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 were received on 31 March 2026. These drawings are acceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 105a.
The drawings are objected to because the lead line associated with the left most instance of reference character 311 in figure 3C is not directed to the overhang as disclosed.
The drawings are objected to because the lead line associated with reference character 211a in figure 2C is not directed to the overhang as disclosed.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 207a, 221c. 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. 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 description is objected to because all section lines used are not referred to in the brief description of drawings. MPEP 608.01(f).
The disclosure is objected to because reference character 221a, 221b, and 221c have all been used to designate cover engagement features, protrusions or tabs, and engagement features. Examiner suggests amending the first instance of these reference characters to read something along the lines of “one or more cover engagement features, protrusions, or tabs 221a, 221b, 221c”.
The disclosure is objected to because reference character 211a, 211b, and 211c have all been used to designate case accessory affordances and overhangs. Examiner suggests amending the first instance of these reference characters to read something along the lines of “case accessory affordances or overhangs 211a, 211b, 211c”.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
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 1, 3, 9, 12, and 15-18 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 15 is led to be indefinite as it depends on cancelled claim 11. For the purpose of examination claim 15 will be interpreted as if it depended from claim 1.
Claim 1 and its dependents are indefinite because it is not clear whether claim 1 is drawn to the sub-combination of a case only, for use with some engagement features, or whether the claim is drawn to the combination of a case and engagement features. This is because while some portion of the claim indicate that what is claimed is the sub-combination (note claim 1 line 1, for example), other portions of the claim indicate that what is claimed is the combination (note the structural limitation on lines 35-39, requiring the engagement between the plurality of engagement features and the plurality of overhangs be configured to prevent the cover from displacement when the lid is rotated between the fully closed position and the open position). It is noted further in connection with this limitation that it is by now well settled that features not claimed may not be relied upon in support of patentability. In this office action, the engagement features are presumed not to be claimed in order for the examiner to give the claim its broadest reasonable interpretation. Accordingly, all references in the claim to the engagement features are considered to be merely functional. On the other hand, clarification of the scope of claim 1 is required. Examiner suggests deletion of “, wherein the engagement between the plurality of engagement features and the plurality of overhangs in configured” to overcome this rejection.
The limitation of claim 9 that the first overhand is disposed at a first height relative to the bottom surface of the lid and the second overhang and the third overhang are disposed at a second height relative to the bottom surface of the lid” is led to be indefinite. From claim 1, the bottom surface has scalloped portions that define the respective overhangs. Further, the scalloped portions are defined by a change in height of the bottom surface of the lid. This means appears to provide that the surfaces of the overhangs are defined by the bottom surface. From the original disclosure, “the first overhang and the second overhang are at a first height and the third overhang is disposed at a second height” and “the overhangs 211a, 211b, 211c may be at different heights corresponding to the lid bottom surface heights”. It is unclear if claim 9 requires that the first overhang be at a first height and the second and third height be at a second height or if claim 9 requires that the first overhang has a first height and the second and third overhang have a second height. Said another way, is claim 9 limiting the location of the overhangs or the extent of the overhangs? In light of the original disclosure the claim will be interpreted as the former. Claim 18 be interpreted in a similar manner in which the second height being greater than the first height is being interpreted as if the second and third overhangs are at a second height which is greater than the first height at which the first overhang is disposed at, and not that the height dimension of the second and third overhangs is greater than the height dimension of the first overhang.
Claim 12 and its dependents are indefinite because it is not clear whether claim 12 is drawn to the sub-combination of a case only, for use with some engagement features, or whether the claim is drawn to the combination of a case and engagement features. This is because while some portion of the claim indicate that what is claimed is the sub-combination (note claim 12 line 1, for example), other portions of the claim indicate that what is claimed is the combination (note the structural limitation on line 2-3, requiring the engagement features to be tabs). It is noted further in connection with this limitation that it is by now well settled that features not claimed may not be relied upon in support of patentability. In this office action, the engagement features are presumed not to be claimed in order for the examiner to give the claim its broadest reasonable interpretation. Accordingly, all references in the claim to the engagement features are considered to be merely functional. On the other hand, clarification of the scope of claim 12 is required. Examiner suggests amending “the engagement features, wherein the engagement features are tabs” to language along the lines of “the engagement features having the form of tabs”.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 9, 12, and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US D904023) further in view of Mody (US 20220000237).
Claim 1: Wang discloses a case for an electronic device, the case comprising: a lower housing, where the common knowledge or well-known in the art statement that earphone cases have a cavity in the lower housing to receive the electronic device is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice; and a lid attached to the lower housing with a pivotable joint allowing the lid to rotate between a fully closed position, wherein the lid is aligned over the cavity, and an open position, wherein the lid is angularly displaced allowing for removal of the electronic device, the lid comprising: a bottom surface having a second scalloped portion and a third scalloped portion, wherein: the second scalloped portion and the third scalloped portion are each defined by a change in height of the bottom surface of the lid such that the second scalloped portion and third scalloped portion are formed by recesses in the bottom surface of the lid; the second scalloped portion is defined by a second surface extending from the bottom surface of the lid to the hinge, the second surfacing having a radius of curvature; and the third scalloped portion is defined by a third surface extending from the bottom surface of the lid to the hinge, the third surface having a radius of curvature; a plurality of overhangs, including: a second overhang disposed on a second side of the lid opposite the first side, wherein the second overhang is discrete from and spaced from the first overhang, wherein the second overhang is adjacent to and terminates at the pivotable joint; and wherein a length of the second overhang is defined by the second scalloped portion; and a third overhang disposed on the second side of the lid, wherein the third overhang is discrete from and spaced from the first overhang and the second overhang, wherein the third overhang is adjacent to and terminates at the pivotable joint, and wherein a length of the third overhang is defined by the third scalloped portion; wherein the each overhang of the plurality of overhangs is configured to engage with a respective engagement feature of a plurality of engagement features of a cover disposed on the lid, and wherein the engagement between the plurality of engagement features and the plurality of overhangs is configured to prevent the cover from displacement when the lid is rotated between the fully closed position and the open position (see annotated fig. 2 below).
Wang does not disclose the bottom surface having a first scalloped portion, wherein: the first scalloped portion is defined by a change in height of the bottom surface of the lid such that the first scalloped portion is formed by a recess in the bottom surface of the lid; the first scalloped portion is defined by a first surface extending from one portion of the bottom surface of the lid to a second portion of the bottom surface of the lid, the first surface including one or more radii of curvature; a first overhang disposed on a first side of the lid, a length of the first overhang is defined by the first scalloped portion.
Mody teaches a charging housing CH having a lid having a bottom surface having a first scalloped portion defined by a change in height of the bottom surface of the lid such that the first scalloped portion is formed by a recess in the bottom surface of the lid, the first scalloped portion being defined by a first surface extending from one portion of the bottom surface of the lid to a second portion of the bottom surface of the lid, the first surface including one or more radii of curvature and a first overhang disposed on a first side of the lid opposite to a hinge H, a length of the first overhang being defined by the first scalloped portion, wherein the first overhang is configured to receive an engagement feature of an upper inner shell component 70 (see annotated partial fig. 2 above and fig. 4A-4B).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the case of Wang to have a first overhang located on a first side of the lid opposite the pivotable joint, as taught by Mody, in order to permit an engagement feature of a cover to engage to assist in preventing the cover from being displaced upon opening of the lid.
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Claim 3: The combination discloses wherein in the fully closed position, the bottom surface of the lid abuts a top surface of the lower housing, and wherein the first overhang, the second overhang, and the third overhang are each at least partially defined by at least a portion of the bottom surface of the lid (see annotated figs. above).
Claim 9: The combination discloses wherein the first overhang is disposed at a first height relative to the bottom surface of the lid and the second overhang and the third overhang are disposed at a second height relative to the bottom surface of the lid (see relative height differences between the location of the bottom surface at the first side vs the second side).
Claim 12: The combination discloses wherein the first overhang, the second overhang, and the third overhang are shaped to receive some engagement feature, wherein the engagement feature can be tabs (see annotated figs. above).
Claim 15: The combination discloses wherein the first surface includes two radii of curvature (see annotated partial fig. 2 ‘ 237 above).
Claim 16: The combination discloses wherein the second surface terminates on a first end at the bottom surface of the lid and terminates at a second end at the hinge, and wherein the second end of the second surface terminates at higher vertical position than the first end of the second surface (see annotated fig. 2 above).
Claim 17: The combination discloses wherein the third surface terminates on a first end at the bottom surface of the lid and terminates at a second end at the hinge, and wherein the second end of the third surface terminates at higher vertical position than the first end of the third surface (see annotated fig. 2 above).
Claim 18: The combination discloses wherein the second height is greater than the first height (see annotated fig. 2 above).
Response to Arguments
The drawing objections in paragraphs 2, 3, and 5-9 of office action dated 2 January 2026 are withdrawn in light of the amended disclosure filed 31 March 2026.
The specification objections in paragraphs 11 and 13-15 of office action dated 2 January 2026 are withdrawn in light of the amended disclosure filed 31 March 2026.
The 35 U.S.C. § 112 rejections in paragraphs 19-20 and 22-24 of office action dated 2 January 2026 are withdrawn in light of the amended claims filed 31 March 2026.
In response to applicant’s argument that the drawings have been amended to include reference character 221c, the Examiner responds that no such change can be located.
Applicant’s arguments, see pages 14-20, filed 31 March 2026, with respect to 102 have been fully considered and are persuasive. The 102 rejections have been withdrawn.
Applicant's arguments filed 31 March 2026 with regards to Wang in view of Mody have been fully considered but they are not persuasive.
In response to applicant’s argument that the language for motivation to combine appears to be taken from Applicant’s specification and claims rather than from Wang and that a person of ordinary skill would not have had a motivation to modify Wang “to permit an engagement feature of a cover to engage to assist in preventing the cover from being displaced upon opening the lid” because Wang lacks a description of a cover or engagement features, much less a desire to assist in preventing a cover from being displaced upon opening a lid, the Examiner responds that this argument is a piecemeal analysis of the references. The secondary reference, Mody, provides the motivation. Further, the Examiner notes that drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that a person of ordinary skill in the art would not be motivated to combine Wang and Mody to have a first overhang, a second overhang, and a third overhang in the claimed positions with the claimed scalloped portions as the asserted second overhang of Mody appears to be at a central portion of the back of the asserted case whereas the asserted overhangs of Wang appear to be disposed at either side of the asserted pivotable joint and modifying the position of the asserted second overhang of Mody would render Mody inoperable for its intended purpose as the “engagement features” would no longer align with the modified overhangs, the Examiner responds that this argument is not commensurate in scope with the rejection at hand which relies on Wang as the primary reference and does not propose modifying Mody in any manner. However, it is proper to take account of the "inferences and creative steps that a person of ordinary skill in the art would employ." See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 1727, 1731, 82 USPQ2d 1385, 1396 (2007). See also id. at 1742, 82 USPQ2d at 1397 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). One of ordinary skill in the art is presumed to have skills apart from what the prior art references expressly disclose. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
In response to applicant’s argument that the asserted motivation to combine would not motivate a person of ordinary skill to have a first overhang and a second overhang at a first height and a third overhang at a second height as in the asserted motivation to combine there is no assertion that the first and second heights have an effect in “permitting an engagement feature of a cover to assist in preventing the cover from being displaced on the lid”, the Examiner assumes applicant intended to argue a first overhang at a first height and a second and third overhang at a second height as this is what is claimed. Further, there is nothing in claim 9 that requires the first and second height to be different from one another. Additionally, the bottom surface of the lid of Wang exists at a first height at the first side of the lid and at a second height at the second side of the lid (see fig. 5 and annotated fig. 2 above). As such, the second and third overhangs are disposed at the second height and the first overhang of the combination must necessarily be disposed at a first height due to the change in height of the bottom surface of the lid of Wang.
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 ALLAN D STEVENS whose telephone number is (571)270-7798. The examiner can normally be reached Monday-Friday 12-8 ET.
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, Orlando E. Aviles can be reached at (571)270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLAN D STEVENS/Primary Examiner, Art Unit 3736
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