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 .
The amendment filed December 4, 2025 has been entered.
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 20 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 phrase “wherein the RF transparent material is:” renders claim 20 indefinite because it is unclear how the transparent material is being limited.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-13, 15 and 18-20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by Gupta (US 2017/0176835) or, in the alternative, under 35 U.S.C. 103 as obvious over Gupta (US 2017/0176835) in view of Elia (US 2010/0239801).
Claims 1 and 20: Gupta disclose an electronic device (100) including a monolithic body of an RF transparent material at least partially defining an internal volume, wherein the RF transparent material is continuous throughout the monolithic body (frame 1310; fig. 13; ¶ 110); a nanograin plating positioned on an outer surface of the monolithic body (¶ 110); a communication device positioned in the internal volume under the outer surface of the monolithic body, the communication device configured to wirelessly communicate via RF signals (wireless communication interface 1512; ¶ 116); an RF window of the monolithic body positioned adjacent the communication device, wherein the RF window is a portion of the monolithic body in which the nanograin coating is not present on the outer surface of the RF transparent material (fig. 13; ¶ 110). Gupta does not explicitly disclose that the nanograin plating is applied via electroplating. However, it has been held that even though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. See In re Thorpe, 227 USPQ 964. Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or only slightly different from that of the prior art, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the product of the prior art.
Alternatively, Elia discloses an electronic device (abstract). The device includes a monolithic body of an RF transparent material at least partially defining an internal volume, wherein the RF transparent material is continuous throughout the monolithic body (claim 1); a nanograin electroplated coating positioned on an outer surface of the body (claim 4; ¶ 32). As taught by Elia, electroplating a nanograin coating is the preferred method for coating materials (¶ 29). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have electroplated the nanograin metal plating of Gupta because electroplating these materials is the preferred method for coating materials, as taught by Elia.
Claim 2: Gupta discloses the RF transparent material of the monolithic body is continuous across the RF window (fig. 13).
Claim 3: Elia discloses the RF transparent material is a polymer (claim 1).
Claim 4: Gupta discloses the nanograin coating is a metallic coating (¶ 110).
Claim 5: Gupta discloses that metal plating 1312 on the plastic frame 1310 functions as an electrically conductive grounding layer to cover glass support structure 1110 (¶ 110).
Claim 6: Elia discloses a structural rigidity of the monolithic body and the nanograin coating is at least twice that of a structural rigidity of the monolithic body alone (claim 1).
Claim 7: Gupta discloses the RF transparent material is nonconductive (¶ 110).
Claim 8: Gupta discloses the device includes a body panel (front cover glass 105).
Claim 9: Gupta discloses the body panel partially defines an internal volume of the device (figs. 3, 13, 15).
Claim 10: Gupta discloses the internal volume of the device includes processor element 1504 (¶ 117).
Claims 11-12: Gupta discloses that metal plating 1312 on the plastic frame provides EM shielding (¶ 112).
Claims 13 and 15: Gupta discloses the communication device being a wireless antenna (¶ 43).
Claim 18: Elia discloses the material includes a thermoplastic (claim 1).
Claim 19: Elia discloses the nanograin coating is less than 1 micrometer (¶ 32).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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