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 .
DETAILED ACTION
This office action is in response to the claims received on 5/27/2026.
Claim Interpretation
Claim 11 is interpreted as: 11. (currently amended): A cover window comprising:
a base member including glass or plastic;
a first print layer directly formed on a first surface (interpreted as "a surface") of the base member; and
a second print layer directly formed on a second surface (interpreted as "a surface") of the first print layer (the claim doesn't require a "first surface" of the first print layer; therefore, "a second surface" could be any surface), the first print layer and the second print layer each comprising a same color pigment (this doesn't have the same meaning as "the first print layer comprises a same color pigment as the second print layer". A reference having print layers of different color pigments could still meet the claim) and a resin material, wherein
the second print layer comprises an opening exposing (claimed "exposing" is broad in the sense that the claim doesn't limit the exposing to light, air, heat, etc.) the second surface of the first print layer, an entirety of the opening overlaps the second surface of the first print layer,
the first print layer and the second print layer have a same color (this doesn't have the same meaning as "the first print layer has a same color as the second print layer ". A reference having print layers of different colors could still meet the claim), and
a gloss of the first print layer is greater than a gloss of the second print layer.
Response to Arguments
Applicants’ arguments with regards to claims and rejection analysis have been fully considered, but they are not persuasive.
Argument 1: Applicants argue, on page 10, 3rd par., that first, the cited references fail to disclose or suggest "the first print layer and the second print layer have a same color," when considered with the other elements of claim 1. The Examiner cites to Ikeda as disclosing these features. See Office Action at pg. 13. Ikeda discloses a water pressure transfer process for forming a decorative layer on an object to be decorated. Referring to Fig. 2 of Ikeda (reproduced below), the transfer film 16 is floated on a water 18 within a transfer tub (Figs. 2A-2C), and an article 10 together with the transfer film 16 is forced underwater so as to force the print pattern 12 against the surface I0S of the article 10 (see FIG. 2D). Thereafter, an ultraviolet ray 22 is irradiated on the article 10 to harden the resin composite 20 and the print pattern 12 so as to form a decorative layer having high glossy patterns and low glossy patterns on the object 10 (see FIG. 2E). See Ikeda at [0069]-[0070]. In one embodiment, Ikeda describes the decorative layer being formed in a same monochrome color as the base body of the article 10. See Ikeda at [0054]. Due to this embodiment, the Examiner asserts that Ikeda discloses "the first print layer and the second print layer have a same color," as recited in claim 1. Applicant respectfully disagrees, and notes that the Examiner's interpretation undermines the explicit interpretation of the "print layer". In the Office Action, the Examiner notes that a "print layer" is interpreted as "as a layer which is formed by either method of printing, coating, spraying, molding, depositing a material on a surface, or a similar method." Office Action at pg. 6. Without any admissions as to the merits of this interpretation, there is absolutely no information that would suggest that the base body of Ikeda meets the Examiner's interpretation of a "print layer." The base body of the article in Ikeda is a generic substrate on which "print layers" are formed. Under any reasonable interpretation, the base body in Ikeda would be directly opposite to the Examiner's definition of the "print layer." Therefore, even though Ikeda teaches that the base body and the decorative layer can have a same color, this certainly does not disclose or suggest "the first print layer and the second print layer have a same color," as recited in claim 1.
Examiner’s response to Argument 1: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ikeda teaches that the first print layer and the second print layer have a same color (Ikeda par. 54: with the print pattern formed in monochrome of the same color as the ground color of the base body of the articles, there is obtained an appearance of the decorative layer only by the differences of the glossy degree). The motivation to combine would be in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54).
Argument 2: Applicants argue, on page 12, 2nd par., that Second, the cited references fail to disclose or suggest "a gloss of the first print layer is greater than a gloss of the second print layer," when considered with the other elements of claim 1. The Examiner cites to Masubuchi and In re Gazda as disclosing these features. See Office Action at pg. 14. Masubuchi describes a decorative material having, in order, a substrate 2, a printed ink layer 3 having a printed pattern 3a, a first surface protective layer 4, and a second surface protective layer 5 that is provided partially covering the first surface protective layer 4. In this configuration, the second surface protective layer 5 is disposed on the first surface protective layer 4, and has a higher gloss than a gloss of the first surface protective layer 4. See Masubuchi at [0104]. By having a gloss differential in which the second surface protective layer 5 is greater than that of the first protective layer 4, a 3D feel can be achieved. See Masubuchi at [0105]. Masubuchi discloses a configuration that directly conflicts with the claimed features. As noted above, claim 1 requires the gloss of the first print layer to be greater than the gloss of the second print layer, in a state in which the second print layer is directly formed on a second surface of the first print layer, and an entirety of the opening overlaps the second surface of the first print layer. The Office Action dismisses this difference in arrangement between the first print layer and the second print layer using in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955), which describes one scenario in which a reversal of parts was found to be obvious. However, this precedent is inapplicable for several reasons. First, the "reversal" in re Gazda had absolutely no change to the function of the automobile wheel - unlike the "reversal" asserted by the Examiner, which undermines the entire "3D feel" that is intended to be achieved by Masubuchi's arrangement.
Examiner’s response to Argument 2: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "3D feel") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims don't require the argued "3D feel" and the argument is not persuasive as to why the Applicants believe the "3D feel" would be, allegedly, undermined. Therefore, Masubuchi teaches that a gloss of the first print layer (5 in Masubuchi par. 104 - 105 in reference to Fig. 1) is greater than a gloss of the second print layer (4 in Masubuchi par. 104 - 105 in reference to Fig. 1: The second surface protective layer 5 has a higher gloss than the first surface protective layer 4. It would have been obvious to reverse the layer of higher gloss with the layer of lower gloss: see MPEP 2144.04, in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). Alternatively, it would have been obvious to switch the gloss of Masubuchi's layer 4 with the gloss of layer 5, being an obvious matter of design choice: see MPEP 2144.04, in re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)). The motivation to combine would be that in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5).
Argument 3: Applicants argue, on page 13, 3rd par., that Second, in re Gazda was faced with a completely different set of facts and in a completely different technological field. When citing any legal precedent in an obviousness rejection, MPEP § 2144 emphasizes that the conclusions do not create per se rules. Rather, legal precedent can provide the rationale supporting obviousness only if the facts in the case are sufficiently similar to those in the application. See MPEP § 2144(III): If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. In this context, "sufficiently similar" does not necessarily require that the facts of the prior legal decision and those of the application under examination come from the same technological area. Rather, facts are sufficiently similar when they can be analogized to each other such that they present the same legal issue. The facts of Gazda are substantially dissimilar to the facts in the present case. Other than repeating the conclusion as a per se rule, the Office Action provides no explanation about how the conclusion from the facts in Gazda can be drawn to the present case. Therefore, the rejection is incomplete. See MPEP § 2144 ("simply stating a principle ... without providing an explanation of its applicability to the facts at hand is generally not sufficient to establish a prima facie case of obviousness").
Examiner’s response to Argument 3: The Examiner respectfully disagrees with Applicants’ argument, because Applicant’s arguments do not comply with 37 CFR 1.111(c), because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. In this case, Masubuchi teaches that a gloss of the first print layer (5 in Masubuchi par. 104 - 105 in reference to Fig. 1) is greater than a gloss of the second print layer (4 in Masubuchi par. 104 - 105 in reference to Fig. 1: The second surface protective layer 5 has a higher gloss than the first surface protective layer 4. It would have been obvious to reverse the layer of higher gloss with the layer of lower gloss: see MPEP 2144.04: in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955); likewise in this case, mere reversal of the placement of higher gloss with the lower gloss would have been obvious. Alternatively, it would have been obvious to switch the gloss of Masubuchi's layer 4 with the gloss of layer 5, being an obvious matter of design choice: see MPEP 2144.04, in re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); likewise, in this case, the mere placement of the higher gloss and the lower gloss on different layers would have been an obvious matter of design choice). The motivation to combine would be that in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5).
Argument 4: Applicants argue, on page 13, 6th par., that third, the precedent set by in re Gazda does not dispense with the requirement of a reasonable explanation as to why one of ordinary skill in the art would reverse the parts in the alleged manner- without the benefit of Applicant's specification. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984) ("[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant's specification, to make the necessary changes in the reference device."). In other words, the Examiner must rely on some explanation that is beyond mere hindsight. In the Office Action, the Examiner provides an explanation for combining Masubuchi and Lee. However, other than merely stating the conclusion of in re Gazda, the Office Action provides no explanation as to why one of ordinary skill in the art would be motivated to reverse the gloss differential described in Masubuchi. Thus, it is clear that the Office Action arrived at this conclusion using information that is only disclosed in Applicant's specification – the definition of impermissible hindsight. Accordingly, the cited references fail to disclose or suggest "a gloss of the first print layer is greater than a gloss of the second print layer" in which the "second print layer [is] directly formed on a second surface of the first print layer," as recited in claim 1.
Examiner’s response to Argument 4: The Examiner respectfully disagrees with Applicants’ argument, because Applicant’s arguments do not comply with 37 CFR 1.111(c), because in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Masubuchi teaches that a gloss of the first print layer (5 in Masubuchi par. 104 - 105 in reference to Fig. 1) is greater than a gloss of the second print layer (4 in Masubuchi par. 104 - 105 in reference to Fig. 1: The second surface protective layer 5 has a higher gloss than the first surface protective layer 4. It would have been obvious to reverse the layer of higher gloss with the layer of lower gloss: see MPEP 2144.04, in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). Alternatively, it would have been obvious to switch the gloss of Masubuchi's layer 4 with the gloss of layer 5, being an obvious matter of design choice: see MPEP 2144.04, in re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)). The motivation to combine would be that in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5).
Argument 5: Applicants argue, on page 14, 4the par., that Third, Applicant respectfully traverses the prima facie case of obviousness because one of ordinary skill in the art would not be motivated to modify Lee based on the teachings of Ikeda. The Office Action asserts that one of ordinary skill in the art would be motivated to modify Lee based on Ikeda in order to (1) "obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modem and new feelings and unique feeling imparted thereto"; and (2) "provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon." See Office Action at pg. 13. However, the relied-upon embodiment in Lee negates both of these motivations. Lee discloses battery cover 700 including a base member 760 layered with, inter alia, a color layer 730, a first pattern 710, and a second pattern 790. See Lee at [0145]-[0146] and Fig. 12, reproduced below. The Examiner interprets the first pattern 710 and second pattern 790 of Lee as the "first print layer" and the "second print layer" of claim 1. See Office Action pg. 13. With Lee's configuration, even if the first pattern 710 and the second pattern 790 were modified based on Ikeda, the resulting configuration would not be able to obtain the advantages alleged by the Examiner. This is because Lee's configuration also includes an optically transmissive synthetic resin that adheres the optically transmissive layer 701 to the pattern layers 710 and 790. See Lee at [0115]-[0116], and [0141]. With the optically transmissive synthetic resin and the optically transmissive layer, there would certainly be no "touch feeling of the decorative layer improved because of unevenness formed thereon" as alleged in the Office Action. Additionally, this transmissive synthetic resin would negate any ability to "obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modem and new feelings and unique feeling imparted thereto." That is, the transmissive synthetic resin of Lee would eliminate any distinction between the high glossy patterns and low glossy patterns of lkeda. Ikeda even admits as much in the specification. For comparative purposes, Ikeda describes several examples that implement a transparent resin as a topcoat layer that covers the decorative layer. See Ikeda at [0109]-[0124]. However, after these comparisons, Ikeda concludes that examples that implement the transparent resin as the topcoat layer "could obtain only the wholly uniform glossy degree and hardly had the remarkable difference of glossy degree even though the decorative layer was obtained by activating the print pattern by the prior activator." See Ikeda at [0127]. Thus, even if Lee were modified by Ikeda, there is no information to suggest that the result would "obtain an appearance of the decorative layer only by the differences of the glossy degree."
Examiner’s response to Argument 5: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "obtain an appearance of the decorative layer only by the differences of the glossy degree") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case, Ikeda teaches: the first print layer and the second print layer have a same color (Ikeda par. 54: with the print pattern formed in monochrome of the same color as the ground color of the base body of the articles, there is obtained an appearance of the decorative layer only by the differences of the glossy degree). The motivation to combine would be in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54).
Argument 6: Applicants argue, on page 16, 3rd par., that it is well settled that the rationale to combine references is improper when the stated advantage allegedly provided in the secondary references is irrelevant to the function of the primary reference. See, e.g., Ex parte Conway, Appeal No. 2015-002702, Ser. No. 13/047,175 (Feb. 28, 2017) (finding that the primary references had no need for the advantage allegedly provided by the secondary reference and citing In re Omeprazole Patent Litigation, 536 F.3d 1361, 1380 (Fed. Cir. 2008)). The present rationale to combine Lee and Ikeda is improper for similar reasons. The motivation to modify Lee based on Ikeda in order to: (1) "obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto"; and (2) "provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon" is irrelevant to the function of the Lee, because these advantages would not exist in Lee's configuration. Therefore, the present rejection fails to meet the burden of providing "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" as required by KSR, 550 U.S. at 418, 82 USPQ2d at 1396.
Examiner’s response to Argument 6: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ikeda teaches the first print layer and the second print layer have a same color (Ikeda par. 54: with the print pattern formed in monochrome of the same color as the ground color of the base body of the articles, there is obtained an appearance of the decorative layer only by the differences of the glossy degree). The motivation to combine would be in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54). The motivation to combine would be in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54).
Argument 7: Applicants argue, on page 17, 2nd par., that Fourth, Applicant respectfully traverses the prima facie case of obviousness because one of ordinary skill in the art would not be motivated to modify Lee based on the teachings of Masubuchi. The Office Action asserts that one of ordinary skill in the art would be motivated to modify Lee based on Masubuchi: (1) "because in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel"; and (2) "to provide a high gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference." See Office Action at As discussed above, the rationale (2) to modify Lee "to provide a high-gloss portion and a low-gloss portion within a surface protective layer" would eliminate any portrayed distinction between the high glossy patterns and low glossy patterns, as taught by Ikeda. Since the differential between the high-gloss portion and the low-gloss portion causes the alleged "uneven 3D feel," it follows that this benefit would similarly be non-existent in Lee's configuration. Notwithstanding, in any case, the motivation in order to "[impart] a three-dimensional feel" is insufficient to support a finding of obviousness based on Lee's configuration. Just as advantages irrelevant to the disclosure of the primary reference cannot serve as the basis for combining references under§ 103, redundant advantages are also insufficient. See, e.g., Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. 2012 ("Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device."); Ex parte Bakshi, Appeal No. 2001- 2542, Ser. No. 09/000,760 (Sept. 24, 2003); Ex parte Bums, Appeal No. 2016-000351, Ser. No. 13/843, 754.
Examiner’s response to Argument 7: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ikeda teaches: the first print layer and the second print layer have a same color (Ikeda par. 54: with the print pattern formed in monochrome of the same color as the ground color of the base body of the articles, there is obtained an appearance of the decorative layer only by the differences of the glossy degree). The motivation to combine would be in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54).
Argument 8: Applicants argue, on page 18, 2nd par., that Lee's configuration already provides a 3D feel by using the first and second patterns 710 and 790 to generate the stereoscopic effect. See Lee at [0148] ("Formation of first and second protrusions having different shapes or arrangements may provide different stereoscopic (or 3D) effects according to a viewing angle. The reflection layer may be formed to have a higher surface roughness through chemical etching, such that light incident onto the pattern layer can be dispersed."); see also Lee at [0003], [0091], [0102], [0129], [0134], etc. Thus, one of ordinary skill in the art would not be motivated to modify Lee based on Masubuchi to arrive at features that already exist in Lee's configuration. Accordingly, the present rejection fails to meet the burden of providing "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness" as required by KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Accordingly, the cited references, taken individually or in any combination thereof, fail to disclose or suggest each and every feature of claim 1. For at least these reasons, claim 1 is patentable over the cited art of record.
Examiner’s response to Argument 8: The Examiner respectfully disagrees with Applicants’ argument, because in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Masubuchi teaches that a gloss of the first print layer (5 in Masubuchi par. 104 - 105 in reference to Fig. 1) is greater than a gloss of the second print layer (4 in Masubuchi par. 104 - 105 in reference to Fig. 1: The second surface protective layer 5 has a higher gloss than the first surface protective layer 4. It would have been obvious to reverse the layer of higher gloss with the layer of lower gloss: see MPEP 2144.04, in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). Alternatively, it would have been obvious to switch the gloss of Masubuchi's layer 4 with the gloss of layer 5, being an obvious matter of design choice: see MPEP 2144.04, in re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)). The motivation to combine would be that in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5).
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 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 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 of this title, 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.
Joint Inventors, Common Ownership Presumed
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were effectively filed absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned at the time a later invention was effectively filed in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Test for Obviousness
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 11, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (publication number 2013/0242385), hereinafter Lee, and further in view of Ikeda et al (publication number 2007/0154685), hereinafter Ikeda, and further in view of Masubuchi et al (publication number 2018/0043718), hereinafter Masubuchi.
Lee teaches (Please refer to Lee Fig. 1, 2) a mobile terminal (Lee par. 48 and Fig. 1, mobile terminal 100) having a front case 101 and a rear case 102 (Lee par. 49). Image modules 200, 300 are mounted onto the front case 101, as shown in FIG. 1, to form the front surface of the terminal body or configure the battery cover 103 of FIG. 2; image modules 200, 300 are for externally providing a stereoscopic image, or three-dimensional (3D) image, giving a sophisticated visual effect (Lee par. 88). The image modules 200, 300 include the following print layers (Lee par. 92, 131):
Optically transmissive layer 201 (Lee par. 115: pattern layer 210, 310 may be formed by printing an optically transmissive synthetic resin, for example, acryl silicon-based resin, onto the rear surface of the optically transmissive layer 201; par. 135: The pattern layer 610 may be formed on the reflection layer 620 in a manner of printing or spraying optically transmissive or colored ink; par. 138: The optically transmissive layer 601 may be made of an optically transmissive material, and disposed to cover the color layer 630 and the pattern layer 610 through a spraying process).
Pattern layer 210 (Lee par. 95: The pattern layer 210 may be formed in a manner of printing, UV molding or the like using a transparent or semi-transparent material. Par. 135: The pattern layer 610 may be formed on the reflection layer 620 in a manner of printing or spraying optically transmissive or colored ink).
Reflection layer 220 (Lee par. 117: The step of forming the reflection layer 220, 320 may be a step of coating or depositing a metal having high luminance or coating mirror ink on the rear surface of the pattern layer. Par. 127: Referring to FIG. 8, the rear surface of the reflection layer 520 may be masked in a printing manner. Par. 134: The reflection layer 620 may be deposited on the color layer 630 to reflect at least part of incident light).
Color layer 230 (Lee par. 133: The color layer 630 may be disposed to cover the base member 660 through printing, deposition and the like)
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Regarding claim 11, Lee teaches a cover window ("Window section 152" in Lee par. 73 in reference to Fig. 1, 3: Display unit 150 including display 151 and a window section 152 covering the display 151") comprising (Please refer to Lee Figs. 10, 12):
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a base member (Base member 660, 760 in Lee par. 131, 132 in reference to Figs. 10, 12) including glass (Lee par. 132: The base member 660, for example, may be formed of polycarbonate (PC), and include therein glass fiber) or plastic;
a first print layer (color layer 630, 730 in Lee par. 133, 145 in reference to Fig. 10, 12) directly formed on a first surface of the base member (Lee par. 133 in reference to Fig. 10, 12: color layer 630 is disposed to cover the base member 660 through printing, deposition and the like – Fig. 12 represents color layer 630 in direct contact with base member 660); and
a second print layer (second pattern layer 790 in Lee par. 146 in reference to Fig. 12) directly formed on a second surface of the first print layer (Lee par. 145 in reference to Figs. 10, 12: the second pattern layer 790 is formed prior to depositing a reflection layer 720 on a color layer 730 – Fig. 12 represents second pattern layer 790 in direct contact with color layer 730), the first print layer and the second print layer each comprising a resin material (Lee par. 115: pattern layers contain synthetic resin), wherein
the second print layer (second pattern layer 790 in Lee par. 146 in reference to Fig. 12) comprises an opening exposing the second surface of the first print layer (Lee par. 145 in reference to Fig. 12: second pattern layer 790, which has the same/like structure and function as a first pattern layer 710), an entirety of the opening overlaps the second surface of the first print layer (Lee Fig. 12 shows openings in second pattern layer 790, which expose color layer 730. The open space between blocks 790 entirely overlaps color layer 730).
Lee does not explicitly teach: "the first print layer and the second print layer have a same color, and a gloss of the first print layer is greater than a gloss of the second print layer"; "the first print layer and the second print layer each comprising a same color pigment".
Ikeda teaches (please refer to Ikeda par. 69 in reference to Fig. 2A, print pattern 12 over film 14):
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the first print layer and the second print layer have a same color (Ikeda par. 54: with the print pattern formed in monochrome of the same color as the ground color of the base body of the articles, there is obtained an appearance of the decorative layer only by the differences of the glossy degree); and
the first print layer and the second print layer each comprising a same color pigment and a resin material (Ikeda par. 50, 51: The decorative layer is formed by being hardened by ultraviolet ray hardening of resin composite; the absorption of this ultraviolet ray hardening resin composite is easy or hard on the kind of the pigments in the ink of the print pattern).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee, by incorporating the teachings of Ikeda into the disclosure of Lee, in order to obtain an appearance of the decorative layer only by the differences of the glossy degree and therefore provide the products with modern and new feelings and unique feeling imparted thereto, and in order to provide the expression of design variation of a decorative layer accomplished and a touch feeling of the decorative layer improved because of unevenness formed thereon (Ikeda par. 19, 54). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Lee as modified does not explicitly teach: "a gloss of the first print layer is greater than a gloss of the second print layer".
Masubuchi teaches (Masubuchi par. 104 in reference to Fig. 1):
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a gloss of the first print layer (5 in Masubuchi par. 104 - 105 in reference to Fig. 1) is greater than a gloss of the second print layer (4 in Masubuchi par. 104 - 105 in reference to Fig. 1: The second surface protective layer 5 has a higher gloss than the first surface protective layer 4. It would have been obvious to reverse the layer of higher gloss with the layer of lower gloss: see MPEP 2144.04: in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955); likewise in this case, mere reversal of the placement of higher gloss with the lower gloss would have been obvious. Alternatively, it would have been obvious to switch the gloss of Masubuchi's layer 4 with the gloss of layer 5, being an obvious matter of design choice: see MPEP 2144.04, in re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); likewise, in this case, the mere placement of the higher gloss and the lower gloss on different layers would have been an obvious matter of design choice); and
the first print layer and the second print layer each comprising a same color pigment and a resin material (Masubuchi par. 109: The printed ink layer provides a decorative layer on the substrate, and is formed by printing an ink onto the substrate. A representative example of an ink that can be used contains an appropriate resin binder, a colorant such as a pigment and/or a dye, an extender pigment, a solvent. It would have been obvious to apply Masubuchi's resin and pigment to one or more print layers and/or to the base member).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by incorporating the teachings of Masubuchi into the disclosure of Lee as modified, because in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Regarding claim 17, Lee teaches wherein the first print layer (color layer 630, 730 in Lee par. 133, 145 in reference to Fig. 10, 12) and the second print layer (second pattern layer 790 in Lee par. 146 in reference to Fig. 12) are the only print layers disposed (it would have been obvious to omit one or more print layers, which could result in "only" two layers. See MPEP 2144.04 II A. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989)) on the first surface of the base member (Base member 660, 760 in Lee par. 131, 132 in reference to Figs. 10, 12).
Regarding claim 18, Lee teaches wherein the first print layer (color layer 630, 730 in Lee par. 133, 145 in reference to Fig. 10, 12) contacts the base member (Base member 660, 760 in Lee par. 131, 132 in reference to Figs. 10, 12) and the second print layer (second pattern layer 790 in Lee par. 146 in reference to Fig. 12).
Regarding claim 19, Lee teaches wherein in a plan view (Lee par. 144: FIG. 12 is a sectional view of battery cover 700) on the first surface (Base member 660, 760 in Lee par. 131, 132 in reference to Figs. 10, 12), the opening (Lee par. 146 in reference to Fig. 12: the second pattern layer 790 overlaps part of the first pattern layer 710 – the area where 710 and 790 don't overlap meets claimed "opening exposing" Lee's layer 790) has a shape that indicates information of a display device (Lee par. 26: the optically transmissive region may define a logo) the cover window is disposed on (Lee par. 73 in reference to Fig. 1, 3: Display unit 150 including display 151 and a window section 152 covering the display 151").
Claims 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Lee, in view of Ikeda, in view of Masubuchi, and further in view of Agerton et al (publication number 2020/0024021), hereinafter Agerton.
Regarding claim 12, Lee as modified does not explicitly teach: "wherein the gloss of the first print layer is greater than or equal to about 70 gloss units (GU), and the gloss of the second print layer is less than or equal to about 10 GU."
Agerton teaches wherein the gloss of the first print layer is greater than or equal to about 70 gloss units (GU, Agerton Fig. 8A, gloss values greater than 70 GU towards the top of the table), and the gloss of the second print layer is less than or equal to about 10 GU (Agerton Fig. 8A, gloss values below 10 GU towards the bottom of the table).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by adopting the gloss values measured in GU and displayed in Agerton's Figs. 8A-C, and by adopting a matte finish, as suggested by Agerton, because consumers want to purchase articles that grab their attention by having a premium appearance at the store shelf or webpage or app. Also, in order to make eye-catching articles that connotate luxury and quality, it can be desirable for the article to have an appearance gradient. It will be particularly attractive to combine glossy and matte visual effects along with sensorial touch features (Agerton par. 2, 3). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Regarding claim 13, Lee as modified does not explicitly teach: Wherein a difference between the gloss of the first print layer and the gloss of the second print layer is greater than or equal to about 60 GU.
Agerton teaches: "Wherein a difference between the gloss of the first print layer (Agerton Fig. 8A, gloss values greater than 70 GU towards the top of the table) and the gloss of the second print layer (Agerton Fig. 8A, gloss values below 10 GU towards the bottom of the table) is greater than or equal to about 60 GU (from Fig. 8A, for example, the difference between the highest value and lowest value is greater than 60 GU).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by adopting the gloss values measured in GU and displayed in Agerton's Figs. 8A-C, and by adopting a matte finish, as suggested by Agerton, because consumers want to purchase articles that grab their attention by having a premium appearance at the store shelf or webpage or app. Also, in order to make eye-catching articles that connotate luxury and quality, it can be desirable for the article to have an appearance gradient. It will be particularly attractive to combine glossy and matte visual effects along with sensorial touch features (Agerton par. 2, 3). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Regarding claim 14, Lee as modified does not explicitly teach wherein the second print layer includes a material containing a matting agent.
Agerton teaches wherein the second print layer includes a material containing a matting agent (Matte finish in Agerton par. 48).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by adopting the gloss values measured in GU and displayed in Agerton's Figs. 8A-C, and by adopting a matte finish, as suggested by Agerton, because consumers want to purchase articles that grab their attention by having a premium appearance at the store shelf or webpage or app. Also, in order to make eye-catching articles that connotate luxury and quality, it can be desirable for the article to have an appearance gradient. It will be particularly attractive to combine glossy and matte visual effects along with sensorial touch features (Agerton par. 2, 3). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Regarding claim 15, Lee as modified does not explicitly teach wherein the matting agent is greater than or equal to about 10% of the material of the second print layer.
Masubuchi teaches wherein the matting agent ("matte coating composition" in Masubuchi par. 42: In the matte coating composition, silica is used in order to reduce the gloss by forming unevenness on the cured coating film surface) is greater than or equal to about 10% of the material of the second print layer (Masubuchi Table 4, silica content value of 12.5%, for example).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by deploying a second surface protective layer having a higher gloss than the first surface protective layer, or vice versa, and by using "matte coating composition" where silica is used in order to reduce the gloss by forming unevenness on the cured coating film surface as suggested by Masubuchi, because in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Regarding claim 16, Lee as modified does not explicitly teach wherein the first print layer includes a material containing the matting agent, and the matting agent is in a range of about 0 % to about 3 % of the material of the first print layer.
Masubuchi teaches wherein the first print layer includes a material containing the matting agent ("matte coating composition" in Masubuchi par. 42: In the matte coating composition, silica is used in order to reduce the gloss by forming unevenness on the cured coating film surface), and the matting agent is in a range of about 0 % to about 3 % of the material of the first print layer (Masubuchi Table 4, silica content value of 0%, for example).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the disclosure of Lee as modified, by deploying a second surface protective layer having a higher gloss than the first surface protective layer, or vice versa, and by using "matte coating composition" where silica is used in order to reduce the gloss by forming unevenness on the cured coating film surface as suggested by Masubuchi, because in recent years, there has been a trend to further enhance the design aesthetics by imparting a three-dimensional feel, thereby distinguishing an item from other products; also, in order to provide a high-gloss portion and a low-gloss portion within a surface protective layer, thereby portraying an uneven 3D feel due to an optical illusion arising from the gloss difference (Masubuchi par. 3-5). This motivation is supported by KSR exemplary rationale (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141 (III).
Allowable Subject Matter
Claims 1-8, 10, 20-21 are allowed. As allowable subject matter has been indicated, applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Indicating Allowable Subject Matter
The following is an examiner’s statement of reasons for indication of allowable subject matter: Claim 11 is the broadest independent claim. Independent claims 1, 20 incorporate all the limitations of claim 11. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Lee, in view of Ikeda, in view of Masubuchi; however, the prior art of record does not teach or suggest a first print layer directly formed on a first surface of the base member, the first surface facing the display panel, in combination with all the other limitations of claims 1, 20. Regarding the claims depending on independent claim 1, they incorporate all limitations of independent claim 1; therefore, they present allowable subject matter for the same above reasons. Therefore, the further limitations of the above-mentioned claims are neither anticipated nor rendered obvious by the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 RONALD EISNER whose telephone number is (571)270-3334. The examiner can normally be reached on Monday and Tuesday from 9:00 AM to 5:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kathy Wang-Hurst, can be reached at telephone number (571) 270-5371. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONALD EISNER/
Primary Examiner, Art Unit 2644
Prosecution Insights