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 .
Introduction
This is a response to the applicant’s response filed on 08/25/2025. Claims 1-25 are currently presented in the instant application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/25/2025 has been considered by Examiner and made of record in the application file.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1, 17, 21 and 25 are 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. The newly added subject matter of “an attachment portion comprising a base panel configured for attachment both directly to a mobile device and also for attachment to a case mounted onto a mobile device” to dependent claim 1, 17, 21 and 25 is considered new matter because the specification as original filed does not provide support for such limitation.
The applicant has pointed out that the new limitations is fully supported in the remark, first paragraph in page 8, as well as in paragraph [0028] of the specification. However, Examiner have been reviewed figures 1-8 and paragraph [0028] of the specification. They are disclosed “an attachment portion comprising a base panel configured for attachment to a mobile device OR also for attachment to a case mounted onto a mobile device”, not “both directly to a mobile device and also for attachment to a case mounted onto a mobile device”. It cannot attach both directly to the case and the mobile device. Therefore, claims 1, 17, 21 and 25 are rejected under 112, first paragraph.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 12, 17, 21 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Website mypilotstore.com, customer reviewed the product on 09/29/2021 and 01/30/2023, hereiafter, “mypilotstore”) in view of Stankie et al. (US Pub. No.: 2022/0137491, hereinafter, “Stankie”).
Regarding claim 1, mypilotstore teaches a tube-holder accessory for a mobile device, the tube-holder accessory comprising (see picture and customer review date below, Pen-Pal rubber pen holder for iPads), based on the customer reviewed the product on 09/29/2021 and 01/30/2023. The product was available on the market before the filing date of the application was filed on 03/29/2024:
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an attachment portion comprising a base panel configured for attachment directly to a mobile device (see overview, the Pen-Pal rubber pen holder has a base for attaching to the iPads); and
an engagement portion for releasably engaging a tubular or cylindrical item, the engagement portion comprising at least first and second flexible and resilient flange portions extending from the base panel and defining a channel therebetween and forming a slot open at both ends and configured for universal engagement of tubular or cylindrical items of various shapes and sizes within the channel between the first and second flexible and resilient flanges (see picture and overview, grips securely pen and pencil sizes, rubber pen holder).
It should be noticed that mypilotstore fails to teach an attachment portion comprising a base panel configured for attachment both directly to a mobile device and also for attachment to a case mounted onto a mobile device. However, Stankie teaches an attachment portion comprising a base panel configured for attachment both directly to a mobile device and also for attachment to a case mounted onto a mobile device (see figures 6J-6L, attachment 162, mobile 180, case 182, [0040, 0058-0060, 0090]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Stankie into view of mypilotstore in order to provide a fastening means for securing and holding the accessory in place, enhanced functionality, convenience and personalization.
Regarding claim 12, mypilotstore further teaches the channel between the first and second flexible and resilient flanges has a length for inserting the pen therein (see picture). It is clearly seen that there is a distance between two soft rubber flanges. It is appeared to examiner that selecting the length of at least 50 mm would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept.
Regarding claim 17, mypilotstore teaches a tube-holder accessory for a mobile device, the tube-holder accessory comprising (see picture and customer review date below, Pen-Pal rubber pen holder for iPads), based on the customer reviewed the product on 09/29/2021 and 01/30/2023. The product was available on the market before the filing date of the application was filed on 03/29/2024:
an attachment portion comprising a base panel configured for attachment directly to a mobile device (see overview, the Pen-Pal rubber pen holder has a base for attaching to the iPads); and
an engagement portion for releasably engaging a tubular or cylindrical item, the engagement portion comprising at least first and second flexible and resilient flange portions extending from the base panel and defining a channel therebetween and forming a slot open at both ends and configured for universal engagement of tubular or cylindrical items of various shapes and sizes within the channel between the first and second flexible and resilient flanges (see picture and overview, grips securely pen and pencil sizes, rubber pen holder).
It should be noticed that mypilotstore fails to teach an attachment portion comprising a base panel having at least one magnetic element configured for both direct magnetic engagement with a cooperative magnetic feature of a mobile device and also for detachable magnetic engagement with a cooperative magnetic feature of a case for a mobile device. However, Stankie teaches an attachment portion comprising a base panel having at least one magnetic element configured for both direct magnetic engagement with a cooperative magnetic feature of a mobile device and also for detachable magnetic engagement with a cooperative magnetic feature of a case for a mobile device (see figures 6J-6L, attachment 162 is included magnetic, mobile 180 is included magnetic, case 182 is included magnetic, [0040-0041, 0058-0060, 0090]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Stankie into view of mypilotstore in order to provide a fastening means for securing and holding the accessory in place, enhanced functionality, convenience and personalization.
Regarding claim 21, mypilotstore teaches a tube-holder accessory for a mobile device, the tube-holder accessory comprising (see picture and customer review date below, Pen-Pal rubber pen holder for iPads), based on the customer reviewed the product on 09/29/2021 and 01/30/2023. The product was available on the market before the filing date of the application was filed on 03/29/2024:
an attachment portion comprising a base panel having an adhesive material configured for adhesive directly to a mobile device and also attach to plurality of surface area of the plurality of devices (see overview, the Pen-Pal rubber pen holder has a base for adhesive to the iPads); and
an engagement portion for releasably engaging a tubular or cylindrical item, the engagement portion comprising at least first and second flexible and resilient flange portions extending from the base panel and defining a channel therebetween and forming a slot open at both ends and configured for universal engagement of tubular or cylindrical items of various shapes and sizes within the channel between the first and second flexible and resilient flanges (see picture and overview, grips securely pen and pencil sizes, rubber pen holder).
It should be noticed that mypilotstore fails to teach an attachment portion comprising a base panel configured for attachment both directly to a mobile device and also for attachment the back of a case for a mobile device. However, Stankie teaches an attachment portion comprising a base panel configured for attachment both directly to a mobile device and also for attachment the back of a case for a mobile device (see figures 6J-6L, attachment 162, mobile 180, case 182, [0040, 0058-0060, 0090]). It is obvious that one skill in the art should use adhesive to attach the base of accessory to the back of mobile device and to the back of the protective case of mobile. Since the pen holder can use adhesive to attach to plurality of surface of plurality of devices.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Stankie into view of mypilotstore in order to provide a fastening means for securing and holding the accessory in place, enhanced functionality, convenience and personalization.
Regarding claim 25, mypilotstore teaches a tube-holder accessory for attachment to a mobile device, the tube-holder accessory comprising (see picture and customer review date below, Pen-Pal rubber pen holder for iPads), based on the customer reviewed the product on 09/29/2021 and 01/30/2023. The product was available on the market before the filing date of the application was filed on 03/29/2024:
an attachment portion comprising a base panel configured both direct attachment to a back surface of a mobile device (see overview, the Pen-Pal rubber pen holder has a base for attaching to the iPads); and
an engagement portion for releasably engaging a tubular or cylindrical item, the engagement portion comprising at least first and second flexible and resilient flange portions extending from the base panel and defining a channel therebetween and forming a slot open at both ends and configured for universal engagement of tubular or cylindrical items of various shapes and sizes within the channel between the first and second flexible and resilient flanges (see picture and overview, grips securely pen and pencil sizes, rubber pen holder).
It should be noticed that mypilotstore fails to teach a base panel configured for both direct attachment to a back surface of a mobile device and also for attachment to a case for a mobile device. However, Stankie teaches a base panel configured for both direct attachment to a back surface of a mobile device and also for attachment to a case for a mobile device (see figures 6J-6L, attachment 162, mobile 180, case 182, [0040, 0058-0060, 0090]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Stankie into view of mypilotstore in order to provide a fastening means for securing and holding the accessory in place, enhanced functionality, convenience and personalization.
Claim(s) 2-4 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Website mypilotstore.com, customer reviewed the product on 09/29/2021 and 01/30/2023, hereiafter, “mypilotstore”) in view of Stankie et al. (US Pub. No.: 2022/0137491, hereinafter, “Stankie”) as applied to claims 1 and 17 above, and further in view of Chiang et al. (US Pub. No.: 2022/0116491, hereinafter, “Chiang”).
Regarding claim 2, mypilotstore and Stankie, in combine, fails to teach the attachment portion comprises at least one magnetic element, configured for engagement with a cooperative magnetic feature of the mobile device. However, Chiang teaches the attachment portion comprises at least one magnetic element, configured for engagement with a cooperative magnetic feature of the mobile device (see figures 1 and 6, mobile 100, attach portion 201 with magnet element 210, [0029-0030]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Chiang into view of mypilotstore and Stankie in order to provide a fastening means for securing and holding the accessory in place.
Regarding claims 3 and 18, Chiang further teaches magnetic element comprises a ring-shaped element (see figures 1 and 6, mobile 100, attach portion 201 with magnet element 210, [0029-0030]).
Regarding claims 4 and 19, Chiang further teaches attachment portion comprises a first plate and a second plate and wherein the at least one magnetic element is embedded between the first and second plate (see figures 1 and 6, mobile 100, attach portion 201 with magnet element 210, top 218, base 212, [0029-0030]).
Claim(s) 5-7 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Website mypilotstore.com, customer reviewed the product on 09/29/2021 and 01/30/2023, hereiafter, “mypilotstore”) in view of Stankie et al. (US Pub. No.: 2022/0137491, hereinafter, “Stankie”) as applied to claims 1 and 21 above, and further in view of Mody et al. (US Pub. No.: 2018/0220782, hereinafter, “Mody”).
Regarding claim 5, mypilotstore and Stankie, in combination, fails to teach the attachment portion comprises an adhesive. However, Mody teaches the attachment portion comprises an adhesive (see figure 2, [0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Mody into view of mypilotstore and Stankie in order to provide a fastening means for secure the holder accessory in place.
Regarding claim 6, Mody further teaches the adhesive comprises a permanent adhesive (see [0039]). It appears to examiner that selecting a foam pressure-sensitive adhesive would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept. Further, examiner takes official notice foam pressure-sensitive adhesive tape is well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of a foam pressure-sensitive adhesive into view of mypilotstore, Stankie and Mody in order to provide a fastening means for secure the holder accessory in place.
Regarding claim 7, Mody further teaches the adhesive comprises a permanent adhesive (see [0039]).
Regarding claim 22, Mody further teaches the adhesive comprises a permanent adhesive (see [0039]). It appears to examiner that selecting a foam pressure-sensitive adhesive would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept. Further, examiner takes official notice foam pressure-sensitive adhesive tape is well known in the art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of a foam pressure-sensitive adhesive into view of mypilotstore and Stankie and Mody in order to provide a fastening means for secure the holder accessory in place.
Regarding claim 23, Mody further teaches the adhesive comprises a permanent adhesive (see [0039]).
Claim(s) 8-11, 15-16, 20 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Website mypilotstore.com, customer reviewed the product on 09/29/2021 and 01/30/2023, hereiafter, “mypilotstore”) in view of Stankie et al. (US Pub. No.: 2022/0137491, hereinafter, “Stankie”) as applied to claims 1, 17 and 21 above, and further in view of Gabrielle Ulubay Published on February 26, 2024.
Regarding claim 8, mypilotstore and Stankie, in combination, fails to teach the channel between the first and second flanges comprises a first width at a first end of the channel, a second width at an opposite second end of the channel, and a third width between the first and second ends of the channel, the third width being less than the first and second widths. However, Gabrielle Ulubay teaches the channel between the first and second flanges comprises a first width at a first end of the channel (read on top of slot), a second width at an opposite second end of the channel (read on bottom of slot), and a third width (read on narrowest part) between the first and second ends of the channel, the third width being less than the first and second widths (see figure below). It is clearly seen that narrowest part being less than the first and second widths. Further, claim fails to define the channel with open end. Therefore, Rhode lip case-Iphone 15 Pro with two soft silicone flange is still read on.
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of Gabrielle Ulubay into view of mypilotstore and Stankie in order to provide a fastening means for secure the accessory in place.
Regarding claim 9, Gabrielle Ulubay further teaches the first and second widths are different (see figure of claim 8 above).
Regarding claim 10, Gabrielle Ulubay further teaches the first and second widths are different (see figure of claim 8 above). It appears to examiner that selecting the first and second widths are between about 17.5 mm and 24 mm would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept.
Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
B. Changes in Shape
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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Regarding claim 11, Gabrielle Ulubay further teaches the third widths (see figure of claim 8 above, read on narrowest part). It appears to examiner that selecting the third width is about 13 mm would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept.
Regarding claim 15, Gabrielle Ulubay further teaches the first and second flanges at least partially comprise silicone (see Rhode lip case-Iphone 15 Pro has two soft silicone flanges to form a channel and open slot for inserting a Rhode lip gloss therein, page 1).
Regarding claims 16, 20 and 24, Gabrielle Ulubay further teaches the engagement portion is configured for releasably engaging a tube of a personal care material selected from a tube of lipstick, a tube of lip gloss, a tube of moisturizer, a tube of sunscreen, and a tube of makeup (see Rhode lip case-Iphone 15 Pro has two soft silicone flanges to form a channel and open slot for inserting a Rhode lip gloss).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over (Website mypilotstore.com, customer reviewed the product on 09/29/2021 and 01/30/2023, hereiafter, “mypilotstore”) in view of Stankie et al. (US Pub. No.: 2022/0137491, hereinafter, “Stankie”) as applied to claim 1 above, and further in view of McKinney (US Pub. No.: 2021/0341097).
Regarding claim 13, mypilotstore and Stankie, in combination, fails to teach at least one of the first and second flanges comprise an arcuate inner surface. However, McKinney teaches at least one of the first and second flanges comprise an arcuate inner surface (see figures 1-2, bracket arm 132 is receiving tubular accessory 140. It is clearly seen that the bracket arm is curved inside, [0032], bracket has a curved inward).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teaching of McKinney into view of mypilotstore and Stankie in order to provide a fastening means for secure the accessory in place.
Regarding claim 14, McKinney further teaches the arcuate inner surface defines a radius of curvature (see figure 1, bracket arm 132 is receiving tubular accessory 140. It is clearly seen that the bracket arm is curved inside, [0032], bracket has a curved inward). It appears to examiner that selecting the arcuate inner surface defines a radius of curvature between about 16 mm and 25 mm would depend more upon the choice of the manufacturer and the choice of engineering, than on any inventive concept.
Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
B. Changes in Shape
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tuan A. Pham whose telephone number is (571) 272-8097, the fax number is (571) 273-8097 and the email is tuan.pham01@uspto.gov. The examiner can normally be reached on Monday through Friday, 8:30 AM-5:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Yuwen (Kevin) Pan can be reached on (571) 272-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TUAN PHAM/Primary Examiner, Art Unit 2649