Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This office action contains new grounds of rejection for the subject matter of previous claim 11, now part of claim 1, which was not previously rejected with prior art, thereby making this second action NON-FINAL.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1, 4, 5, 10, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2) in view of Lee et al. (US 9,685,986 B2).
Regarding claim 1, Bruns (Figures 1-12) discloses an accessory holder, comprising: a mounting portion (40/60) configured to attach the accessory holder to wearable support structure (wearable support structure not being claimed in combination), the mounting portion including attachment mechanism (48) configured to secure the accessory holder to the wearable support structure; a carrier frame (42) configured to hold a first personal accessory (first personal accessory not being claimed in combination), the carrier frame including a retaining mechanism (peripheral rim/lip and latch, see Figure 7)) configured to hold the first personal accessory; and an arm (46/62) connecting the carrier frame to the mounting portion, the arm including a first hinge (60) configured to allow the carrier frame to move between a folded position and an unfolded position with respect to the mounting portion (see Figures).
Bruns fails to disclose wherein the carrier frame includes a peripheral attachment void, the accessory holder further comprising a peripheral attachment that is mounted to the peripheral attachment void, and the peripheral attachment configured to hold a second personal accessory. Lee teaches that it was already known in the art for a carrier frame (6700, see Figure 67B) like that of Burns to include a peripheral attachment void (see voids/holes such as 1110 all over the case 6700), the accessory holder further comprising a peripheral attachment (such as projections 1104) that is mounted to the peripheral attachment void, and the peripheral attachment configured to hold a second personal accessory (second personal accessory not currently being claimed in combination). Lee teaches that numerous accessories including various projection patterns may be attached to the voids (see col. 16 line 48 - col. 17 line 28). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the carrier frame (42) of Bruns with any suitable and desirable number or peripheral attachment voids like those of Lee, the motivation being to allow a user to attach any number of suitable accessories, including a peripheral attachment like that of Lee, in order to increase the carrying capacity of the Bruns holder.
Regarding claim 4, Bruns as modified above would include the accessory holder of claim 1, wherein the mounting portion (40/60) includes an adjustment track (circular track 60) configured to allow movement (rotation) of the arm with respect to the mounting portion.
Regarding claim 5, Bruns as modified above would include the accessory holder of claim 1, but this embodiment appears to fail to include wherein a length of the arm is configured to be manually adjusted by a user, such that a relative position of the carrier frame with respect to the mounting portion may be changed. In another embodiment shown in Figures 22-32, Bruns shows the arm (340) being manually adjusted by the user to reposition the phone. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was filed to have provided the Figures 1-12 embodiment of Bruns as modified above with the extendable arm from the Figures 22-32 embodiment of Bruns, the motivation being to allow a user to further orient the phone as desired.
Regarding claim 10, Bruns as modified above would include the accessory holder of claim 1, wherein Bruns discloses the carrier frame is configured to hold a smart phone having a screen (smart phone not being claimed in combination, though Bruns discloses such device, see col. 3 lines 24-29), and the accessor holder is configured to allow viewing of the screen in the unfolded position, and to protect the screen from direct contact in the folded position.
Regarding claim 13, Bruns as modified above would include the accessory holder of claim 1, wherein the carrier frame includes a plurality of peripheral attachment voids, as taught by Lee, but so far fails to include wherein the accessory holder comprises a separate peripheral attachment mounted to each of the peripheral attachment voids, and each of the peripheral attachments is configured to hold a separate second personal accessory. As Lee contemplates using more than one void to attach each accessory and also attaching more than one accessory (see col. 16 line 48 - col. 17 line 28), it would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided an equal number of peripheral attachments to voids as mere design choice and also to ensure a secure fit by utilizing all available voids.
Regarding claim 14, Bruns as modified above would include the accessory holder of claim 1, wherein the second personal accessory is at least one of a compass, a GPS, or a camera. The second personal accessory is still not being claimed in combination and nothing in Bruns as modified above would physically prevent a user from adding projections like those of Lee to any of a compass, GPS, or camera and attaching the accessory the voids of the modified Bruns holder.
Regarding claim 15, Bruns as modified above would include the accessory holder of claim 1, wherein the wearable support structure (still not being claimed in combination) is at least one of a plate carrier, a tactical vest, a backpack, a parachute harness, or a personal harness (the attaching means 48 of Bruns would allow for attachment to any of these).
Regarding claim 16, Bruns as modified above would include the accessory holder of claim 1, but this embodiment fails to include wherein the attachment means include MOLLE compliant straps as only a belt clip is shown. In another embodiment shown in Figures 13-21, Bruns shows the attachment means being MOLLE compliant straps (222). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was filed to have replaced the attachment means of the Figures 1-12 embodiment of Bruns with the attachment means from the Figures 22-32 embodiment of Bruns as a simple substitution of one known attachment means design for another. There is no inventive step in simply choosing between known attachment means designs absent a showing of unexpected results.
5. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2) in view of Lee et al. (US 9,685,986 B2) as applied above, further in view of Graham (US 2007/0164987 A1).
Regarding claim 6, Bruns as modified above would include the accessory holder of claim 1, but so far fails to include wherein the arm includes a pivot configured to allow manual rotation of the carrier frame with respect to the arm. Graham teaches that it was already know in the art to the provide an accessory holder arm like that of Bruns with a pivot (384) configured to allow manual rotation of the carrier frame with respect to the arm to allow a user to choose between portrait and landscape viewing orientations (see [0129]). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was filed to have provided the arm of Bruns as modified above with a pivot, the motivation being to allow a user to rotate the accessory between portrait and landscape viewing orientations, as taught by Graham.
6. Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2) in view of Lee et al. (US 9,685,986 B2) as applied above, further in view of Corcoran et al. (US 2013/0048514 A1).
Regarding claim 7, Bruns as modified above would include the accessory holder of claim 1, but so far fails to include wherein the retaining mechanism includes a length of elastomeric material configured to hold the first personal accessory to the carrier frame. The retaining mechanism in Bruns is a perimeter wall and latch attaching what seems to be a fixed size portable electronic device to the planar carrier frame. Corcoran teaches that it was also known in the art to hold a portable electronic device against a planar backing using a length of elastomeric material (105) spanning corners thereof (see Figure 1A) in order to hold PEDs of varying sizes (see [0040]). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was filed to have replaced the perimeter wall and latch retaining mechanism of Bruns as modified above with a corner elastic material, the motivation being to allow a user to attach PEDs of varying sizes, as taught by Corcoran.
Regrading claim 8, Bruns as modified above would include the accessory holder of claim 7, wherein the length of elastomeric material spans corners of the carrier frame, such that personal accessories having different lengths or widths may be secured within a perimeter of the carrier frame, as taught by Corcoran.
Double Patenting
7. A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
8. 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
9. The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
10. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
11. Claims 1-10, 12-18, and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,053,082. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the presently recited structure or obvious variants and/or subcombinations or combinations thereof are also recited in the patented claims. Regarding claim 1, see patented claim 12. Regarding claim 2, see patented claim 18. Regarding claim 3, see patented claims 1 and 12. Regarding claim 4, see patented claim 2. Regarding claim 5, see patented claim 3. Regarding claim 6, see patented claim 4. Regarding claim 7, see patented claim 9. Regarding claim 8, see patented claim 10. Regarding claim 9, see patented claim 11. Regarding claim 10, see patented claim 5. Regarding claim 12, see patented claim 13. Regarding claim 13, see patented claim 14. Regarding claim 14, see patented claim 6. Regarding claim 15, see patented claim 7. Regarding claim 16, see patented claim 8. Regarding claim 17, see patented claim 17. Regarding claim 18, see patented claim 16. Regarding claim 21, see patented claim 17 where claim 21 does not define any additional structure beyond a functional use of the already patented invention. Regarding claim 22, see patented claim 20. Regarding claim 23, see patented claim 3.
Response to Arguments
12. Applicant’s arguments filed 5/1/26 have been fully considered and are moot in view of the new grounds of rejection.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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, Nathan Newhouse can be reached on (571)272-4544. 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.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 7/16/26
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