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 .
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 12/26/24 is noted. The submission is in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the examiner is considering the information disclosure statement.
Drawings
3. New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because reference characters 14A and 14B in Figure 1 are not legible. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Claim Objections
4. Claim 5 is objected to because “height that equal” should be “height that is equal”. Appropriate correction is required.
5. Claim 10 is objected to because “height that equal” should be “height that is equal”. Appropriate correction is required.
6. Claim 18 is objected to because “height that equal” should be “height that is equal”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
7. 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.
8. 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.
9. Claims 1-10 and 12-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 204741488 U).
Regarding claim 1, Chen discloses an article of jewelry configured to secure a handheld, mobile electronic device (mobile electronic device not currently being claimed in combination due to the functional language “configured to secure”), the article of jewelry comprising: a shank (3) configured to hold the article of jewelry on a finger of a user; opposing shoulders (portions of 3 that transition into 7) extending from the shank (see Figures); a setting (that which defines 7, see Figures) extending from the opposing shoulders, the setting having a receptacle (7); a ferromagnetic element (base wall of 7 - where the entire ring, which would include this base wall, are ferromagnetic - see “ring 3 is iron magnetic material”); and a magnet (4) positioned within the receptacle (see Figures) and configured to form a magnetic bond with the ferromagnetic element (see “the suction force of the permanent magnet 4 and the iron magnetic material ring 3”) and engage a ferromagnetic structure (not currently being claimed in combination due to the functional language “configured to” - though Chen discloses a ferromagnetic structure 2) of a handheld, mobile electronic device in a manner such as to secure the handheld, mobile electronic device to a finger of the user.
Regarding claim 2, Chen discloses the article of jewelry of Claim 1, wherein the ferromagnetic structure (still not being claimed in combination) forms a portion of an outer protective cover (cover also not being claimed in combination - though Chen discloses the ferromagnetic structure 2 forming part of an outer “mobile phone cover 1”) of the handheld, mobile electronic device.
Regarding claim 3, Chen discloses the article of jewelry of Claim 1, wherein the receptacle includes a circumferential wall and a floor that defines a cavity (see Figures).
Regarding claim 4, Chen discloses the article of jewelry of Claim 3, wherein the magnet is positioned within the cavity (see Figures).
Regarding claim 5, Chen discloses the article of jewelry of Claim 4, wherein the magnet has a height that equal to or greater than a height of the cavity (see Figures).
Regarding claim 6, Chen discloses the article of jewelry of Claim 1, wherein the ferromagnetic element (base wall of 7 - where the entire ring, which would include this base wall, are ferromagnetic - see “ring 3 is iron magnetic material”) is one of disposed in at least one of the shank and the setting of the article of jewelry and secured to a floor of the receptacle (see Figures where the base wall of 7 is disposed within setting receptacle 7).
Regarding claim 7, Chen discloses a kit configured to secure an article of jewelry to a handheld, mobile electronic device, the kit comprising: an article of jewelry having a shank (3) configured to hold the article of jewelry on a finger of a user, opposing shoulders (portions of 3 that transition into 7) extending from the shank, a setting (that which defines 7, see Figures) extending from the opposing shoulders, the setting having a receptacle (7), a ferromagnetic element (base wall of 7 - where the entire ring, which would include this base wall, are ferromagnetic - see “ring 3 is iron magnetic material”), and a magnet (4) positioned within the receptacle and configured to form a magnetic bond with the ferromagnetic element (see “the suction force of the permanent magnet 4 and the iron magnetic material ring 3”); and a ferromagnetic structure (2) associated with the handheld, mobile electronic device (now being claimed in combination due to positively structural recitation “associated with” - where Chen discloses a “phone”) and configured for engagement with the magnet of the article of jewelry; wherein the magnet is configured to engage the ferromagnetic structure in a manner such as to secure the handheld, mobile electronic device to the finger of the user (see “because the permanent magnet 4 and the magnetic conductor 2 between the magnetic force, at this time, the mobile phone is fixed to the collar 3”).
Regarding claim 8, Chen discloses the kit of Claim 7, wherein the receptacle includes a circumferential wall and a floor that defines a cavity (see Figures).
Regarding claim 9, Chen discloses the kit of Claim 8, wherein the magnet is positioned within the cavity (see Figures).
Regarding claim 10, Chen discloses the kit of Claim 8, wherein the magnet has a height that equal to or greater than a height of the cavity (see Figures).
Regarding claim 12, Chen discloses the kit of Claim 7, wherein the ferromagnetic structure is attached to a rear surface of the handheld, mobile electronic device (see Figures).
Regarding claim 13, Chen discloses the kit of Claim 12, wherein the ferromagnetic structure (2) has the form of a sheet material (see Figures).
Regarding claim 14, Chen discloses the kit of Claim 7, wherein the ferromagnetic structure is attached to a rear surface of a protective case enclosing the handheld, mobile electronic device (see Figures).
Regarding claim 15, Chen discloses the kit of Claim 14, wherein the ferromagnetic structure has the form of a sheet material (see Figures).
Regarding claim 16, Chen discloses a method of securing a handheld, mobile electronic device to an article of jewelry, the method comprising the steps of: forming an article of jewelry having a shank (3) configured to hold the article of jewelry on a finger of a user, opposing shoulders (portions of 3 that transition into 7) extending from the shank, a setting (that which defines 7, see Figures) extending from the opposing shoulders, the setting having a receptacle (7), a ferromagnetic element (base wall of 7 - where the entire ring, which would include this base wall, are ferromagnetic - see “ring 3 is iron magnetic material”), and a magnet (4) positioned within the receptacle and configured to form a magnetic bond with the ferromagnetic element (see “the suction force of the permanent magnet 4 and the iron magnetic material ring 3”); associating a ferromagnetic structure (2) with the handheld, mobile electronic device (“mobile phone 1”), the ferromagnetic structure configured for engagement with the magnet of the article of jewelry (see “because the permanent magnet 4 and the magnetic conductor 2 between the magnetic force, at this time, the mobile phone is fixed to the collar 3”); engaging the ferromagnetic structure with the magnet in a manner such as to secure the handheld, mobile electronic device to the finger of the user (see Figures).
Regarding claim 17, Chen discloses the method of Claim 16, including the steps of forming a cavity within the receptacle with a circumferential wall and a floor, and positioning the magnet within the cavity (see Figures).
Regarding claim 18, Chen discloses the method of Claim 17, wherein the magnet has a height that equal to or greater than a height of the cavity (see Figures).
Regarding claim 19, Chen discloses the method of Claim 16, including the step of attaching the ferromagnetic structure to a rear surface of the handheld, mobile electronic device (see Figures).
Regarding claim 20, Chen discloses the method of Claim 16, including the step of attaching the ferromagnetic structure to a rear surface of a protective case enclosing the handheld, mobile electronic device (see Figures).
Claim Rejections - 35 USC § 103
10. 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.
11. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 204741488 U).
Regarding claim 11, Chen discloses the kit of Claim 7, but fails to disclose wherein the magnet is bonded to a floor of the receptacle. Chen never specifically says the magnet is bonded to the floor of the receptacle but Chen does at least consider the possibility that this is an option (see “when the permanent magnet 4 located in hole 7, even if there is no adhesive in the ring 7…”). Chen then goes on to say the magnetic attraction alone will keep the magnet in place without the need for adhesive. Given Chen’s own disclosure, it would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have at least tried the use of adhesive within the Chen receptacle for the purpose of more permanently retaining the magnet therein.
Double Patenting
12. 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).
13. 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).
14. 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.
15. 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.
16. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,102,196 B2 in view of Lederer (US 3,509,734 A).
Regarding claims 1-20, the patented claims clearly recite the same structure as the pending claims except for the presently claimed ferromagnetic element (28). In the patented claims, the magnet is only said to be positioned within the receptacle and bonded thereto. Lederer teaches that it was also known to attach a ferromagnetic element (11) within a ring receptacle for the purpose of attracting a magnetic element (9) thereto. 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 a ferromagnetic element within the receptacle of the patented claims for the purpose of attracting the magnet thereto, where such method of attaching a magnet within a receptacle was already known to be suitable for such use, as shown by Lederer.
Conclusion
17. 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 at (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 12/24/25