Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/18/26 has been entered.
EXAMINER’S AMENDMENT
An examiner’s amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Authorization for this examiner’s amendment was given in an interview with Chai Im on 6/23/26.
The application has been amended as follows: Claim 21, line 16; claim 26, line 19 and claim 39, line 2 replace “and” with - - or - -.
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 37 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.
The phase “the adaptive structure” set forth in claim 37, line 1 lacks positive antecedent basis.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 21, 25-26, 31-33, 35, 37, 39-40 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fisher et al. (US 2013/0220847 A1) in view of Guimond et al. (US2004/0031829 A1).
Re claim 21: Fisher et al. teaches a storage system for a handheld electronic device, comprising:
a housing (case (2)) member formed from an elastomeric material (such as rubber or plastic, paragraph [0081]) and configured to receive and secure to the handheld electronic device (cellular phone (1)), the housing member comprising a back panel and side walls (see figure 8A);
a storage compartment (99) formed on an exterior surface of the housing member, the storage compartment projecting outward from the back panel (see figures 1 and 8A) and defining a partially opened hollow region elongated along a length of the storage compartment ((figure 8A) providing a space therein for an accessory); wherein the elastomeric material of the housing member enables the storage compartment to elastically deform to adjust in a size or shape to retain an article inserted into the storage compartment (inherent property of a rubber material);
wherein the storage compartment projects outward from the back panel as a discrete raised compartment and comprises an aperture (figures 1 and 8A);
wherein a wall is provided at an end of the storage compartment to prevent the article from sliding entirely through or out of the storage compartment (see bottom portion of compartment 99 in figure 8A); and
wherein the article is at least one of a lip balm, lipstick, lip gloss, cigarette, or e- cigarette (paragraph [0086], cigarettes). Fisher et al, however does not teach that the storage compartment and housing are monolithically formed as a single, unitary piece as set forth. Guimond et al. teaches in a similar environment of storage housings to form these housings with compartments for accessories in a single piece using a molding process (paragraph [0049]) to allow for a single piece housing providing an elastically compressible feature for holding an accessary. It would have been obvious to one of ordinary skill in the art before the filing of the invention to incorporate such molding process taught in Guimond et al. in the teaching of Fisher et al. to predictably provide a single monolithic piece housing providing an elastically compressible feature for holding an accessary. Therefor the claimed subject matter would have been obvious before the filing of the invention.
Re claim 25: see teaching in paragraph [0015] of Fisher et al.; friction force to hold the accessary in housing
Re claim 26: Fisher et al. teaches a storage system for a handheld electronic device, comprising:
a housing member (case (2)) formed from an elastic material (such as rubber or plastic, paragraph [0081]) and configured to at least partially surround a back surface of the handheld electronic device (cellular phone (1));
a storage compartment (99) integral with and formed on a back panel of the housing member and defining an opening, the storage compartment projecting outward from the back panel (see figures 1 and 8A);
wherein the storage compartment comprises a partially opened hollow region along its length and an elastomeric wall that engages an inserted article; ((figure 8A) providing a space therein for an accessory);
wherein the elastic material of the housing member enables the storage compartment to adjust in a size or shape to retain the inserted article and for ease of installing the handheld electronic device into the housing member (inherent property of a rubber material);
at least one channel integrated with the storage compartment providing a pathway for accommodating the inserted article (channel formed by the structure arrangement of compartment (99), figure 8A);
one or more guide walls adjacent to the storage compartment configured to position a portion of the inserted article relative to the opening (note storage compartment (99) includes sidewalls for insertion of an accessary into an end opening); and
wherein the item is at least one of a lip balm, lipstick, lip gloss, cigarette, or e-cigarette (see paragraph [0086]. Fisher et al. however does not teach that the housing member is monolithically constructed with the storage compartment as a single, unitary piece of the elastic material. Guimond et al. teaches in a similar environment of storage housings to form these housings with compartments for accessories in a single piece using a molding process (paragraph [0049]) to allow for a single piece housing providing an elastically compressible feature for holding an accessary. It would have been obvious to one of ordinary skill in the art before the filing of the invention to incorporate such molding process taught in Guimond et al. in the teaching of Fisher et al. to predictably provide a single monolithic piece housing providing an elastically compressible feature for holding an accessary. Therefor the claimed subject matter would have been obvious before the filing of the invention.
Re claim 31: see teaching in paragraph [0015] of Fisher et al.; friction force to hold the accessary in housing
Re claim 32: as seen from figure s 1 and 8A of Fisher et al sidewalls of the housing member are used to retain a sidewall of an electronic device (1)
Re claim 33: Fisher et al teaches a storage system for a handheld electronic device, comprising:
a housing member (case (2)) shaped to engage and at least partially cover the handheld electronic device (1);
an integrated storage region (99), figures 1 and 8A) projecting outward from an exterior surface of a back portion of the housing member, the integrated storage region comprising an opening (located at the end of storage region (99);
a structure (at least side walls of storage region) associated with the integrated storage region and configured to retain an item (such as an accessory item);
one or more guides (edges at the end of the storage region) connecting the integrated storage region to the structure. Fisher et al. does not teach that the housing member is monolithically constructed as a single, unitary piece of an elastic material with the integrated storage region. Guimond et al. teaches in a similar environment of storage housings to form these housings with compartments for accessories in a single piece using a molding process (paragraph [0049]) to allow for a single piece housing providing an elastically compressible feature for holding an accessary. It would have been obvious to one of ordinary skill in the art before the filing of the invention to incorporate such molding process taught in Guimond et al. in the teaching of Fisher et al. to predictably provide a single monolithic piece housing providing an elastically compressible feature for holding an accessary. Therefor the claimed subject matter would have been obvious before the filing of the invention.
Re claim 35: as seen in Ficher et al. there is an aperture located at the end of the storage compartment allowing an accessary to be inserted (figure 8A).
Re claim 37: See paragraph [0015] of Fisher et al.
Re claim 39: See paragraph [0086] of Fisher et al.
Re claim 40: the limitations directed to the elastic material to adjust to a shape of an item is an inherit property of a rubber material used in Fisher et al.
Claim 38 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fisher et al. (US 2013/0220847 A1) in view of Guimond et al. (US2004/0031829 A1) as applied to claims 21, 25-26, 31-33, 35, 37, 39-40 above, and further in view of Singhal (US 2012/0264491 A1), on record.
Re claim 38: The teachings of Fisher et al. in view of Guimond et al. is discussed above and incorporated herein. This combination does not teach to place the aperture in a top right corner as set forth. Singhal teaches in a similar environment to include aperture in a top right corner; 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. It would have been obvious to one of ordinary skill in the art to include this teaching of Singhal into the arrangement of Fisher et al. in view of Guimond et al. to predictably provide access to storage pockets (compartments) that are located adjacent the top right corner of the housing. Therefor the claimed invention would have been obvious to a skilled artisan.
Claim 36 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Fisher et al. (US 2013/0220847 A1) in view of Guimond et al. (US2004/0031829 A1) as applied to claims 21, 25-26, 31-33, 35, 37, 39-40 above and further in view of Wadley et al. (US 2006/0011687 A1), on record.
Re claim 36: The teaching of Fisher et al. in view of Guimond et al. is discussed above and incorporated herein. This combination 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 Fisher et al. in view of Guimond et al. as applied 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 with respect to claim(s) 21,26 and 33 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. This newly applied art is in response to the amendments made to each of the independent claims.
Conclusion
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/ANDREW SNIEZEK/Primary Examiner, Art Unit 2693
/A.S./Primary Examiner, Art Unit 2693 6/24/26
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