DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Note
The Examiner acknowledges the amendments of claims 1 & 10, as well as the cancellation of claims 8 & 12. Claims 1 – 7, 9 – 11, & 13 – 15 are examined herein.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 5, 7, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et al. (JP 2014-213481A), in view of Chang et al. (*WO 2020/023022 A1) and Chuang et al. (**WO 2020/159528 A1).
*Submitted by Applicant with IDS filed 6/13/2023
**Submitted by Applicant with IDS filed 4/29/2025
With regard to claims 1 & 10, Iguchi et al. teach an electronic device housing (i.e., “cover”) (and manufacturing method thereof) (paragraph [0002]) having a layered structure, wherein the electronic device cover comprises a base material formed of a magnesium-based metal member (i.e., “a substrate comprising magnesium” (paragraph [0008]), a chemical conversion-treated layer disposed on the substrate (paragraphs [0034] – [0036]); an innermost coating film formed of epoxy-based resin (i.e., “a bending supplemental layer disposed on the first chemical conversion-treated layer”), an outermost layer formed of a UV cured acrylic-based resin (i.e., “a cured ultraviolet molding layer”) (paragraph [0023]).
Iguchi et al. teach a coating film disposed on the base material, wherein the coating film has two or more layers including the innermost layer and the outermost layer (paragraph [0014]). The coating film may be colored and transparent (paragraph [0010]). However, Iguchi et al. do not explicitly teach at least one of the layers is a color layer disposed between the epoxy-based resin layer (i.e., “the bending supplemental layer”) and the UV cured acrylic based resin layer.
Chang et al. (‘022) teach a device housing comprising a magnesium-alloy substrate, treatment layer, metallic coating layer, paint coating layer (i.e., “color layer”), and a top coating layer (paragraph [0077] & Figs. 1 & 6). The paint coating layer may include one of a base coating layer, a clear coating layer, a primer coating layer, and combination thereof. The base coating layer may provide a colored texture to the device housing (paragraphs [0055] – [0056]). The top coating layer may include acrylate resin (paragraph [0060]).
Therefore, based on the teachings of Chang et al., it would have been obvious to one of ordinary skill in the art to incorporate a paint coating layer between beneath acrylate-based UV-cured top layer taught by Iguchi et al. in order to provide a colored texture to the device housing.
Iguchi et al. and Chang et al. (‘022) fail to teach at least one area of the UV molding layer comprises a spire pattern.
Chuang et al. teach a cover for electronic devices comprising a UV radiation-cured layer (620) (paragraph [0038]) that includes a three-dimensional pattern impressed into the radiation-cured coating layer. A three-dimensional pattern can be designed may include geometric designs (paragraph [0039]). As shown in Fig. 6B, the three-dimensional pattern is portrayed as a cross-section of the structure comprising two-dimensional triangles. One of ordinary skill in the art would reasonably conclude a cross-section (2D) image of triangles suggests the three-dimensional patterns are cones or pyramids (i.e., “spire-shaped”).
PNG
media_image1.png
352
742
media_image1.png
Greyscale
Therefore, based on the teachings of Chuang et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a three-dimensional pattern of any geometric design impressed into the UV radiation-cured coating taught by Iguchi et al. in order to mimics decorative designs on the surface of the electronic device as desired.
With regard to claim 2, as discussed above for claim 1, Iguchi et al. teach the bending supplemental layer comprises an epoxy-based polymer.
With regard to claim 3, Iguchi et al. do not teach a metal deposition layer disposed between the bending supplemental layer and the color layer.
Chang et al. teach a metallic coating layer provides metallic luster and/or a glossy surface to the device housing (paragraph [0045]) disposed beneath the paint coating layer (i.e., “color layer”). The metallic coating layer may be made of material selected from tin, aluminum, and titanium (paragraph [0047]).
Therefore, based on the teachings of Chang et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to incorporate a metallic coating layer between the bending supplemental layer taught by Iguchi et al. and the paint coating layer taught by Chang et al. for providing metallic luster and/or a glossy surface to the device housing.
With regard to claim 4, Iguchi et al. teach the UV cured layer (i.e., “molding layer”) comprises at least one bifunctional monomer selected from the group consisting of hydroxypropyl acrylate (HPA) and and 2-hydroxyethyl methacrylate (2-HEMA) (paragraph [0025]).
With regard to claim 5, Iguchi et al. teach the coating has a hardness of 3H, which is harder than F (Table 6). Therefore, the UV molding layer has hardness of pencil hardness of F or higher.
With regard to claim 7, Iguchi et al. do not explicitly teach both the bending supplemental layer and the UV molding layer are crack-free.
However, the epoxy-based layer taught by Iguchi et al. and Applicant’s epoxy-based bending supplemental layer are both formed by electrodeposition method and similar thickness (see discussion of claim 9 above). As such, the inner layer taught by Iguchi et al. and Applicant’s bending supplemental layer are formed of similar composition and thickness. One of ordinary skill in the art would expect the layer of the prior art of similar composition and thickness to have similar crack-free properties.
Furthermore, the acrylate-based inner layer taught by Iguchi et al. may be cured by ultraviolet radiation (paragraph [0023]) and Applicant’s acrylate-based UV molding layer is cured by UV radiation.
The acrylate-based layer and Applicant’s UV molded layer are of similar composition and cured by similar method. Therefore, one of ordinary skill in the art would expect the layers to inherently have similar crack-free properties.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
With regard to claim 9, Iguchi et al. do not teach a cut portion of the magnesium-based substrate.
Chang et al. teach a cutting edge of the treatment layer and the substrate to form a chamfer (i.e., “a cut portion”) to form a slope or edge of a housing for a device (paragraphs [0063] & [0093]). Chang et al. teach a second passivation layer (106) disposed on the second portion (206) (i.e., “cut portion of the substrate” (104)) to prevent corrosion (paragraphs [0020] – [0022]). See Fig. 2 below.
PNG
media_image2.png
648
780
media_image2.png
Greyscale
Therefore, based on the teachings of Chang et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a chamfered (i.e., cut) portion of a substrate in order to form a slope or edge of a housing for an electronic device, and to apply a passivation layer on said edge in order to prevent corrosion of the cut metal substrate portion.
Iguchi et al. teach a means for applying a resin coating material, such as the innermost layer composed of epoxy-based resin (i.e., “a bending supplemental layer disposed on the first chemical conversion-treated layer”), include electrodeposition coating method (paragraph [0055]). The epoxy-based resin provides corrosion resistance (paragraph [0012]).
Similar to the other layers of Fig. 2 taught by Chang et al. above, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the innermost layer composed of epoxy-based resin taught by Iguchi et al. to the chamfered (“cut”) second portion of the substrate discussed above for providing corrosion resistance to the second (chamfered) portion.
Iguchi et al. teach the chemical conversion layer is composed of zirconium oxide (paragraph [0036]).
Iguchi et al. teach the innermost layer composed of epoxy-based resin has a thickness of 5 µm or more and 50 µm or less (paragraph [0033]), which includes Applicant’s claimed range of 10 – 20 µm. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 14, Chang et al. teach the metallic coating layer may be applied to the layered structure comprising the magnesium-based substrate and passivation layer (i.e., after forming the bending layer taught by Iguchi et al.) by physical vapor deposition (PVD) (paragraphs [0082] & [0092]).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et al., Chang et al. (‘022), & Chuang et al., as applied to claim 1 above, and further in view of Wasserfallen et al. (US 2013/0344310 A1).
With regard to claim 6, Iguchi et al. do not teach the first chemical conversion-treated layer comprises at least one selected from the group consisting of magnesium chromate, magnesium oxide, aluminum oxide, silicon oxide, and titanium oxide.
Wasserfallen et al. teach an anticorrosion coating for metallic surfaces (paragraphs [0004] & [0055]), such as magnesium alloy surfaces (paragraph [0056]). The coating includes an activation coating that may be a composition based on salts of chromate or zirconium (Zr) compounds (paragraph [0027]). The salts of the activation coating are commonly both anionic and cationic for the coating, wherein cationic salts include ammonium, magnesium, calcium, aluminum, zinc, zirconium and anionic salts include chromate, dichromate, and oxide (paragraphs [0078], [0080] – [0081], [0108], [0110]).
It would have been obvious to one of ordinary skill in the art to substitute the zirconium oxide chemical conversion-treated layer taught by Iguchi et al. with a known equivalent for the same purpose of protecting a magnesium-based substrate. Based on the teachings of Wasserfallen et al., known equivalents of zirconium oxide for activating a magnesium substrate surface for corrosion protection include salts of magnesium, ammonium, calcium, aluminum, or zinc with chromium. See MPEP 2144.06.II.
Allowable Subject Matter
Claims 10 – 11 & 13 – 15 are allowed.
The following is an examiner’s statement of reasons for allowance:
The limitations of previous claim 12 have been incorporated into independent claim 10. As discussed in the non-final rejection mailed 8/22/2025, the subject matter of claim 12 was allowable for the reasons previously stated.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant argues, “Claim 15 is amended to address the objection. Accordingly, it is respectfully requested that the objection be withdrawn” (Remarks, Pg. 6).
EXAMINER’S RESPONSE: In light of the amendment of claim 15, the objection of claim 15 has been withdrawn.
Applicant argues, “As discussed during the interview of October 16, 2025, the Examiner acknowledge that the amended features to claim 1 may overcome the currently cited references…Although Chuang appears to disclose or suggest a cracked pattern 132 of a radiation-cured coating layer 130, Chuang does not disclose that the cracked patter 132 is a spire-shaped pattern. Accordingly, it is respectfully submitted that Chuang fails to disclose or suggest ‘at least one of the UV molding layer comprising a spire-shaped pattern on an upper surface of the UV molding layer,’ as recited in amended claim 1” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: The Examiner stated she did not see a disclosure of spires in the Chuang et al. reference. However, after taking a closer look at the Chuang et al. reference (previously cited for rejecting claim 8), it can be clearly seen from Figs. 6B – 6B that Chuang suggests cones or pyramids (i.e., “spires”) are a preferred embodiment of the disclosed geometric design for the three-dimensional pattern of the UV-cured layer (650).
Applicant argues, “Further, independent claim 10 is amended to incorporate the subject matter of allowable claim 12. Accordingly, claim 10 is now believed to be in condition for allowance” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: As discussed above, method claims 10 – 11 & 13 – 15 are allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781