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 .
This office action is in response to the Applicant’s communication filed on 09/09/2026. Claims 1 – 18 are currently pending in this application.
In view of applicant’s amendment and arguments regarding rejection of claims 4 – 12, 16 and 17 under 35 U.S.C. 112(a) and (b) or pre-AIA 35 .S.C. 112, first and/or second paragraph, set forth in the previous Office Action, the rejection(s) is/are hereby withdrawn.
The applicant's amendment and arguments to the claims rejection are fully considered, however, they still failed to overcome the applied references, as is explained in greater detail below in the body of the rejection. Additionally, new grounds of rejections are presented in this office action necessitated by the applicant’s amendment.
Response to Arguments
With respect to objection to the IDS presented in the previous office action, the Applicant states in the Remarks: “Concurrently herewith, Applicant submits copies of the foreign patent documents identified in the September 20, 2024 Information Disclosure Statement.”
However, no copies of the foreign patent documents were found in the Applicant’s submission.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because FIG 20 – 30 are either not clear or hand drawn. Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. 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.
This objection was first raised in the previous office action. In response, the Applicant states in the Remarks: “Applicant respectfully requests that this requirement be held in abeyance until allowability of the claims have been determined.”
However, 37 CFR 1.85(a) clearly states that “Unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)).”
Therefore, this objection to the drawings cannot be held in abeyance and the Applicant must submit corrected drawings as indicated above.
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.
Claims 1 – 4, 6 – 11, 13 – 16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20130045782 (Simmer).
Regarding claim 1, Simmer teaches “A mobile device case (FIG 1 – 10 with corresponding description), comprising:
an encircling sidewall (paragraph 0028: The case 10 includes a back panel or base 12 and a raised side wall 14 extending around the periphery of the base 12.) having:
an interior surface configured to retain a mobile device (corresponds to reference designator 20 in FIG 1); and
an exterior surface (external surface of the sidewall 14 clearly shown in FIG 2 – 5);
an opening in a portion of the interior surface (FIG 8 – 10 and paragraph 0032: a first opening 24. The first opening 24 has a periphery generally aligned with a plane parallel to the sidewall 14 of the case), the opening being disposed in a location of the encircling sidewall corresponding to a position of a speaker on the mobile device (paragraph 0032: The first opening 24 is in a position to align with a speaker component of the electronic device); and
a sound enhancing element extending from the opening towards the exterior surface (paragraph 0032 – 0034: each port 22 has a first opening 24 and a second opening 28 connected by a channel or sound conduit 26. The channel 26 is generally elbow shaped and tapers from the first opening 24 to the second opening 28. The interior surfaces of the channel 26 are preferably smooth and regular, and formed of a material having good sound-reflective properties.), the sound enhancing element comprising:
a bottom surface disposed adjacent to the exterior surface of the encircling sidewall (please see Sketch 1 below based on Simmer’s FIG 8 – 10 with the Examiner’s annotations showing positions of particular surfaces recited by the claim);
a curved rear surface extending from the opening to the bottom surface (see Sketch 1 below); and
opposing curved side surfaces extending along the curved rear surface from the opening to the bottom surface, wherein the curved rear surface and the opposing curved side surfaces form three curved walls of a multi-sided structure having a scoop shape and at least partially bounding a sound enhancement chamber (see Sketch 1 below);
wherein the bottom surface is substantially parallel to the opening (see Sketch 2 below which is based on Simmer’s FIG 8);
wherein the opposing curved side surfaces are co-radial with the curved rear surface (although this is not explicitly disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize this specific arrangement of the sides of the cavity simply a matter of design choice with predictable results since the Applicant themselves discloses different designs, some of which have this feature implemented and others do not. Additionally, such a modification would have involved a mere change in the shape of a component and the court held that the configuration of the claimed part 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 part was significant In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).), the curved rear surface having a radius of curvature between about 5 mm and about 30 mm (although this is not explicitly disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use any suitable radius of curvature, including the claimed values, simply as design choice with predictable results, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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.
Still additionally or alternatively, selecting a specific range for radius of curvature would have been an obvious matter of design choice with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.);
wherein the opening is separated from the bottom surface by about 2 mm to about 12 mm (although this is not explicitly disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use any suitable separation between the opening 24, as shown in FIG 8, and “the bottom surface”, including the claimed values, simply as design choice with predictable results, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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.
Still additionally or alternatively, selecting a specific range for separation between the opening 24, as shown in FIG 8, and “the bottom surface” would have been an obvious matter of design choice with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.); and
wherein the sound enhancement chamber is configured to receive sound emitted from the speaker through the opening and redirect the sound towards a listener (par. 0007: One or more sound-enhancing ports can be provided, for example an audio outlet port for directing sound from the electronic device's speaker outwardly toward a user. Paragraph 0038: The sound enhancement ports 22 amplify, focus, and direct the sound waves that travel through either of their openings. Sound waves emitted by the secured device's speaker enter the right sound enhancement port 22R through its first opening 24, travel through the sound conduit 26, and exit through its respective second opening 28.).”
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Regarding claim 13, Simmer teaches “A sound enhancing device (shown in FIG 1 and 8 – 10 with corresponding description), comprising:
an upper surface, a lower surface, and a body extending between the upper surface and the lower surface (please see Sketch 3 below based on Simmer’s FIG 8 – 10 with the Examiner’s annotations showing positions of particular parts recited by the claim);
an opening in a portion of the upper surface (FIG 8 – 10 and paragraph 0032: a first opening 24. The first opening 24 has a periphery generally aligned with a plane parallel to the sidewall 14 of the case); and
a sound enhancing element extending through the body, from the opening towards the lower surface (paragraph 0032 – 0034: each port 22 has a first opening 24 and a second opening 28 connected by a channel or sound conduit 26. The channel 26 is generally elbow shaped and tapers from the first opening 24 to the second opening 28. The interior surfaces of the channel 26 are preferably smooth and regular, and formed of a material having good sound-reflective properties.), the sound enhancing element comprising:
a bottom surface disposed adjacent to the lower surface (see Sketch 3 below);
a curved rear surface extending from the opening to the bottom surface; and
opposing curved side surfaces extending along the curved rear surface from the opening to the bottom surface;
wherein the curved rear surface and the opposing curved side surfaces form three curved walls of a multi-sided structure having a scoop shape and at least partially bounding a sound enhancement chamber;
wherein the bottom surface is substantially parallel to the opening;
wherein the opposing curved side surfaces are co-radial with the curved rear surface, the curved rear surface having a radius of curvature between about 5 mm and about 30 mm;
wherein the opening is separated from the bottom surface by about 2 mm to about 12 mm; and
wherein the sound enhancement chamber is configured to receive sound through the opening and redirect the sound towards a listener (the rest of these limitations is rejected because of the same reasons as explained in the rejection of similar limitations of claim 1 above, the explanation being incorporated herein by reference).”
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Regarding claims 2 and 14, “wherein the opening is separated from the bottom surface by about 5 mm to about 7 mm (although these specific values are not disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to select a specific range for separation between the opening 24, as shown in FIG 8, and “the bottom surface”, including the values specified by the claim, simply as design choice with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.).”
Regarding claims 3 and 15, “wherein the opening has a length of about 2 mm to about 12 mm (although these specific values are not disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to select a specific range for the length of the opening 24, as shown in FIG 1 and 9, including the values specified by the claim, simply as design choice with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.).”
Regarding claims 4 and 16, “wherein the opening is separated from the bottom surface by about 5 mm to about 7 mm and the opening has a length of about 2 mm to about 12 mm (although these specific values are not disclosed, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to select specific ranges for separation between the opening 24, as shown in FIG 8, and “the bottom surface”, as well as for the length of the opening 24, as shown in FIG 1 and 9, including the values specified by the claim, simply as design choice with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.).”
Regarding claim 6, Simmer teaches “further comprising: a second opening in a second portion of the interior surface; and a second sound enhancing element extending from the second opening towards the exterior surface, the second sound enhancing element comprising: a second bottom surface disposed adjacent to the exterior surface of the encircling sidewall; a second curved rear surface extending from the second opening to the second bottom surface; and opposing second curved side surfaces extending along the second curved rear surface from the second opening to the second bottom surface (may clearly be seen in FIG 9 showing the second sound enhancement port 22L having exactly same structure as the first port 22R addressed in the rejection of claim 1 and also shown in the Examiner’s Sketch 1 above).”
Regarding claim 7, Simmer teaches “wherein the second opening is disposed adjacent to the opening on a lower portion of the encircling sidewall (may clearly be seen from FIG 11. Paragraph 0036: In the depicted embodiment of FIGS. 11 and 12, the electronic device A is a cellular telephone with a speaker and a microphone located on its bottom edge (“disposed … on a lower portion of the encircling sidewall”). The speaker and microphone are located on the bottom surface of the device, placed in proximity to the sound enhancement ports 22 as depicted (“disposed adjacent to the opening”).).”
Regarding claim 8, Simmer teaches “wherein: the opening and the sound enhancing element are disposed in a location of the encircling sidewall corresponding to a position of a first speaker on a mobile device for which the mobile device case is configured (please see explanation in the rejection of claim 1 above); and
the second opening and the second sound enhancing element are disposed in a location of the encircling sidewall corresponding to a position of…” [a microphone] “…on the mobile device for which the mobile device case is configured (FIG 9 and paragraphs 0036 – 0038: implemented as sound enhancement port 22L. The sound waves that enter and exit the sound enhancement port 22L are amplified and/or enhanced such that sound waves entering the microphone are better received. During example operation, the sound waves enter the left sound enhancement port 22L through the second opening and sound conduit and exit through the respective first opening toward the secured device's microphone.).”
Simmer does not teach that the second sound enhancing element is for “a second speaker”.
However, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that if a particular mobile phone has two speakers at the bottom edge of the device, rather than a speaker and a microphone as disclosed by Simmer, to utilize both sound enhancement ports 22R and 22L for the speakers.
Regarding claim 9, Simmer teaches “further comprising:
a third opening in a third portion of the interior surface; and a third sound enhancing element extending from the third opening towards the exterior surface, the third sound enhancing element comprising: a third bottom surface disposed adjacent to the exterior surface of the encircling sidewall; a third curved rear surface extending from the third opening to the third bottom surface; and opposing third curved side surfaces extending along the third curved rear surface from the third opening to the third bottom surface (indeed, this is implemented in the sound enhancement port 22L which has exactly same physical structure as the sound enhancement port 22R addressed in the rejection of claim 1 (and thus having exactly same surfaces)).”
Regarding claim 10, Simmer does not teach “wherein the third opening and the third sound enhancing element are disposed on an upper portion of the encircling sidewall and in a location of the sidewall corresponding to a position of a speaker on a mobile device for which the mobile device case is configured.”
However, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application that if the mobile device includes a speaker at the upper edge of the device, to include, in the mobile device protective case, exactly same sound enhancement port corresponding to the specific speaker. Doing so would have simply allowed to utilize exactly same structure as disclosed by Simmer for all speakers present in the mobile device.
Regarding claim 11, while teaching in paragraph 0029 that the base 12 and wall 14 are constructed of a unitary molding of substantially rigid and impact-resistant polymeric material, Simmer does not teach that “the case is formed of thermoplastic.”
However, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize “thermoplastic” as the material to be used to construct the mobile phone case disclosed by Simmer with predictable results, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 18, Simmer teaches “A method of enhancing, focusing, or amplifying sound from a mobile device, the method comprising:
inserting a mobile device into the mobile device case of claim 1 (paragraph 0035: an electronic device is installed within the case 10, with the device's exterior housing fitting snugly within the inner layer 18 and the raised wall 14 and held therein by a friction fit with the inner layer 18.);
emitting sound from the mobile device through the opening and into the sound enhancement chamber (paragraph 0036: The speaker and microphone are aligned with a respective one of the sound enhancement ports 22 when the case 10 is installed onto the electronic device, so that the speaker and microphone are located in proximity to the respective first opening 24.); and
enhancing, focusing, or amplifying the sound emitted from the mobile device by means of the sound enhancing element (paragraph 0036: the sound waves emitted by the speaker are amplified and/or enhanced as they leave the sound enhancement port 22R. Also paragraphs 0038 – 0039), including redirecting the sound towards a listener by the three curved walls of the sound enhancement chamber (par. 0007: One or more sound-enhancing ports can be provided, for example an audio outlet port for directing sound from the electronic device's speaker outwardly toward a user. Paragraph 0038: The sound enhancement ports 22 amplify, focus, and direct the sound waves that travel through either of their openings. Sound waves emitted by the secured device's speaker enter the right sound enhancement port 22R through its first opening 24, travel through the sound conduit 26, and exit through its respective second opening 28. With respect to “the three curved walls” there are clearly shown in FIG 9 – 10 as well as marked in Sketch 1 above).”
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 20130045782 (Simmer) as applied to claim 1 above, and further in view of US 20180103134 (MALALLAH).
Regarding claim 5, Simmer does not teach “wherein the mobile device case is injection molded.”
MALALLAH teaches in paragraph 0013 that the mobile device case can be formed from any suitable lightweight material, such as plastic, by any suitable process, such as injection molding.
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize the process of injection molding, as disclosed by MALALLAH, to manufacture Simmer’s mobile device case simply as design choice with predictable results since, according to the Supreme Court, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Additionally, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation does not even have to be given any patentable weight.
Claim 8 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over US 20130045782 (Simmer) as applied to claim 7 above, and further in view of US 20130170686 (Lester).
Regarding claim 8, Simmer teaches “wherein: the opening and the sound enhancing element are disposed in a location of the encircling sidewall corresponding to a position of a first speaker on a mobile device for which the mobile device case is configured (please see explanation in the rejection of claim 1 above)…”
Simmer does not teach “the second opening and the second sound enhancing element are disposed in a location of the encircling sidewall corresponding to a position of a second speaker on the mobile device for which the mobile device case is configured.”
Lester teaches a case that holds and secures the entire perimeter of the mobile media device. The case includes a passive acoustic boosting portion. The passive acoustic boosting portion includes an acoustic waveguide, the acoustic waveguide being a conduit capable of guiding sound waves from at least one speaker of the mobile media device towards a listener. (All this in abstract).
Additionally, as disclosed in FIG 2 and 3 with corresponding description, the device includes “the second opening and the second sound enhancing element are disposed in a location of the encircling sidewall corresponding to a position of a second speaker on the mobile device for which the mobile device case is configured (paragraph 0030: the acoustic waveguides 114 each (i.e. there are two waveguides shown in FIG 2 so that, for example, the first waveguide is on the right side, and the second waveguide is on the left side) include: a waveguide input 115 positioned adjacent to the speaker 106, and capable of receiving sound directly from the speaker 106; a waveguide body 116 extending from the waveguide input 115 and capable of guiding the sound from the waveguide input 115; and a waveguide output 117 positioned at a distal end of the waveguide body 116, so as to receive the guided sound from the waveguide body 116, and being capable of projecting the guided sound outward from the mobile media device case 110 and substantially towards a listener.).”
In other words, Lester teaches two identical sound enhancing structures in the case, each corresponding to respective speaker on the mobile device.
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Lester second sound enhancing structure corresponding to a second speaker in the system of Simmer, for those applications when the mobile device has two speakers located at the bottom edge of the device. Doing so would have allowed to enhance sound emitted by both speakers.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 20130045782 (Simmer) as applied to claims 1 and 13 above, and further in view of US 20150172431 (Huang).
Regarding claims 12 and 17, Simmer does not teach “A mobile device docking station, comprising the mobile device case of claim 1 and an electrical connection interface configured to mate with a mobile device for which the mobile device case is configured.”
Huang teaches “A mobile device docking station (shown in FIG 25 – 26 with corresponding description), comprising the mobile device case of claim 1 (paragraph 0097: the functional shell 30 coupled to the protective shell 20 as shown in FIG 13. Paragraphs 0082 – 0083: When the functional shell 30 is assembled to the protective shell 20 that has been fitted onto the hand-held electronic device 40, the sound guide hole 56 has an end located corresponding to the speaker opening 43 on the hand-held electronic device 40 and the connection element 322 is inserted into the transmission jack 42. The sound guide hole 56 has another opposite end located on the cover plate 321 to orient in a direction the same as the display screen 44 of the hand-held electronic device 40. When the hand-held electronic device 40 plays a sound via the speaker openings 43, the sound guide holes 56 function to concentrate the sound and amplify its volume. In other words, disclosed by Huang structure corresponds to the structure claimed in claim 1 above) and an electrical connection interface configured to mate with a mobile device for which the mobile device case is configured (paragraph 0082: When the functional shell 30 is assembled to the protective shell 20 that has been fitted onto the hand-held electronic device 40, the connection element 322 is inserted into the transmission jack 42. Paragraph 0067: a connection element 322 for plugging into the transmission jack 42 on the hand-held electronic device 40. The connection element 322 can serve as a coupling structure for holding the functional shell 30 to the hand-held electronic device 40, or an electric connector for electrically connecting to the hand-held electronic device 40.).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to utilize disclosed by Simmer protective case with sound enhancement ports in a docking station embodiment, as disclosed by Huang. Doing so would have allowed to place the hand-held electronic device in an angular position most suitable for the user to operate the hand-held electronic device in a convenient manner (see Huang, paragraph 0100).
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENNADIY TSVEY whose telephone number is (571)270-3198. The examiner can normally be reached Mon-Fri 9-5:30.
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, Wesley Kim can be reached at 571-272-7867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GENNADIY TSVEY/ Primary Examiner, Art Unit 2648
