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 .
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 1-3 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. Regarding claim 1, there is no support in the original disclosure for a pair of falling-out prevention pieces. IN particular, the disclosure describes a falling-out prevention piece provided on an inner surface of the upper wall or the lower wall at a position adjacent to the entrance. The original disclosure does not describe a pair of falling-out prevention piece on both locations at the same time and thus it constitutes 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 1-3 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.
Regarding claim 1, the recitation “producing towards the lower wall” is unclear. Furthermore, “the other one thereof”, “the other end” lacks antecedent basis and it is unclear what they are referring to.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,217,056 to Ritter in view of US 2020/0315308 to Van Geer.
Regarding claim 1, Ritter discloses a card storage case (Fig 1) comprising a main body including an upper wall (1), a lower wall (12), three side walls (A, Fig 1 below) connecting the upper (1) and lower wall (12) to each other, a storage space formed of the upper wall, the lower wall and the three side walls and an entrance (8) of the storage space, a falling out prevention piece (15) formed on the upper wall and producing towards the lower wall or formed on lower wall (12) and protruding towards the upper wall, the falling-out prevention piece includes a curved portion formed at an end thereof (Fig 3) and has elasticity so as to be bendable (col. 3, ll. 38-42), wherein the falling-out prevention piece is formed at a position corresponding to one end portion of the storage space since it has the structure as recited (col. 3, ll. 38-42). Ritter does not teach a second falling out prevention piece. Van Geer discloses a card storage case (Fig 1) and in particular discloses the case having a pair of falling-out prevention piece (4) on opposite ends thereof (Fig 3). One of ordinary skill in the art would have found it obvious to incorporate a second falling-out prevention piece to Ritter as suggested by Van Geer in order to facilitate retaining of the card. The modification would have resulted in the second falling-out prevention piece formed at a position corresponding to the other end of the storage space since it has the structure as recited.
PNG
media_image1.png
515
605
media_image1.png
Greyscale
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ritter in view of Van Geer and US Patent No. 5,938,010 to Oysterbye.
Regarding claim 2, the modified Ritter teaches the case of claim 1 and Ritter further teaches the storage space capable of storing a plurality of cards since it has the structure as recited, a withdrawal recess (2) formed on upper wall (1) to allow cards to be withdrawn therethrough by sliding the cards with a finger. The modified Ritter does not teach a blocking protrusion as recited. However, Oysterbye discloses a card storage case (Fig 1) and in particular discloses a blocking protrusion (28b) formed on a lower wall (12) to prevent stored items from accidentally falling therefrom. One of ordinary skill in the art would have found it obvious to incorporate a blocking protrusion centered on the lower wall of the modified Ritter as suggested by Oysterbye to prevent stored items from accidentally falling.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,938,010 to Oysterbye in view of Ritter and Van Geer.
Regarding claim 1, Oysterbye discloses a card storage case (Fig 1) comprising a main body including an upper wall (26), a lower wall (12), three side walls (36) connecting the upper (26) and lower wall (12) to each other, a storage space formed of the upper wall, the lower wall and the three side walls and an entrance (18) of the storage space. Oysterbye does not teach a falling out prevention piece on the upper wall. Ritter discloses a card storage case (Fig 1) and in particular discloses a falling out prevention piece (15) formed on the upper wall and producing towards the lower wall or formed on lower wall (12) and protruding towards the upper wall, the falling-out prevention piece includes a curved portion formed at an end thereof (Fig 3) and has elasticity so as to be bendable (col. 3, ll. 38-42), wherein the falling-out prevention piece is formed at a position corresponding to one end portion of the storage space since it has the structure as recited (col. 3, ll. 38-42). Van Geer discloses a card storage case (Fig 1) and in particular discloses the case having a pair of falling-out prevention piece (4) on opposite ends thereof (Fig 3). Taken as a whole, one of ordinary skill in the art would have found it obvious to incorporate a pair of fall out piece to Oysterbye as suggested by Ritter/Van Geer in order to prevent the cards from falling out. The modification would have resulted in the second falling-out prevention piece formed at a position corresponding to the other end of the storage space since it has the structure as recited.
Regarding claim 2, Oysterbye further teaches card storage case, wherein a plurality of cards (C) are stored in the storage space (Fig 9), a withdrawal recess (spacing between upper walls) is formed on the upper wall to allow the cards to be withdrawn therethrough by sliding the cards with a finger, a blocking protrusion (28b) is formed on the lower wall (12) to support and block card other than a top card among the stored plurality of cards (Fig 9).
Regarding claim 3, Oysterbye further teaches a push piece (38) formed on lower wall (12) and configured to push a stored card toward upper wall (26) since it has the structure as recited (Figs 7-9).
Response to Arguments
Applicant's arguments filed 2/18/2026 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that prior art does not teach a pair of falling out prevention pieces. Examiner first notes that the original disclosure does not teach a pair of falling out prevention pieces but rather discloses a single falling out prevention piece placed in alternate positions. Assuming arguendo that applicant has support for the claimed subject matter, applicant’s arguments are not persuasive because Van Geer discloses that it was known in the art to incorporate a pair of falling out prevention pieces on opposite ends of the case. One of ordinary skill in the art would have found it obvious to incorporate an additional falling out prevention piece to either Ritter or Oysterbye in order to facilitate prevention of a stored card from falling out.
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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 Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT POON/ Examiner, Art Unit 3735
Prosecution Insights