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 .
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6, 8, 12-15 and 17-25 have been fully considered but are moot because the arguments are directed to newly added limitation which haven’t been rejected in the previous action, please refer to new ground of rejection for details.
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.
5. 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.
6. 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.
7. Claim(s) 1-6, 8, 12-15 and 17-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over California (US 20230358358 A1) in view of Wu (US D964372 S; from IDS 07/28/2026).
For claim 1. California discloses An apparatus, comprising: a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to be placed adjacent an object (figure 13, [0112], mobile phone); and first and second retaining elements extending outwardly from the outer surface of the body and defining a retaining groove therebetween (figures 18-19, [0115], retaining elements the two walls 22), the retaining groove having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 13, 18-19, [0115]), wherein the retaining groove is configured to receive an item (the flexible tie 14) such that the item is retained in the retaining groove by the first and second retaining elements (figures 13, 18-19, [0115]).
California fails to disclose the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove.
Wu discloses an electronic device case comprising a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to house the electronic device, a retaining groove (for a pen or stylus) having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 1-9).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the selection techniques taught by Wu into the art of California as to include the retaining configuration for a pen or stylus as an alternative/additional embodiment.
For claim 2. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the first and second retaining elements are longest along axes parallel to the outer surface of the body (figures 18-19, [0115], retaining elements the two walls 22).
For claim 3. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the first and second retaining elements are integral with the body ([0017]).
For claim 4. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the body is a protective case for a portable electronic device (figure 13, [0112], mobile phone case).
For claim 5. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the retaining groove is uncovered (figures 13, 18-19, [0115]).
For claim 6. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the body is a planar item detachably connected to the object (figure 13, [0112], mobile phone case).
For claim 8. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses in another embodiment that wherein the second end of the retaining groove includes a closed end that is closed by a joining wall section joining the first and second retaining elements (figures 33, 34).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the selection techniques taught by California into the art of California as modified by Wu as to have a closed end as an alternative embodiment.
For claim 12. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the first and second retaining elements provide the retaining groove with a substantially U-shaped or substantially V-shaped configuration (figures 18-19, [0115]).
For claim 13. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein a shape of the retaining groove substantially mimics a shape of the item to be retained therein (figures 13, 18-19, [0115]).
For claim 14. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the retaining groove is defined by the first retaining element, the second retaining element, and the outer surface of the body (figures 13, 18-19, [0115]).
For claim 15. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the second end of the retaining groove comprises a second open end (figures 13, 18-19, [0115]).
For claim 17. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein a portion of the outer surface and the inner surface of the body of the apparatus are planar (figures 13, 18-19, [0115]).
For claim 18. California discloses A method of retaining an item (the flexible tie 14) to an apparatus, comprising: providing the apparatus comprising a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to be placed adjacent an object (figure 13, [0112], mobile phone), the apparatus including first and second retaining elements extending outwardly from the outer surface and defining a retaining groove therebetween (figures 18-19, [0115], retaining elements the two walls 22), the outer surface therefrom and defining a retaining groove therebetween, the retaining groove having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 13, 18-19, [0115]); and fitting the item into the retaining groove such that the item is retained in the retaining groove by the first and second retaining elements (figures 13, 18-19, [0115]).
California fails to disclose the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove.
Wu discloses an electronic device case comprising a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to house the electronic device, a retaining groove (for a pen or stylus) having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 1-9).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the selection techniques taught by Wu into the art of California as to include the retaining configuration for a pen or stylus as an alternative/additional embodiment.
For claim 19. California in combination with Wu substantially teaches the method according to claim 18, California discloses further comprising removing the item from the retaining groove to use the item (figures 13, 18-19, [0115]).
For claim 20. California discloses (figure 13, [0112], mobile phone case) A retaining apparatus for an electronic device, comprising: a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to be placed adjacent the electronic device; and first and second retaining elements extending outwardly from the outer surface and defining a retaining groove therebetween (figures 18-19, [0017], [0115], retaining elements the two walls 22), the retaining groove having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 13, 18-19, [0115]); wherein the retaining groove is configured to receive an item (the flexible tie 14) such that the item is retained in the retaining groove by the first and second retaining elements (figures 13, 18-19, [0115]).
California fails to disclose the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove.
Wu discloses an electronic device case comprising a body having an inner surface and an outer surface opposite the inner surface, the inner surface configured to house the electronic device, a retaining groove (for a pen or stylus) having a first end, a second end opposite the first end, and an intermediate portion between the first end and the second end, the retaining groove being open at the first end, the first and second retaining elements converging towards each other in a direction that is parallel to the outer surface and from the first end of the retaining groove toward the intermediate portion, the first and second retaining elements diverging away from each other in a direction that is parallel to the outer surface and from the intermediate portion towards the second end of the retaining groove, the first and second retaining elements comprising wall portions that gradually increase in height from the outer surface in a direction from the first end toward the second end of the retaining groove (figures 1-9).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the selection techniques taught by Wu into the art of California as to include the retaining configuration for a pen or stylus as an alternative/additional embodiment.
For claim 21. California in combination with Wu substantially teaches the apparatus according to claim 1, California discloses wherein the body has a rounded rectangular shape with four corners, and wherein the retaining groove has a linear path in a diagonal direction that extends from a first one of the four corners to a second one of the four corners that is opposite of the first one of the four corners (figures 13, 18-19, [0115]).
For claim 22. California in combination with Wu substantially teaches the apparatus according to claim 21, California discloses wherein the first one of the four corners is a top-right corner and wherein the second one of the four corners is a bottom-left corner (figures 13, 18-19, [0115]).
For claim 23. California in combination with Wu substantially teaches the apparatus according to claim 20, California discloses wherein the body has a rounded rectangular shape with four corners, and wherein the retaining groove has a linear path in a diagonal direction that extends from a first one of the four corners to a second one of the four corners that is opposite of the first one of the four corners (figures 13, 18-19, [0115]).
For claim 24. California in combination with Wu substantially teaches the apparatus according to claim 23, California discloses wherein the first one of the four corners is a top-right corner and wherein the second one of the four corners is a bottom-left corner (figures 13, 18-19, [0115]).
For claim 25. California in combination with Wu substantially teaches the apparatus according to claim 20, California discloses wherein the first and second retaining elements are integral with the body (figures 13, 18-19, [0115]).
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 response to this Office Action should be faxed to (571) 273-8300, submitted online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only, Registered users of the USPTO's EFS-Web system may submit a response electronically through EFS-Web at https://efs.uspto.gov/TruePassSample/AuthenticateUserLocalEPF.html), or mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rui Meng Hu whose telephone number is 571-270-1105, email is ruimeng.hu@uspto.gov. The examiner can normally be reached on Monday - Friday, 8:00 a.m. - 5:00 p.m., EST.
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, Jinsong Hu can be reached on (571)272-3965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Rui Meng Hu/
R.H./rh
August 3, 2026
/JINSONG HU/ Supervisory Patent Examiner, Art Unit 2643
Prosecution Insights