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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 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…”
Claims 2-10 of the instant Application, respectively recite “top cover”, “unobstructed”, “second portion”, “15 degree”, “scan button”, “belt rivet”, “standby button”, “battery life”, “heat”, and “(ABS)”, wherein claims 5, 6, 8, 9, 14, 15, 17, 15, and 19 of the Patent recites “top cover”, “unobstructed”, “ second portion”, “15 degree”, “scan button”, “belt rivet”, “standby button”, “battery life”, “heat”, and “(ABS)”
Appropriate correction is requested.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitations "the top cover” and “the bottom cover" in lines 2+. There is insufficient antecedent basis for this limitation in the claim.
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 9-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yashiki et al. (US 2014009995).
Re claim 1, Yashiki et al. teaches:
A casing comprising:
a first portion configured to attach a mobile device, wherein the mobile device includes an internal battery (a first portion is interpreted as such as near 3/5/6 (FIG. 1) and wherein the mobile device is taught at 10 (FIG. 1) and has a battery);
a second portion comprising a scanning device, 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, wherein the image contains decodable indicia (FIG. 3, step S102+ and S104+ wherein a barcode is read from the connected terminal 10 per paragraphs [0049], [0052], [0069]), and the second portion is interpreted as the portion of the near the read port 2b where a barcode is read from a paper feed, such as but not limited to the body except for the first portion 5, for example, and though silent to the reader being “in” the second portion, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to have the reader “in” the second portion/ have the second portion house the reader, as one of a plurality of possible orientations for the scanner with respect to the inserted document (top and bottom), wherein it would have been obvious to do so to choose of the known possible solutions such as for design variation, ease of use, space for electronics, desired reading orientation of document, etc.); 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 (charging control unit 74 controls charging of a battery of the portable terminal 10 paragraph [0059] and paragraph [0037]] teaches a battery can be applied as a power supply of the scanner device 1 and that a battery is also the power supply of the scanner device 1). Thus, the power supply (battery) of the scanner device (1) is taught as being applied to power the scanner device 1 and to functioning as a charging unit of the portable terminal 10.
Re claim 2, the casing has a top and bottom of the housing and thus has a top and bottom cover. For example, the front raised lip at the top of (2) and the mounting portion (6) can be the top and bottom covers, respectively, with the deice between them.
Re claim 3, the top cover of device 10 (casing) has an input opening such as connector 5 so that the mobile device is unobstructed when connected (FIG. 1).
Re claim 4, the second portion has a (the bottom base of 1 is the second portion) is curved/ shaped to facilitate support by a user.
Re claim 5, the mobile device is held at an angle (FIG. 1+), and while 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.
Re claim 6, input button 3b reads on such limitations.
Re claim 9, heat can also be deflected from the back 6 which supports the device 10 and heat from the rear of the device, for example. Contact points have not been defined, so the presence of the backing can read on such limitations.
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, prior to the effective filing date, to use a preferred material(s) for the expected benefits, such as low cost, durability, weight, etc.
Claims 7 and 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Yashiki et al., as discussed above, in view of Conti et al. (US 20090168337).
Re claim 7, the teachings of Yashiki et al. have been discussed above but are silent to belt rivets.
Conti et al. teaches the use of rivets as fasteners (paragraph [0035]+).
Prior to the effective filing date, 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.
Claims 1-6 and 8-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee (US 20130013813) in view of Yashiki et al., as discussed above.
Lee teaches a first portion with an internal battery (FIG. 7A+ such as 234/205 to connect to a mobile device with an internal battery);
A second portion with a scanning device to scan an image and output data to the mobile device including decodable indicia (FIG. 7C and barcode scanner 204/214);
An external battery in the second portion in communication the scanning device and internal battery of the mobile device (paragraph [0041]+ and 223 wherein there is USB connector for both sled and mobile device charging and paragraph [0008]+ which teaches a supplemental battery back in the sled to charge the mobile device battery in the sled that allows a user to charge the smart phone port that connects the sled) but is silent to the external battery both powering the scanning device and charging the mobile device. Paragraph [0044]+ and FIG. 9 teaches charging both the reader and the mobile device itself.
Yashiki et al. teaches such limitations as discussed above wherein the external battery powers the scanning device and charges the mobile device.
Prior to the effective filing date, it would have been obvious to one of ordinary skill in the art to combine the teachings for more convenience of providing recharging power to both devices, especially as Lee teaches charging the mobile device via a battery in the sled and also teaches charging the sled itself (both needing charging) and therefore selecting one of a plurality of possible ways to effect such powering/ charging, would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to meet specific charging/ powering needs/ priorities.
Re claim 2, fig. 7C+ teaches a top and bottom cover that at least partially cover the top and bottom.
Re claim 3, input openings are in the top cover such as the side openings on the top cover (FIG. 7C), wherein the top of the casing is interpreted as a bottom cover and the rails are the top cover (FIG. 7C).
Re claim 4, FIG. 1B+ teaches curved shapes, as does Yashiki et al., as discussed above.
Re claim 5, a 15 degree angle has been discussed above, such as for imaging convenience.
Re claim 6, button 200 reads on such limitations and also has been taught above with Yashiki et al.
Re claim 8, the limitations of a mobile device which are not germane to the casing. Nonetheless, the openings on the side of FIG. 7C are interpreted as meeting the structural limitations to enable access to a standby button (button) of a mobile device, such as a power button. The selection of where a well-known standby/ power button (on a side of a mobile device) is to be located is an obvious matter of design variation, within the ordinary skill in the art, prior to the effective filing date, for usability, convenience, etc., and while not teaching a standby button, the Examiner notes that the claims are toward the casing, and not the mobile device, and thus such limitations are not germane to the device. Nonetheless, the prior art teaches an opening that allows for such a button to be accessed, and thus meets the prior art structural requirements.
Re claim 9, heat can also be deflected from the top (FIG. 7A+) which supports the device and heat from the rear of the device, for example. Contact points have not been defined, so the presence of the backing can read on such limitations.
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, prior to the effective filing date, to use a preferred material(s) for the expected benefits, such as low cost, durability, weight, etc.
Claims 7 and 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lee/. Yashiki, as discussed above, in view of Conti et al., as discussed above.
Re claim 7, the teachings of Lee/ Yashiki have been discussed above but are silent to belt rivets.
Conti et al. teaches the use of rivets as fasteners (paragraph [0035]+).
Prior to the effective filing date, 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 not persuasive. Yashiki, as discussed above, is interpreted to read on powering the scanning device and charging the battery of the mobile device, as claimed.
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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