housing.
However, such contactless type communication media accommodated magnetic tape cartridge housings are well-known in the art.
As just one example, Kataoka (US 2021/0241796 A1) discloses an analogous magnetic tape cartridge, in the same field of endeavor as Yamamoto (JP 2005-276304 A), wherein, a contactless type communication medium (e.g., cartridge memory M) is accommodated in the housing, diagonally opposite to a corner at which a fastening hole (e.g., the lower-right corner as depicted in Fig. 2) (corresponding to a second fastening hole) is provided.
Given the express teachings and motivations, as espoused by Kataoka (US 2021/0241796 A1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide a contactless type communication medium, accommodated in the housing, at a corner that is diagonally opposite to a (second) fastening hole corner, in order to advantageously provide the capability of storing management information related to the recording medium cartridge, as is well-known, established and appreciated in the art, as evidenced by Kataoka (US 2021/0241796 A1) (e.g., see paragraph [0004] of Kataoka (US 2021/0241796 A1)).
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP 2005-276304 A) in view of Conti et al. (US 5,023,741).
See the description of Yamamoto (JP 2005-276304 A), supra.
As per claim 7, Yamamoto (JP 2005-276304 A) remains silent with respect to wherein the method through which the second fastening member is attached is a one-way method in which the second fastening member is engaged with a tool only in a direction in which the second fastening member is tightened.
However, such special screws including one-way screws are well-known in the art.
As just one example, Conti et al. (US 5,023,741) discloses an analogous magnetic tape cartridge, in the same field of endeavor as Yamamoto (JP 2005-276304 A), wherein, in order to enhance security, fastening elements are provided which are not easily removed, including a "one-way screw[]". See, e.g., col. 5, ll., 39-42 of Conti et al. (US 5,023,741).
Given the express teachings and motivations, as espoused by Conti et al. (US 5,023,741), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide the special screw (26C) of Yamamoto (JP 2005-276304 A) as being a one-way screw, as is known in the art, as disclosed by Conti et al. (US 5,023,741), in order to advantageously provide a well-known special screw that allows for the use of one tool to fasten special and non-special screws in one direction, while providing the requisite difficulty of loosening the special screw when attempting to loosen such special screw.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP 2005-276304 A) in view of Gelardi et al. (GB 2129773 A).
See the description of Yamamoto (JP 2005-276304 A), supra.
As per claim 8, Yamamoto (JP 2005-276304 A) remains silent with respect to wherein a cap member is attached to the second fastening hole to which the second fastening member has not been attached.
However, such caps for covering holes with magnetic tape cartridges are well-known in the art.
As just one example, Gelardi et al. (GB 2129773 A) discloses an analogous magnetic tape cartridge, in the same field of endeavor as Yamamoto (JP 2005-276304 A), wherein, in order to protect a recording medium disposed within the cartridge, a cap (plug) (e.g., 46) is provided within a fastening hole. See, e.g., abstract of Gelardi et al. (GB 2129773 A).
Given the express teachings and motivations, as espoused by Gelardi et al. (GB 2129773 A), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to provide a cap member that is attached to the second fastening hole to which the second fastening member has, or has not, not been attached, in order to simply provide a smooth exterior of the magnetic tape cartridge, by covering a hole - moreover, it would have been obvious to simply provide the cap with or without the fastening member disposed within the fastening hole, as the plug would function in a similar manner - protecting the recording medium disposed within the cartridge by preventing debris from gaining intrusion via the hole.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (JP 2005-276304 A).
See the description of Yamamoto (JP 2005-276304 A), supra.
As per claim 11, Yamamoto (JP 2005-276304 A) remains silent with respect to wherein the predetermined distance is equal to or larger than 5 mm, and equal to or smaller than 15 mm.
The Examiner maintains that it would have been obvious to one of ordinary skill in the art, at the time of the instant invention was effectively filed, to satisfy the claimed range(s) and/or dimension(s) as set forth in claim 11, particularly in light of the teachings of Yamamoto (JP 2005-276304 A) for expressly and explicitly providing at least one fastening member that is attached through a method different from a method through which a conventional first fastening member is attached and that fastens the first case member and the second case member to each other for the explicit suppression of decomposition of the housing is attachable, such that the predetermined distance is equal to or larger than 5 mm, and equal to or smaller than 15 mm, as per claim 11, since simply locating the position of the second, non-conventual screw hole, relative to the conventional screw hole, within a prescribed distance (e.g., such as the predetermined distance of equal to or larger than 5 mm, and equal to or smaller than 15 mm), can be achieved through routine optimization/experimentation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 105 USPQ 233, 235 (CCPA 1955). Additionally, it has been held that determining the optimal value of a result effective variable would have been obvious and ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
Moreover, there is no evidence of record that shows the claimed ranges to be critical or otherwise result in nonobvious (providing "unexpected results"), when viewed in light of the teachings of Yamamoto (JP 2005-276304 A).
Patent law is replete with cases in which when the mere difference between the claimed invention and the prior art is some range, variable or other dimensional limitation within the claims, patentability cannot be found.
It furthermore has been held in such a situation, the Applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Moreover, the instant disclosure does not set forth evidence ascribing unexpected results due to the claimed dimensions. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which held that the dimensional limitations failed to point out a feature which performed and operated any differently from the prior art.
In an obviousness analysis, it is not necessary to find precise disclosure directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.
As the U.S. Supreme Court has stated, obviousness requires an "expansive and flexible" approach that asks whether the claimed improvement is more than a "predictable variation" of "prior art elements according to their established functions." KSR, 550 U.S. at 415, 417.
Response to Arguments
Applicant's arguments filed October 8, 2025 have been fully considered but they are not persuasive.
The Applicant alleges:
Claim 1 recites that the magnetic tape cartridge has at least one first fastening hole at each corner of the housing, and has the second fastening hole in the vicinity of one of the first fastening holes at the corner, as shown, for example, in Figs. 3 and 4 of the application. Applicant submits that none of the cited references disclose such a configuration. Because the fastening strength of the case is secured by the first fastening hole at each corner, the use of the second fastening hole can be advantageously made optional in accordance with the needs of a user. (Specification, paragraph [0054]).
See pp. 6 and 7 of the Response.
As set forth in the rejection, supra, the Examiner maintains that Yamamoto (JP 2005-276304 A) still anticipates the claimed invention, as currently drafted.
More concretely, Yamamoto (JP 2005-276304 A) discloses a first fastening hole (e.g., at least one of the four fastening holes (12d, 13d), of which there are four proximate each corner) to which a first fastening member (e.g., non-special screw (26c)) fastening the first case member (e.g., 13) and the second case member (e.g., 12) to each other is attached and a second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) to which a second fastening member (e.g. special screw (e.g., 26A, 26B)) that is attached through a method different from a method through which the first fastening member (e.g., non-special screw (26c)) is attached and that fastens the first case member (e.g., 13) and the second case member (e.g., 12) to each other for suppression of decomposition of the housing is attachable - see, inter alia, abstract; p. 2, ll. 12-29; p. 3, ll. 1-5; p. 4, l. 31 through p. 5, l. 12 of the attached English machine translation of Yamamoto (JP 2005-276304 A).
Furthermore, as per amended claim 1, wherein a plurality of the first fastening holes (e.g., at least one of the four fastening holes (12d, 13d), of which there are four proximate each corner) are formed, and at least one first fastening hole is formed at each of positions corresponding to four corners of the housing. See Fig. 1.
Additionally, as per amended claim 1, wherein the second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) is formed at at least one of the positions corresponding to the four corners of the housing. See Fig. 1. The second fastening hole (e.g., at least one of the four fastening holes (12d, 13d)) is formed at a position that is separated from the first fastening hole (e.g., another of the at least one of the four fastening holes (12d, 13d)), which is formed at the at least one of the positions, i.e., positions at the four corners, )by a predetermined distance (e.g., distance between any of the two holes (12d-13d) of the four.
For example, the aforementioned first fastening hole(s) correspond to the holes formed in boss(es) (13d) that define the hole(s), and/or the second positioning hole(s) correspond to the hole(s) formed and defined by the corresponding boss(es) (12d), providing a total of eight fastening holes, two at each of the four corners of the cartridge, albeit, the first/second holes are not within the same plane and/or the same case member (but the claims do not require as much).
Thus claim 1 remains anticipated.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William J Klimowicz whose telephone number is (571)272-7577. The examiner can normally be reached Monday-Thursday, 8:00AM-6PM, ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached at (571)270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILLIAM J KLIMOWICZ/Primary Examiner, Art Unit 2688
Prosecution Insights