DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5, 6, 8, 9, 14, 15, 17, 15, and 19 of U.S. Patent No. 12367360. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants, wherein re claim 9 of the instant Application, the heat shield is read on by the dissipating rivet of Patent claim 15.
Claim 1 of the instant Application recites “A casing… a first portion… attach to a mobile device… includes an internal battery… scan an image… image contains a decodable indicia… external battery in the second portion… powers the scanning device and charges the internal battery…” wherein claim 1 of the ‘360 Patent recites “…casing… partially enclose a mobile device… includes an internal battery… scan an image… images comprises a decodable indicia… external battery in the casing… powers the scanning device and charges the internal battery…”. The Examiner has interpreted that the casing which encloses the device is interpreted to have the recited first and second portions, wherein the portion of the casing not including the scanning device and external battery (second portion), is interpreted as the first portion, and is interpreted as configured to attach. Claim 2 of the instant Application recites “top cover… bottom cover… between…” wherein claim 5 of the ‘360 Patent recites “top cover… bottom cover…” wherein it would have been obvious to one of ordinary skill in the art prior to the effective filing date that top and bottom covers render the device between. Claim 3 of the instant Application recites “… input opening… unobstructed…” wherein claim 6 of the ‘360 Patent recites “… input opening… unobstructed…”. Claim 4 of the instant Application recites “… ergonomically curved shape…” wherein claim 8 of the ‘360 Patent recites “… ergonomically curved shaped…”. Claim 5 of the instant Application recites “casing… parallel… 15 degree angle” wherein claim 9 of the ‘360 Patent recites “casing… parallel… 15 degree angle”. Claim 6 of the instant Application recites “… scan button… depressed…” wherein claim 14 of the ‘360 Patent recites “… scan button… depressed…”. Claim 7 of the instant Application recites “… belt rivet…” wherein claim 15 of the ’360 Patent recites “… belt rivet…” Claim 8 of the instant Application recites “… standby button…” wherein claim 17 of the ‘360 Patent recites “… standby button…”. Claim 9 of the instant Application recites “… heat shield… deflect heat…” wherein claim 15 of the ‘360 Patent recites “… belt rivets… dissipate heat from the casing.” which is interpreted to obviate deflecting heat away as recited. Claim 10 of the instant Application recites “… (ABS)… (PC).” Wherein claim 19 of the ‘360 Patent recites “… (ABS)… a rigid polymer, and rubber.”, wherein PC interpreted as a rigid polymer.
Appropriate correction is requested.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-6 and 8-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee (US 8346979).
Re claim 1, Lee teaches:
A casing comprising:
a first portion (205 and/ or see FIG. 7A+)configured to attach a mobile device, wherein the mobile device includes an internal battery (though silent, a smart phone is interpreted to be obvious to have a battery as known in the art for usage as col 2, lines 35+ teaches charging a phone, thus obviating a battery of the phone to be charged);
a second portion comprising a scanning device (204/206/220), wherein, in an operational configuration in which the mobile device is attached to the casing, the scanning device is configured to scan an image and output data to the mobile device (performing barcode reading as Lee teaches the scanning device is connected via a Bluetooth connection, thus obviating outputting data to the mobile device), wherein the image contains decodable indicia (barcode as discussed above); and
an external battery in the second portion, wherein the external battery is in electrical communication with the scanning device and the internal battery of the mobile device, and wherein the external battery powers the scanning device and charges the internal battery of the mobile device (supplemental battery pack is within the sled and allows a user to charge the phone using the battery pack within the sled per col 2, lines 38+). Though silent to explicitly stating that the battery of the attachment also powers the attachment, it would have been obvious to one of ordinary skill in the at the time the invention was made, to also power the scanning device (itself) in order for it to be able to function, noting that it even has power on/ off switches 103/ 122 to turn the device on/ off, and wherein after its turned on it can be paired with the mobile device, thus obviating powering itself.
Re claim 2, FIG. 7C teaches a top and bottom cover via the rails and planar base section which go on top of the phone and bottom of the phone.
Re claim 3, FIG. 7C shows openings in the top cover portion.
Re claim 4, FIG. 7A+ shows curved shaped on the bottom, interpreted as the second portion.
Re claim 5, FIG. 7A+ shows that the housing is angled with respect to the front window of the scanner. Though silent to 15 degrees, the selection of an angle value (optimum value/ range) when an angle is taught is within the ordinary skill in the art to ease of use/ ease of reading/ design variation that involves only routine skill in the art and not unexpected results. An image held in front of the casing (parallel) would be at an angle to the portable device, wherein the selection of the angle would be obviated for ease of use.
Re claim 6, input button 3b reads on such limitations.
Re claim 8, openings have been discussed above re claim 3. The Examiner notes that it would have been obvious to one of ordinary skill in the art at the time the invention was made, that such openings provide access to power/ standby buttons for expected results, as Lee teaches lateral rails with openings therein that are operable to provide access to input buttons on phones/ mobile devices, wherein the type of buttons such as volume, power, standby, etc. are selections within the ordinary skill in the art based on the input desired.
Re claim 9, contact points have not been defined in the claim. Therefore, the casing can be interpreted to function as a heat shield as recited.
Re claim 10, though silent to PC and ABS, the Examiner note that it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to use a preferred material(s) for the expected benefits, such as low cost, durability, weight, etc., especially as plastic is taught for the housing, the selection of a known type of material for expected results (durability, performance, cost) is within the ordinary skill in the art, as the general conditions of a plastic are taught.
Claims 7 and 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee, as discussed above, in view of Conti et al. (US 20090168337).
Re claim 7, the teachings of Lee et al. have been discussed above but are silent to belt rivets.
Conti et al. teaches the use of rivets as fasteners (paragraph [0035]+).
At the time the invention was made, it would have been obvious to one of ordinary skill in the art to combine the teachings to use known techniques for fastening for expected results.
Re claim 9, belt rivets are interpreted to function as a heat shield to dissipate/ deflect heat.
Response to Arguments
Applicant's arguments filed have been fully considered but they are moot given the teachings of Lee above, and Examiner has removed/ replaced the rejection to Yashiki et al. with the art to Lee, above. The double patenting rejection is also maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Paik can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL I WALSH/Primary Examiner, Art Unit 2876
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