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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 4, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
The examiner notes that the April 4 IDS does not include all of the references listed on the face of the ‘199 patent. The examiner has considered the references cited during the original prosecution of the patent. Any reference again cited/applied in this reissue application is listed on the PTO-892 form included herewith. Should applicant wish to ensure that all of the references cited in the original patent are considered and cited in the reissue application, an IDS which lists all of the previously cited references should be filed in this reissue application. See MPEP §§ 609 and 1406.
Matters of Form
The amendments to the specification and claims filed April 4, 2025, are objected to as failing to comply with 37 CFR 1.173(b) and (d). Amendments in reissue must show all changes made relative to the patent with omitted text enclosed in single brackets and added text underlined. See MPEP § 1453. The amendments are improper because omitted text is shown in strikethrough and double brackets.
The drawings filed April 4, 2025, are objected to as failing to comply with 37 CFR 1.173(a)(2), which requires that Applicant must submit a clean copy of each drawing sheet of the printed patent. The submitted drawing sheets are not those of the printed patent (as they lack the header information printed at the top of each drawing sheet of the printed patent).
The Abstract filed April 28, 2025, is objected to because the second page of the patent is missing.
Reissue Oath/Declaration
The reissue declarations filed with this application are defective because they fail to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. As explained in MPEP § 1414, subsection II(C), “Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error” (emphasis added). The error statement must identify at least a single word, phrase, or expression in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.
In addition, the two reissue declarations filed by the two joint inventors differ in content (having different error statements), and both of the reissue declarations purport to be signed by the “sole or first inventor” without acknowledging the joint inventor. A corrected reissue declaration should be filed listing the second inventor on a supplemental sheet (PTO/AIA /10), and the box at the bottom of page 2 of the reissue declaration form (PTO/AIA /05) should be checked. (See screenshot below.)
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The corrected reissue declaration should be signed by both inventors, either as a single document or as two identical copies of the same document.
Additionally, the examiner notes that, when completing the corrected reissue declaration, the box on pg. 1 should be checked to indicate that the specification “was filed on April 4, 2025 as reissue application number 19/170,585."
Claim Rejections - 35 USC § 251 - Reissue Declaration
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-22 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the reissue declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Recapture
Claims 1-22 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 1-22 are broader in scope than patent claim 1.
Independent reissue claims 1 and 13 do not require the following limitations which were present in all of the patent claims:
the planar top body being constructed of acrylic (reissue claim 1 replacing “acrylic” with “a first material,” and reissue claim 13 replacing “acrylic” with “acrylic or polycarbonate”); 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 6 and 17 reintroduce thermoplastic polyurethane having a hardness of 85-90D, claims 6 and 17 are still broader than patent claim 1 because the first material remains broadened to include “acrylic or polycarbonate” (as recited in dependent claim 2 and independent claim 13).
Therefore, step 1 of the three-step test is met for reissue claims 1-22.
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 claims 1-22 are broadened with respect to patent claim 1 to omit the acrylic material of the planar top body (by broadening to include generally “a first material” in claim 1, or to include polycarbonate in claim 13) and the thermoplastic polyurethane material of the outer perimeter. Reissue claims 1-22 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 1-22.
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 1 and 13 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 1-22 improperly recapture surrendered subject matter.
Claim Rejections - 35 USC § 251 - Original Patent
Claims 1-22 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.1 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 1 and 13 and more specifically recited in dependent claims 2-7, 12, and 13-18. 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 (as broadly encompassed by claims 1 and 13 and specifically recited in claims 12 and 22).
Claim Rejections - 35 USC § 251 - New Matter
Claims 2-7 and 12-22 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 2-7 and 12-22 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 2 and 13, the subject matter not supported by the original disclosure is “the first material is … polycarbonate.” The original disclosure describes “a protective cover that includes 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.” Col. 2:19-22. With respect to polycarbonate, 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 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 3-7 are rejected in view of their dependency from claim 2. Claims 14-22 are rejected in view of their dependency from claim 13.
Further regarding claims 7 and 18, the original disclosure also does not provide sufficient written description support for “the second material is polyethylene terephthalate (PET), thermoplastic elastomer (TPE), or silicone.” While PET, TPE, and silicone are mentioned in the generic list of materials at col. 2:19-22, cited above, this listing of materials does not provide sufficient written description support for the specific combination of a planar top body made of acrylic or polycarbonate and an outer perimeter made of PET, TPE, or silicone.
Further regarding claims 12 and 22, the original disclosure also does not provide sufficient written description support for “the first material is … polycarbonate” and “the second material is … polyethylene terephthalate (PET), thermoplastic elastomer (TPE), or silicone.” As discussed above, 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. The generic list of materials in the specification, noted above, does not provide sufficient written description support for a specific combination of different materials now recited in claim 12.
Claim Rejections - 35 USC § 112(a) - Scope of Enablement
Claims 1-2, 7-13, and 18-22 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. 18/104,968.2 The disclosed critical feature is missing from claims 1-2, 7-13, and 18-22.3 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 8-9 and 19-20 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.
Regarding claims 8-9 and 19-20, the limitation “the integral flange” renders the claims indefinite, because the claims describe two integral flanges (the integral flange of the top cover and the integral flange of the bottom cover) and it is unclear which integral flange is being referred to in each instance.
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 1 and 8-11 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 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 below).
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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 a tab or an integral flange configured for mounting the planar bottom body onto the keyboard portion of the laptop computer (see detail of screenshots at 0:49 and 1:30, annotated below).
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Regarding claims 8 and 9, UZBL further teaches the bottom cover has an integral flange, and a gap portion (see screenshot 1:30 above) is provided at the integral flange of the bottom cover configured for access to a drive or port on the laptop computer when the bottom cover is mounted on the computer (claim 8); wherein the integral flange has a first upwardly extending sidewall with the gap portion (see screenshot 1:30 above) and further comprising a second upwardly extending sidewall (on the opposite side of the bottom cover) having a similar second 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 9).
Regarding claim 10, UZBL further teaches the bottom cover has a single continuous integral flange (i.e., the flange shown in screenshot 1:30 above, which extends continuously toward the front of the bottom cover) configured to slidingly receive the keyboard portion (“to put them on your MacBook Air you need to slide them on the bottom portion of the MacBook Air,” 0:28-0:34; demonstrated in video at 0:41-0:49).
Regarding claim 11, UZBL further teaches the bottom cover has a first tab (see screenshot 0:49 above), a second tab, and a third tab (see screenshot at 1:11, where at least two additional tabs are visible, similar to the first tab).
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.
Claims 2-5, 7, 13-16, and 18-21 are 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 2-3 and 7, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 1. UZBL does not explicitly disclose that the first material is acrylic or polycarbonate and the second material is TPU, PET, TPE, or silicone. 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) (claim 2), and an outer perimeter (22) constructed of TPU (col. 3:5-11) (claim 3), TPE (col. 3:9), or silicone (col. 3:10) (claim 7). 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, and TPU, TPE, or silicone as taught by Giazzon for the second material, so that the protective case is rugged and durable.
Regarding claims 4 and 5, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 3. UZBL further teaches the outer perimeter comprises at least one cleft comprising a gap (see screenshot at 0:26) (claim 4), specifically, a set of two or more clefts (see id.) (claim 5). (See also Giazzon, which discloses a similar “set of clefts 36 on the inner edge of the corners 32,” col. 3:24-28, Fig. 2.)
Regarding claim 13, 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 above) 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, a bottom edge, and a pair of side edges (i.e., defining four-sided shape), a downwardly extending wall (at upper corners) extending downwardly from the top edge and from the pair of side edges (permitting the screen portion to slide into the top cover; see video at 0:30-0:40), and a slide rail extending 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 to frictionally engage the screen portion of the laptop computer so that the top cover is configured to not slide off without sustained force being applied consistent with an intentional effort by a user to pull the top cover from the screen portion, 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).
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 (“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 a tab or an integral flange configured for mounting the planar bottom body onto the keyboard portion of the laptop computer (see detail of screenshots at 0:49 and 1:30, annotated above).
The top cover and the bottom cover are configured to mount to the laptop computer without a hinge interconnecting the top cover and the bottom cover (“two separate pieces,” audio at 0:20-0:22).
UZBL does not explicitly disclose that the first material is acrylic or 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 or similar rigid material (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 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.
Regarding claims 14 and 18, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 13. UZBL does not explicitly disclose that the second material is TPU, PET, TPE, or silicone. However, Giazzon further teaches an outer perimeter (22) constructed of TPU (col. 3:5-11) (claim 14), TPE (col. 3:9), or silicone (col. 3:10) (claim 18). 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, TPE, or silicone as taught by Giazzon for the second material, so that the protective case is rugged and durable.
Regarding claims 15 and 16, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 14. UZBL further teaches the outer perimeter comprises at least one cleft comprising a gap (see screenshot at 0:26) (claim 15), specifically, a set of two or more clefts (see id.) (claim 16). (See also Giazzon, which discloses a similar “set of clefts 36 on the inner edge of the corners 32,” col. 3:24-28, Fig. 2.)
Regarding claims 19 and 20, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 13. UZBL further teaches the bottom cover has an integral flange, and a gap portion (see screenshot 1:30 above) is provided at the integral flange of the bottom cover configured for access to a drive or port on the laptop computer when the bottom cover is mounted on the computer (claim 19); wherein the integral flange has a first upwardly extending sidewall with the gap portion (see screenshot 1:30 above) and further comprising a second upwardly extending sidewall (on the opposite side of the bottom cover) having a similar second 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 20).
Regarding claim 21, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 13. UZBL further teaches the bottom cover has a first tab (see screenshot 0:49 above), a second tab, and a third tab (see screenshot at 1:11, where at least two additional tabs are visible, similar to the first tab).
Claims 6 and 17 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 6 and 17, the modified UZBL teaches the claimed invention substantially as claimed, as set forth above for claims 3 and 14, 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 hardness of 30-100D (¶ 62), which includes the claimed range of 85-90D. 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.
Claims 12 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over UZBL in view of Giazzon and Hood (U.S. Patent No. 7,775,355, hereinafter Hood).
Regarding claim 12, UZBL teaches the claimed invention substantially as claimed, as set forth above for claim 1. UZBL does not explicitly disclose that the first material is acrylic or polycarbonate, the second material is TPU, PET, TPE, or silicone, and the downwardly extending wall that extends downwardly from the top edge and side edges is continuous.
However, with respect to the first and second materials, 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), TPE (col. 3:9), or silicone (col. 3:10). 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, and TPU, TPE, or silicone as taught by Giazzon for the second material, so that the protective case is rugged and durable.
With respect to the continuous arrangement of the downwardly extending wall, Hood teaches a cover for a laptop computer (Figs. 1-2) comprising a top cover (display screen cover 20) having a planar top body (first panel 22) and an outer perimeter with a continuous downwardly extending edge (first edge 25) that extends downwardly from top and side edges of the planar top body but is not provided at the bottom edge (“integrally molded wrap-around first edge region 25 located thereupon the outer three (3) edges of the display screen region forming a channel-shaped appendage,” col. 6:15-23). 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 making the downwardly extending wall continuous, as taught by Hood, in order to ensure that the top cover is firmly secured to the laptop computer.
Regarding claim 22, the modified UZBL teaches the claimed invention substantially as claimed, including the first material being polycarbonate as taught by Giazzon, as set forth above for claim 13. With respect to the second material, Giazzon further teaches an outer perimeter (22) constructed of TPU (col. 3:5-11), TPE (col. 3:9), or silicone (col. 3:10). 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 TPU, TPE, or silicone as taught by Giazzon for the second material, so that the protective case is rugged and durable.
UZBL and Giazzon do not explicitly disclose that the downwardly extending wall that extends downwardly from the top edge and side edges is continuous. However, Hood teaches a cover for a laptop computer (Figs. 1-2) comprising a top cover (display screen cover 20) having a planar top body (first panel 22) and an outer perimeter with a continuous downwardly extending edge (first edge 25) that extends downwardly from top and side edges of the planar top body (“integrally molded wrap-around first edge region 25 located thereupon the outer three (3) edges of the display screen region forming a channel-shaped appendage,” col. 6:15-23). 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 making the downwardly extending wall continuous, as taught by Hood, in order to more firmly secure the top cover to the laptop computer.
Claim Objections
Claim 12 is objected to because of the following informalities:
In claim 12, line 4, it appears that “the extends” should read --that extends--.
Appropriate correction is required.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification does not provide clear antecedent basis for the term “gap” used in new claims 4 and 15. It appears to the examiner that Applicant is using the term “gap” as generally synonymous with the term “cleft” used in the specification and claims. The plain meaning of the term “cleft” is “a split or indentation between two parts.” American Heritage® Dictionary of the English Language, definition 2. The clefts (27) are illustrated in Figs. 1 and 3 as gaps within the corners (25). Thus, the examiner recognizes that clefts which are gaps were disclosed in the drawings. However, the specification should be amended to provide clear antecedent basis for the term “gap” now introduced into the claim (e.g. by specifying that the cleft is a gap as illustrated in Figs. 1 and 3).
Conclusion
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 315 U.S. 668 (1942).
2 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.
3 Claims 3-6 and 14-17 are not included in the enablement rejection because claims 3 and 14 recite the critical feature. Claims 4-6 depend from claim 3, and claims 15-17 depend from claim 14.
Prosecution Insights