Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 9 is objected to because of the following informalities: “includes distal end” should be “includes a distal end”. Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 9,060,588. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application contain many of the same or similar limitations to those of the ‘588 patent, but are largely broader (for example, claim 1 of the ‘588 patent disclose a body having a panel and a plurality of elastomeric retainers/bands forming loops adapted to receive the corners of a device, a tether connected to and extending from the body, meeting the limitations of claim 1, and in combination with claim 6 discloses a strap secured to the tether and to an attachment device, and so claims 1 and 6 disclose the subject matter of claim 1 as well as the strap of claims 2, 9, and 13, and claims 19-20 disclose providing this structure and the common use of such structure; and these or the other claims of the ‘588 patent disclose or renders obvious the limitations of the other claims, e.g. claim 9 discloses the diamond shape of claim 7 of this application, the groove and rim of claim 14 of the ‘588 patent render obvious the rib of claim 8 as the rim will inherently form a rib or to the degree some other formation might be possible forming it as such is an obvious selection of an appropriate rim shape, the central panel is capable of having indicia disposed thereon as there is nothing disclosed to prevent such or to the degree some other construction might be possible it is obvious to not form it so as to prevent the use of indicia which is sufficient to meet the limitations of claim 18 (i.e. the mere provision of nonfunctional indicia does not patentably distinguish over the prior art)).
Claims 1, 3-8, and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent #9,980,542. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application contain many of the same or similar limitations to those of the ‘542 patent (for example, claims 1 and 4-7 of this application disclose a body having a panel and a plurality of elastomeric bands/loops for receiving device corners, a tether and an attachment device (the strap of claims 6-7 is an attachment device to the extent claimed) operably connected to the tether, the attachment device adapted to secure the apparatus to a member; the subject matter of claims 3-8 and 10-11 are all taught by or obvious over claims 1 and 4-7 or other claims of the ‘542 patent, e.g. as to claim 3 the retainers are bands which are typically elongate and/or forming them as elongate is at most a mere selection of an art appropriate size/shape or a mere change in size/proportion or change in shape which does not patentably distinguish over the prior art (MPEP 2144.04), as to claims 4-5 claim 1 recites first and second pairs of bands with one pair having a first end joined to opposed sides and claim 15 recites a pair of bands each having one end joined to the top end/node of the panel and the other end joined to respective sides of the panel, as to claim 7 the particular shape of the panel is not disclosed but four corners are disclosed per claim 9 and a diamond shape is a mere selection of an art appropriate shape four-cornered shape or at most a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04),).
Claims 2, 9, and 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent #9,980,542 in view of U.S. Patent Publication #2007/0277352 to Maron (Maron). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘542 application discloses a similar strap attached to the tether as recited in claims 2, 9, and 13-20, but does not disclose an attachment device in addition to the strap, however Maron discloses an attachment device (32 or 34 or44 or 82) operably connected to a loop (64 or 74) associated with an electronic device (it is noted that as shown in FIG. 3 34/44 are associated with a loop at the end of a tether similar to the tether of the ‘538 or ‘542 design), the attachment device adapted to secure the apparatus to a member and Baker discloses forming a similar panel with a plurality of elastomeric retainers for securing an electronic device out of an elastomeric material, and so it would have been obvious to one of ordinary skill in the art before the filing date of this application to add the ornamental leash/attachment device of Maron as part of the strap of the ‘542 application, in order to provide an attachment device to attach the strap and attached tether/panel/electronic device structure to another structure as taught by Maron; claims 14-18 recite limitations taught by or obvious over the claims of the ‘542 patent, e.g. the groove and rim of claim 14 of the ‘588 patent render obvious the rib of claim 14 as the rim will inherently form a rib or to the degree some other formation might be possible forming it as such is an obvious selection of an appropriate rim shape, the central panel is capable of having indicia disposed thereon as there is nothing disclosed to prevent such or to the degree some other construction might be possible it is obvious to not form it so as to prevent the use of indicia which is sufficient to meet the limitations of claim 18 (i.e. the mere provision of nonfunctional indicia does not patentably distinguish over the prior art); claims 19-20 recite providing the structure of this combination and the expected use of it, noting that claims 1 and 4 of the ‘542 patent recite the securement apparatus as a body formed of a solid uninterrupted elastomeric panel which body includes the tether and therefore the securement apparatus is formed of a single unitary piece of elastomeric material as recited in claim 20).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent #10,986,907. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application contain many of the same or similar limitations to those of the ‘ ‘907 patent, and any variations are non-patentably distinct or are obvious (for example, claim 9 of the ‘907 patent recites similar limitations of claims 1-2, 9 and 13 but uses the term “cord” instead of a “strap” but a cord is a type of strap or a strap is an obvious art known substitute for a cord, and recites an attachment element with an aperture (claims 13-14) rather than a tether, but claim 7 recites the attachment element as an elastomeric element extending upwardly beyond the elongate bands/retainers, and it is Examiner’s position that this renders obvious forming the attachment element as a tether; the rim and groove of claim 4 of the ’907 patent inherently discloses or renders obvious the rib of claim 8 or 14, the diamond shape is an obvious selection of an art appropriate shape noting claim 5 discloses at least two corners at the side of the device and a diamond is a shape having two side corners; claims 19-20 recite providing the structure of this combination and the expected use of it, noting that claims 1 and 5 of the ‘542 patent recite the securement apparatus as a body formed of a solid uninterrupted elastomeric panel and therefore the securement apparatus is formed of a single unitary piece of elastomeric material as recited in claim 20).
Claims 1-7, 9-13, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent #11,523,666. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application contain many of the same or similar limitations to those of the ‘666 patent, and any variations are non-patentably distinct or are obvious (for example, claims 1 and 7 of the ‘666 patent recite the same or similar limitations to claims 1-2, 9 and 13 noting the body, elastomeric bands/retainers defining openings which renders obvious their being loops as loops are a common band structure used to form openings, the openings adapted to receive the corners of a device, a tether (per claim 7 the attachment element is a tether) and an attachment device operably connected to the tether and adapted to secure the apparatus to a member (e.g. user), the attachment device connected via a strap; the diamond shape is an obvious selection of an art appropriate shape noting claim 17 discloses at least two corners at the side of the device and a diamond is a shape having two side corners; claims 19-20 recite providing the structure of this combination and the expected use of it, noting that claim 17 of the ‘666 patent recite the securement apparatus as a body formed of a solid uninterrupted elastomeric panel and therefore the securement apparatus is formed of a single unitary piece of elastomeric material as recited in claim 20).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent #12,127,649. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application contain many of the same or similar limitations to those of the ‘588, ‘542, ‘907, or ‘666 patents, but are largely broader (for example, claim 1 of this application is similar to claim 1 of the ‘649 patent but broader as it lacks the requirement that the body and plurality of elastomeric retainers lie in the same plane, and the other claims recite similar limitations to corresponding claims of this application.
Claims 1, 3-8, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of either U.S. Design Patent #D717538 or #D933642, in view of U.S. Patent Publication #2012/0024917 to Case (Case) or in view of U.S. Patent Publication #2012/0091312 to Baker (Baker) and U.S. Patent Publication #2007/0277352 to Maron (Maron), or in view of Case and either or both of Baker and/or Maron. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘538 and ’642 designs show many of the claimed features (e.g. body having a panel and a plurality of retainers/bands secured to and extending from the panel each forming a loop defining an opening adapted to receive a corner of a handheld electronic device, and a tether connected to and extending from the body) but does not disclose an attachment device operably connected to the tether, the attachment device adapted to secure the apparatus to a member and although no material is disclosed as they are designs, Case discloses forming a similar central panel with corner loop forming retainers/bands (110) out of elastomeric material (neoprene) and an attachment device (115, see e.g. FIG. 2) operably connected to the tether (120, see e.g. FIG. 2), the attachment device adapted to secure the apparatus to a member (capable of this use which is also the intended use noting backpack/belt/belt loop/wall hook/etc. disclosed), and so it would have been obvious to one of ordinary skill in the art before the filing date of this application to form the ‘538 or ‘642 structures out of an elastomeric material and to add an attachment device (e.g. 115) to the tether as taught by Case/as claimed in order to allow it to be hung or attached to structures as disclosed by Case. Alternately, Maron discloses an attachment device (32 or 34 or44 or 82) operably connected to a loop (64 or 74) associated with an electronic device (it is noted that as shown in FIG. 3 34/44 are associated with a loop at the end of a tether similar to the tether of the ‘538 or ‘542 design), the attachment device adapted to secure the apparatus to a member and Baker discloses forming a similar panel with a plurality of elastomeric retainers for securing an electronic device out of an elastomeric material, and so it would have been obvious to one of ordinary skill in the art before the filing date of this application to add the ornamental leash/attachment device of Maron attached to the tether of the ‘538 or ‘642 patent for the benefits disclosed by Maron for its leash structure and to form the ‘538 or ‘642 structures out of elastomeric material for the art known benefits of such material and/or as a mere selection of an art appropriate material to use. Alternately although Examiner maintains that Case alone is sufficient to render obvious forming the ‘538 or ‘642 structures out of elastomeric material, Baker discloses forming a similar panel with a plurality of elastomeric retainers for securing an electronic device out of an elastomeric material, which provides additional motivation for and/or evidence of the obviousness of this material selection, and/or Case provides additional motivation to add an attachment device such as that of Maron attached to the end of the tether of the ‘538 or ‘642 patents; the ‘538 or ‘642 patent(s) also disclose the retainers are elongate bands and first and second pairs of bands as recited in claims 3-4, and the structure shown also meets the limitations of claims 5-8, 10, and 12 Case or Baker discloses rubber (neoprene per case is a type of rubber) as the material as recited in claim 11.
Claims 2, 9, and 13-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of either U.S. Design Patent #D717538 or #D933642, in view of U.S. Patent Publication #2007/0277352 to Maron (Maron) and either or both of U.S. Patent Publication #2012/0024917 to Case (Case) and/or U.S. Patent Publication #2012/0091312 to Baker (Baker). As to claims 2 and 9, the combination(s) with Maron disclose a strap (e.g. 42/84, FIG. 2 or 4) having a first and second end, the strap first end being secured to the tether (by passing it through the loop of the tether, which corresponds to the loop 64 of the example device shown in Maron) and the strap second end being secured to the attachment device (e.g. 32/82), wherein the tether incudes distal end having an aperture formed therein, and a portion of the strap extends through the aperture (see Maron FIG. 4 and description showing that this is how the strap attaches); as to claims 13-18, these combinations disclose/render obvious all of their subject matter, noting that the ‘538 or ‘642 patents show the openings formed by bands, Case and/or Baker renders obvious the elastomeric material, the ‘538 or ‘642 show the tether, Maron discloses a strap and attachment device as claimed, and the ‘538 or ‘642 shows the rib, bands having arcuate configuration, four bands and other details recited in claims 14-15, central panel having corners with the bands attached as recited in claims 16-17, and the central panel has a front substantially flat surface capable of having indicia disposed thereon which is sufficient to meet the limitations of claim 18 (i.e. the mere provision of nonfunctional indicia does not patentably distinguish over the prior art); as to claims 19-20, the combination discloses providing an apparatus as claimed, Case and/or Baker renders obvious inserting a corner of the mobile device in one of the openings and stretching the band defining the opening over a surface of the mobile device, and Case and/or Maron render obvious attaching the attachment device to the member.
Claim Rejections - 35 USC § 112
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 19-20 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.
With Respect to Claims 19-20
The claim recites the step of providing a securement apparatus, then has a semi-colon, then recites other parts without a method step involved. It is unclear whether the securement apparatus includes these parts (e.g. a tether) or if these parts should have a separate step of providing them.
Claim 20 recites that the securement apparatus is formed of a single unitary piece of elastomeric material, which based on the disclosure seems to indicate that the securement apparatus does not include at least the strap and attachment device (which are separate parts in the inventive structure), but it remains unclear whether it is meant to include the tether.
The remainder of this office action is based on the invention as best understood by Examiner.
With Respect to Claim 4
The phrase “includes first pair of band” is grammatically incorrect. The phrase “and a second end joined together and body upper end” does not make sense and it is unclear what it means.
For the purposes of Examination on the merits, Examiner takes the former to be a typo and to mean “includes a first pair of bands”, and the latter to by a typo and to mean “and a second end joined together at the body’s upper end”.
With Respect to Claims 5-6
These claims are rejected as they depend from a rejected claim and so incorporate its indefinite scope.
With Respect to Claim 11
It recites the limitation " the elastic material ". There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination on the merits, Examiner takes it to refer to the elastomeric material.
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 pre-AIA 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 –
Claims 1-6 and 12 are rejected under pre-AIA 35 U.S.C. 102(a)(1) or (a)(2) as being anticipated by U.S. Patent Publication #2004/0069822 to Condiff (Condiff).
With Respect to Claim 1
A securement apparatus for a portable electronic device comprising: a body (412) having a panel (412BL) and a plurality of elastomeric retainers (412RU, 412LU, 412RL, 412LL in combination with 412M, 412RM, 412LM, and 412LU, noting that these parts together form four corner loops) secured to and extending from the panel, each retainer forming a loop defining an opening (FIG. 1), the openings adapted to receive therein a corner of a handheld electronic device (capable of this use, which is also the intended use); a tether (strap/tether connected to 412BU that attaches to 414B, FIG. 2) connected to and extending from the body; and an attachment device (414B or 418) operably connected to the tether, the attachment device adapted to secure the apparatus to a member (capable of this use, noting 414A or whatever 418 is used to hook onto).
With Respect to Claim 2
The apparatus as defined in claim 1, further including a strap (416) having a first and second end, the strap first end being secured to the tether (via 414A/B) and the strap second end being secured to the attachment device (418).
With Respect to Claim 3
The apparatus as defined in claim 1, wherein the retainers include a plurality of elongate bands secured to the panel (as shown they are elongate bands to the extent claimed).
With Respect to Claim 4
The apparatus as defined in claim 3, wherein the plurality of bands includes first pair of band and a second pair of bands, the first pair of bands each have a first end connected to opposed sides of the panel and a second end joined together and body upper end (FIG. 1).
With Respect to Claim 5
The apparatus as defined in claim 4, wherein the body upper end includes a node (412BU) to which the second ends of the first pair bands, the tether and the central panel are operably connected thereto.
With Respect to Claim 6
The apparatus as defined in claim 4, wherein the second pair of bands each have a first end secured to the opposed sides of the panel and a second end joined together and to a panel lower end (FIG. 1).
With Respect to Claim 12
The apparatus as defined in claim 1, wherein a body lower end includes a junction point wherein the second ends of the second pair of bands join together.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 19-20 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent Publication #2004/0069822 to Condiff (Condiff).
With Respect to Claim 19
A method of securing a mobile electronic device to a member comprising: providing a securement apparatus (412 or 412 excluding 412BU) including a body having a panel (412BL and BU) and a plurality of elastomeric retainers (412RU, RM, RL, M, LL, LU) secured to and extending from the panel, each retainer forming a loop defining an opening, the openings adapted to receive therein a corner of a handheld electronic device; a tether (tether/strap attaching 414B) connected to and extending from the body; a strap (416) secured to the tether; an attachment device (418) operably connected to the strap; inserting a corner of the mobile device in one of the openings; stretching the remaining bands over the remaining corners of the mobile device wherein each corner of the model device enters one of the openings of the securement apparatus, thereby securing the securement apparatus to the mobile device; and that the securing apparatus and bands are formed of a resilient/stretchable material, but does not disclose stretching the band defining the opening over a surface of the mobile device or attaching the attachment device to the member.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of a resilient material for the case, to stretch the case over the mobile device, as allowing for stretching is the purpose/benefit of resilience, in order to secure a larger mobile device in position and/or as doing so constitutes at most a mere selection of an art appropriate electronic device to use the case with (i.e. the resilience inherently allows for accommodating a larger range of devices and so using the case to stretch to accommodate such a device is obvious). It would further have been obvious to attach the attachment device to a member as that is the common use of such clips and so clearly obvious.
With Respect to Claim 20
The method as defined in claim 19, wherein the securement apparatus is formed of a single unitary piece (the parts are all connected together to form a single unit) of elastomeric material (rubber which is an elastomeric material is disclosed).
Alternately, although Examiner maintains that the structure as shown is unitary to the extent claimed, it would have been obvious to form it as a monolithic structure in order to reduce manufacturing steps (e.g. monolithic formation removes the need for connecting steps), to increase structural integrity (i.e. monolithic formation lacks seams or other points of weakness), and/or as doing so constitutes at most merely making integral which does not patentably distinguish over the prior art (MPEP 2144.04).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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, Nathan Newhouse can be reached on (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734
Prosecution Insights