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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
2. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
3. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
4. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
5. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
6. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Objections
7. Claim 14 is objected to because the limitation “the second personal accessory” should be “the first person accessory”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
8. 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.
9. 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.
10. Claims 1, 10, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kieley (US 9,856,895 B2).
Regarding claim 1, Kieley discloses an accessory holder, comprising: a mounting portion (2/3) configured to attach the accessory holder to wearable support structure (wearable support structure not being claimed in combination), the mounting portion including attachment means (15) for securing the accessory holder to the wearable support structure; a carrier frame (6A/7/9) configured to hold a first personal accessory (first personal accessory not being claimed in combination), the carrier frame including a retaining means (9) for holding the first personal accessory; and an arm (4/6B, see Figure 1) connecting the carrier frame to the mounting portion, the arm including a first hinge (4) configured to allow the carrier frame to move between a folded position and an unfolded position with respect to the mounting portion (see Figures 4A-4C).
Regarding claim 10, Kieley discloses the accessory holder of claim 1, wherein the carrier frame is configured to hold a smart phone having a screen (smart phone not being claimed in combination, though Kieley discloses tablet 11), 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 15, Kieley discloses 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 (Kieley shows a personal harness in Figures 8-9).
11. Claims 1, 10, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bruns (US 9,737,132 B2).
Regarding claim 1, Bruns discloses an accessory holder, comprising: a mounting portion (40) configured to attach the accessory holder to wearable support structure (wearable support structure not being claimed in combination), the mounting portion including attachment means (48) for securing 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 means (peripheral rim/lip and latch, see Figure 7)) for holding the first personal accessory; and an arm (46/60) 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).
Regarding claim 10, Bruns discloses the accessory holder of claim 1, wherein the carrier frame is configured to hold a smart phone having a screen (smart phone not being claimed in combination, though Brun 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 15, Bruns discloses 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 Brun would allow for attachment to any of these).
Claim Rejections - 35 USC § 103
12. 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.
13. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2).
Regarding claim 5, Bruns discloses the accessory holder of claim 1 in his Figures 1-12 embodiment, 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 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.
14. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2) in view of Graham (US 2007/0164987 A1).
Regarding claim 6, Bruns discloses the accessory holder of claim 1, but fails to disclose 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 with a pivot, the motivation being to allow a user to rotate the accessory between portrait and landscape viewing orientations, as taught by Graham.
15. Claims 7, 8, 17, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2) in view of Corcoran et al. (US 2013/0048514 A1).
Regarding claims 7 and 17, Bruns discloses the accessory holder of claim 1, but fails to disclose wherein the retaining means includes a length of elastomeric material configured to hold the first personal accessory to the carrier frame. The retaining means 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 means of Bruns with a corner elastic material, the motivation being to allow a user to attach PEDs of varying sizes, as taught by Corcoran.
Regrading claims 8 and 18, Bruns as modified above would include the accessory holder of claim 7 and 17, 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.
16. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 9,737,132 B2).
Regarding claim 5, Bruns discloses the accessory holder of claim 1 in his Figures 1-12 embodiment, 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.
Double Patenting
17. 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).
18. A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
19. Claims 3, 19, and 20 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 18, and 19 of prior U.S. Patent No. 12,053,082. This is a statutory double patenting rejection.
20. 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 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); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
21. 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).
22. 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.
23. 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.
24. Claims 1, 2, and 4-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18 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 is also recited in the patented claims. Regarding claim 1, see patented claim 1. Regarding claim 2, see patented claim 18. 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 11, see patented claim 12. 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 15. Regarding claim 18, see patented claim 16.
Conclusion
25. 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 11/12/25