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 of CLAIMS 10-21 in the reply filed on 02 October 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)). With respect to the species restriction requirement, applicant elected Claims 10-12 and 15-21 with traverse. The traversal is on the ground(s) that there is NO UNDUE BURDEN. This is not found persuasive because the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). Further, attaching a transparent substrate to a bumper exclusively different from attaching to an exterior surface. Claims 1-9 and 13-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected INVENTION, there being no allowable generic or linking claim.
Priority
Applicant is advised of possible benefits under 35 U.S.C. 119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to claim priority to an application filed in a foreign country.
Drawings
The drawings filed on 21 February 2024 are accepted.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 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.
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)(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 10, 12, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hegemier et al. (US PGPub 2015/0111623 A1), hereinafter Hegemier.
With regard to Claim 10, Hegemier discloses a method for producing a decorative mobile device case (¶0120; Figs. 14-17) comprising:
uploading a graphic image to a digital printing software application (¶0042, uploaded; 0048-0049, inkjet printed);
depositing at least one ink layer on a first side of a transparent substrate (¶0048-0049; 0117-0119, substrate may be of any configuration, type, material, etc, including transparent; 0059), wherein the at least one ink layer corresponds to the digital image (¶0048-0049; 0059); and
attaching, after said depositing the at least one ink layer, the first side of the transparent substrate to an exterior of the decorative mobile device case (¶0048-0049; Figs. 14-17).
With regard to Claim 12, Hegemier further discloses wherein attaching the transparent substrate to the decorative mobile device case comprises attaching, after said depositing the at least one ink layer, the first side of the transparent substrate to the exterior surface of the decorative mobile device case by at least one of a snap-fit coupling, a mechanical binding, a magnetic coupling, and an adhesive (¶0048-0049; Figs. 14-17, adhesive sticker).
With regard to Claim 20, Hegemier further discloses wherein depositing the at least one ink layer comprises depositing the at least one ink layer using an ultraviolet (UV) inkjet digital printing process (¶0049).
With regard to Claim 21, Hegemier further discloses wherein the UV inkjet digital printing process comprising spraying ink droplets onto the first side of the transparent substrate so as to form a layer of ink that has a smooth side formed against the first side of the transparent substrate and a relatively rough side opposite to the smooth side (¶0048, 0057-0058, texture is formed on one or both side of the image; the skin may be adhesive on the side opposite of the image, giving it a rough surface).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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.
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 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, 15-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hegemier, in view of Tashiro et al. (US PGPub 2018/0257388 A1), hereinafter Tashiro.
With regard to Claim 11, Hegemier does not explicitly disclose defining at least one opacity enhancing layer using said digital printing application; and forming, using said digital printing application, a composite image comprised of said graphic image and said at least one opacity enhancing layer, wherein said depositing comprises depositing the at least one ink layer where the at least one ink layer corresponds to the composite image.
The secondary reference of Tashiro discloses defining at least one opacity enhancing layer using said digital printing application (¶0003-0004, white ink image); and forming, using said digital printing application, a composite image comprised of said graphic image and said at least one opacity enhancing layer (¶0053-0067), wherein said depositing comprises depositing the at least one ink layer where the at least one ink layer corresponds to the composite image (¶0053-0067).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the opacity enhancing layer of Tashiro, with the method of Hegemier, in order to increase image quality, as taught by Tashiro (¶0028).
With regard to Claim 15, Hegemier further discloses wherein depositing the at least one ink layer comprises: depositing, on the transparent substrate (¶0048-0049; Figs. 14-17), a first ink layer corresponding to the graphic image (¶0048-0049; Figs. 14-17). However, Hegemier does not explicitly disclose depositing, on the transparent substrate after the first ink layer, a second ink layer corresponding to a first of the at least one opacity enhancing layers.
The secondary reference of Tashiro discloses depositing, on the transparent substrate after the first ink layer, a second ink layer corresponding to a first of the at least one opacity enhancing layers (¶0053-0067).
With regard to Claim 16, Hegemier does not explicitly disclose wherein depositing the at least one ink layer further comprises depositing, on the transparent substrate after the second ink layer, a third ink layer corresponding to a second of the at least one opacity enhancing layers.
The secondary reference of Tashiro discloses wherein depositing the at least one ink layer further comprises depositing, on the transparent substrate after the second ink layer (¶0053-0067), a third ink layer corresponding to a second of the at least one opacity enhancing layers (¶0053-0067; Fig. 12B, N11 and N12 color layers, N2 white layer, N2 and N12 considered opacity enhancing).
With regard to Claim 18, Hegemier does not explicitly disclose wherein defining the at least one opacity enhancing layer using said digital printing application comprising defining the at least one opacity enhancing layer to overlay less than all of the graphic image.
The secondary reference of Tashiro discloses wherein defining the at least one opacity enhancing layer using said digital printing application comprising defining the at least one opacity enhancing layer to overlay less than all of the graphic image (¶0053-0067, white ink does not overlay entire color image, see Figs. 9-15, white ink is N2).
With regard to Claim 19, Hegemier does not explicitly disclose wherein defining the at least one opacity enhancing layer to overlay less than all of the graphic image comprising defining the at least one opacity enhancing layer with a reduced border as compared to a border of the graphic image.
The secondary reference of Tashiro discloses wherein defining the at least one opacity enhancing layer (Figs. 9-15; N2) to overlay less than all of the graphic image (Figs. 9-15, layer N2) comprising defining the at least one opacity enhancing layer with a reduced border as compared to a border of the graphic image (Figs. 9-15; ¶0085+, based on print speed, the amount of white ink N2 is reduced).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Hegemier, in view of Maher et al. (US 7,202, 970 B1), hereinafter Maher.
With regard to Claim 17, Hegemier does not explicitly disclose forming a reverse of the digital image using said digital image software application prior to said depositing the at least one ink layer.
The secondary reference of Maher discloses forming a reverse of the digital image using said digital image software application prior to said depositing the at least one ink layer (Fig. 2; Col. 2, Lines 1-10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the forming a reverse of the digital image of Maher, with the method of Hegemier, in order to view the images as being printed currently on transparent media, as taught by Maher (Col. 2, Lines 1-24).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
NOTE: Hegemier discloses wherein attaching the transparent substrate to the decorative mobile device case comprises attaching, after said depositing the at least one ink layer, the first side of the transparent substrate to a bumper of the decorative mobile device case by at least one of a snap-fit coupling, a mechanical binding, a magnetic coupling, and an adhesive (¶0110).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT A. RICHMOND whose telephone number is (313)446-6547. The examiner can normally be reached on M-F 9-6:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Douglas Rodriguez can be reached on 571-431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT A RICHMOND/Primary Examiner, Art Unit 2853