Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings were received on 11/20/25. These drawings are acceptable.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.
The changes made to 35 U.S.C. 102(e) by the American Inventors Protection Act of 1999 (AIPA) and the Intellectual Property and High Technology Technical Amendments Act of 2002 do not apply when the reference is a U.S. patent resulting directly or indirectly from an international application filed before November 29, 2000. Therefore, the prior art date of the reference is determined under 35 U.S.C. 102(e) prior to the amendment by the AIPA (pre-AIPA 35 U.S.C. 102(e)).
Claim(s) 21-23, 25-26, 31-33, 35, 37 and 38 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Singhal (US 2012/0264491 A1).
Re claim 21: Singhal teaches a storage system (figure 1A, 1B) for a handheld electronic device (such as a smart phone (paragraph [0016]), comprising: a housing member (10) configured to receive and secure to the handheld electronic device (paragraph [0016]) with the housing including a back panel and side walls as depicted in figure 1A; a storage compartment that is monolithically formed by the use of materials such as rubber, paragraph [0019] that includes multiple pockets, paragraph [0017] defining opened hollow region(s) for items to be stored therein (such as lipstick (24)); wherein the housing member is formed from an elastomeric material (paragraph [0019]) allowing the storage compartment to adjust in a size or shape to retain the item (See discussion in paragraph [0019] allowing for a snug fit by using elasticized material); wherein a wall (such as the partition wall between lipstick (24) and comb (28) that prevents the article from sliding entirely though or out of the compartment and wherein the item is at least one of a lip balm, lipstick, lip gloss cigarette, and e- cigarette (satisfied by lipstick 24).
Re claim 26: Singhal teaches a storage system (figures 1A, 1B) for a handheld electronic device (such as a smart phone (paragraph [0016]), comprising: a housing member (10) configured to at least partially surround a back surface of the handheld electronic device (paragraph [0016] along with figure 2); a storage compartment integral with and formed (multiple pockets, paragraph [0017-0018]) formed proximate to the back panel and defining an opening; wherein the housing member is monolithically constructed with the storage compartment by the use of materials such as rubber, paragraph [0019] wherein the storage compartment comprises a partially hollow region along its length and an elastomeric wall that is compressively engages an inserted article (See arrangement in figure 1A along with paragraph [0019] by the use of elasticized material to retain an item (See discussion in paragraph [0019] allowing for a snug fit by using elasticized material); wherein the station is tubular in shape (See figure 1A, along with paragraphs ([0032] and [[0035] teaching rectangular cylinder; i.e. tube); at least one channel (area between partitions (11)) integrated with the storage compartment providing a pathway for accommodating the item; with end wall portions of the partitions used to position an article in the opening and wherein the item is at least one of a lip balm, lipstick, lip gloss cigarette, and e- cigarette (satisfied by lipstick 24).
Re claim 33: Singhal teaches a storage system (figures 1A, 1B) for a handheld electronic device (such as a smart phone (paragraph [0016]) comprising: a housing member (10) shaped to engage and at least partially cover the handheld electronic device (that portion that attaches to the backside of a smart phone); an integrated storage region (multiple pockets, paragraph [0017]) formed in a back portion of the housing member, the integrated storage region comprising an opening; a structure associated with the integrated storage region and configured to retain an item (by use of partitions, discussed in paragraph [0019]); one or more guides (end portions of partitions) connecting the integrated storage region to the adaptive structure; wherein the housing member is monolithically constructed (by use of suitable materials, paragraph [0019]); wherein the housing member is formed of an elastic material allowing the integrated storage region to adjust in a size or shape to retain the item (See teaching of elasticized material used in paragraph [0019]) and wherein the item is at least one of a lip balm, lipstick, lip gloss cigarette, and e- cigarette (satisfied by lipstick 24).
Re claim 22: (see paragraph [0019], by use of suitable materials)
Re claim 23, 35: note each pocket including pocket (24) has an open end (aperture) allowing for an accessary item to be inserted.
Re claims 25, 31 and 37: the claimed friction fit is satisfied by the snug fit feature discussed in paragraph [0019]
Re claim 32: note the housing member (10) includes a back panel portion and side walls (see discussion in paragraph [0018] providing structure including frame to hold a smart phone.
Re claim 38: See figures 1A in which each storage pocket includes an aperture allowing for a corresponding item to be inserted with at least one aperture located proximate a top right corner portion
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.
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.
Claims 36 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Singhal in view of Wadley et al. (US 2006/0011687 A1).
Re claim 36: The teaching of Singhal is discussed above and incorporated herein. Singhal however does not include a cover as set forth. Wadley et al. teaches in a similar environment of storage systems to include a “door or lid” such as covers (17) to allow an aperture of a storage compartment to be opened or closed for access. It would have been obvious to one of ordinary skill in the art to incorporate lid covers as taught by Wadley et al. on the apertures for the storage compartments in Singhal to predictably allow an aperture of a storage compartment to be opened or closed for access. Therefor the claimed subject matter would have been obvious to a skilled artisan.
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive.
Applicant argues that Singhal does not teach a storage region that elastically deforms to adjust in size and shape to retain an article. Examiner does not agree. The material used in Singhal for these storage areas are made from an elasticized material, paragraph [0019] which by the definition of elasticized meaning to allow for stretch. This characteristic of stretch allows for as set forth to deform to adjust in size and shape of an article. Also, just because these partitions in Singhal allow for a change in shape due to the use of elasticized material, doesn’t mean that the partitions cannot provide support and structure to a case. Clearly in Singhal the partitions allow for both support and structure of the case while allowing for a change in shape to adjust in size and shape of an article. Also, although the partitions in Singhal are used to form the storage compartments, these partitions are integral with the housing member as seen from figure 1A with the housing member being monolithically formed by a material such as rubber.
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 ANDREW SNIEZEK whose telephone number is (571)272-7563. The examiner can normally be reached Monday-Friday 7:00 AM-3:30 PM EST.
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/ANDREW SNIEZEK/ Primary Examiner, Art Unit 2693
/A.S./Primary Examiner, Art Unit 2693 12/15/25