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 Objections
Claim 33 is objected to because of the following informalities: The limitation “wherein the handheld electronic device the mountable case is configured to retain is a mobile phone.“ is a grammatical error. The examiner suggests correcting to “wherein the handheld electronic device, the mountable case is configured to retain, is a mobile phone.” 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 21, 22, 28, 30-33, 36, 37, 39, 41 and 42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-23, 25, 30-33, 35, 36, 40 and 41 of copending Application No. 19/029,658 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-23, 25, 30-33, 35, 36, 40 and 41 of copending Application No. 19/029,658 are clearly anticipated or similar in scope to the rejected claims 21, 22, 28, 30-33, 36, 37, 39, 41 and 42 of the U.S. Pat. App (no. 19/048,488) with only obvious wording variation. For example, please see the table below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
Copending Application # 19/029,658
21
21, 22
22
23, and spec. para. 0007, 0106
28
23
30
30
31
31
32
32
33
33
36
35
37
36
39
25
41
40, 41
42
40
As shown in table above, the bold limitations in claims 21, 22, 28, 30-33, 36, 37, 39, 41 and 42 of pending Application can be found the bold limitations in claims 21-23, 25, 30-33, 35, 36, 40 and 41 of U.S. Patent application No.19/029,658. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that they are not patentably distinct from each other. Accordingly, claims 21, 22, 28, 30-33, 36, 37, 39, 41 and 42 of pending Application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-23, 25, 30-33, 35, 36, 40 and 41 of U.S. Patent application No. 19/029,658 for the reasons as stated above.
Allowable Subject Matter
Claims 21-43 would be allowable if the applicant overcomes the obvious double patenting rejection and the claim object above.
Claims 23, 24-27, 29, 34, 35. 38 and 43 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, because the prior art of record fails to teach the limitation of claim 23 “wherein the magnet arrangement is disposed in a cavity in the rear wall.“; the limitation of claim 24 “wherein the magnet arrangement is disposed around an entirety of the open space.“; the limitation of claim 29 “wherein the magnet arrangement is configured to have axial polarity extending in a direction perpendicular to a plane defined by the second surface of the rear wall.“; the limitation of claim 34 “wherein the open space extends partially through the rear wall. “; the limitation of claim 35 “wherein the open space extends entirely through the rear wall.“; the limitation of claim 38 “wherein each of the plurality of magnets is wedge-shaped.” and the limitation of claim 43 “further comprising means for rotationally aligning the mountable case with a wireless charging system.“. Therefore, the prior art teachings are neither anticipate nor render obvious the allowable subject matter in combination with the other claimed limitations.
Conclusion
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/TUAN D NGUYEN/Primary Examiner, Art Unit 2824
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