PROTECTIVE COVER FOR A LAPTOP COMPUTER

§102 §103 §112 §251

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 . Reissue Applications For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,102,199 (hereinafter the ‘199 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04. Claim Objections The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not). In this case, Applicant states that “Claims 2-22 filed on April 4, 2025 have been canceled and new claims 2-39 have been added by the present amendment.” Remarks, pg. 14. Because claims 2-22 have been canceled, the new claims must be numbered consecutively beginning with the number next following the highest numbered claims previously presented. Misnumbered claims 2-39 have been consecutively renumbered 23-60, as shown in the following table: Old Claim # Old Dependency New Claim # New Dependency 1 Independent 1 Independent 2 Independent 23 Independent 3 2 24 23 4 3 25 24 5 4 26 25 6 5 27 26 7 3 28 24 8 3 29 24 9 2 30 23 10 2 31 23 11 2 32 23 12 11 33 32 13 2 34 23 14 13 35 34 15 14 36 35 16 23 37 44 17 2 38 23 18 2 39 23 19 2 40 23 20 19 41 40 21 20 42 41 22 2 43 23 23 2 44 23 24 2 45 23 25 2 46 23 26 2 47 23 27 Independent 48 Independent 28 27 49 48 29 28 50 49 30 27 51 48 31 27 52 48 32 28 53 49 Old Claim # Old Dependency New Claim # New Dependency 33 27 54 48 34 33 55 54 35 27 56 48 36 27 57 48 37 27 58 48 38 37 59 58 39 38 60 59 The new claims will be referred to by their corrected numbering as claims 23-60 throughout this Office action. The numbering of claims should be preserved in accordance with 37 CFR 1.126 throughout the prosecution. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by Applicant. In addition, claims 35 and 48 are objected to because of the following informalities: In claim 35, line 1, “if” should read --is--. In claim 48, line 9, “are absence” should read --are absent--. Appropriate correction is required. Response to Arguments Applicant's arguments filed August 13, 2026, have been fully considered but they are not persuasive. 35 U.S.C. 251 - Recapture With respect to the rejections under 35 U.S.C. 251 based on impermissible recapture of surrendered subject matter, Applicant argues that new independent claims 23 and 48 avoid impermissible recapture because they are linking claims which are generic to Species 1 (Figs. 1-4) and Species 2 (Fig. 5) disclosed in the ‘199 patent, citing In re Doyle, 293 F.3d 1355, 64 USPQ2d 1161 (Fed. Cir. 2002). This argument is not persuasive because Doyle is not pertinent to the facts at hand. In Doyle, the issue before the court was the examiner’s rejection of claims under 35 U.S.C. 251 based on failure to specify an error correctable reissue under In re Orita, 550 F.2d 1277, 193 USPQ 145 (CCPA 1977). The court held that failure to present a linking claim was an error correctable by reissue. The Federal Circuit did not address recapture. While the examiner in Doyle had originally made a recapture rejection, the Patent Trial and Appeal Board had already reversed the recapture rejection, prior to appeal to the Federal Circuit, based on the fact that the pertinent claims were not canceled to overcome prior art during the underlying prosecution, but were instead made in response to a restriction requirement. That is not the case here, where the “acrylic” and “thermoplastic polyurethane” limitations were clearly and explicitly added in order to overcome the prior art. Moreover, even if the presentation of a linking claim were considered to be in some way relevant to the recapture rejection, patent claim 1 is already a linking claim generic to both species. Applicant describes the two species at issue as being the Fig. 1-4 embodiment which includes a first embodiment of a bottom cover, and the Fig. 5 embodiment which shows a second embodiment of the bottom cover. See Remarks, pg. 16. Patent claim 1 recited “a bottom cover having a planar bottom body and a means for mounting the planar bottom body onto the keyboard portion.” In the Fig. 1-4 embodiment, the mounting means comprises tabs (48, Fig. 1; col. 4:12-22). In the Fig. 5 embodiment, the mounting means comprises a flange (58, Fig. 5; col. 4:30-42). Both embodiments are covered by patent claim 1. Arguments related to failure to present a linking claim in the great-grandparent application (US Application Serial No. 17/742,911) are not relevant because a linking claim covering both embodiments of the bottom cover was in fact obtained in the ‘199 patent, and because the amendment to recite acrylic and thermoplastic polyurethane materials of the top cover in order to overcome the prior art is unrelated to the election of Species 1 of the bottom cover in the great-grandparent application. The current amendment to limit claim 1 to the Fig. 1-4 embodiment of the bottom cover does not now open the door for Applicant to recapture surrendered subject matter with respect to the materials of the top cover. 35 U.S.C. 251 – Original patent Applicant’s arguments with respect to this ground of rejection are now moot with respect to amended claim 1. These arguments remain relevant with respect to new claims 23-60. Applicant’s arguments with respect to the rejection under 35 U.S.C. 251 based on the “original patent” requirement appear to be based on the position that the specifically disclosed combination of acrylic and thermoplastic polyurethane is a species within a larger genus of different first and second materials. This argument is not persuasive because, as explained in Ex parte Sandwick, Appeal No. 2018-008369, op. at 22 (PTAB July 23, 2019), “The ‘original patent’ standard and the written description requirement are not the same. Where the written description requirement is based on what the skilled artisan would have understood was within the possession of the inventor, recent Federal Circuit case law indicates that the original patent requirement under § 251 requires something more.” In Sandwick, a rejection under 35 U.S.C. 251 “was affirmed because the patent did not describe any fabrication method other than casting. While one of ordinary skill in the art would have understood that other fabrication methods, such as injection molding or 3D printing, were possible or conventional, the reissue claims that did not include casting did not comply with the original patent requirement.” MPEP § 1412.01, subsection I. In this case, the ‘199 patent describes only one combination of two different materials: acrylic and thermoplastic polyurethane. The generic list of alternative materials described in col. 4:64-5:4 of the patent does not describe the use of two different materials from this list in the specifically claimed combination with respect to the planar top body and the outer perimeter of the top cover. Moreover, Applicant’s characterization of thermoplastic polyurethane as a “soft plastic” which one of ordinary skill in the art would understand to be replaceable with other soft plastics in the generic list is not persuasive and appears to be inconsistent with Applicant’s claims and disclosure. The thermoplastic polyurethane of Applicant’s invention is specifically disclosed and claimed as having a hardness of 85-90 on the Shore D hardness scale, which is understood to describe a hard, rigid material, , not a “soft plastic.” See Shore Durometers of Common Materials1 below for reference, showing a hard hat as an example of a material having a hardness of 75 on the Shore D scale. PNG media_image1.png 510 468 media_image1.png Greyscale In summary, Applicant has disclosed a top cover including one specific combination of acrylic and thermoplastic polyurethane having a Shore D hardness of 85-90. Moreover, Applicant has previously argued that this specific combination of materials is critical to the claimed functionality of the cover. See Remarks filed December 27, 2023, pg. 1, in the grandparent application (US Application Serial No. 18/104,968). The original patent did not clearly and unequivocally disclose any other combination of two different materials in the planar top body and outer perimeter of the same top cover. 35 USC 251 and 112(a) – New Matter/Written Description Applicant’s arguments with respect to this ground of rejection are now moot with respect to canceled claims 2-7 and 12-22. These arguments remain relevant with respect to new claims 29, 46-47, and 50-51. The specifics of these claims will be addressed in the rejections below. In general, the broad statements in the patent specification with respect to the protective cover (10) as a whole being made of materials as listed in col. 4:64-5:4 does not support the specifically claimed combination of a top cover (20) including a planar top body that is made from polycarbonate, plastic generally, polyethylene terephthalate, laminated tempered glass, thermoplastic elastomer, or silicone, in combination with an outer perimeter that is made from a different second material. Applicant’s argument that Applicant’s definition of the term “a” in the ’199 patent “alludes to the fact that a combination of materials may be used among those listed” is not persuasive. With respect to new matter and written description, the question is not whether one of ordinary skill in the art could piece together different combinations of the listed materials other than the specifically disclosed combination of acrylic and thermoplastic polyurethane, but whether the disclosure would convey to one of ordinary skill in the art that Applicant actually envisioned such a combination. The examiner does not dispute that other materials are disclosed as being suitable for the protective cover (10) as generally described. However, the new claims are directed to specific combinations of materials for different parts of the top cover, which are combined in a way that was neither described nor suggested by the general list of materials. 35 U.S.C. 112(a) – Scope of Enablement Applicant argues that the critical feature of the invention is not the thermoplastic polyurethane material of the outer perimeter of the top cover, as was argued by Applicant in the response filed December 27, 2023, but instead the frictional engagement the integral flange of the outer perimeter with the computer so that the top cover and the bottom cover are not connected to each other via a hinge, citing arguments that were made in an earlier response on July 20, 2023. This argument is not persuasive because the examiner found that frictional engagement was already known in the prior art and thus was not in itself an inventive feature. See the rejection of claim 6 in the non-final Office action mailed September 19, 2023, in the grandparent application. In response to that prior art rejection, Applicant added the “acrylic” and “thermoplastic polyurethane” limitations to claim 6, explicitly arguing that “[i]t is critical to the present invention that the downwardly extending wall and the slide rails are constructed of thermoplastic polyurethane because this material provides a high friction surface that enables the protective cover to remain on the laptop computer without requiring the use of a hinge/connector. This is distinct from the acrylic of the rest of the protective cover.” December 27, 2023, Response, pg. 1. The examiner’s next Office action dropped the prior art rejections in response to the December 27 arguments and amendments, but raised a new rejection under 35 U.S.C. 112(a) rejecting the claims based on new matter. Applicant then filed a continuation-in-part (CIP) application (the parent application) to add the claimed combination of acrylic and thermoplastic polyurethane to the patent disclosure, followed by the continuation application of the CIP which matured to the ‘199 patent. The earlier statement with respect to critical functions of frictional engagement does not negate the later statement with respect to criticality of the thermoplastic polyurethane, which Applicant relied on to overcome the applied prior art. Importantly, the examiner is not relying merely on the content of the disclosure as evidence of criticality of this feature, but on Applicant’s clear and unequivocal statement on the record that the thermoplastic polyurethane material “is critical to the present invention.” Applicant additionally presents alternative arguments with respect to a rejection that was made by a previous examiner during prosecution of the grandparent application (based on U.S. Patent No. 10,845,844 to Chan and U.S. Patent Pub. 2018/0228260 to Cole), which do not rely on criticality of thermoplastic polyurethane material. Applicant also characterizes Applicant’s previous statements on the record in the grandparent application as being “a misstatement based on misunderstanding” and “unnecessary.” See Response, pg. 38. However, the present examiner’s determination in this reissue application must be based on the record as it is, not the record as Applicant wishes it had been. The arguments which Applicant now raises against an old rejection based on Chan and Cole were not put before the examiner during prosecution of the grandparent application. Instead, Applicant amended the claims to recite “acrylic” and “thermoplastic polyurethane” and argued that these materials are critical to the invention, in order to distinguish the claimed invention from the prior art. 35 U.S.C. 102 – UZBL Applicant’s arguments with respect to the anticipation rejection of claim 1 based on UZBL are largely moot in view of the new grounds of rejection set forth below in response to Applicant’s amendment of claim 1 to reintroduce the “acrylic” and “thermoplastic polyurethane” limitations that were previously omitted. In response to Applicant’s argument that UZBL does not disclose “an outer perimeter that ‘is not provided at the bottom edge’,” the examiner notes that the claim requires that the outer perimeter has a bottom edge (“the outer perimeter having a top edge and a bottom edge,” claim 1, line 5). As claimed, the component that is “not provided at the bottom edge” is “a downwardly extending wall which extends downwardly.” The examiner maintains that this limitation is taught by UZBL. On pg. 41 of the Remarks, Applicant includes an annotated image in which the bottom edge of UZBL’s top cover is circled. The feature of UZBL circled by Applicant is the required bottom edge of the top cover, not a downwardly extending wall. The examiner maintains that UZBL does not describe a downwardly extending wall at the bottom edge. This is evident from the fact that the outer perimeter of the top cover of UZBL is open at the bottom edge for insertion of the screen portion of the laptop computer. Compare Applicant’s Fig. 1 (showing bottom edge 28 of top cover 20) and UZBL Screenshot below. PNG media_image2.png 718 548 media_image2.png Greyscale PNG media_image3.png 271 336 media_image3.png Greyscale Claim Rejections - 35 USC § 251 - Recapture Claims 23-60 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application. MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. Recapture Analysis: Step 1 Reissue claims 1 and 23-60 are broader in scope than patent claim 1. Independent claim 1 does not require “a durometer of 85-90D” of the thermoplastic polyurethane material which was present in all of the patent claims (replacing this limitation with “a Shore D hardness in durometer with friction properties configured to frictionally engage the laptop computer”). Independent reissue claims 23 and 48 do not require the following limitations which were present in all of the patent claims: the planar top body being constructed of acrylic (replacing “acrylic” with “a first material”); and the outer perimeter being constructed of thermoplastic polyurethane having a durometer of 85-90D (replacing these limitations with “a second material that differs from the first material” and having “a hardness measured in durometer D with friction properties to frictionally engage the laptop computer”). While dependent claims 24 and 49 reintroduce the second material of the outer perimeter being thermoplastic polyurethane, claims 24 and 49 are still broader than patent claim 1 because the first material remains broadened to generically encompass “a first material.” Therefore, step 1 of the three-step test is met for reissue claims 23-60. Recapture Analysis: Step 2, first sub-step The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art. For the purpose of the recapture analysis, “the ‘original application’ includes the patent family’s entire prosecution history.” MPEP § 1412.02, subsection I, citing MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also In re McDonald, 43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). Surrender may occur because of the prosecution history of related applications. In this case, the ‘199 patent matured from U.S. Application Serial No. 18/736,984 (hereinafter the ‘984 application), which was a continuation of U.S. Application Serial No. 18/859,077 (hereinafter the ‘077 parent application), which was a continuation-in-part of U.S. Application Serial No. 18/104,968 (hereinafter the ‘968 grandparent application). The ‘968 grandparent application was a continuation of U.S. Application Serial No. 17/742,911 (abandoned after a first Office action without a response from Applicant). In the ‘968 grandparent application, the examiner rejected claims 1-8 under 35 U.S.C. 102 as anticipated by Chan (U.S. Patent No. 10,845,844, hereinafter Chan). See non-final Office action mailed June 23, 2023. In response, Applicant canceled claims 1-5 and 7, amended claim 6 to recite “wherein the top cover and the bottom cover are not connected to each other via a hinge,” and introduced new claim 9 describing sliding receipt of the screen portion by the slide rails and new claim 10 reciting “the slide rails are coated with thermoplastic polyurethane.” See response filed July 20, 2023. The examiner maintained the rejection of claims 6 and 8 under 35 U.S.C. 102 based on Chan, and rejected claims 9 and 10 under 35 U.S.C. 103 based on Chan and Meersschaert (CA 2,984,828). See final Office action mailed August 1, 2023. In response, Applicant amended claim 6 to include the limitations of claims 9 and 10 and to further describe frictional engagement of the screen portion by the slide rails. See response filed September 1, 2023. The examiner then rejected claim 6 and 8 under 35 U.S.C. 103 based on Chan and Cole (U.S. Patent Pub. 2018/0228260). See non-final Office action mailed September 19, 2023. In response to the September 19 non-final Office action, Applicant amended claim 6 to recite “wherein the planar top body is constructed of acrylic” and “wherein the downwardly extending wall and the slide rails are constructed of thermoplastic polyurethane.” Applicant argued, “It is critical to the present invention that the downwardly extending wall and the slide rails are constructed of thermoplastic polyurethane because this material provides a high friction surface that enables the protective cover to remain on the laptop computer without requiring the use of a hinge/connector. This is distinct from the acrylic of the rest of the protective cover.” Remarks filed December 27, 2023, pg. 1. The examiner then rejected claims 6 and 8 under 35 U.S.C. 112(a), finding that the original disclosure of the ‘968 grandparent application lacked sufficient written description support for the planar top body being constructed of acrylic and the downwardly extending wall and slide rails being constructed of thermoplastic polyurethane. See final Office action mailed January 17, 2024. Applicant did not respond to the final Office action in the ‘968 grandparent application (which went abandoned). Instead, on February 27, 2024, Applicant filed the ‘077 parent application as a continuation-in-part of the ‘968 grandparent application, adding a description of the planar top body being constructed of acrylic and the outer perimeter being constructed of thermoplastic polyurethane. Before the ‘077 parent application was taken up for examination, Applicant filed the ‘984 application (which matured to the ‘199 patent on which the instant reissue application is based) as a continuation of the ‘077 parent application. The ‘077 parent application and the ‘984 application were filed with an identical claim 1, which recited the limitations “wherein the planar top body is constructed of acrylic” and “wherein the outer perimeter is constructed of thermoplastic polyurethane” that were previously argued as being critical to distinguish the claimed invention from the prior art. In the ‘984 application, the examiner rejected claim 1 on the basis of statutory double patenting with respect to the identical claim in the ‘077 parent application, and under 35 U.S.C. 112(b) based on lack of clarity arising from a typographical error. In response, Applicant expressly abandoned the ‘077 parent application and amended claim 1 to overcome the rejection under 35 U.S.C. 112(b). See response filed August 13, 2024. The examiner then mailed a Notice of Allowance, finding that “[n]o prior art discloses a protective cover comprising a top cover constructed from acrylic including an outer perimeter as required in the claim.” Notice of Allowance mailed August 21, 2024, pg. 2. These are the features that were added to the claims and argued by Applicant in the ‘968 grandparent application to distinguish the claimed invention from the prior art, as discussed above. The limitations that were added to independent claim 1 in the ‘984 application and argued by Applicant in the ‘968 grandparent application to distinguish the claimed invention from the prior art are thus surrender-generating limitations (SGL). Recapture Analysis: Step 2, second sub-step The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art. Reissue claim 1 includes the acrylic material of the planar top body and the thermoplastic polyurethane material of the outer perimeter, which is the surrendered subject matter. Therefore, step 2 of the three-part test is not met for claim 1; accordingly, claim 1 is not rejected on the basis of improper recapture. Reissue claims 23-60 are broadened with respect to patent claim 1 to omit the acrylic material of the planar top body (by broadening to generically include “a first material”) and the thermoplastic polyurethane material of the outer perimeter (by broadening to generically include “a second material that differs from the first material”). Reissue claims 23-60 include some of the details of the surrendered subject matter and eliminate some of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claims 23-60. Recapture Analysis: Step 3 The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.” In this case, reissue claims 23 and 48 modify the SGL by retaining, in broadened form, the material of the outer perimeter being different from the material of the planar top body and having a hardness measured in durometer D with friction properties to frictionally engage the screen portion of the laptop, and by omitting the specific acrylic and thermoplastic polyurethane materials. The retained limitations do not materially narrow the claims relative to the SGL because the use of different first and second materials was already well-known in the art, as evidence by the references cited below, and because the hardness and friction properties, as generically recited, are inherent material properties that do not distinguish the claimed invention from the prior art. Thus, the retained limitations do not avoid impermissible recapture. Therefore, reissue claims 23-60 improperly recapture surrendered subject matter. Claim Rejections - 35 USC § 251 - Original Patent Claims 23-60 are rejected under 35 U.S.C. 251 for not claiming subject matter directed to the invention disclosed in the original patent. MPEP § 1412.01 explains that “[t]he reissue claims must be for the same invention as that disclosed as being the invention of the original patent.” This section of the MPEP provides the following guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent”: (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; (B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and (C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features. Further, the Federal Circuit addressed the “original patent” requirement of 35 U.S.C. 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). The Federal Circuit adopted the Supreme Court’s explanation from U.S.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.2 that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.’ [U.S.S. Industrial Chemicals, 315 U.S.] at 676. ‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Id.” Antares at 1359; see also id. at 1362. The Federal Circuit further stated that although wording in section 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360. The reissue claims in this application are directed to a protective cover for a laptop comprising a top cover with a planar top body constructed of a first material and an outer perimeter constructed of a second material different from the first material. The original patent described a single embodiment of a top cover “having a planar top body made of acrylic that extends to an outer perimeter made of thermoplastic polyurethane having a durometer of 85-90D.” Abstract, lines 1-4; see also col. 2:1-5, 19-22; 3:28-30. The examiner finds nothing in the original patent to suggest that the disclosed invention included different first and second materials other than the disclosed combination of acrylic and thermoplastic polyurethane. Moreover, the original patent specifically attributes the claimed friction properties to the disclosed thermoplastic polyurethane material having a hardness of 85-90D. See col. 3:28-38. The original disclosure did not clearly and unequivocally disclose the newly claimed combinations of materials which are broadly recited in claims 23 and 48 and more specifically recited in dependent claims 25, 29, 46-47, and 50-51. For example, the original patent did not disclose a cover including top body constructed of polycarbonate and an outer perimeter constructed of polyethylene terephthalate (PET), thermoplastic elastomer (TPE), or silicone. Claim Rejections - 35 USC § 251 - New Matter Claims 25-27, 29, 46-47, and 50-51 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is set forth below in the rejection under 35 U.S.C. 112(a). Claim Rejections - 35 USC § 112(a) - Written Description 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. Claims 25-27, 29, 46-47, and 50-51 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. Regarding claims 25, 29, 46-47, and 50-51, the subject matter not supported by the original disclosure is “the protective cover, which includes the first material of the top cover” being “made from plastic or polycarbonate” (claim 25), or “made from polyethylene terephthalate (PET), laminated tempered glass, thermoplastic elastomer (TPE), or silicone” (claim 29), or “constructed from polycarbonate, plastic, polyethylene terephthalate (PET), laminated tempered glass, acrylic, thermoplastic polyurethane (TPU), thermoplastic elastomer (TPE)” (claim 46), or the first material being polycarbonate (claims 47 and 50-51), in combination with a different second material of the outer perimeter of the top cover as required by independent claim 24. The original disclosure states generally that “the protective cover 10 may be constructed of a rigid material such as polycarbonate, plastic, etc., but other suitable materials may be used for optimally protecting the laptop computer 12, e.g., polyethylene terephthalate (PET), laminated tempered glass, acrylic, thermoplastic polyurethane (TPU), thermoplastic elastomer (TPE), and/or other suitable flexible materials (e.g., silicone, soft plastic, rubber, etc.).” Col. 4:64-5:4. This generic list of materials does not provide sufficient written description support for the specific combination of a planar top body made of polycarbonate, PET, glass, TPE, silicone, or TPU and an outer perimeter made of a different material. The only description of a cover having different materials for the planar top body and the outer perimeter explicitly specifies acrylic for the planar top body and thermoplastic polyurethane for the outer perimeter. Claims not specifically addressed are rejected as being dependent upon a rejected base claim. Claim Rejections - 35 USC § 112(a) - Scope of Enablement Claims 23, 30-48, 51-52, and 54-60 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for an outer perimeter constructed of thermoplastic polyurethane (TPU), does not reasonably provide enablement for the broader scope of second materials now encompassed by the claims. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The TPU material of the outer perimeter has been disclosed as critical for the invention to function as intended. Specifically, Applicant has explicitly disclosed that “[i]t is critical to the present invention that the downwardly extending wall and the slide rails are constructed of thermoplastic polyurethane because this material provides a high friction surface that enables the protective cover to remain on the laptop computer without requiring the use of a hinge/connector.” Remarks filed December 27, 2023, pg. 1, in U.S. Application Serial No. 18/104,968.3 The disclosed critical feature is missing from claims 23, 30-48, 51-52, and 54-60.4 The claims retain the frictional engagement function while omitting the feature disclosed to be critical for performing the claimed function. Therefore, the disclosure is not enabling for the full scope of the claimed invention. See MPEP § 2164.08(c). Claim Rejections - 35 USC § 112(b) 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. Claims 1, 25-27, 29, 30, 33, 46, and 50 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 1 recites the limitations “a bottom cover” in line 19 and “a bottom cover” in line 19 and again in line 26. It is unclear whether both instances of “a bottom cover” refer to the same bottom cover. Regarding claims 25 and 50, the limitation “the protective cover, which includes the first material of the top cover, is made from plastic or polycarbonate” renders the claim indefinite, because it is unclear what other parts of the protective cover (if any) may or must be made from plastic or polycarbonate. For example, the second material which differs from the first material is also claimed as part of the protective cover. It is unclear whether claims 25 and 50 require that the second material is also some type of plastic or polycarbonate. Claims 26-27 are rejected in view of their dependency from claim 25. Regarding claim 29, the limitation “the protective cover, which includes the first material of the top cover, is made from polyethylene terephthalate (PET), laminated tempered glass, thermoplastic elastomer (TPE), or silicone” renders the claim indefinite, because it is unclear what other parts of the protective cover (if any) may or must be made from PET, laminated tempered glass, TPE, or silicone. For example, the second material which differs from the first material is also claimed as part of the protective cover. It is unclear whether claim 29 requires that the second material is also PET, laminated tempered glass, TPE, or silicone. Regarding claim 30, the limitation “the bottom cover has the integral flange” renders the claim indefinite because independent claim 23 defines the integral flange as a specific part of the top cover. See claim 23, lines 3-9. It is unclear in what sense the bottom cover “has” the integral flange of the top cover. It appears that Applicant may intend “the integral flange” in claim 30 to refer to a second integral flange that is part of the bottom cover. However, if that is the case, then it is unclear how “the integral flange” of the bottom cover is related to the sidewall and retention surface ridge of the bottom cover recited in claim 23, and if these are the same or different parts. (See Specification amendment of col. 4:30-32, filed August 13, 2026, suggesting that the retention surface ridge may be the same as or part of an integral flange.) For the purpose of examination, the term “integral flange” in claim 30 will be interpreted in view of Applicant’s disclosure as referring to the sidewall of the bottom cover. See Fig. 1 of the ‘199 patent, showing a gap formed in the part of the bottom cover that corresponds to the sidewall now recited in claim 23. Regarding claim 33, the limitation “the retention surface ridge of the bottom cover is a slide rail in which the length extends along an entirety of the sidewall” renders the claim indefinite, because claim 32 (from which claim 33 depends) also recites “the retention surface ridge of the bottom cover is a slide rail” but defines the slide rail as “having a length that extends along an entirety of the first long edge.” It is unclear whether claim 33 intends to recite a second slide rail, in addition to the slide rail of claim 32, or an additional portion or extent of the same slide rail recited in claim 32. The issue could be resolved by amending claim 33 to read --wherein the slide rail of the bottom cover extends along an entirety of the sidewall--, or language to similar effect. Regarding claim 46, the limitation “the protective cover is constructed from polycarbonate, plastic, polyethylene terephthalate (PET), laminated tempered glass, acrylic, thermoplastic polyurethane (TPU), thermoplastic elastomer (TPE)” renders the claim indefinite, because it is unclear how this list of materials is related to the claimed first and second materials. Additionally, due to the absence of a conjunction (e.g., “and” or “or”), it is unclear whether the claim requires that the protective cover be made of one, some, or all of the listed materials. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 23, 30-31, 34-38, 40-46, 48, 52, 54-56, and 58-60 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by UZBL Complete Armor Case (“I Dropped My MacBook…,” https://www.youtube.com/watch?v=rYxPUa7FdJs, posted by Solider Knows Best on May 3, 2018; hereinafter UZBL). Regarding claims 23 and 48, UZBL discloses a protective cover for a laptop computer having a screen portion and a keyboard portion (e.g., a MacBook Air; see video at 0:00-1:00). The protective cover comprises a top cover and a bottom cover (“it comes in two separate pieces,” audio at 0:20-0:22). The top cover has a planar top body (see annotated screenshots below) that extends to an outer perimeter (“rubber protection going around the edge,” 0:25-0:27), the planar top body being constructed of a first material (i.e., the clear material). The outer perimeter of the top cover has a top edge and a bottom edge connected by a pair of side edges (i.e., defining four-sided shape), a downwardly extending wall (at upper corners) which extends downwardly from the top edge and the pair of side edges of the outer perimeter but is not provided at the bottom edge (permitting the screen portion to slide into the top cover at the bottom edge; see video at 0:30-0:40), and a slide rail which extends inwardly from the downwardly extending wall at the top edge and the pair of side edges, forming an integral flange (i.e., as an integral part of the downwardly extending wall; see screenshots below). PNG media_image4.png 821 739 media_image4.png Greyscale The downwardly extending wall and slide rail are clearly understood from the UZBL disclosure to be absent at the bottom edge of the top cover, since the top cover is shown to be open at the bottom for inserting the screen portion of the laptop computer. See video at 0:30-0:40. The integral flange has an elongated axis at each of the pair of side edges to define two spaced apart elongated axes, as shown in the annotated screenshot at 0:31 above. The outer perimeter is constructed of a second material (“rubber,” 0:25-0:27) that differs from the first material. See screenshots above, the planar top body being a hard clear material and the outer perimeter being a dark rubber material. The outer perimeter, including the planar top body, the downwardly extending wall, and the slide rail defining the integral flange, together are configured to slidingly receive the screen portion of the laptop computer upon inserting the screen portion from the bottom edge under the integral flange at the pair of side edges and sliding the top cover along the two elongated axes (“to put them on your MacBook Air you need to slide them … on the top portion or the display of the MacBook Air,” 0:28-0:37), to together frictionally engage the screen portion of the laptop computer so that the top cover is configured to not slide off of the screen portion of the laptop computer without considerable sustained force being applied consistent with an intentional effort by a user to pull off the top cover from the screen portion, but low enough friction so that the top cover is removable by the user from the screen portion with mechanical force without using tools (“the top piece I did experience a little bit of friction or resistance a little bit but I was able to get it on without using any type of lube or anything like that,” 0:38-0:45), such that the top cover and a bottom cover are configured to remain disconnected from each other (“separate pieces,” 0:20-0:22), without any form of connecting hinge, during use while the protective cover is mounted on the laptop computer and being operated (see screenshot at 1:11). The second material of the outer perimeter inherently has a hardness measured in durometer D with friction properties. The UZBL video shows that the second material is configured to frictionally engage the laptop computer such that the integral flange formed along the top edge and the pair of side edges is configured to frictionally engage the screen portion of the laptop computer upon receiving the screen portion of the laptop computer (“the top piece I did experience a little bit of friction or resistance a little bit but I was able to get it on without using any type of lube or anything like that,” 0:38-0:45). The bottom cover has a planar bottom body with first and second long edges and first and second side edges (i.e., in a rectangle shape corresponding to the rectangular shape of the keyboard portion), with the first long edge configured to align with an edge of the keyboard portion of the laptop computer that is not hinge to the screen portion (i.e., at the front of the keyboard portion; see screenshots at 0:41 and 0:49 above), a sidewall (see annotated detail of Screenshot at 1:30 below) extending generally orthogonally/angularly (i.e., at a right angle) to the planar bottom body along the two side edges (as shown with respect to one of the two side edges in the Screenshot at 1:30 below) and the first long edge (as shown in the Screenshot at 0:49 below, the sidewall being the part from which the tab extends), wherein the sidewall has at least two corners (see screenshot detail at 0:49 below) that are aligned with corresponding corners of the bottom body; and a retention surface ridge (see tab in Screenshot 0:49 below) that extends angularly from the sidewall (to overlap the upper surface of the keyboard portion; see Screenshot at 0:49 below) so that the retention surface ridge grips the keyboard portion of the laptop computer when the bottom cover is mounted onto the keyboard portion (see detail of screenshots at 0:49 and 1:30, annotated below). PNG media_image5.png 233 665 media_image5.png Greyscale As noted above, the top cover and the bottom cover of UZBL are clearly configured to mount to the laptop computer without a hinge interconnecting the top cover and the bottom cover during use while the protective cover is mounted on the laptop computer and being operated (as “separate pieces,” 0:20-0:22; see screenshots above). Regarding claim 30, UZBL further discloses that the sidewall is an integral flange (see note on claim interpretation in the rejection under 35 U.S.C. 112(b) above). A gap portion is provided at the sidewall/integral flange of the bottom cover for access to a drive or port on the laptop computer when the bottom cover is mounted to the laptop computer. See detail of Screenshot at 1:30 above. Regarding claim 31, UZBL further discloses the planar bottom body, the sidewall, and the retention surface ridge (i.e., the tab) define an integral flange of the bottom cover (see details of Screenshots at 0:49 and 1:30 above). Regarding claims 34-36, UZBL further discloses the retention surface ridge of the bottom cover includes a first inwardly extending tab (claim 34) and a second inwardly extending tab (claim 35) located along the first long edge (see annotated UZBL Screenshot at 0:45 below, and detail of Screenshot at 0:49 above) (claim 36). PNG media_image6.png 403 624 media_image6.png Greyscale Regarding claims 37-38 and 56, the integral flange of UZBL’s top cover is understood to extend inwardly a distance that is at least great enough to retain the screen portion such that it does not snap out of the top cover but must be slid off via the bottom edge via sliding paths defined by lengthwise axes of the integral flange at the pair of side edges, as recited in each of claims 37, 38, and 56, since the integral flange of UZBL’s top cover is clearly designed in such a way that accomplishes the claimed sliding function with respect to the screen portion, as discussed above, and is not designed to snap on/off the screen portion. Regarding claims 40-42 and 58-60, UZBL further discloses the retention surface ridge includes four inwardly extending tabs each extending from the sidewall and spaced from one another, including the two tabs on the front long edge shown in UZBL Screenshot at 0:45 above, and an additional tab on each side edge, as shown in UZBL Screenshot at 0:43 below. As additional supporting evidence of the four tabs on the UZBL MacBook Air case, see “Rugged Macbook Air 13 Case Install Tutorial” by UZBL, https://www.youtube.com/watch?v=iQHmAVZUM6w, uploaded January 10, 2018. Beginning at 0:12, the video explains “slide the thin front of the Macbook Air 13 underneath the snaps. Keeping those in place, you then just put the rear snaps over in place, and there you have the four snaps.” UZBL’s four snaps include a first inwardly extending tab located proximate the first side edge, a second inwardly extending tab located proximate the second side edge, and a third inwardly extending tab located proximate the first long edge (claims 40-41 and 58-59), and a fourth inwardly extending tab located proximate the first long edge and spaced from the third inwardly extending tab (claims 42 and 60). PNG media_image7.png 402 624 media_image7.png Greyscale Regarding claim 43, UZBL further teaches the sidewall of the bottom cover has at least two corners (see screenshot detail at 0:49 above) that are aligned with corresponding corners of the bottom body, as noted above with respect to independent claim 48. Regarding claim 44, UZBL further discloses that the sidewall has a gap defining a space for accessing ports on the keyboard portion of the laptop computer, as noted above with respect to claim 30. See detail of Screenshot at 1:30 above. Regarding claim 45, UZBL further discloses that the sidewall of the bottom cover (i.e., the clear wall that extends orthogonally from the planar bottom body) extends continuously from the two side edges and the first long edge (see screenshots above). The phrase “extends continuously” is understood in context as referring to the continuous extent of the sidewall around the front corners of the bottom cover from the side edges to the first long edge. In other words, the presence of the gap in the sidewall near the second long edge for accessing ports of the laptop computer (which is present in all of Applicant’s disclosed embodiments) does not interrupt the continuous extent of the sidewall from the side edges and the first long edge. Regarding claim 46, one of ordinary skill in the art would immediately recognize that protective cover of UZBL is constructed from plastic, as broadly claimed, such that the claimed invention wherein the protective cover is constructed from plastic is anticipated by UZBL. If there is any doubt regarding this conclusion, see the alternate rejection of claim 46 under 35 U.S.C. 103 below. Regarding claim 52, UZBL further discloses the outer perimeter comprises a set of two or more clefts each comprising a gap (see screenshot at 0:26). Regarding claims 54 and 55, UZBL further discloses that the planar bottom body, the sidewall, and the retention surface ridge (i.e., the tabs) define an integral flange of the bottom cover (see details of Screenshots at 0:49 and 1:30 above), wherein a first gap portion is provided at the integral flange of the bottom cover for access to a drive or port on the laptop computer when the bottom cover is mounted to the laptop computer (ee detail of Screenshot at 1:30 above) (claim 54), and a similar second gap portion is understood to be located at the sidewall on the opposite side of the bottom cover, spaced from the first gap portion (“while the laptop is closed its going to be protecting all of your ports besides the magnetic charging port, which is the only one that’s going to be exposed,” 1:26-1:32, which is understood to mean that the bottom cover includes a similar second gap portion on the opposite sides for accessing “all of your ports” when the laptop is open) (claim 55). Claim Rejections - 35 USC § 103 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Kim (U.S. Patent Pub. 2016/0142522, hereinafter Kim). Regarding claim 1, UZBL discloses a protective cover for a laptop computer having a screen portion and a keyboard portion (e.g., a MacBook Air; see video at 0:00-1:00). The protective cover comprises a top cover and a bottom cover (“it comes in two separate pieces,” audio at 0:20-0:22). The top cover has a planar top body (see annotated screenshots below) that extends to an outer perimeter (“rubber protection going around the edge,” 0:25-0:27), the planar top body being constructed of a first material (i.e., the clear material). The outer perimeter has a top edge and a bottom edge connected by a pair of side edges (i.e., defining four-sided shape), a downwardly extending wall (at upper corners) which extends downwardly from the top edge and the pair of side edges of the outer perimeter but is not provided at the bottom edge (permitting the screen portion to slide into the top cover at the bottom edge; see video at 0:30-0:40), and a slide rail which extends inwardly from the downwardly extending wall at the top edge and the pair of side edges, forming an integral flange (i.e., as an integral part of the downwardly extending wall; see screenshots above). The outer perimeter is constructed of a second material (“rubber,” 0:25-0:27) that differs from the first material. See screenshots above, the planar top body being a hard clear material and the outer perimeter being a dark rubber material. The outer perimeter, including the planar top body, the downwardly extending wall, and the integral flange, together are configured to slidingly receive the screen portion of the laptop computer upon inserting the screen portion from the bottom edge under the integral flange (“to put them on your MacBook Air you need to slide them … on the top portion or the display of the MacBook Air,” 0:28-0:37), and they together frictionally engage the screen portion of the laptop computer so that the top cover is configured to not slide off without considerable sustained force being applied consistent with an intentional effort by a user to pull off the top cover, but low enough friction so that the user can remove the top cover from the screen portion with mechanical force without using tools (“the top piece I did experience a little bit of friction or resistance a little bit but I was able to get it on without using any type of lube or anything like that,” 0:38-0:45), such that the top cover and a bottom cover are configured to remain disconnected from each other (“separate pieces,” 0:20-0:22), without any form of connecting hinge, during use while the protective cover is mounted on the laptop computer and being operated (see screenshot at 1:11). The second material of the outer perimeter inherently has a hardness measured in durometer D with friction properties. The UZBL video shows that the second material is configured to frictionally engage the laptop computer such that the integral flange is configured to frictionally engage the screen portion of the laptop computer upon receiving the screen portion of the laptop computer (“the top piece I did experience a little bit of friction or resistance a little bit but I was able to get it on without using any type of lube or anything like that,” 0:38-0:45). The bottom cover has a planar bottom body and spaced apart inwardly extending tabs for mounting the planar bottom body onto the keyboard portion of the laptop computer (see screenshots at 0:54, 0:49 and 1:30 above). UZBL does not explicitly disclose that the first material of the planar top body is acrylic and the second material of the outer perimeter is thermoplastic polyurethane. However, Kim teaches a protective cover for an electronic device (protective shell 10, Fig. 3) comprising a planar body (back plate 14) constructed of acrylic (“preferably … transparent or translucent plastics such as … Acrylic,” ¶ 45) and an outer perimeter (side wall 16) constructed of thermoplastic polyurethane (“the back plate 14 is made of transparent or translucent plastic and the side wall 16 is made of thermoplastic polyurethane,” ¶ 43). Kim teaches that the transparent acrylic material protects the surface of the electronic device while leaving logos or emblems visible (¶¶ 2-5), and the thermoplastic polyurethane material of the side wall provides “secure and tight engagement of the protective shell with the electronic device” (¶ 7). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of UZBL by selecting acrylic as taught by Kim for the first material of the planar top body, in order to protect the laptop computer while leaving the logo visible as intended by UZBL, and by selecting TPU as taught by Kim for the second material of the outer perimeter, in order to ensure a secure and tight engagement of the top cover on the laptop computer. Claims 24-27, 46-47, and 49-51 rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Giazzon (U.S. Patent No. 10,585,450, hereinafter Giazzon). Regarding claims 24 and 49, UZBL teaches the claimed invention substantially as claimed, as set forth above for claims 23 and 48, respectively. UZBL does not explicitly disclose that the second material is thermoplastic polyurethane (TPU). However, Giazzon teaches a similar protective cover (10, Fig. 1) for a laptop computer (12), wherein the protective cover (10) includes a top cover (20) having a planar top body (main body 24) constructed of polycarbonate or similar rigid material (col. 3:11-13) and an outer perimeter (22) constructed of TPU (col. 3:5-11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protective cover of UZBL by selecting TPU as taught by Giazzon for the second material, so that the protective case is rugged and durable. Regarding claims 25 and 50, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claims 24 and 49, respectively. One of ordinary skill in the art would immediately recognize that the protective cover disclosed by UZBL, including the transparent top cover, is plastic. If there is any doubt that UZBL discloses plastic, Giazzon further teaches the planar top body (24, Fig. 1) is constructed of plastic, or specifically polycarbonate (col. 3:11-13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective cover of UZBL by selecting plastic or specifically polycarbonate as taught by Giazzon for the second material, so that the protective case is rugged and durable. Regarding claims 26 and 27, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 25. UZBL further discloses the outer perimeter comprises at least one cleft (claim 26), including a set of two or more clefts each comprising a gap (see screenshot at 0:26) (claim 27). Regarding claim 46, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 23. One of ordinary skill in the art would immediately recognize that the protective cover disclosed by UZBL is constructed from plastic, as broadly claimed. If there is any doubt that UZBL discloses plastic, Giazzon further teaches the protective cover is constructed of plastic, or specifically polycarbonate (col. 3:11-13). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective cover of UZBL by selecting plastic or specifically polycarbonate as taught by Giazzon for a material of the protective cover, so that the protective case is rugged and durable. Regarding claims 47 and 51, UZBL teaches the claimed invention substantially as claimed, as set forth above for claims 23 and 48, respectively. UZBL does not explicitly disclose that the first material is polycarbonate. However, Giazzon teaches a similar protective cover (10, Fig. 1) for a laptop computer (12), wherein the protective cover (10) includes a top cover (20) having a planar top body (main body 24) constructed of polycarbonate (col. 3:11-13) and an outer perimeter (22) constructed of TPU (col. 3:5-11). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the protective cover of UZBL by selecting polycarbonate as taught by Giazzon for the first material, so that the protective case is rugged and durable. Claims 28 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Giazzon, in further view of Ng et al. (U.S. Patent Pub. 2021/0126666, hereinafter Ng). Regarding claims 28 and 53, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claims 24 and 49, respectively. UZBL and Giazzon are silent with respect to the hardness of the TPU of the outer perimeter. However, in the art of protective cases for laptop computers, Ng teaches that preferred materials for an elastomeric shell include TPUs having a Shore D hardness of 30-100 (¶ 62), which includes the claimed range of 85-90. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective case of UZBL by selecting TPU having a hardness of 85-90D as taught by Ng for the second material, so that the protective case will be rugged and durable. Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Giazzon, in further view of Chiang (CN 109845235 A, hereinafter Chiang). Regarding claims 29, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 24. Giazzon further teaches that the first material of the top cover is made from “a rigid material such as polycarbonate” (col. 3:11-12). Giazzon does not specifically disclose that the rigid first material is PET, laminated tempered glass, TPE, or silicone. However, Chiang teaches that preferred rigid materials for the protective cover of an electronic device include polycarbonate, PET, and TPE. See English machine translation, pg. 4, lines 7-14. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of UZBL by selecting PET or TPE as taught by Chiang for the first material of the top cover, as a material known to be suitably rigid for providing impact protection. Claims 32, 33, and 57 are rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Hood (U.S. Patent No. 7,775,355, hereinafter Hood). Regarding claims 32 and 33, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 23. UZBL does not teach that the retention surface ridge of the bottom cover is a slide rail having a length that extends along an entirety of the first long edge (claim 32) and/or along an entirety of the sidewall (claim 33). However, Hood teaches a cover for a laptop computer (Figs. 1-2) comprising a bottom cover (keyboard cover portion 30) comprising a sidewall (second edge region 35) extending generally orthogonally to a planar bottom body (second panel 32) of the bottom cover (30) along two side edges and the first long edge, and a retention surface ridge that extends angularly from the sidewall (“forming a channel-shaped appendage,” as described at col. 6:15-21 with respect to the top cover, the second panel 32 and second edge region 35 of the bottom cover comprising “similar functionality, materials, and construction as the respective first panel 22 and first edge 25 portions of the aforementioned display screen cover 20,” col. 6:29-36), wherein the retention surface ridge is a slide rail (i.e., “a channel-shaped appendage” defined by the wrap-around edge region 35) which extends along an entirety of the sidewall, including an entirety of the first long edge (“located thereupon the outer three (3) edges of the display screen region,” col. 6:15-21, and similarly upon the outer three edges of the keyboard portion, see col. 6:33-36; the three edges including the long front edge and the two side edges). Hood teaches that this arrangement facilitates “a firm encasement” of an edge portion of the laptop computer (col. 6:20-21). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective case of UZBL by configuring the retention surface ridge as a slide rail having a length that extends along an entirety of the sidewall, including an entirety of the first long edge, as taught by Hood, in order to ensure that the bottom cover is firmly secured to the laptop computer. Regarding claim 57, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 23. UZBL further teaches the sidewall of the bottom cover has a length and the retention surface ridge is elongated and has a length (see, e.g., detail of Screenshot at 0:49 above). UZBL does not teach that the length of the retention surface ridge is at least equal to the length of the sidewall. However, Hood further teaches the length of the retention surface ridge is equal to the length of the sidewall (as a wrap-around edge region on the outer three edges of the keyboard portion; see col. 6:15-21 and 33-36). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the protective case of UZBL by configuring the retention surface ridge to have a length equal to the length of the sidewall, as taught by Hood, in order to ensure that the bottom cover is firmly secured to the laptop computer. 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. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Laura Davison/Reexamination Specialist, Art Unit 3993 Conferees: /PETER C ENGLISH/Reexamination Specialist, Art Unit 3993 /EILEEN D LILLIS/SPRS, Art Unit 3993 1 Source: https://web.archive.org/web/20210213220118/https://en.wikipedia.org/wiki/Shore_durometer 2 315 U.S. 668 (1942). 3 Criticality of the disclosed TPU material is supported by the fact that the TPU material is included in the Abstract, the Summary of the Invention (col. 2:1-29), and the Detailed Description of the Invention (col. 3:28-38), as well as in claim 1 as originally presented and ultimately allowed in the underlying patent. 4 Claims 24-29, 49-50, and 53 are not included in the enablement rejection because claims 24 and 49 recite the critical feature. Claims 25-29 depend from claim 24, and claims 50 and 53 depend from claim 49.