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 .
Drawings
The drawings are objected to because:
Claim 7 recites “clamping elements”, but it’s not shown in the drawing.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Specification recites “housing 28”. However, 28 do not look like a housing. It appears 20 is the second housing. Do applicant mean circular opening 28?
Appropriate correction is required.
Claim Objections
Claims 1, 10, 12 are objected to because of the following informalities:
Claim 1 recite “the portable acquisition device”, which should have been “the portable fingerprint and/or palmprint acquisition device” instead. Note that reference characters should be consistent.
Claim 10 recite “a protective case for the portable device”, which should have been “the protective shell for the portable fingerprint and/or palmprint acquisition device”.
Claim 12 recites “a portable fingerprint and/or palm print acquisition device… a protective shell”, which should have been “the portable fingerprint and/or palm print acquisition device… the protective shell”
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: “retaining means” in claim 1, “clamping elements” in claim 7, “enlarging means” in claim 8.
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
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.
Claim 7 is 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.
Claim 7 (with 112f invoked) recites “clamping elements intended to be added onto the end of the cable between the connector and the cutout and/or the clasp”. There is no sufficient structural detail regarding the clamping elements in the specification. Thus, claim 7 lacks written description.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 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 “the connector-equipped end of a connecting cable…. the connector of the connecting cable… said connector”. There is a lack of antecedent basis. Furthermore, it’s unclear if the connector-equipped end is the same as the connector. In order to examine this application, examiner will assume the limitation is “a connector of a connecting cable…the connector of the connecting cable… said connector” instead.
Claims 2-12 depends on claim 1.
Claim 8 recites “enlarging means for enlarging the opening of the cutout and/or of the clasp”. There is a lack of antecedent basis. In order to examine this application, examiner will consider the limitation as “enlarging means for enlarging an opening of the cutout and/or an opening of the clasp”.
Claim 11 recites “wherein it is made of a thermoplastic elastomer material, preferably polyurethane.” It’s unclear what is “it” in this limitation. Also, “preferably” means it’s not required by the claim, which makes it indefinite in a claim limitation. In order to examine this application, examiner will consider the limitation as “wherein the first housing and the second housing are made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane.”.
Claim 12 recites “a connector-equipped connecting cable” It’s unclear if this is the same as the connecting cable in claim 1. Based on the drawing, there is only one cable, which is connecting cable 40. In order to examine this application, examiner will assume the limitation is “the connecting cable”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 and 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gotadoro et al. (US 2023/0146927; hereinafter “Gotadoro”).
Regarding claim 1 as best understood, Gotadoro discloses a protective shell for a portable fingerprint and/or palmprint acquisition device ([0003]: “…fingerprint…”), said protective shell comprising:
a first housing (not explicitly shown, but mentioned in [0043]: “The wall 10 may included within a housing or casing (represented in part).”; note that based on Fig. 1, there must be a top first housing that engages the boss and housing the entire device) designed to receive the portable fingerprint and/or palmprint acquisition device;
a second housing (10+30, Figs. 1-5; 101+50, Figs. 6-9) comprising a retaining means (30, Fig. 1; 50, Fig. 6) for retaining a connector (26, Figs. 1-9) of a connecting cable (20, Figs. 1, 3-5, 7, 8) for the portable fingerprint and/or palmprint acquisition device;
a dividing partition (partition wall at 110, 112, Figs. 1-2, 4; partition wall at 150, 154, Figs. 6, 9) between the first housing and the second housing, said dividing partition comprising an opening (104, Figs. 1, 2, 4-6, 9) establishing communication between the first housing and the second housing; said opening being designed to have passing through it the connector of the connecting cable and to form a fluidtight seal around said connector ([0092]: “… prevents, directly or indirectly, any foreign matter, like e.g. dust and/or water from passing the juncture of the cable 20 at the aperture 104…”).
Regarding claim 2, Gotadoro discloses the protective shell as claimed in claim 1, and Gotadoro discloses wherein the retaining means (50) are formed by a cutout (36, Fig. 6) in an exterior wall of the second housing (forms part of exterior wall of 101 as shown in Fig. 9) and an immobilizing clasp (51a, 51b, 34a and/or 34b, Figs. 6, 9), said cutout and said clasp being situated facing the opening (104) and being able to receive the end of the connecting cable (as shown in Fig. 9).
Regarding claim 3, Gotadoro discloses the protective shell as claimed in claim 2, and Gotadoro discloses wherein the clasp is an added clasp added onto the exterior wall of the second housing (52a, 52b is added onto the exterior wall as shown in Fig. 6).
Regarding claim 4, Gotadoro discloses the protective shell as claimed in claim 2, and Gotadoro discloses wherein the clasp is borne by the exterior wall of the second housing (52a, 52b is borne by onto exterior wall as shown in Fig. 6).
Regarding claim 5, Gotadoro discloses the protective shell as claimed in claim 2, and Gotadoro discloses wherein the cutout (36) opens into a lower edge (lower edge of 51 as shown in Fig. 9) of the exterior wall of the second housing.
Regarding claim 6, Gotadoro discloses the protective shell as claimed in claim 2, and Gotadoro discloses wherein the clasp forms an end-stop for the connector of the cable when said connector is received in the second housing (as shown in Fig. 9).
Regarding claim 7, Gotadoro discloses the protective shell as claimed in claim 2, and Gotadoro discloses clamping elements (28, 22 and/or 24, Fig. 9; note 28, 22, 24 are clamped between wall 150/154 and 34a in Fig. 9 and 29 is “clamp” down on 24; see force 80/90 in Fig. 9) intended to be added onto the end of the cable between the connector (26) and the cutout (36) and/or the clasp (51a, 51b, 34a and/or 34b).
Regarding claim 10, Gotadoro discloses the protective shell as claimed in claim 1, and Gotadoro discloses wherein the first housing forms the protective shell for the portable fingerprint and/or palmprint acquisition device (inherently true in order to protect circuitry inside the device; [0043]).
Regarding claim 12 as best understood, Gotadoro discloses the protective shell as claimed in claim 1, and Gotadoro discloses a fingerprint acquisition system ([0003-0004]) comprising the portable fingerprint and/or palmprint acquisition device, the connector-equipped connecting cable, and the protective shell as claimed in claim 1.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gotadoro, and further in view of Su et al. (US 2015/0189790; hereinafter “Su”).
Regarding claim 11 as best understood, Gotadoro teaches the protective shell as claimed in claim 1. Gotadoro does not teach wherein the first housing and the second housing are made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane. However, Su teaches a first housing and a second housing (100, 150, Fig. 1D) are made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane ([0052]: “… a flexible polyurethane material...”). 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 first housing and the second housing are made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane in Gotadoro, as taught by Su, in order to provide better shock absorption and grip for user to hold.
Allowable Subject Matter
Claims 8-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Re claims 8-9 (with 112f invoked), prior arts do not teach or suggest the combination of the protective shell as claimed in claim 8, in particular, wherein the exterior wall of the second housing comprises enlarging means for enlarging an opening of the cutout and/or an opening of the clasp.
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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