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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/17/2024 and 9/30/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites “said security device (30’)”, which should have been “said security device” instead.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “first coupling elements” and “second coupling elements” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
Claims 1-10 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.
Claim 1 recites “a tool for rotating the cover… introduction of a tool for rotating the cover and removing it from the casing…”. It’s not clear whether the two tools recited are the same or different tool. It appears to be the same tool. Thus, examiner will consider the limitation as “a tool for rotating the cover… introduction of the tool for rotating the cover and removing it from the casing…”
Claims 2-10 depends on claim 1.
Claim 7 recites “notches”. However, this appear to be the same as “the second coupling elements” mentioned in claim 1. Thus, claim 7 is unclear and indefinite. Applicant should have recited that the second coupling elements are notches instead.
Claim 8 recites “…a small tool to pass into the indentation…”. It’s unclear if the “small tool” is the same as “the tool” mentioned in claim 1. Further clarification is required. In order to examine this application, examiner will assume it’s the same tool as claim 1.
Claim 8 recites “the main body”. There is a lack of antecedent basis. Should claim 8 depends on claims 2 or 5 instead?
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 1-2 and 4-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 14-16 of copending Application No. 18/886440 (reference application) in view of Hamamoto et al. (JP-H11189268; hereinafter “Hamamoto”). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application No. 18/886440 teaches everything except different term usage, such as anti-rotation lugs are basically attachment clips (see claim 7 regarding prevent the cover from being rotated). Copending application No. 18/886440 does not teach using clipping. However, Hamamoto teaches secure means can be clips (same as 9a, 9b, 17a, 17b, 18a, 18b, Figs. 2-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the secure mean by clipping instead in Copending application No. 18/886440, as taught by Chen, in order to utilize different types of secure means to prevent access to battery.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-2, 4-5 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2000-228792) in view of Hamamoto et al. (JP-H11189268; hereinafter “Hamamoto”).
Regarding claim 1 as best understood, Yamamoto teaches a portable electronic item (11, Figs. 2-4) comprising:
a casing (12, Figs. 2-4) having a compartment (14, Fig. 3) configured to receive and house at least one removable electrical power source (18, Fig. 3);
a compartment cover (15, Figs. 2-4) including first coupling elements (17, Fig. 3) configured to cooperate with second coupling elements (16, Fig. 3) provided on the casing so as to rigidly connect the cover to the casing by rotating said cover about a rotational axis formed by a central axis of the cover (see central axis cross 15, 18, 14 in Fig. 3; [0007]: “…rotary removable battery cover…”); said cover having an indentation (15a, Fig. 3) provided in an outer face, said indentation being configured to receive a tool for rotating the cover (using tool such as flathead screw drive or coin on 15a, Fig. 3); and
a security device (19, Figs. 2-3; or 32, Fig. 4) rigidly connected by a secure mean (22, Figs. 2-3; or 33, Fig. 4) to said portable electronic item, said security device being configured to at least partially cover the indentation of the cover of the compartment, so as to prevent the introduction of a tool for rotating the cover and removing it from the casing (as shown in Figs. 2-4).
Yamashita teaches the secure mean (22, Figs. 2-3; or 33, Fig. 4), but Yamashita does not explicitly teach clipping. However, Hamamoto teaches secure means can be clips (same as 9a, 9b, 17a, 17b, 18a, 18b, Figs. 2-7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the secure mean by clipping instead in Yamashita, as taught by Hamamoto, in order to utilize different types of secure means to easily prevent access to removable battery / electrical power source.
Regarding claim 2, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 1, and the modified Yamashita above further teaches wherein said security device is rigidly connected to the cover by clipping (as modified by Hamamoto in above claim 1 to Fig 4 of Yamashita).
Regarding claim 4, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 1, and the modified Yamashita above further teaches wherein said security device is rigidly connected to the casing by clipping (as modified by Hamamoto in above claim 1 to Fig 4 of Yamashita).
Regarding claim 5 as best understood, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 4, and Yamashita further teaches wherein said security device includes: a main body (19, Figs. 2-4 of Yamashita) having a flat surface (flat surface of 19).
Yamashita does not teach attachment clips extending from the flat surface of the main body, the attachment clips cooperating with hooking apertures made in the casing and configured to ensure that the security device is held on the casing above the cover by clipping. However, Hamamoto further teaches attachment clips (same as 9a, 9b, 17a, 17b, 18a, 18b, Figs. 2-7) extending from a flat surface of a main body (flat surface of 16, Figs. 3, 5), the attachment clips cooperating with hooking apertures (22, Fig. 5) made in a casing (C, Fig. 5) and configured to ensure that the security device is held on the casing above the cover by clipping (as shown in Figs. 6- 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have attachment clips extending from the flat surface of the main body, the attachment clips cooperating with hooking apertures made in the casing and configured to ensure that the security device is held on the casing above the cover by clipping in Yamashita in view of Hamamoto, as taught by Hamamoto, in order to easily clip onto a casing and prevent access to removable battery / electrical power source.
Regarding claim 8 as best understood, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 1, and Yamashita further teaches wherein said main body has a cut-out (same as the opening below 19 in Figs. 2-3) allowing a small tool (using tool such as screw driver or coin on 15a, Fig. 3) to pass into the indentation to facilitate the unclipping of the security device clipped to the portable electronic item.
Regarding claim 9, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 1. Yamashita does not teach wherein said security device is made of a metal or polymer material. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have said security device is made of a metal or polymer material in Yamashita in view of Hamamoto, since selecting a known compound to meet requirements is generally recognized as being within the level of ordinary skill in the art (citing Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). In this case, select metal or polymer material for the security device provide good rigidity or low cost for the security device.
Regarding claim 10, Yamashita in view of Hamamoto teaches the portable electronic item according to claim 1. Yamashita does not teach wherein said portable electronic item is a timepiece. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the portable electronic item is a timepiece in Yamashita in view of Hamamoto, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007). In this case, utilizing the security device to other types of portable electronic items that uses at least one removable electrical power source, i.e. timepiece, can prevent the compartment cover from being easily removed by accident.
Allowable Subject Matter
Claims 3 and 6-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and double patenting rejection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WU whose telephone number is (571)270-7974. The examiner can normally be reached Monday - Friday, 9:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allen 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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/JAMES WU/Primary Examiner, Art Unit 2841
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