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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the method comprising receiving electronic instructions to lock a case; locking, in response to the electronic instructions, the case by closing an opening of the case, the locking rendering an electronic device disposed within the case as at least partially inaccessible; receiving an indication to unlock the case, the indication corresponding to satisfaction of a criteria; determining, based on the received indication, that the criteria is satisfied; and causing, based on the determination, the case to unlock, such that the electronic device is accessible; continuously receiving the electronic instructions to lock the case, the locking is maintained based on the continuous reception of the electronic instructions; determining that the electronic instructions have stopped being received, such that the satisfaction of the criteria is based on the determination that that electronic instructions have stopped being received; receiving the electronic instructions to lock the case from a proximity transmitter, the proximity transmitter associated with a location; and receiving the indication to unlock the case from the proximity transmitter; detecting an absence of a wireless data signal; and locking the case by automatically closing the opening of the case; 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
It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use or not the use of a particular structure. Ex parte Pfeiffer, 1962 C.D. 408 (1961).
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.
Claims 25, 30 and 35 are 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.
The specification originally filed on April 21, 2015 does not originally support and/or inadequately describes the now claimed continuously receiving the electronic instructions to lock the case, the locking is maintained based on the continuous reception of the electronic instructions; determining that the electronic instructions have stopped being received, such that the satisfaction of the criteria is based on the determination that that electronic instructions have stopped being received; detecting an absence of a wireless data signal; and locking the case by automatically closing the opening of the case. A simple statement such as “Applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘____’ in the application as filed.” is sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported. See Hyatt v. Dudas, 492 F.3d 1365, 1370, 83 USPQ2d 1373, 1376 (Fed. Cir. 2007) (holding that “[MPEP] § 2163.04 [subsection] (I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection.”)
Claim 25 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without receiver, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). A microprocessor, by definition, processes data, it cannot receive wireless data signal which is usually done by a receiver.
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.
Claims19-26 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.
The term “at least partially inaccessible” is confusing and infinite. The electronic device is not fully inaccessible, it is accessible. The electronic device cannot be a little inaccessible.
Regarding claim 26, there are two claim 26 listed.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 19, 23, 25, 26, 27, 31, 32, 33, 34, 37, 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,977,876 (Coleman) in view of Alamy, "1980s Mobile Phone Breifcase Stack Photos and Images”.
Coleman disclosed the decades old a case (figure 1, #10) comprising a shell (#14) defining a cavity sized to accommodate devices, the shell (#14) having an opening to receive the device. A lock (figure 4, title, abstract, claims 1 and 2) positioned proximate to the opening of the shell (#14), the lock (figure 4) configured to render the device “at least partially inaccessible” upon the lock (figure 4) being locked with the device within the cavity of the shell (#14), the lock (figure 4) further configured to unlock to enable access to the device based on proximity of the case to an unlocking mechanism (figure 2).
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Coleman does not explicitly the device to be electronic device. The Examiner takes Official Notice that electronic devices being locked in a case is over four decades old, done many times by billions of people over time, commercially available, and even done by the Examiner many times prior the effective filing date and is not invented by Applicant. The Examiner provides Alamy, "1980s Mobile Phone Breifcase Stack Photos and Images” as evidence. Hence, it would have been very obvious to one with little or no skill in the art before the effective filing date locking an electronic device in a case of Coleman in order to secure the electric device.
Regarding claim 23, note #16 and 14.
Regarding claims 26,note in Coleman, “The general purpose of the present invention, which will be described subsequently in greater detail, is to provide a new briefcase with remotely controlled locking mechanism apparatus and method which has many of the advantages of the briefcase security devices mentioned heretofore and many novel features that result in a new briefcase with remotely controlled locking mechanism.” It would be inherent if any electronic device or anything being locked in the case it would be selectively limiting access to the electronic device and disabling at least one function of the electronic device.
Regarding claim 25, Coleman states “In the alternative, a processor and associated memory may be employed with a controller program.”
Regarding claim 27, Coleman shows a method comprising receiving electronic instructions to lock a case and locking, in response to the electronic instructions, the case by closing an opening of the case, the locking rendering a device disposed within the case as at least partially inaccessible (“In view of the foregoing disadvantages inherent in the known types of briefcase security devices now present in the prior art, the present invention provides a new briefcase with remotely controlled locking mechanism construction wherein the same can be utilized for allowing a briefcase to be opened via a portable, hand-held unit and further indicating when the briefcase is being opened in an unauthorized manner.”). Receiving an indication to unlock the case, the indication corresponding to satisfaction of a criteria (“Even still another object of the present invention is to provide a new briefcase that includes an upper half and a lower half hingably coupled. Also included is a locking mechanism for unlocking the upper half and the lower half upon the receipt of an activation signal via free space. A portable unit is provided for transmitting the activation signal via free space upon the depression of a button.”). Determining, based on the received indication, that the criteria is satisfied and causing, based on the determination, the case to unlock, such that the device is accessible (“The locking assembly further includes a pair of electromagnets 36 each mounted on a second inner wall of one of the compartments. The electromagnets are adapted for biasing the associated Z-shaped member out of engagement with the corresponding apertured tab upon the receipt of an unlock signal, thereby unlocking the briefcase.”).
Regarding claims 31, note figure 2.
Regarding claim 32, “In the alternative, a processor and associated memory may be employed with a controller program.”
Regarding claim 33, the use of wireless transmissions being decades old, well known to the general public and commercially available and not invented by Applicant. The Examiner takes Official Notice as such. It would have been very obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to make the wireless transmissions being BLUETOOTH signals in order to operate the case viva commercially available devices.
Regarding claim 34, note paragraph 4 above.
Regarding claims 37 and 38, note Abstract and claims 1 and 2 of Coleman.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,977,876 (Coleman) in view of Alamy, "1980s Mobile Phone Breifcase Stack Photos and Images”. as applied to claims above, and further in view of United States Patent 5,426,419 (Nguyen, et al).
Coleman in view of Alamy discloses all subject matter, note the above paragraphs, except for the unlocking mechanism being an electronic article surveillance (EAS) detacher, the EAS detacher being at a stationary location. The use of an unlocking mechanism being an electronic article surveillance (EAS) detacher, the EAS detacher being at a stationary location is decades old, well known, commercially available and not invented by Applicant. The Examiner takes Official Notice as such. The Examiner provides Nguyen, et al as evidence. It would have been very obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to incorporate the use of an unlocking mechanism being an electronic article surveillance (EAS) detacher, the EAS detacher being at a stationary location in the case of Coleman in view of Alamy in order to remove security devices from the case when security is no longer needed.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 21, 28, 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,977,876 (Coleman) in view of Alamy, "1980s Mobile Phone Breifcase Stack Photos and Images”. as applied to claims above, and further in view of United States Patent 3,851,506 (Simon).
Coleman in view of Alamy discloses all subject matter, note the above paragraphs, except for the lock configured to unlock based on a time period. The use of a lock configured to unlock based on a time period is decades old and well know and not invented by Applicant. The Examiner takes Official Notice as such and supplies Simon as evidence. It would have been very obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to incorporate the use of a lock configured to unlock based on a time period in the case of Coleman in view of Alamy in order to keep the case locked for a period of time.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Claim(s) 22, 24, 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,977,876 (Coleman) in view of Alamy, "1980s Mobile Phone Breifcase Stack Photos and Images”. as applied to claims above, and further in view of United States Patent Application Publication 2012/0007711 (Lehnbeuter).
Coleman in view of Alamy discloses all subject matter, note the above paragraphs, except for the lock configured to unlock based on a geographic region. Lehnbeuter teaches the use of a lock configured to unlock based on a geographic region for the purpose for secure media checkout of media contained within locked media cases that have information tags thereon identifying at least the media contained therein and the checkout status, note ¶13,51,69. Hence, it would have been obvious before the effective filing date of the claimed invention to a person having below ordinary skill in the art to which the claimed invention pertains to incorporate the use of a lock configured to unlock based on a geographic region for the purpose for secure checkout device contained within locked media cases that have information tags thereon identifying at least the device therein and the checkout status in the case of Coleman in view of Alamy in order to controlling case unlocking as part of a checkout process from locations.
For claims 24, and 34 note ¶28,31,33-36 in Lehnbeuter.
The Examiner has cited particular columns and/or line/paragraphs numbers in the reference(s) applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. IN RE JUNG, No. 10-1019 (Fed. Cir. 2011).
Information Disclosure Statement
Applicant has submitted large amount of Information Disclosure Statements and/or huge amount of references and/or reference(s) which are very hefty. Where applicant points the Examiner to large reference or references without citing a specific portion or page, the Examiner will not pour over the documents to extract the relevant information, Ernst Haas Studio, Inc. v. palm Press, Inc. 164 F.3rd 110, 112 (2d Cir. 1999), Winer International Royalty Corp. v. Wang, 202 F3d 1340, 1351 (Fed. Cir. 2000). It is not true, if applicant presents an overload of irrelevant or non-probative references, somehow the irrelevancies will add up to relevant evidence, DeSilva v. DiLeonardi, 181 F.3d 865, 867. Information Disclosure Statements must make all relevant information accessible to the Examiner, rather ask him to play archaeologist with the references, Shiokawa v. Maienfisch, 56 USPQ2d 1406, 1413 and LeVeen v. Edwards 57 USPQ2d 1406, 1413. It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995). With this in mind, the Information Disclosure Statement has been considered.
Conclusion
If applicants wish to request for an interview, an "Applicant Initiated Interview Request" form (PTOL-413A) should be submitted to the examiner prior to the interview in order to permit the examiner to prepare in advance for the interview and to focus on the issues to be discussed. This form should identify the participants of the interview, the proposed date of the interview, whether the interview will be personal, telephonic, or video conference, and should include a brief description of the issues to be discussed. A copy of the completed "Applicant Initiated Interview Request" form should be attached to the Interview Summary form, PTOL-413 at the completion of the interview and a copy should be given to applicant or applicant's representative.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM D CUMMING whose telephone number is (571)272-7861. The examiner can normally be reached Monday - Friday 12 noon to 6pm.
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, Anthony S. Addy can be reached at (571) 272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM D. CUMMING
Primary Examiner
Art Unit 2645
/WILLIAM D CUMMING/ Primary Examiner, Art Unit 2645
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