DETAILED ACTION
Claim Objections
Claims 10 and 12 objected to because of the following informalities:
Claim 10 recite “a protective case”, which should have been “the protective shell”.
Claim12 recites “a portable fingerprint and/or palmprint acquisition device”, which should have been “the portable fingerprint and/or palmprint acquisition device” instead since claim 12 depends on claim 1.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore,
“a connector-equipped connecting cable” in claim 12,
“the protective shell is a monolithic and unitary structure” in new claim 13
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 and “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 13 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 13 newly recites “wherein the protective shell is a monolithic and unitary structure”. There is no support in the specification regarding this new limitation. Thus, newly recited claim 13 is considered new matter.
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 12-13 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 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 13 newly recites “wherein the protective shell is a monolithic and unitary structure”. However, claim 1 already claimed that the protective shell comprising a first housing and a second housing, which means the protective shell cannot be monolithic and unitary structure. Thus, claim 13 is indefinite.
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 1-6 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gotadoro et al. (US 2023/0146927; hereinafter “Gotadoro”) in view of Hamann et al. (US 9,652,002; hereinafter “Hamann”).
Regarding claim 1, Gotadoro teaches 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) configured to retain an end of a connecting cable (end of 20, Figs. 1, 3-5, 7, 8) for the portable fingerprint and/or palmprint acquisition device, the end of the connecting cable including a connector (26, Figs. 1-9); and
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 therethrough 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…”), and wherein a lower face (lower face of 10 in Fig. 2) of the second housing is open to allow access to an interior volume of the second housing (see lower face of 10 with 104, which allow access to interior volume).
Gotadoro does not explicitly teach wherein an upper face of the first housing is open so that an upper surface of the portable fingerprint and/or palmprint acquisition device is accessible. However, Hamann teaches a protective shell (102, Fig. 1) comprising: an upper face (40 or 14, Fig. 2) of a first housing is open (opening of 40, 14) so that an upper surface (101, Fig. 2) of a portable device (100, Figs. 1, 2) is accessible. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have an upper face of the first housing is open so that an upper surface of the portable fingerprint and/or palmprint acquisition device is accessible in Gotadoro, as taught by Hamann, in order to allow the user to interact with a touch display interface of the fingerprint and/or palmprint acquisition device.
Regarding claim 2, Gotadoro in view of Hamann teaches the protective shell as claimed in claim 1, and Gotadoro teaches 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 in view of Hamann teaches the protective shell as claimed in claim 2, and Gotadoro teaches 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 in view of Hamann teaches the protective shell as claimed in claim 2, and Gotadoro teaches 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 in view of Hamann teaches the protective shell as claimed in claim 2, and Gotadoro teaches 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 in view of Hamann teaches the protective shell as claimed in claim 2, and Gotadoro teaches 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 10, Gotadoro in view of Hamann teaches the protective shell as claimed in claim 1, and Gotadoro teaches 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 in view of Hamann teaches the protective shell as claimed in claim 1, and Gotadoro teaches a fingerprint acquisition system ([0003-0004]) comprising the portable fingerprint and/or palmprint acquisition device, the connecting cable, and the protective shell as claimed in claim 1.
Claims 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Gotadoro in view of Hamann, and further in view of Su et al. (US 2015/0189790; hereinafter “Su”).
Regarding claims 11 and 14, Gotadoro in view of Hamann teaches the protective shell as claimed in claim 1. Gotadoro does not teach wherein the protective shell is made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane. However, Su teaches the protective shell (100, 150, Fig. 1D) is 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 protective shell is made of a thermoplastic elastomer material, and the thermoplastic elastomer material is polyurethane in Gotadoro in view of Hamann, as taught by Su, in order to provide better shock absorption and grip for user to hold.
Allowable Subject Matter
Claims 8-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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.
Response to Arguments
Applicant's arguments with respect to claims 1-6 and 10-14 have been considered but are moot in view of the new ground(s) of rejection.
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 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
Prosecution Insights