UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`16/325,167
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`02/12/2019
`
`Tomoyuki KURIYAMA
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`254712000003
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`5685
`
`759°
`698°
`TROUTMAN SANDERS LLP
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`03/06/2020
`
`600 Peachtree St., NE, Suite 3000
`Atlanta, GA 30308
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`HELVEY' PETER N'
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`ART UNIT
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`3734
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`03/06/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`jim. schutz @ troutmansanders .Com
`patents @ troutmansanders . com
`ryan. sehneider@ troutmans anders . com
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`16/325,167
`Examiner
`PETER N HELVEY
`
`Applicant(s)
`KU RIYAMA, Tomoyuki
`Art Unit
`AIA (FITF) Status
`3734
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 2/12/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`flis/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 1_—6 is/are rejected.
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 2/12/2019 is/are: a). accepted or b)C] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200220
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`

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`Application/Control Number: 16/325,167
`Art Unit: 3734
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
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`2.
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Priority
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`Claim Rejections - 35 USC § 102
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`3.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`4.
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`The following is aquotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1 ) the claimed inventionwas patented, described in a printed publication, or in public use,
`on sale orothenNise available to the public before the effective filing date of the claimed
`invention.
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`5.
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`Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated
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`by JPS5919377.
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`

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`Application/Control Number: 16/325,167
`Art Unit: 3734
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`Page 3
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`JP85919377 discloses a file comprising: a cover body comprises a first cover
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`section (2) and a second cover section (4), and the first cover section and the second
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`cover section are rotatable relative to each other so as to face each other (see Figs. 1,
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`2), a pocket body attached to the cover body comprises: a storage part (7) arranged to
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`extend from the first cover section to the second cover section and allowing storage of
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`an item to be stored (see Fig. 3), an opening part for putting the item to be stored into
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`the storage part and taking out the stored item from the storage part (gap between 2
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`and 7, see Fig. 3), and a held part located external to the storage part in a plan view
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`(see Fig. 1), wherein the cover body includes a holding member (8) provided to at least
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`one of the first cover section and the second cover section and holding the held part
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`movably.
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`JP85919377 further discloses the holding member is provided to one of the first
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`cover section and the second cover section (see Fig. 1); pocket body includes a fixed
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`part fixed to the other cover section (5); and the cover body includes a spine section
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`provided between the first cover section and the second cover section to be continuous
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`with the first cover section and the second cover section via a hinge part (A, see Fig. 2).
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`Claim Rejections - 35 USC § 103
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`6.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention maynotbe obtained, notwithstanding that the claimed
`invention is not identicallydisclosed as set forth in section 102, if the differences between the
`claimed invention and the priorartare such that the claimed invention as awhole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in which the invention was made.
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`

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`Application/Control Number: 16/325,167
`Art Unit: 3734
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`Page 4
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`7.
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`Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`JP85919377.
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`JP85919377 discloses all limitations of the claim(s) as detailed above except
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`does not expressly disclose the second holding member as claimed.
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`However,
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`it is noted that duplicating a part of an already known invention to
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`provide multiple of the same component is a modification which was well within the level
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`of ordinary skill in the art since before the filing date of applicant’s invention.
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`It would have been obvious to one having ordinary skill in the art at the time the
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`invention was made to provide a second holding member as claimed, since it has been
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`held that mere duplication of the essential working parts of a device involves only
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`routine skill in the art.
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`In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
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`8.
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`Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`JP85919377 as applied to claim 1 above, and further in view of lVloor (US 6382864).
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`JP85919377 discloses all limitations of the claim(s) as detailed above except
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`does not expressly disclose the insertion hole/inserted part as claimed.
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`However, Moor teaches a similar folder wherein the held part includes an
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`insertion hole (60), the holding member includes an inserted part (62) inserted in the
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`insertion hole, and the length of the insertion hole in one direction is greater than the
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`length of the inserted part in the one direction (see Fig. 3).
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`At the time of the invention,
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`it would have been obvious to a person having
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`ordinary skill
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`in the art to add the insertion hole/insertion parts taught by lVloor to the
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`

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`Application/Control Number: 16/325,167
`Art Unit: 3734
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`Page 5
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`folder taught by JP85919377,
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`in order to securely retain the contents therein as taught
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`by Moor.
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`Conclusion
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`9.
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure.
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`10.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to PETER N. HELVEY whose telephone number is
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`(571)270-1423. The examiner can normally be reached on Monday-Friday 10am-7pm
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`EST.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Nathan Newhouse can be reached on 571-272-4544. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
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`273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`

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`Application/Control Number: 16/325,167
`Art Unit: 3734
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`Page 6
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
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`272-1000.
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`/PETER N HELVEY/
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`Primary Examiner, Art Unit 3734
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`March 3, 2020
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