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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 11-15, in the reply filed on March 17, 2026 is acknowledged. New claims 16-20 belong to the invention of Group II and will be examined therewith.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 17, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/21/2024 has been considered by the examiner.
Claim Rejections - 35 USC § 102
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 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.
Claims 11 and 16-20 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Curran et al. (US 2018/0049337).
Regarding claim 11, Curran et al. teaches a part (400; aluminum exterior panel) comprising a textured metal substrate surface, a dyed primary oxide layer, and a polished outer secondary layer, wherein the substrate may have curved edges or corners ([0048], [0059], Figs. 3A-3E, 4). The part may be an enclosure for an electronic device, in which the metal substrate (302; aluminum material) is composed of an anodizable metal such as aluminum ([0002], [0006], [0027]). The metal substrate has a textured surface (304), such as a chemically etched and/or abrasively blasted texture (fine multilayered pattern), which provides an underlying diffusively reflective, matte appearance, wherein peaks (314) on the textured surface can act as local points of reflection causing the surface to have a sparkling or glittering appearance ([0046], Fig. 3E). A portion of the metal substrate is converted into a corresponding primary oxide layer (300) by an anodizing process, which forms pores (204) within the primary oxide layer ([0028], Fig. 2A). The primary oxide coating is infused with a colorant (digital printing layer) which diffuses into the pores (204) and becomes adsorbed onto surfaces of the pore walls (203) to impart a corresponding color thereto ([0023], [0036], Figs. 2A-2B, 3B-3C). The secondary oxide layer (308; aluminum oxide film) is deposited on the colored primary oxide layer and can be composed of an aluminum oxide material that provides a hard, scratch-resistant coating ([0038], Figs. 3D-3E).
It is noted that the limitation reciting “a digital printing layer” 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 “digital printing” does not imply any additional structure beyond requiring that the layer is formed of a material that is capable of being deposited by digital printing (e.g., inks, pigments, dyes, polymers, metals, etc.). Given that Curran et al. teaches coloring the primary oxide layer by depositing metals, pigments, dyes, or the like within the pore structure of the primary oxide layer ([0036]), 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).
Regarding claim 16, Curran et al. teaches all of the limitations of claim 11 above. It is noted that the limitation reciting “wherein the fine multilayered pattern is formed by at least one of laser machining and a chemical etching method” 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 Curran et al. teaches that the textured surface (304) may be formed by abrasive blasting and/or chemical etching ([0029]), wherein the textured surface is shown in Figs. 3A-3E as having a fine multilayered pattern, 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, Curran 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 structure of 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.
Claims 11, 12, and 15-20 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Lee et al. (US 2021/0164111, cited on IDS).
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, wherein the colored surface 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 “a digital printing layer” 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 “digital printing” does not imply any additional structure beyond requiring that the layer is formed of a material that is capable of being deposited by digital printing (e.g., inks, pigments, dyes, polymers, metals, etc.). 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 on the digital printing layer”, 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. The sealed pores therefore correspond to the claimed aluminum oxide film formed on the digital printing layer.
With respect to the limitation reciting “an edge shaped on a corner of the aluminum material”, 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 sides of the plate corresponds to an edge shaped on a corner of the aluminum plate.
Regarding claim 15, Lee et al. teaches all of the limitations of claim 12 above. As noted above, Lee et al. teaches a process of sealing the anodized pores by immersion in a nickel acetate sealing agent which 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.
Lee et al. further 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 aluminum oxide film formed by the process taught by Lee et al. would therefore be expected to have a thickness within the claimed range given that it is formed by a substantially identical process.
Regarding claim 16, Lee et al. teaches all of the limitations of claim 11 above. It is noted that the limitation reciting “wherein the fine multilayered pattern is formed by at least one of laser machining and a chemical etching method” 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. 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].
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 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2021/0164111, cited on IDS) as applied to claim 12 above.
Regarding claim 13, Lee 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. teaches all of the limitations of claim 12 above and 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).
Although Lee et al. does not expressly teach a value of the surface roughness Ra, 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 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), such that 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 to 50 µm. One of ordinary skill in the art would be motivated to adjust the surface roughness (Ra), 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yeh (US 2015/0251472) teaches a colored metal film comprising a metal article and a plurality of pores having a high layer, an intermediate layer, and a low layer (fine multilayered pattern), which together form an embossed image (Abstract, Figs. 2, 4, 5). Yeh teaches using inkjet printing instead of dyeing to form images on the metal article by sealing ink in the plurality of pores ([0011]-[0012], Figs. 4, 5).
Ikeda et al. (US 5,786,835) teaches a recording medium comprising an aluminum plate (23), an anodic oxide layer (22), and ink droplets (21) disposed thereon, wherein a surface treatment is applied to the aluminum plate to provide concavities (fine multilayered pattern) thereon (col 6, Ln 56-59; col 7, Ln 6-50; Fig. 2A). The anodic oxide layer (1) formed on an aluminum base (4) has a large number of cells (3) with a pore (2) formed at the center of each cell, wherein the ink receptivity is correlated to the pore diameter (col 7, Ln 58-col 8, Ln 11; Fig. 1). Ikeda et al. teaches that the use of ink-jet recording enables color recording at a high speed and makes it unnecessary to use developing solutions, washing solutions, etc., thus achieving a great cost reduction and reducing environmental pollution (col 2, Ln 13-21).
Hankey et al. (US 2013/0081951) teaches a method of treating a metallic surface of an article comprising texturizing the surface using a laser to create a controlled pattern (fine multilayered pattern) across the surface, and anodizing the surface, wherein the anodization process facilitates the absorption of dyes to impart a color to the anodized metal surface (Abstract, [0030], Fig. 12).
Joo et al. (US 2015/0145399) teaches a refrigerator (1) comprising a door (31) having a front panel (100) having a decorative member (600) coupled to an edge portion (130) thereof ([0060], [0062], Figs. 1-9). The decorative member may be formed of an aluminum material having a rounded shape to enhance the aesthetic effect thereof ([0018], [0079], Figs. 8-9).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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