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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-10, 12, and 14 of U.S. Patent No.12,150,264. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a housing comprising a metal shell including Ti defining a substantially curved shape at least defining an exterior surface and an interior portion including Al and defining a feature, the interior portion forming a mechanical engagement to the metal shell and disposed interior. This is patentably indistinct of claim 8 of the ‘264 patent which recites a housing for an electronic device comprising an exterior portion of Ti at least partially defining an engagement feature and an interior Al portion at least partially defining an engagement feature and being joined to the exterior Ti portion, and a non-metallic portion engaging the engagement features. The instant claims and those of the ‘264 patent recite overlapping housing structures and are obvious in view of one another.
Instant claim 2 recites a thickness overlapping claim 8 of the ‘264 patent as the courts have held that the difference of a relative dimension does not render a patentable distinction. See MPEP 2144.04 (IV)(A). Instant claim 3 recites an interior portion overlapping claim 8 of the ‘264 patent. Instant claim 4 recites a periphery overlapping the exterior of claim 8 of the ‘264 patent. Instant claim 5 recites an oxide overlapping claim 10 of the ‘264 patent. Instant claim 6 recites a polymer overlapping claims 9-10 of the ‘264 patent. Instant claim 7 recites a titanium oxide overlapping claim 10 of the ‘264 patent. Instant claim 8 recites a component overlapping claim 8 of the ‘264 patent. Instant claim 9 recites features overlapping claim 10 of the ‘264 patent. Instant claim 10 recites a non-metal overlapping claim 8 of the ‘264 patent. Instant claim 11 recites a pre-formed component overlapping claim 8 of the ‘264 patent. Instant claim 12 recites bonding overlapping claim 8 of the ‘264 patent. Instant claim 13 recites bonding overlapping claim 8 of the ‘264 patent due to the recitation of a product-by-process. See MPEP 2113. Instant claim 14 recites a polymer overlapping claim 9 of the ‘264 patent. Instant claim 15 recites layers overlapping claims 10, 12, and 14 of the ‘264 patent. Instant claim 16 recites features overlapping claim 8 of the ‘264 patent.
Claims 1-6, 8, and 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, 9, and 12-14 of copending Application No. 18/670,688 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a housing comprising a metal shell including Ti defining a substantially curved shape at least defining an exterior surface and an interior portion including Al and defining a feature, the interior portion forming a mechanical engagement to the metal shell and disposed interior. This is patentably indistinct of claim 1 of the ‘720 application which recites a housing of an electronic device comprising an exterior portion comprising Ti defining an exterior surface of the electronic device and having a thickness greater than 25 microns and an interior portion comprising Al and defining an interior volume having a surface engagement feature and the Ti and Al are directly secured. The instant claims and those of the ‘720 application recite overlapping housing structures and materials and are obvious in view of one another.
Instant claim 2 recites a pre-formed body and thickness overlapping claim 1 of the ‘720 application. Instant claim 3 recites an interior portion overlapping claim 1 of the ‘720 application. Instant claim 4 recites a periphery overlapping the exterior of claim 1 of the ‘720 application. Instant claim 5 recites an oxide overlapping claim 6 of the ‘720 application. Instant claim 6 recites a polymer overlapping claim 7 of the ‘720 application. Instant claim 8 recites a component overlapping claim 9 of the ‘720 application. Instant claim 10 recites a non-metallic material overlapping claim 9 of the ‘720 application. Instant claim 11 recites pre-formed material overlapping claim 9 of the ‘720 application. Instant claim 12 recites bonding or mechanical engagement overlapping claim 9 of the ‘720 application. Instant claim 13 recites bonding overlapping claim 13 of the ‘720 application due to the recitation of a product-by-process. See MPEP 2113. Instant claim 14 recites polymer overlapping claims 12-13 of the ‘720 application. Instant claim 15 recites plural layer overlapping claim 14 of the ‘720 application. Instant claim 16 recites a feature overlapping claim 9 of the ‘720 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 recites “a metal outer portion” and “the outer portion”. It is suggested that applicant recite “the metal outer portion” in all instances to avoid confusion. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-16 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “A housing for an electronic device…defining an exterior surface of the electronic device” and the recitation of “the electronic device” lacks antecedent basis as it is not positively recited in the preamble of the claim. Accordingly, it is unclear if an electronic device is recited or not and the public is not appropriately appraised of the scope of the claim. Similar language lacking antecedent basis is also present in claims 3-4. Claims 2 and 5-7 are included in this rejection as they depend upon a rejected claim.
Claim 8 recites “the pre-formed outer portion” in line 7 of the claim and this phrase lacks antecedent basis. Similar language is present in claims 12, 13, and 16. This phrase renders the claims indefinite as it is unclear if the outer portion is pre-formed or not. Claims 9-11 and 14-15 are included in this rejection as they depend upon a rejected claim.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN104219907 – machine translation) and claims 8-20 are rejected over Zhang in view of Prest et al. (US 2010/0079970).
Considering claim 1, Zhang teaches a shell for an electronic device (abstract) comprising a housing for the electronic device to be set in the shell (Paragraph 29). The housing comprises a first metal material (11) with first bonding layer (112) bonded to second metal material (12) with second bonding layer (121) where the first metal material is substantially curved and is an exterior surface (Paragraphs 30-31; Fig.1 – reproduced below). The first metal may be a Ti-alloy and the second metal may be Al, etc. (Paragraph 33). The first and second bonding layer may have protrusions and cavities to bond the two layers (Paragraphs 8) to mechanically join the layers (Paragraph 9).
PNG
media_image1.png
295
596
media_image1.png
Greyscale
While not expressly teaching a singular example of the claimed housing this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Zhang as this is considered a combination of conventionally known metal materials with surface features conventionally known to form housings and one would have had a reasonable expectation of success.
Considering claim 2, Zhang teaches where the 1st metal body is preformed and joined to form a unitary body (Paragraph 11). While Zhang does not teach the claimed thickness, the courts have held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04 (IV)(A) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Considering claims 3-4, Zhang teaches where the shell provides an interior portion for the electronic device (Paragraph 29) and this is considered positioned around the periphery and establishing the peripheral surface.
Considering claim 5, Zhang teaches where the second component comprises Al (Paragraph 33) and this readily forms and oxide layer thereon.
Considering claim 8, Zhang teaches a housing (e.g. component) for an electronic device where the electronic device is included within the housing (Paragraph 29) with pre-formed Ti and Al materials to form a unitary body as outlined in claims 1 and 2 above. However, Zhang does not teach the claimed non-metallic material coupled to a feature.
In a related field of endeavor, Prest teaches a housing for internal components (abstract) used in electronic devices (Paragraph 2). The housing is a metal housing optionally for internal components (Paragraph 28) either directly (Paragraph 31) or with and adhesive (Paragraph 32) and the surface is treated to allow for bonding to plastic parts (Paragraph 29). The surface treatment comprises numerous surface irregularities to allow for a stronger mechanical interlock with the plastic (Paragraph 37).
As Zhang and Prest teach metal housings for electronic devices they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Zhang with the interior surface irregularities (i.e. surface features) disclosed by Prest as this is known to allow for a stronger mechanical interlock and one would have had a reasonable expectation of success.
Considering claim 9, Prest teaches where the irregularities comprise protrusions and cavities (Paragraph 37; Fig. 4A).
Considering claim 10, Prest teaches where the non-metal (i.e. plastic) couples a separate component (Paragraph 32; Fig. 1B).
Considering claim 11, Zhang teaches where the second metal component may be pre-formed (Paragraph 38).
Considering claim 12, Zhang teaches where the first and second metal layers are bonded by the first and second bonding layer which may have protrusions and cavities to bond the two layers (Paragraphs 8) to mechanically join the layers (Paragraph 9).
Considering claim 13, Zhang teaches where the second metal layer may be die cast on the first metal layer (Paragraphs 44 and 47).
Considering claim 14, Prest teaches where the bonded material is adhesive or plastic (e.g. polymer) (Paragraphs 29 and 32).
Considering claim 15, Prest depicts in Fig. 5A a surface layer of machined metal over the natural metal surface (Paragraph 41) and this is considered to be two layers bonded and cooperating to define the feature.
Considering claim 16, Zhang teaches where the second bonding surface of the second layer comprises protrusions (Paragraph 8) and Prest teaches where the opposing surface comprises protrusions and cavities to join the plastic material (Paragraph 37).
Considering claim 17, Zhang teaches a method of where the shell is formed by joining the first and second metal members (Paragraph 38) optionally of Ti and Al (Paragraph 33) where the first member is pre-formed (Paragraph 38). Prest teaches a method of forming surface irregularities on the surface of Al and bonding it to plastic (Paragraph 37).
Considering claim 18, Zhang teaches where the metal layers may be welded (Paragraph 9)
Considering claim 19, Zhang teaches where the metal layers may be joined by an adhesive layer (Paragraph 42) (e.g. an intermediate layer).
Considering claim 20, Zhang teaches where the second member may be die cast (Paragraphs 44 and 47).
Allowable Subject Matter
Claims 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and a terminal disclaimer were filed over US 12,150,264 and copending 18/670,688 as outlined above.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Zhang does not reasonably suggest the combination of the titanium metal shell, polymer, alumina, and aluminum interior portion combined with the other features of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yokoo et al. (US 2012/0162030) teaches a radio wave receiver housing with optional aluminum bonded to titanium similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/ Primary Examiner, Art Unit 1784
Prosecution Insights