IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`In re Application of:
`
`Andrew C. Mason
`
`Serial No.: 12/856,223
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`Filed: August 13,2010
`
`VIA ELECTRONIC FILING
`
`April 11,2013
`
`For: PROTECTIVE FILM APPLICATION
`
`KIT AND METHOD
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`Group Art Unit: 3728
`
`Examiner: B. Gehman
`
`Confirmation No.: 1608
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`Attorney Docket No.: 26613-3005USI2
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`AMENDMENT
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`Commissioner for Patents
`
`United States Patent and Trademark Office
`
`Washington, DC. 20231
`
`Examiner:
`
`This Amendment follows the Office Action of October 11, 2012.
`
`A listing of the claims, in which revisions to the claims are presented, begins on page 2 of
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`this paper; and
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`Remarks start at page 6 of this paper.
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`SLC71366486.1
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`IN THE CLAIMS:
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`1.
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`(Currently amended) A kit for protecting a surface of an electronic device,
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`comprising:
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`a
`
`E‘t-ii‘i'r-flll’l’l sheet \\
`
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`gova specific size and shape corresponding to a size and shape of a
`
`surface of an electronic device the film sheet is configured to protect;
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`an adhesive layer on one side of the film sheet;
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`a peel—away cover film impermanently secured to the adhesive layer; and
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`an application element for removing air bubbles between the film sheet and a surface of an
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`electronic device as the film sheet is applied to the electronic device.
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`2.
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`(Previously presented) The kit of claim 1, wherein the peel—away cover film
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`includes two portions and perforations defining a boundary between the two portions, each
`
`portion of the two portions being configured to be peeled away from the adhesive layer without
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`disturbing another portion of the two portions.
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`3.
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`(Previously presented) The kit of claim 1, further comprising:
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`a liquid solution.
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`4.
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`(Previously presented) The kit of claim 1, wherein the application element has a
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`contact edge length smaller than a largest linear dimension of the surface of the electronic
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`device.
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`5.
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`(Previously presented) The kit of claim 1, wherein the film sheet has a thickness
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`of 0.5 thousandths of an inch to 20 thousandths of an inch.
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`6.
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`(Previously presented) The kit of claim 1, further comprising:
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`a package for containing at least one of the film sheet and the application element.
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`7.
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`(Previously presented) The kit of claim 3, further comprising:
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`a package for containing at least one of the film sheet, the liquid solution and the application
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`element.
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`8.
`
`9.
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`(Previously presented) The kit of claim 1, comprising a plurality of film sheets.
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`(Currently amended) A combination electronic device and a kit for protecting a
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`surface of the electronic device, the combination comprising:
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`an electronic device with a surface having a specific size and shape; and
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`a kit, including:
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`
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` a \\\film sheet has Qua specific size and shape that corresponds to the specific
`
`
`
`size and shape of the surface of the electronic device;
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`an adhesive layer on one side of the film sheet;
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`a peel—away cover film impermanently secured to the adhesive layer;
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`an application element for removing air bubbles between the film sheet and a surface of
`
`an electronic device as the film sheet is applied to the electronicdevice; and
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`a package for carrying the application element and the ‘\\\\f1l1’1’1 sheet with the adhesive
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`layer and the peel—away cover film.
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`10.
`
`(Previously presented) The combination of claim 9, wherein the peel—away cover
`
`film includes two portions and perforations defining a boundary between the two portions, each
`
`portion of the two portions being configured to be peeled away from the adhesive layer without
`
`disturbing another portion of the two portions.
`
`ll.
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`(Previously presented) The combination of claim 9, wherein the kit further
`
`includes:
`
`a liquid solution.
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`12.
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`(Previously presented) The combination of claim 9, wherein the application
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`element has a contact edge length smaller than a largest linear dimension of the surface of the
`
`electronic device.
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`13.
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`(Previously presented) The combination of claim 9, wherein the film sheet has a
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`thickness of 0.5 thousandths of an inch to 20.0 thousandths of an inch.
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`14.
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`(Previously presented) The combination of claim 9, wherein the kit further
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`includes:
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`a package for containing at least one of the film sheet and the application element.
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`15.
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`(Previously presented) The combination of claim ll, wherein the kit further
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`includes:
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`a package for containing at least one of the film sheet, the liquid solution and the
`
`application element.
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`16.
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`(Previously presented) The combination of claim 9, comprising a plurality of film
`
`sheets.
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`17.
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`(Currently amended) A method for protecting a screen of an electronic device,
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`comprising:
`
`
`
`between the film sheet and the screen;
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`moving the film sheet to achieve registration between the film sheet and the screen;
`
`pinning the film sheet to the screen;
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`peeling a first portion of the cover sheet away from the film sheet to expose an adhesive;
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`pressing the adhesive to the screen to adhere part of the film sheet to the screen and to fiX
`
`registration between the film sheet and the screen;
`
`4
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`with a portion of the film sheet adhesively secured to the screen, lifting a non—adhered part of the
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`film sheet away from the screen while peeling away a remainder of the cover sheet to
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`expose a remainder of the adhesive; and
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`pressing the adhesive of the non—adhered part of the film sheet to the screen.
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`18.
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`(Previously presented) The method of claim 17, further comprising:
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`pressing an application element into contact with the screen in a manner to as sure intimate
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`contact between the film sheet and the screen and to eliminate air bubbles between the
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`film sheet and the screen.
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`19.
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`(Previously presented) The method of claim 17, further comprising:
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`while pinning the film sheet to the screen, lifting one edge of the film sheet away from the screen
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`20.
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`(Currently amended) The method of claim 19, wherein pinning the film sheet to
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`the screen comprises \\\¥\‘\\\
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`the screen
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`REMARKS
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`The Office Action of October ll, 2012, has been received and reviewed.
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`Claims l—20 are currently pending and under consideration in the application. Each of
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`claims l—20 has been rejected.
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`Claims 1, 9, l7 and 20 have been amended. The amendments to these claims are made
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`without prejudice or disclaimer.
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`Reconsideration of the application is respectfully requested.
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`Rejections under 35 U.S.C. § 112
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`Claims l—l6 and 20 stand rejected under 35 U.S.C. § 112, first paragraph, for purportedly
`
`failing to comply with the written description requirement. Specifically, the Office has asserted
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`that the as—filed specification does not provide an adequate written description for the “precut
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`film” recited by independent claims 1 and 9.
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`It is respectfully submitted that paragraph [0018] of the as—filed specification provides
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`support for a “precut film sheet.” Specifically, paragraph [0018] discloses film sheets 20 that are
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`“cut to the exact size of the electronic display screen 5 or other surface that they are to be
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`mounted onto so that no cutting and minimal fitting steps are necessary. . .” In any event, in an
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`effort to advance prosecution of the application, independent claims 1 and 9 have been revised to
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`replace “precut film sheet having a specific size and shape. . .” with “film sheet cut to a specific
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`size and shape. . .” to more closely follow the language used in paragraph [0018] of the as—filed
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`specification. It is respectfully submitted that the revised language does not narrow the scope of
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`independent claim 1, the scope of independent claim 9 or the scope of any claim that depends
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`from either independent claim 1 or independent claim 9.
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`Claim 20, which depends from independent claim 17, was rejected under the written
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`description requirement of the first paragraph of 35 U.S.C. § 112 for reciting that “pinning”
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`comprises “non—adhesively securing” a film sheet to a screen. It is respectfully submitted that
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`paragraph [0023] of the as—filed specification discloses pinning a film sheet 20 “in place by
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`manual pressure. . .,” which indicates that the film sheet 20 is non—adhesively secured in place.
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`Regardless, in an effort to advance prosecution of the application, claim 20 has been amended to
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`recite that “pinning” comprises “applying manual pressure” to the film sheet to hold it to the
`
`6
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`screen, as expressly disclosed in paragraph [0023] of the as—filed specification. It is respectfully
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`submitted that the amendment to claim 20 does not narrow the scope of claim 20.
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`In view of the foregoing, withdrawal of the 35 U.S.C. § 112, first paragraph, written
`
`description rejections of claims 1—16 and 20 is respectfully solicited, as is the allowance of each
`
`of these claims.
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`Rejections under 35 U.S.C. § 102
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`Claims 17—19 have been rejected under 35 U.S.C. § 102(b).
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`A claim is anticipated only if each and every element, as set forth in the claim, is found
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`either expressly or inherently described in a single reference that qualifies as prior art under
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`35 U.S.C. § 102. Verdegaal Brothers v. Union Oil Co. ofCalifornia, 2 USPQ2d 1051, 1053
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`(Fed. Cir. 1987). That reference must show the identical invention in as complete detail and in
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`the same arrangement as that contained in the claim. Net MoneyIn, Inc. v. Verisign,
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`545 F.3d 1359, 1369—70 (Fed. Cir. 2008) (emphasis supplied); Richardson v. Suzuki Motor Co.,
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`9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
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`
`Thomas
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`Claims 17—19 have been rejected under 35 U.S.C. § 102(b) for being drawn to subject
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`matter that is allegedly anticipated by the subject matter disclosed by U.S. Patent Application
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`Publication No. 2004/0246386 of Thomas et al. (hereinafter “Thomas”).
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`As amended, independent is drawn to a method that includes removing a film sheet that
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`has been cut to a specific size and shape corresponding to a size and shape of a surface of an
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`electronic device the film sheet is configured to protect from a package; placing the film sheet
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`into contact with a screen of the electronic device with a cover sheet between the film sheet and
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`the screen; moving the film sheet to achieve registration between the film sheet and the screen,
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`pinning the film sheet to the screen, peeling a first portion of the cover sheet away from the film
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`sheet to eXpose an adhesive; pressing the adhesive to the screen to adhere part of the film sheet to
`
`the screen and to fiX registration between the film sheet and the screen; with a portion of the film
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`sheet adhesively secured to the screen, lifting a non—adhered part of the film sheet away from the
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`screen while peeling away a remainder of the cover sheet to expose a remainder of the adhesive;
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`and pressing the adhesive of the non—adhered part of the film sheet to the screen.
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`Support for the recitation of removing a film sheet that has been cut to a specific size and
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`shape corresponding to a size and shape of a surface of an electronic device the film sheet is
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`configured to protect from a package is provided in paragraphs [0018], [0022] and [0023] of the
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`as—filed specification. Thomas does not expressly or inherently describe a method in which a film
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`sheet that has been cut to a specific size and shape is removed from a package.
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`Furthermore, Thomas describes a method for protecting a display screen of an electronic
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`device in which a backing sheet 14 is completely removed from an overlay sheet 12 before the
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`overlay sheet 12 is positioned over a display screen of an electronic device. Paragraphs [0043]
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`through [0045]; FIGs. 3e through 3g. Thus, as soon as the overlay sheet 12 is positioned against
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`the display screen, it adheres to the display screen. In contrast, in the method of independent
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`claim 17, at least a portion of a cover sheet, or backing, remains in place on a film sheet as the
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`film sheet is secured to a screen of an electronic device. More specifically, independent claim 17
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`recites that, with a portion of the film sheet adhesively secured to the screen, a non—adhered part
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`of the film sheet is lifted away from the screen while a remainder of the cover sheet is peeled
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`away from the film sheet to expose a remainder of the adhesive.
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`Therefore, Thomas does not anticipate each and every element of amended independent
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`claim 17, as would be required for the Office to maintain its Thomas—based 35 U.S.C. § 102(b)
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`rejection of independent claim 17.
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`Claims 18 and 19 are both allowable, among other reasons, for depending from
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`independent claim 17, which is allowable.
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`Liu
`
`The Office has also rejected claims 17—19 under 35 U.S.C. § 102(b) for reciting subject
`
`matter that is purportedly anticipated by the subject matter described by U.S. Patent 6,660,388 to
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`Liu et al. (hereinafter “Liu”).
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`In rejecting claims 17—19, the Office has apparently relied upon Example 39 of Liu. In
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`Example 39, Liu discloses that a “hand—trimmed” screen protector may be “pressed into place
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`over the screen of [a] PDA, [sic] using the edge of a credit card to assist in removing air bubbles
`
`8
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`from under the film.” Col. 22, lines 44—50. A screen protector is hand—trimmed to fit on a surface
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`of an electronic device could not, when removed from a package, already be cut to a specific size
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`and shape that corresponds to a size and shape of a surface of an electronic device that the screen
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`protector is configured to protect.
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`In addition, Liu does not teach or suggest “peeling a first portion of [a] cover sheet away
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`from [a] film sheet to expose an adhesive. . .” Instead, the description of Liu is limited to
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`removing a screen protector from another screen protector or from a backing of a stack of screen
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`protectors. Col. 7, lines 20—23.
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`Moreover, because the screen protectors of Liu are provided in a stack, the method
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`described by Liu appears to be very similar to the method described by Thomas; i.e., the
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`adhesive on each screen protector is totally exposed before the screen protector is positioned
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`over and secured to the screen of an electronic device. Col. 22, lines 47—49. In the method of
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`independent claim 17, at least a portion of a cover sheet, or backing, remains in place on a film
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`sheet as the film sheet is secured to a screen of an electronic device. In particular, independent
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`claim 17 recites that, with a portion of the film sheet adhesively secured to the screen, a
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`non—adhered part of the film sheet is lifted away from the screen while a remainder of the cover
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`sheet is peeled away from the film sheet to expose a remainder of the adhesive. Liu does not
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`provide any express or inherent description of a method in which one portion of a film sheet is
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`adhesively secured to a screen of an electronic device while a cover sheet remains on another,
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`non—adhered part of the film sheet.
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`Therefore, Liu does not anticipate each and every element of amended independent
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`claim 17, as would be required for the Office to maintain its Liu—based 35 U.S.C. § 102(b)
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`rejection of amended independent claim 17.
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`Both claim 18 and claim 19 are allowable, among other reasons, for depending from
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`independent claim 17, which is allowable.
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`Rejections under 35 U.S.C. § 103(a)
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`Claims 1, 2, 4, 5, 6, 9, 10, 12—14, 19 and 20 have been rejected under 35 U.S.C. § 103(a).
`
`There are several requirements in establishing a prima facie case of obviousness against
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`the claims of a patent application. All of the limitations of the claim must be taught or suggested
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`by the prior art. In re Royka, 490 F.2d 981, 985 (CCPA 1974); see also MPEP § 2143.03. Even
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`then, a claim “is not proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc, 82 USPQ2d 1385, 1396
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`(2007). The Office must also establish that one of ordinary skill in the art would have been able
`
`to predict that the purported modification or combination of reference teachings would have been
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`successful. In re Merck & C0., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). There must “be some
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`articulated reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” Id., quoting In re Kahn, 441, F.3d 977, 988 (Fed. Cir. 2006). That reason must be
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`found in the prior art, common knowledge, or derived from the nature of the problem itself, and
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`not based on the Applicant’s disclosure. DyStar Textilfarben GmbH & C0. Deutschland KG v.
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`C. H. Patrick C0., 464 F.3d 1356, 1367 (Fed. Cir. 2006). A mere conclusory statement that one
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`of ordinary skill in the art would have been motivated to combine or modify reference teachings
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`will not suffice. KSR at 1396.
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`Thomas
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`Claims 1, 2, 4, 5, 9, 10, 12, 13, 19 and 20 stand rejected under 35 U.S.C. § 103(a) for
`
`being directed to subject matter that is assertedly not patentable over the subject matter taught by
`
`Thomas.
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`Independent claim 1, as amended, is directed to a kit for protecting a surface of an
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`electronic device. That kit includes, among other things, a film sheet cut to specific size and
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`shape, which correspond to a size and shape of a surface of an electronic device the film sheet is
`
`configured to protect.
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`Independent claim 9 is drawn to a combination of an electronic device and a kit for
`
`protecting a surface of the electronic device. Like the kit of independent claim 1, the kit of
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`independent claim 9 includes a film sheet with “a specific size and shape that correspond to the
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`specific size and shape of the surface of the electronic device.”
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`Thomas describes a kit for protecting the display screens of portable electronic devices.
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`That kit includes a shield assembly 10 comprising a transparent overlay sheet 12 with a
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`transparent adhesive 18 on its backside, and a backing sheet 14 that protects the transparent
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`adhesive 18 prior to using the overlay sheet 12. Paragraph [0034]; Fle. 1 and 3e. The backing
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`10
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`sheet 14 may include a sizing grid 20, which provides a reference guide for cutting the shield
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`assembly 10 and, thus, the overlay sheet 12. Paragraphs [0035] and [0036]. Neither the shield
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`assembly 10 nor the overlay sheet 12 has pre—customized dimensions or a pre—customized
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`configuration. Paragraph [0036].
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`Thomas teaches away from film sheets that are cut to specific size and shape that
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`correspond to the size and shape of a surface of an electronic device such a film sheet is
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`configured to protect. For example, Thomas, at paragraph [0006], teaches that conventional
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`overlays are undesirable because they “typically fit only specific electronic devices, resulting in
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`an almost indefinite number of such customized overlays” and require the “purchase of a
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`different customized overlay for each electronic device” where an individual has “multiple
`
`different electronic devices” in need of protection. Further, at paragraph [0036], Thomas teaches
`
`that a customizable screen protector eliminates “the need to purchase separate pre—customized
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`screen protectors for each electronic device. . .”
`
`Since Thomas teaches away from the modification that has been asserted by the Office, it
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`is respectfully submitted that the teachings of Thomas do not support a prima facie case of
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`obviousness against independent claim 1, against independent claim 9 or against any of their
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`dependent claims.
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`The Office has rejected claims 1, 4, 5, 8, 9, 12, 13, 16, 19 and 20
`
`L_iu
`
`under 35 U.S.C. § 103(a) for reciting subject matter that is purportedly not patentable over the
`
`teachings of Liu.
`
`Each of independent claims 1 and 9 recites a film sheet with adhesive layer on one side
`
`thereof and a peel—away cover film impermanently secured to the adhesive layer.
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`In contrast, Liu teaches a stack of screen protectors that are adhesively secured to one
`
`another and to a backing. Liu touts this arrangement as being “a much more convenient mode of
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`storage than the typical storage mode for current PDA screen protector products sold as single
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`sheets.” Col. 7, lines 20—23. Thus, Liu teaches away from individual film sheets with peel—away
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`covers on their adhesive layers.
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`Since Liu teaches away from the subject matter recited by independent claim 1 and by
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`independent claim 9, it is respectfully submitted that there would have been no reason for one of
`
`ordinary skill in the art to rely upon the teachings of Liu in the manner that has been asserted by
`
`the Office, and that a prima facie case of obViousness has, therefore, not been established against
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`independent claim 1 or independent claim 9.
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`Claims 4, 5 and 8 are each allowable, among other reasons, for depending from
`
`independent claim 1, which is allowable.
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`Each of claims l2, l3 and 16 is allowable, among other reasons, for depending from
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`independent claim 9, which is allowable.
`
`Claims 19 and 20 are both allowable, among other reasons, for depending from
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`independent claim 17, which is allowable.
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`Thomas or Liu in View of Simmons or Fox
`
`Claims 2 and 10 are rejected under 35 U.S.C. § 103(a) for being drawn to subject matter
`
`that is allegedly unpatenable over teachings from Thomas or Liu, in View of teachings from U.S.
`
`Patent 2,906,397 to Simmons (hereinafter “Simmons”) or in View of teachings from U.S.
`
`Patent 2,095,437 to Fox (hereinafter “Fox”).
`
`Claim 2 is allowable, among other reasons, for depending from independent claim 1,
`
`which is allowable, while claim 10 is allowable, among other reasons, for depending from
`
`independent claim 9, which is allowable.
`
`Thomas or Liu in View of King, Krezanoski or Blackburn
`
`The Office has rejected claims 6 and 14 under 35 U.S.C. § 103(a) for being directed to
`
`subject matter that is purportedly not patentable over the subject matter taught by Liu or King, in
`
`View of teachings from U.S. Patent 5,922,427 to King (hereinafter “King”), U.S.
`
`Patent 3,086,647 to Krezanoski (hereinafter “Krezanoski”) or U.S. Patent 2,742,145 to
`
`Blackburn et al. (hereinafter “Blackburn”).
`
`Claim 6 is allowable, among other reasons, for depending from independent claim 1,
`
`which is allowable, while claim 14 is allowable, among other reasons, for depending from
`
`independent claim 9, which is allowable.
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`CONCLUSION
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`It is respectfully submitted that each of claims 1—20 is allowable. An early notice of the
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`allowability of each of these claims is respectfully solicited, as is an indication that the
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`above—referenced application has been passed for issuance. If any issues preventing allowance of
`
`the above—referenced application remain which might be resolved by way of a telephone
`
`conference, the Office is kindly inVited to contact the undersigned attorney.
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`Respectfully Submitted,
`
`[brick g power/
`
`Brick G. Power
`
`Registration Number 38,581
`Attorney for Applicant
`DURHAM JONES & PINEGAR, P.C.
`INTELLECTUAL PROPERTY LAW GROUP
`
`111 East Broadway, Suite 900
`Salt Lake City, Utah 84110
`Telephone: (801) 415—3000
`
`Date: April ll, 2013
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`BGP/kh
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