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 .
Claim Rejections - 35 USC § 102
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.
Claims 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koo et al (US 20220151067; “Koo” hereinafter).
Regarding claim 8, Koo discloses: an electronic device (200) that comprising a storage medium installed thereon (331, fig. 5), the storage medium having a first end (see annotated fig. 5 below) with a terminal part (electrical connection of 331a, ¶[0074]) formed thereon and a second end opposite to the first end (see annotated fig. 5 below), the electronic device comprising:
a circuit board (203, fig. 7) having a first surface (F2) facing in a first direction (Z axis, arrow direction) and a second surface (F1) facing in a second direction (Z axis, opposite arrow direction) that is opposite to the first direction;
a connector (333) mounted on the first surface of the circuit board (fig. 7), the first end of the storage medium being connectable to the connector (see annotated fig. 5 below); and
a member different from the circuit board (211a, 335, 415, fig. 7),
wherein the member different from the circuit board has a third surface facing in the first direction (see annotated fig. 7 below) and has at least one positioning portion (see annotated fig. 7 below) formed on the third surface for positioning a spacer (411a, fig. 7) that supports the second end of the storage medium (fig. 7),
wherein the third surface is positioned in a direction along the circuit board with respect to the connector (Y axis, fig. 7) and positioned in the second direction farther than the first surface of the circuit board (figure 7 clearly discloses this limitation where the third surface is positioned in the second direction which is opposite F2), and
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wherein the member different from the circuit board is a connector shield (335, fig. 7, ¶[0085]) covering the connector.
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Regarding claim 9, Koo discloses: an electronic device (200) that comprising a storage medium installed thereon (331, fig. 5), the storage medium having a first end (see annotated fig. 5 below) with a terminal part (electrical connection of 331a, ¶[0074]) formed thereon and a second end opposite to the first end (see annotated fig. 5 below), the electronic device comprising:
a circuit board (203, fig. 7) having a first surface (F2) facing in a first direction (Z axis, arrow direction) and a second surface (F1) facing in a second direction (Z axis, opposite arrow direction) that is opposite to the first direction;
a connector (333) mounted on the first surface of the circuit board (fig. 7), the first end of the storage medium being connectable to the connector (see annotated fig. 5 below); and
a member different from the circuit board (211a, 335, 415, fig. 7),
wherein the member different from the circuit board has a third surface facing in the first direction (see annotated fig. 7 below) and has at least one positioning portion (see annotated fig. 7 below) formed on the third surface for positioning a spacer (411a, fig. 7) that supports the second end of the storage medium (fig. 7),
wherein the third surface is positioned in a direction along the circuit board with respect to the connector (Y axis, fig. 7) and positioned in the second direction farther than the first surface of the circuit board (figure 7 clearly discloses this limitation where the third surface is positioned in the second direction which is opposite F2), and
wherein the member different from the circuit board has a wall standing along a side of the storage medium attached to the connector (annotated fig. 15 below teaches this limitation).
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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.
Claims 1-4, 6-7, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Koo et al (US 20220151067; “Koo” hereinafter) in view of Chen et al (US 20190174618; “Chen” hereinafter).
.
Regarding claim 1, Koo discloses: an electronic device (200) that is able to have a storage medium installed thereon (331, fig. 5), the storage medium having a first end (see annotated fig. 5 below) with a terminal part (electrical connection of 331a, ¶[0074]) formed thereon and a second end opposite to the first end (see annotated fig. 5 below), the electronic device comprising:
a circuit board (203, fig. 7) having a first surface (F2) facing in a first direction (Z axis, arrow direction) and a second surface (F1) facing in a second direction (Z axis, opposite arrow direction) that is opposite to the first direction;
a connector (333) mounted on the first surface of the circuit board (fig. 7), the first end of the storage medium being connectable to the connector (see annotated fig. 5 below); and
a member different from the circuit board (211a, 335, 415, fig. 7),
wherein the member different from the circuit board has a third surface facing in the first direction (see annotated fig. 7 below) and has at least one positioning portion (see annotated fig. 7 below) formed on the third surface for positioning a spacer (411a, fig. 7) that supports the second end of the storage medium (fig. 7), and the third surface is positioned in a direction along the circuit board with respect to the connector (Y axis, fig. 7) and positioned in the second direction farther than the first surface of the circuit board (figure 7 clearly discloses this limitation where the third surface is
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positioned in the second direction which is opposite F2).
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Koo does not explicitly teach:
wherein the at least one positioning portion is a recess that is recessed from the third surface in the second direction, and wherein the third surface and an end in the first direction of an inner surface of the recess are disposed in the second direction farther than the first surface of the circuit board.
However, Chen teaches:
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at least one positioning portion (504, figs. 1-2) is a recess (505a, fig. 3) that is recessed from a third surface (‘TS’ in annotated fig. 3 below) in a second direction (see ‘Z2’ in annotated fig. 3 below), and an end in a first direction (see ‘Z1’ in annotated fig. 3 below) of an inner surface (see ‘EIS’ in annotated fig. 3 below) of the recess is disposed in the second direction.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the member different from the circuit board from Koo with Chen’s teaching such that at least one positioning portion is a recess that is recessed from the third surface in the second direction, and the third surface and an end in the first direction of an inner surface of the recess are disposed in the second direction further than the first surface of the circuit board, as this would provide a detachable spacer and a corresponding fixture (effectively replacing Koo’s fixture 411b), for the advantage of accommodating storage mediums of different lengths (¶[0026]).
Regarding claim 2, Koo in view of Chen teaches the limitations of claim 1, and Koo further teaches: wherein an end of the at least one positioning portion (end comprising the third surface) in the first direction is positioned in the second direction farther than the first surface of the circuit board (annotated figs. 5 and 7 above discloses this limitation where the third surface in the first direction is positioned in the second direction relative to the first surface of the circuit board).
Regarding claim 3, Koo teaches the limitations of claim 1, but does not explicitly teach:
wherein the at least one positioning portion is at least one protrusion that protrudes from the third surface in the first direction, and an end of the at least one protrusion in the first direction is disposed in the second direction further than the first surface of the circuit board.
However, Chen teaches:
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at least positioning portion (504, figs. 1-2) is at least one protrusion (505 see ‘P’ in annotated fig. 3 below) that protrudes from a third surface (see ‘TS’ in annotated fig. 3 below) of a PCB (50) in a first direction (see fig. 1 and ‘Z’ in annotated fig. 3 below) for placing a spacer (521, fig. 3, ¶[0026]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the member different from the circuit board from Koo with Chen’s teaching such that at least one positioning portion is at least one protrusion that protrudes from the third surface in the first direction, and an end of the at least one protrusion in the first direction is disposed in the second direction further than the first surface of the circuit board, as this would provide a detachable spacer and a corresponding fixture (effectively replacing Koo’s fixture 411b), for the advantage of accommodating storage mediums of different lengths (¶[0026]).
Regarding claim 4, Koo in view of Chen teaches the limitations of claim 3, and the combination further teaches:
further comprising: a fixture (522, fig. 3, Chen) that fixes the second end of the storage medium through the spacer (521, fig. 3, Chen) to the member different from the circuit board (fig. 7, Koo), wherein the member different from the circuit board further has a mounting hole (505a, Chen, as per the combination of Koo in view of Chen) to which the fixture is to be mounted (as a result of the combination), and the at least one protrusion is formed along an outer edge of the mounting hole (figs. 1 and 3 of Chen discloses this limitation).
Regarding claim 6, Koo in view of Chen teaches the limitations of claim 1, and the combination further teaches:
further comprising: a fixture (522, fig. 3, Chen) that fixes the second end of the storage medium through the spacer (521, fig. 3, Chen) to the member different from the circuit board (fig. 7, Koo), wherein the member different from the circuit board further has a mounting hole (505a, Chen, as per the combination of Koo in view of Chen) to which the fixture is to be mounted (¶[0026]), and an outer edge of the recess surrounds an outer edge of the mounting hole (figs. 1-3 from Chen clearly teaches this limitation).
Regarding claim 7, Koo in view of Chen teaches the limitations of claim 1, and Koo further teaches: wherein the member different from the circuit board is a circuit board shield covering the second surface of the circuit board (fig. 7, ¶[0066]).
Regarding claim 10, Koo in view of Chen teaches the limitations of claim 1, and Koo further teaches: wherein the at least one positioning portion is provided in an outer region positioned outside of an outer edge of the circuit board (annotated fig. 7 below teaches this limitation).
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Regarding claim 11, Koo in view of Chen teaches the limitations of claim 1, and Koo further teaches: wherein the outer region includes a placement area (R2) where the storage medium is to be placed, the placement area being defined along an outer edge of the storage medium attached to the connector (fig. 7), and the placement area is provided in the second direction further than the first surface of the circuit board (as clearly disclosed in fig. 7).
Response to Arguments
Applicant's arguments filed 06/05/2026 have been fully considered but they are not persuasive.
Applicant’s first argument:
Under the mapping advanced by the Office, the alleged third surface of the member 211a faces upward (as depicted in the Office Action's Annotated Version of Koo's FIG. 7) and the first surface of the circuit board 203 (allegedly corresponding to surface F1) faces downward (as depicted in the Office Action's Annotated Version of Koo's FIG. 7). Thus, the alleged first and third surfaces do not both face the first direction, as required by claim 1.
Examiner’s response:
Under the mapping advanced by the Office, the alleged third surface of the member 211a faces upward and the first surface of the circuit board 203 (corresponding to surface F2, not F1 as alleged, see annotated fig. 1 below from the previous office action) also faces upward. Therefore, both the first and third surfaces face the first direction, corresponding to the Z axis in the arrow direction (upward direction).
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Applicant’s second argument:
The Office alleges that Koo's shielding number 335 corresponds to the claimed member that is different from the circuit board and that Koo's fastening boss 411a corresponds to both the claimed positioning portion and the claimed spacer. Office Action at pp. 3 and 5. However, even under the position of the Office (which Applicant does not concede to be accurate) Koo's shielding member 335 does not have the alleged positioning portion (fastening boss 411a) formed on what the Office equates to the third surface (see annotated Office Action at p. 4 below).
Examiner’s response:
Under the mapping advanced by the Office, the third surface correspond to member 211a, and therefore, the claimed positioning portion, which has been mapped to a portion of 211a comprising the third surface not element 335. However, claim 8 has been written in independent form, and a new mapping for this claim is incorporated in the current office action.
Applicant’s third argument:
there is an inconsistency between the rejection of claims 1 and 9, with the Office relying on one of rear plate 211a, shielding member 335, or gasket 415 for the "member" in the rejection of claim 1, but then relying on the "wall" of FIG. 15 for the same "member" in the rejection of claim 9. This is a piecemeal interpretation of the claim, and does not consider the claim as a whole, as required by MPEP 2173.02 II.
Examiner’s response:
Plate 211a, shielding member 335, and gasket 415 were mapped for the "member" in the rejection of claim 1. Claim 9 required that the “member” comprises a wall, and annotated fig. 15 of the previous office action teaches this limitation. In response to applicant's arguments against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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 PETER KRIM whose telephone number is (703)756-1246. The examiner can normally be reached 8:00am -4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen L Parker can be reached at (303) 297-4722. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN L PARKER/Supervisory Patent Examiner, Art Unit 2841
/P.K./Examiner, Art Unit 2841
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