DETAILED ACTION
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 .
Specification
The use of the terms “Apple”, “Apple TV”, “HomePod”, “Roku”, “Command Strips” and “Amazon Fire TV”, which are trade names or marks used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Double Patenting
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).
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).
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.
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.
Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10039201, claims 1-20 of U.S. Patent No. 9131195, claims 1-30 of U.S. Patent No. 8988616, claims 1-20 of U.S. Patent No. 8896768, claims 1-20 of U.S. Patent No. 8848113. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the present claims are found in the claims of the subject patents.
Claim Objections
Claims 16 and 21 are objected to because of the following informalities:
In claim 16 line 4 “the bottom portion” should be “the first bottom portion”.
In claim 16 line 6 “the bottom portion” should be “the second bottom portion”.
In claim 21 line 7 “the bottom portion” should be “the first bottom portion”.
In claim 21 line 9 “the bottom portion” should be “the second bottom portion”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claims 1-24 it is unclear if the mounting system is meant to claim the digital media player and television in combination with the system, or if the digital media player and television are meant to merely be a part of the intended use of the mounting system, which is given patentable weight in that the device must merely be capable of performing the intended use. The digital media player and television are introduced as a part of the intended use of the mounting system, i.e. “configured to mount a digital media player to a backside surface of a television”, however subsequent limitations, such as claim 2 defining a positive structural relationship between the tray base and the television would appear to require the combination of the television and media player with the mounting system. For the purposes of examination it was assumed the claims were meant to be drawn to the combination of the television and digital media player with the mounting system, as this is what was meant to be claimed per the examiner’s best understanding of the claimed invention.
In claim 15 there is no antecedent basis for the terms “the first bottom portion” and “the second bottom portion”. It appears claim 15 should depend from claim 10.
In claim 24 it is unclear if the bottom sidewall is meant to reference the first bottom portion of the first sidewall and the second bottom portion of the second sidewall, or a separate distinct bottom sidewall. For the purposes of examination it was assumed the “bottom sidewall” was meant to reference portions of the first and second sidewalls, as this is what was meant to be claimed per the examiner’s best understanding of the claimed invention, as there was no separate bottom sidewall disclosed in the application as filed.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1,21,22,24 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Lee et al.(US20050211861).
[claim 1] Lee teaches a mounting system(fig 2a) configured to mount a digital media player(20) to a backside surface of a television(30), the television comprising a frontside surface configured to display an image, the mounting system comprising: a tray base(212), wherein the tray base comprises a top half and a bottom half, and the tray base comprises a left half and a right half; a first sidewall(210, fig 2a) coupled to the left half of the tray base; and a second sidewall(sidewall opposite 210 in fig 2a) coupled to the right half of the tray base such that the first sidewall and the second sidewall are coupled at opposite sides of the tray base.
[claim 21] wherein the first sidewall and the second sidewall protrude from the tray base outward relative to the backside surface of the television in a direction away from the frontside surface of the television while the tray base is attached to the backside surface of the television and while the digital media player is located at least partially between the first sidewall and the second sidewall(fig 3a), wherein the first sidewall comprises a first bottom portion(side of 213) that protrudes inward to reduce a first distance between the bottom portion and the right half of the tray base, wherein the second sidewall comprises a second bottom portion(opposite end of 213) that protrudes inward to reduce a second distance between the bottom portion and the left half of the tray base, wherein the digital media player comprises a lower left corner and a lower right corner, and wherein the first bottom portion is configured such that the first sidewall extends at least partially around the lower left corner of the digital media player, and the second bottom portion is configured such that the second sidewall extends at least partially around the lower right corner such that the first bottom portion of the first sidewall and the second bottom portion of the second sidewall are configured to prevent the digital media player from falling out of the mounting system by passing between the first bottom portion and the second bottom portion(fig 3a).
[claim 22] further comprising a hook(22) configured to engage a vent located on the backside surface of the television, wherein the hook couples the tray base to the television.
[claim 24] wherein the first sidewall and the second sidewall protrude from the tray base outward relative to the backside surface of the television in a direction away from the frontside surface of the television while the tray base is attached to the backside surface of the television and while the digital media player is located at least partially between the first sidewall and the second sidewall(fig 3a), the mounting system further comprising a bottom sidewall(213) coupled to the bottom half of the tray base, wherein the bottom sidewall protrudes from the tray base outward relative to the backside surface of the television in the direction away from the frontside surface of the television while the digital media player is located at least partially between the first sidewall and the second sidewall, wherein the bottom sidewall is configured to prevent the digital media player from falling out of the mounting system via exiting a bottom end of the mounting system(fig 3a).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-8,10-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. as applied to claim 1 above, and further in view of Richter(USD586795).
[claim 2] Lee teaches a mounting system as detailed above, wherein the tray base is coupled to the backside surface of the television such that the first sidewall and the second sidewall protrude from the tray base outward relative to the backside surface of the television in a direction away from the frontside surface of the television while the tray base is attached to the backside surface of the television(fig 3a). However Lee may not teach the mounting system further comprising: a first retaining lip coupled to the first sidewall; and a second retaining lip coupled to the second sidewall, wherein the first retaining lip and the second retaining lip engage at least one surface of the digital media player that faces away from the backside surface of the television while the digital media player is at least partially located between the first sidewall and the second sidewall such that the mounting system couples the digital media player to the backside surface of the television. Richter teaches a similar mounting system(fig 1) with a tray base(A in annotated fig 1 below), a first sidewall(B in annotated fig 1 below), a second sidewall(C in annotated fig 1 below), and a first retaining lip(D in annotated fig 1 below) coupled to the first sidewall, and a second retaining lip(E in annotated fig 1 below) coupled to the second sidewall. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the tray base, sidewalls and retaining lips of Richter in place of the tray base and sidewalls of Lee, as this would allow the mounting system to support a digital media player, while exposing and providing access to a lower surface of the digital media player.
[claim 3,18] wherein the tray base is coupled inside of a periphery of the backside surface of the television(fig 3a).
[claim 4] wherein the tray base is coupled to the backside surface of the television such that the tray base is oriented approximately parallel to the backside surface(fig 3a).
[claim 5] wherein when arranged as above, the mounting system further comprises: an open portion between the first sidewall and the second sidewall such that the bottom half of the mounting system comprises a bottom open end(between sidewalls B and C); and a gap between the first retaining lip and the second retaining lip, wherein the gap forms an open back of the mounting system(as seen in annotated fig 1 below) such that the at least one surface of the digital media player that faces away from the backside surface of the television is at least partially uncovered by the mounting system.
[claim 6] wherein the digital media player comprises a connection side(bottom side) configured to receive an electrical cable, wherein the digital media player is coupled to the mounting system such that the electrical cable exits the mounting system through the bottom open end(electrical cable would be free to exit through bottom open end in fig 1), and wherein the top half of the tray base comprises an at least partially open top located opposite of the bottom open end(as seen in annotated fig 1 below).
[claim 7] wherein the tray base is located at least partially between the digital media player and the backside surface of the television, and wherein the first retaining lip, the second retaining lip, and the open back are located outward from the digital media player in the direction away from the frontside surface of the television, when arranged as above.
[claim 8,19] further comprising a hook(22) that engages a vent located on the backside surface of the television such that the hook couples the tray base to the television.
[claim 10] wherein the first sidewall comprises a first bottom portion(F in annotated fig 1 below), and the second sidewall comprises a second bottom portion(G in annotated fig 1 below), wherein the mounting system comprises an open portion between the first bottom portion and the second bottom portion such that the bottom half of the mounting system comprises a bottom open end that faces downward relative to the television(as seen in fig 1 below), wherein the digital media player comprises a connection side(lower end) configured to receive an electrical cable, wherein the digital media player is coupled to the mounting system such that the electrical cable exits the mounting system in a downward direction through the bottom open end(electrical cable would be free to exit through bottom open end in fig 1) such that the connection side faces downward relative to the television.
[claim 11] wherein the top half of the tray base comprises an open top(as seen in fig 1 below) such that the tray base comprises a top open end located opposite of the bottom open end.
[claim 12] wherein the mounting system is configured to enable inserting the digital media player through the top open end while being configured to prevent the digital media player from falling downward through the bottom open end when arranged as above.
[claim 13] wherein the top half of the tray base comprises an at least partially open top located opposite of the bottom open end(as seen in fig 1 below), wherein the mounting system is configured to enable inserting the digital media player through the at least partially open top while being configured to prevent the digital media player from falling downward through the bottom open end when arranged as above.
[claim 14] wherein the top half of the tray base comprises an at least partially open top located opposite of the bottom open end(as seen in fig 1 below), wherein a gap between the first retaining lip and the second retaining lip forms an open back of the mounting system(as seen in fig 1 below) such that the at least one surface of the digital media player that faces away from the backside surface of the television is at least partially uncovered by the mounting system.
[claim 15] wherein the first retaining lip extends along the first sidewall from the top half of the tray to the first bottom portion(fig 1 below), and wherein the second retaining lip extends along the second sidewall from the top half of the tray to the second bottom portion(fig 1 below).
[claim 16] wherein the digital media player comprises a lower left corner and a lower right corner, wherein the first sidewall comprises a first bottom portion(F in annotated fig 1 below) that protrudes inward to reduce a first distance between the bottom portion and the right half of the tray base, wherein the second sidewall comprises a second bottom portion(G in annotated fig 1 below) that protrudes inward to reduce a second distance between the bottom portion and the left half of the tray base, wherein the first bottom portion is configured such that the first sidewall extends at least partially around the lower left corner of the digital media player, and the second bottom portion is configured such that the second sidewall extends at least partially around the lower right corner of the digital media player such that the first bottom portion of the first sidewall and the second bottom portion of the second sidewall are configured to prevent the digital media player from falling out of the mounting system by passing between the first bottom portion and the second bottom portion when arranged as above.
[claim 17] Lee teaches a mounting system as detailed above, wherein the tray base is coupled to the backside surface of the television such that the first sidewall and the second sidewall protrude from the tray base outward relative to the backside surface of the television in a direction away from the frontside surface of the television while the tray base is attached to the backside surface of the television(fig 3a). However Lee may not teach the mounting system further comprising: a first retaining lip coupled to the first sidewall; and a second retaining lip coupled to the second sidewall, wherein the first retaining lip and the second retaining lip engage at least one surface of the digital media player that faces away from the backside surface of the television while the digital media player is at least partially located between the first sidewall and the second sidewall such that the mounting system couples the digital media player to the backside surface of the television wherein a gap between the first retaining lip and the second retaining lip forms an open back of the mounting system such that the at least one surface of the digital media player that faces away from the backside surface of the television is at least partially uncovered by the mounting system, and wherein the tray base is located at least partially between the digital media player and the backside surface of the television, and wherein the first retaining lip, the second retaining lip, and the open back are located outward from the digital media player in the direction away from the frontside surface of the television. Richter teaches a similar mounting system(fig 1) with a tray base(A in annotated fig 1 below), a first sidewall(B in annotated fig 1 below), a second sidewall(C in annotated fig 1 below), and a first retaining lip(D in annotated fig 1 below) coupled to the first sidewall, and a second retaining lip(E in annotated fig 1 below) coupled to the second sidewall with a gap between the first retaining lip and second retaining lip forming an open back of the mounting system. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the tray base, sidewalls and retaining lips of Richter in place of the tray base and sidewalls of Lee, as this would allow the mounting system to support a digital media player, while exposing and providing access to a lower surface of the digital media player.
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Claim(s) 9,20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al as applied to claims 1 and 21(claim 23), or Lee et al. in view of Richter as applied to claims 7 and 17 above(claims 9,20) and further in view of Ferrante(US4815683).
[claim 9,20,23] Lee or Lee in view of Richter teaches a mounting system as detailed above with the tray base coupled to the backside surface of the television, however neither Lee nor Richter teach the use of an adhesive pad to couple the tray base to the backside surface of the television. Ferrante teaches a similar mounting system which uses an adhesive pad(48) to couple a tray base(12) to a television. It would have been obvious to one of ordinary skill in the art as of the effective filing date to use an adhesive pad, such as taught by Ferrante, to couple the mounting system of Lee or Lee in view of Richter to the television as this would merely be using known elements for their known functions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US10575427, US10299400, US10194544, US10117344, US20180216779, US9551454, US9543082, USD765064, US9339112, US20150330437, US8939417, US8934061, US8934060, US20140061406, US8544805, US20130069507, US20120320506, US8322584, US20120280014, US8191837, US20110000945, US7854420, US20100288895, US20100270190, USD609030, US20090218454, USD596172, USD574837, USD551008, US6445290, US5850998, USD369465, USD361462, USD280466.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY H DUCKWORTH whose telephone number is (571)272-2304. The examiner can normally be reached M-F 9:30-6.
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/BRADLEY DUCKWORTH/Primary Examiner, Art Unit 3632