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 .
Summary
The Applicant’s arguments and claim amendments received on July 10, 2026 are entered into the file. Currently, claims 1-10 are withdrawn; claims 11-14 and 16-20 are amended; claim 15 is canceled; resulting in claims 11-14 and 16-20 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-14 and 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 11 and 12, the limitations reciting “pores anodized into the fine multilayered pattern such that the fine multilayered pattern has a surface roughness (Ra) in a range of 10 µm to 50 µm” is considered new matter that is not adequately supported by the instant specification. In particular, although the Applicant submits on page 9 of the remarks filed July 10, 2026 that the claims require that the surface roughness (Ra) results from anodization rather than etching, this interpretation is not consistent with the original disclosure.
With respect to the surface roughness property, paragraphs [00110]-[00111] of the as-filed specification discloses that the fine multilayered pattern may have a surface roughness (Ra) in a range of 10 µm to 50 µm, where in a case where the surface roughness of the fine multilayered pattern is low, the pattern may not be felt by touch, but in a case where the surface roughness is high, the pattern may not be distinct.
In paragraph [0062], the method of manufacturing the aluminum exterior panel is said to involve a pattern implementing step in which a fine multilayered pattern is implemented on a surface of the processed aluminum material, followed by a fine corrugation forming step of forming fine corrugations on the surface of the aluminum material on which the pattern is implemented, and an anodizing step for forming pores on the surface of the aluminum material on which the fine corrugations are formed.
Paragraph [0069] discloses that the pattern implementing may be performed using at least one of laser machining and a chemical etching method. Paragraphs [0070]-[0075] and Figs. 4-6 describe the process of using laser machining to form the fine multilayered pattern, while paragraphs [0076]-[0083] and Figs. 7-8 illustrate the process of using chemical etching to form the fine multilayered pattern. Paragraph [0084] further discloses that the laser machining and chemical etching methods may be used in combination, in either order, in order to implement an effective fine multilayered pattern.
Based on the above disclosure, the surface roughness (Ra) of the fine multilayered pattern disclosed throughout the specification appears to refer to the surface roughness of the fine multilayered pattern after the pattern implementing step (or possibly after the pattern implementing and corrugation forming steps) but before the anodizing step. It is noted that the specification does not disclose how the anodizing step affects the surface roughness of the fine multilayered pattern. For example, Figs. 11 and 12 illustrate the side SEM view of the top surface of the aluminum material which has been anodized, but does not show the bottom of the pores where the anodized layer meets the fine multilayered pattern. There is no disclosure in the instant specification that would indicate that the surface roughness (Ra) of the fine multilayered pattern refers to a roughness measurement performed after anodizing. There is also no disclosure that the pores are “anodized into” the fine multilayered pattern; rather, the closest disclosure (e.g., in paragraph [0090]) indicates that the anodizing step forms pores on the surface of the aluminum material on which the fine corrugations are formed, which is the same surface on which the fine multilayered pattern is formed.
For the purpose of applying prior art, the aforementioned limitations in claims 11 and 12 will be interpreted consistent with the previous (original) language of the claim, where the fine multilayered pattern is formed on the surface of the aluminum material, and the pores are formed on the surface of the aluminum material having the fine multilayered pattern, wherein the fine multilayered pattern has a surface roughness (Ra) in the range of 10 µm to 50 µm.
Regarding claims 13, 14, and 16-20, the claims are rejected based on their dependency on claims 11 and 12.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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 as of the effective filing date of the claimed invention(s) 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 as of the effective filing date of the later invention 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.
Claims 11-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0164111, cited on IDS) in view of Ono et al. (JP 2010-270350, machine translation via EPO provided).
Regarding claims 11 and 12, Lee et al. teaches a method for forming a pattern on a surface of an aluminum product, comprising the steps of buffing a surface of the aluminum product, masking at least part of the buffed surface with an etching resist, etching a part of the surface not masked by the etching resist, removing the etching resist, and anodizing the surface from which the resist is removed (Abstract, [0015], Fig. 1). The method therefore results in a surface having a three-dimensional pattern (fine multilayered pattern) with a difference in depth between a high gloss surface part (310’) and a matt surface part (320’) ([0026], [0080], Fig. 6C).
Lee et al. teaches that the anodizing (S150) may include performing degreasing, etching, desmutting, anodizing, coloring, sealing, and drying with respect to the etched surface ([0021], Fig. 7). In the anodizing step (S740), fine pores are generated on the surface of the aluminum product [0088]. In the coloring step (S750), the product may be immersed in a dye solution (ink), wherein the colored surface (printed layer) may be sealed (S760), such as by immersion in a sealing agent (e.g., nickel acetate solution), wherein the fine pores are sealed to prevent decolorization ([0089]-[0090]).
It is noted that the limitation reciting “the printed layer formed by a digital printer” is a product-by-process limitation, which does not determine the patentability of the product unless the method imparts a distinctive structural characteristic to the product. See MPEP 2113(I). In the instant case, the method of forming “by a digital printer” does not imply any additional structure beyond requiring that the printed layer including ink is capable of being formed by digital printing. Given that Lee et al. teaches depositing a dye onto the anodized surface of the aluminum product (e.g., by immersion in a dye solution), the resulting structure of the prior art product is considered to be identical to that of the claimed product. The burden is therefore shifted to the Applicant to show a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
With respect to the limitation reciting “an aluminum oxide film having a thickness in a range of 10 µm to 15 µm on the printed layer and that closes the pores along the surface”, it is noted that the process taught by Lee et al. involving a step of sealing the anodized pores by immersion in a nickel acetate sealing agent is substantially identical to the process disclosed in paragraphs [0099]-[00101] of the instant specification for forming an aluminum oxide film on the surface of the aluminum material. In particular, Lee et al. teaches that the anodizing step is carried out by immersing the product in a sulfuric acid solution (18 to 20 mass%) at a temperature of approximately 18 to 23°C and a current at a voltage of approximately 13 to 18 V for 600 seconds or longer, and that the pore sealing step is performed by immersing the product in a 3 to 5 mass% nickel acetate solution at a temperature of approximately 85 to 95°C for at least 300 seconds ([0088], [0090]). The parameters of the anodization and pore sealing processes taught by Lee et al. are substantially identical to the parameters disclosed in paragraphs [0091] and [00100] of the instant specification for formation of the aluminum oxide film by anodization and pore sealing. The sealed pores therefore correspond to the claimed aluminum oxide film formed on the printed layer which closes the pores along the surface, and which is expected to have a thickness within the claimed range given that it is formed by a substantially identical process.
With respect to the limitation reciting “an aluminum material having a surface and an edge”, Lee et al. teaches that the aluminum product may be implemented in various forms, such as a pipe, a plate, and the like, and may be implemented as part of a home appliance such as a refrigerator, or various other products [0043]. Lee et al. therefore teaches a refrigerator, which necessarily includes a main body and a door configured to open or close the main body, wherein the aluminum plate taught by Lee et al. is understood to be used as an aluminum exterior panel for at least one of the main body or the door of the refrigerator. The aluminum plate taught by Lee et al. has a three-dimensional structure including a length, a width, and a height, wherein the intersection between two adjacent surfaces of the plate corresponds to the claimed edge.
Although Lee et al. does not expressly teach a value of the surface roughness (Ra) of the three-dimensional pattern (fine multilayered pattern) formed by the protruding high gloss surface part (310’) and the recessed matt surface part (320’), Lee et al. does further teach that a portion of the surface having a 1.0 x 1.0 mm masked area preferably has edges etched at a width “b” of 0.1 mm or more and a depth of 30 µm or more in order to realize an excellent three-dimensional sensation ([0074]-[0075], Fig. 5). Lee et al. further demonstrates how the shape of the masked portion changes with increasing etching time (Fig. 5), where one of ordinary skill in the art would recognize that the isotropically etched structures shown in Fig. 5 have decreasing surface roughness values (Ra) as the NaOH etching time increases.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the etching parameters in order to arrive at a desired surface roughness (Ra), such as within the claimed range of 10 µm to 50 µm. One of ordinary skill in the art would be motivated to adjust the surface roughness (Ra) of the three-dimensional pattern (fine multilayered pattern) formed of protruding parts (310’) and recessed parts (320’), such as to a value within the claimed range, in order to achieve the desired three-dimensional surface texture, where a smoother or rougher surface texture can be obtained by etching for a longer or shorter time, respectively.
Lee et al. differs from the claimed invention in that the reference does not expressly teach a depth at which the ink of the printed layer is deposited into the pores of the anodized surface.
Similar to the anodization process taught by Lee et al., Ono et al. teaches a method of coloring an anodized coating, in which an anodic oxide film (32) having numerous fine pores (33) is formed on a prepared substrate (22), the substrate is brought into contact with a dyeing solution such that the dye (34) enters the fine pores, and a hydration step is performed to close the fine pores on the surface side ([0046]-[0049], Figs. 4(a)-(c)). Ono et al. teaches that by changing the depth to which the dye penetrates from the surface, a gradient colored area with a desired change in color intensity can be realized, where it is possible to achieve extremely pale or sufficiently dark colors depending upon the depth of dye penetration into the pores ([0021], [0055]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aluminum product taught by Lee et al. by adjusting the penetration depth of the dye (ink) to an appropriate value, such as within the claimed range, in order to achieve the desired color saturation or intensity of the anodized coloring, as suggested by Ono et al. In particular, one of ordinary skill in the art would be motivated to increase the depth of dye penetration within the pores in order to increase the intensity of the color produced by the dyed areas.
Regarding claim 13, Lee et al. in view of Ono et al. teaches all of the limitations of claim 12 above but does not expressly teach a thickness of the aluminum product. It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an aluminum product having an appropriate thickness, such as within the range of 0.5 to 5 mm, depending upon the desired weight and/or durability of the product. For example, in the case where the aluminum plate is used as an ornamental film attached to the door of the refrigerator, the thickness of the aluminum plate is preferably small so as to not substantially increase the weight of the refrigerator door but large enough so that the aluminum plate can be handled without easily breaking.
Regarding claim 14, Lee et al. in view of Ono et al. teaches all of the limitations of claim 12 above, and Lee et al. further teaches that the etching depth, which is a difference in depth (height) between the masked part and the non-masked part, is 30 µm or more ([0074]-[0075]). In particular, Lee et al. teaches that the etching depth preferably ranges from 31 to 38 µm (Fig. 5), which falls squarely within the claimed range of 10 to 1000 µm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 16, Lee et al. in view of Ono et al. teaches all of the limitations of claim 11 above. It is noted that the limitation reciting “wherein the fine multilayered pattern is machined and/or chemically etched on the surface” is a product-by-process limitation, which does not determine the patentability of the product unless the method imparts a distinctive structural characteristic to the product. See MPEP 2113(I). In the instant case, the method of laser machining or chemical etching does not imply any additional structure beyond requiring that the fine multilayered pattern is formed on a surface of the aluminum material. Given that Lee et al. teaches the product having a three-dimensional pattern (fine multilayered pattern) composed of high gloss surface parts (310’) and matt surface parts (320’) formed at different depths ([0080], Fig. 6C), the structure of the prior art product is considered to be identical to that resulting from the claimed method. The burden is therefore shifted to the Applicant to show a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
Regarding claims 17-20, Lee et al. in view of Ono et al. teaches all of the limitations of claim 16 above. As noted above, the limitation directed to the method of forming the fine multilayered pattern by laser machining or chemical etching does not distinguish the claimed product over the prior art. The additional limitations specifying the parameters of the laser machining method and/or the chemical etching method also do not impart any distinctive structural features that would differentiate the claimed product from the prior art. See MPEP 2113.
Nevertheless, it is noted that Lee et al. does further teach that the surface may be masked with an asphaltic masking solution (asphalt-based ink) at a hardening temperature of 80 to 90°C for approximately 30 to 60 minutes [0063]. Lee et al. further teaches that the partially masked surface may be etched using an alkaline etching solution containing 8 to 12 mass% NaOH at a temperature of 50 to 60°C for approximately 300 seconds ([0069], [0076]). The etching resist may be removed by immersion in cyclohexanone [0077].
Response to Arguments
Response-Claim Rejections - 35 USC § 102
Applicant’s arguments, see pages 6-9 of the remarks filed July 10, 2026, have been considered but are moot because they do not address the new combination of references being used in the rejections above. In light of the amendments to claim 1, the previous rejections under 35 U.S.C. 102 based on Curran et al. and Lee et al. are withdrawn, and Ono et al. is used as a secondary reference in combination with Lee et al. under 35 U.S.C. 103 to address the new limitations directed to the depth of the ink of the printed layer deposited into the pores. The Applicant’s arguments will be addressed insofar as they apply to the new grounds of rejection.
With respect to the limitation in previous claim 14 reciting “wherein the fine multilayered pattern has…a surface roughness Ra in a range of 10 µm to 50 µm”, the Applicant first argues on pages 8-9 that the Office Action has concluded that one of skill in the art would have been motivated to change etching parameters to achieve a particular surface roughness simply to achieve a different surface texture, where this analysis appears to be (1) no more than a mere conclusory statement, or (2) an inherency argument.
These arguments are not persuasive. As explained in the prior art rejections above, Lee et al. demonstrates how the three-dimensional effect of a surface changes over a range of etching times ([0073]), where the isotropic etching of the aluminum surface using NaOH is shown in Fig. 5 as creating smoother surface features as the etching time is increased. Given that Lee et al. expressly suggests that parameters directly influencing the surface roughness, including the etching depth and “b” value, are set within desired ranges in order to achieve a three-dimensional sensation ([0075]), one of ordinary skill in the art would be motivated to adjust the surface roughness (Ra) to an appropriate value, such as within the claimed range, in order to achieve the desired three-dimensional sensation (e.g., either a smoother or rougher surface texture). The conclusion of obviousness is therefore based upon the teachings of the prior art and is not a mere conclusory statement nor based on an inherency argument. In the absence of evidence demonstrating criticality of the claimed range for the surface roughness (Ra) of the fine multilayered pattern, Lee et al. is considered to render obvious this claimed limitation for the reasons presented above.
The Applicant further argues on page 9 of the remarks that the limitation in previous claim 14 reciting “wherein the fine multilayered pattern has…a surface roughness Ra in a range of 10 µm to 50 µm” has been amended to clarify that pores are “anodized into the fine multilayered pattern such that the fine multilayered pattern has a surface roughness (Ra) in a range of 10 µm to 50 µm”, wherein adjustment of etching parameters as in Lee would not meet the present claims which result from anodization.
This argument is not persuasive. As explained in the written description rejections above, the current language of the claims does not appear to be supported by the instant specification, as the specification does not disclose the surface roughness (Ra) of the fine multilayered pattern resulting from anodization. Rather, the specification appears to indicate that the surface roughness (Ra) of the fine multilayered pattern results from a “pattern implementing” step of the present invention which may be performed by a combination of laser machining and chemical etching, and which may be followed by a step of chemical sanding or sand blasting ([0084]-[0085]). As explained above, Lee et al. renders obvious the claimed structure in which the fine multilayered pattern has a surface roughness (Ra) within the claimed range, and it is further noted that Lee et al. teaches a substantially identical process to the disclosed “pattern implementing step” for the formation of its three-dimensional pattern (fine multilayered pattern).
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/REBECCA L GRUSBY/Primary Examiner, Art Unit 1785
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