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 .
Terminal Disclaimer
2. The terminal disclaimer filed on 4/16/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,102,196 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Drawings
3. The drawings were received on 4/16/26. These drawings include a new Figure 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 22 recites various surface textures to enhance the bonding of the magnet to the receptacle floor. This makes sense if the bond in question is an adhesive bond, as set forth in the originally filed disclosure in paragraphs [0039]-[0040]. This doesn’t seem to make sense if the bond is magnetic, as now recited in claim 1, from which claim 22 ultimately depends. The specification never discloses such surface textures being configured to improve a magnetic bond as now claimed.
Claim Rejections - 35 USC § 103
5. 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.
6. 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.
7. Claims 1-5, 7-10, 12-16, 21, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 204741488 U) in view of Wishart (US 8,985,410 B2).
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, is 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.
Chen fails to disclose wherein the ferromagnetic material is disposed within the shank and is spaced apart from the magnet such that the ferromagnetic element and the magnet form a magnetic bond across intervening material of the article of jewelry. Rather than a ferromagnetic element embedded within the shank, Chen teaches that the entire ring is ferromagnetic (see ““ring 3 is iron magnetic material”) but discloses no criticality to such design.
Wishart teaches that it was already known to secure one half (4) of a magnetic bond within the setting receptacle of an article of jewelry (bracelet) by molding the other half (2) of the magnetic bond within the shank of the jewelry (see Figures) such that the magnetic bond forms across intervening silicone material (see claims 6 and 12 of Wishart) of the article of jewelry (see Figures). Wishart teaches that such molded construction allows for a rapid and easy production (see col. 1 line 39-40) as well as varied colors or designs (see col. 1 lines 43-44).
It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the Chen ring from silicone and molded a ferromagnetic element into the shank of the Chen ring rather than form the entire ring out of iron magnetic material, the motivation being to allow for rapid and easy production as well as varied colors and designs, as taught by Wishart.
Regarding claim 2, Chen as modified above would include the article of jewelry of Claim 1, Chen further disclosing 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 as modified above would include the article of jewelry of Claim 1, Chen further disclosing wherein the receptacle includes a circumferential wall and a floor that defines a cavity (see Figures).
Regarding claim 4, Chen as modified above would include the article of jewelry of Claim 3, Chen further disclosing wherein the magnet is positioned within the cavity (see Figures).
Regarding claim 5, Chen as modified above would include the article of jewelry of Claim 4, Chen further disclosing wherein the magnet has a height that equal to or greater than a height of the cavity (see Figures).
Regarding claim 7, Chen as modified above would include 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), all as taught by Chen; a ferromagnetic element, as taught by Wishart, and a magnet (4) positioned within the receptacle and configured to form a magnetic bond with the ferromagnetic element, as taught by Chen; 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, as taught by Chen; 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”), as taught by Chen; and the ferromagnetic element is disposed within the shank and is spaced apart from the magnet such that the ferromagnetic element and the magnet form a magnetic bond across intervening material of the article of jewelry, as taught by Wishart.
Regarding claim 8, Chen as modified above would include the kit of Claim 7, Chen further disclosing wherein the receptacle includes a circumferential wall and a floor that defines a cavity (see Figures).
Regarding claim 9, Chen as modified above would include the kit of Claim 8, Chen further disclosing wherein the magnet is positioned within the cavity (see Figures).
Regarding claim 10, Chen as modified above would include the kit of Claim 8, Chen further disclosing wherein the magnet has a height that equal to or greater than a height of the cavity (see Figures).
Regarding claim 12, Chen as modified above would include the kit of Claim 7, Chen further disclosing wherein the ferromagnetic structure is attached to a rear surface of the handheld, mobile electronic device (see Figures).
Regarding claim 13, Chen as modified above would include the kit of Claim 12, Chen further disclosing wherein the ferromagnetic structure (2) has the form of a sheet material (see Figures).
Regarding claim 14, Chen as modified above would include the kit of Claim 7, Chen further disclosing 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 as modified above would include the kit of Claim 14, Chen further disclosing wherein the ferromagnetic structure has the form of a sheet material (see Figures).
Regarding claim 16, Chen as modified above would include 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), all as taught by Chen; a ferromagnetic element, as taught by Wishart; and a magnet (4) positioned within the receptacle and configured to form a magnetic bond with the ferromagnetic element, as taught by Chen; the ferromagnetic element is disposed within the shank and is spaced apart from the magnet such that the ferromagnetic element and the magnet form a magnetic bond across intervening material of the article of jewelry, as taught by Wishart; 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”), as taught by Chen; 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), as taught by Chen.
Regarding claim 21, Chen as modified above would include the article of jewelry of Claim 1, wherein the shank and the setting are formed from a non-metallic material, as taught by Wishart (silicone), and the ferromagnetic element is a ferrous metal, as originally taught by Chen (see “iron magnetic material”) plate embedded within the non-metallic material during an injection molding process, as taught by Wishart.
Regarding claim 25, Chen as modified above would include the article of jewelry of Claim 21, wherein the non-metallic material includes silicone, as taught by Wishart.
8. Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 204741488 U) in view of Wishart (US 8,985,410 B2) as applied above, further in view of Ward (US 5,669,538 A).
Regarding claim 22, Chen as modified above would include the article of jewelry of Claim 4, but so far fails to include wherein the floor of the receptacle includes a surface feature selected from a group consisting of depressions, projections, cross- hatchings, and combinations thereof, the surface feature configured to improve bonding of the magnet to the floor. Chen does seem to suggest that adhesives may be used to retain the magnet within the receptacle (see “even if there is no adhesive in the ring 7”). Ward teaches that it was already known in the art for the floor of a receptacle (20) to include a surface feature of projections (50) to improve adhesive bonding of an object thereto (see col. 6 lines 42-64). A person of ordinary skill in the art would have realized through their own available knowledge and reasoning that such projections could help to increase the reliability of the adhesive bonds in other devices, including the modified Chen apparatus, and would have found it obvious to have provided the floor if the modified Chen apparatus with projections for this very reason.
9. Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (CN 204741488 U) in view of Wishart (US 8,985,410 B2) as applied above, further in view of Vlassis et al. (US 10,973,310 B2).
Regarding claim 23, Chen as modified above would include the article of jewelry of Claim 1, wherein the magnet has a pull force in a range of from about 5.0 lbs to about 15.0 lbs and a surface field in a range of from about 4,000 Gauss to about 8,000 Gauss. Chen is silent as to the strength of the magnet. Vlassis teaches that it was already known in the art to select a magnet strength that far exceeds the weight of the object being held and specifically teaches that a magnet used to hold a mobile electronic device may be have a strength in the range of 6-35lbs (see col. 25 line 47 - col. 26 line 40) and that suitable magnets include neodymium iron boron (see col. 22 lines 40-45). 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 magnet of the modified Chen jewelry as a neodymium iron boron magnet with a strength between 6-35lbs, where such magnet and strength were already known to be suitable for such use, as taught by Vlassis.
Regarding claim 24, Chen as modified above would include the article of jewelry of Claim 1, wherein the magnet comprises a rare earth magnetic material selected from a group consisting of neodymium iron boron, samarium cobalt, aluminum nickel cobalt, and combinations thereof, as taught by Vlassis.
Response to Arguments
10. Applicant’s arguments with respect to Chen as previously applied under 35 USC 102 have been fully considered and are persuasive but are also moot in view of the new grounds of rejection involving Wishart who teaches the embedded plate as now claimed.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
12. 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 5/11/26
Prosecution Insights