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 .
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 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,274,351 (‘351). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the ‘351 patent recites all of the limitations of claim 16 of this application and so all of its limitations are clearly taught by it; as to claim 17 claim 14 of the ’351 patent recites a mounting trough in an opposite side of the base away from the support member that receives the mounting portion and so claim 14 of the ‘351 application also discloses the subject matter of claim 17 of this application.
Claims 18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 12, and 14-15 of U.S. Patent No. 12,274,351 (‘351) in view of CN 217283028 to Chen (Chen). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘351 patent recites many of the limitations of claim 18 of this application but with additional details (e.g. claim 14 recites a sheet-shaped connecting member rather than merely a connecting member) but does not detail the support member being stacked on the base in the folded position or that the first and second mounting portions are aligned, however CN 217283028 discloses forming an electronic equipment accessory with a similar connecting member/hinge (22-23) comprising a pair of sheet-shaped mounting portions for a support member (24) to form a folded position stacked on a base with the first and second mounting portions aligned in the thickness direction, and so it would have been obvious to one of ordinary skill in the art before the filing date of this application given the disclosure of Chen to form the ‘351’s mounting portions as a pair of sheets that fold to an aligned position as a mere selection of an art appropriate hinge structure and alignment to use and/or for the art known benefits of such construction; as to claim 20, claim 1 of the ‘351 patent discloses that the mounting portions are both sheet-shaped, and claim 12 discloses that the first mounting portion has the same curvature as the arcuate inner edge/periphery of the support member and it is Examiner’s position that having both mounting portions have an arc shape is obvious to fully match the curve of the ring-shaped support member, as a mere selection of an art appropriate shape or constitutes at most a mere change in shape which does not patentably distinguish over the prior art (MPEP 2144.04), claim 8 discloses that the base comprises a recessed portion for accommodating the support member, claims 14-15 disclose a protruding portion facing the support member, the first mounting portion is stacked on the protruding part in the folded state, and so the limitations of these claims disclose/render obvious the subject matter of claim 20.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,274,351 (‘351) in view of CN 217283028 to Chen (Chen) and U.S. Patent #11,796,128 to Ma (Ma)
Allowable Subject Matter
Claims 1-15 are allowed.
The following is an examiner’s statement of reasons for allowance: the ‘351 patent does not disclose or render obvious a through opening in the base as claimed; Chen discloses a similar rotatable support member and through opening in the base and an axle mounting portion that extends through the through opening, but its base is not rotatably connected to the accessory body and rotatably connecting it would require significant reconfiguration as the base is recessed to be flush with the accessory body and is not circular in shape and rotating it would also interfere with the wireless charging structure (14) and so there is insufficient motivation to make it rotatable absent impermissible hindsight, and other rotatable stands of record use a very different hinge structure and there is insufficient motivation to modify their hinges to use the Chen hinge structure absent impermissible hindsight. Additionally, none of the other prior art of record, alone or in combination, renders obvious the claimed subject matter. It is noted that the mere fact that all individual aspects were individually known in the art “is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). ‘‘‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006))”(MPEP 2143.01(IV)).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim 19 is 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.
The following is a statement of reasons for the indication of allowable subject matter: the ‘351 patent does not disclose or render obvious the notches in the body and positioning part in a trough and in elastic abutting against one of the position-limiting notches, U.S. Patent #11,796,128 discloses a similar rotatable body with positioning notches and a positioning part (431) in elastic abutting against one of the position-limiting notches but it is not in a trough and there is insufficient motivation to add this structure while also replacing the tubular holding part with a trough absent impermissible hindsight. Additionally, none of the other prior art of record, alone or in combination, renders obvious the claimed subject matter. It is noted that the mere fact that all individual aspects were individually known in the art “is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993). ‘‘‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006))”(MPEP 2143.01(IV)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at (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
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