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
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-20, 29-37, drawn to screen protector and screen, comprising a screen protector substrate including an image etched on a top surface thereof, said image being formed by micro-fractures in said top surface created by a laser and activated by a chemical process, said screen protector substrate operatively attached to said screen through an adhesive layer on a bottom surface of said screen protector substrate, said image being visible when said screen is inactivated through light passing through unetched portions of said image and said image being transparent/translucent when said screen is activated, classified in G06F1/1637.
Claim 21-28, drawn to method of making a screen protector, including the steps of: etching an image into a screen protector substrate by striking a top surface of the screen protector substrate with a laser and creating micro-fractures in the top surface; forming intervals that allow light to pass through unetched portions of the image; applying a chemical compound to the screen protector substrate to activate the image and remove residual material; applying an anti-fingerprinting coating to the screen protector substrate; and applying an adhesive layer for adhering the screen protector substrate to a screen. classified in H04M1/0266.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In the instant case, Inventions I and II do not overlap in scope (are mutually exclusive) and are not obvious variants.
Invention I specifically discloses screen protector and screen, comprising a screen protector substrate including an image etched on a top surface thereof, said image being formed by micro-fractures in said top surface created by a laser and activated by a chemical process, said screen protector substrate operatively attached to said screen through an adhesive layer on a bottom surface of said screen protector substrate, said image being visible when said screen is inactivated through light passing through unetched portions of said image and said image being transparent/translucent when said screen is activated. In contrast, Invention II discloses method of making a screen protector, including the steps of: etching an image into a screen protector substrate by striking a top surface of the screen protector substrate with a laser and creating micro-fractures in the top surface; forming intervals that allow light to pass through unetched portions of the image; applying a chemical compound to the screen protector substrate to activate the image and remove residual material; applying an anti-fingerprinting coating to the screen protector substrate; and applying an adhesive layer for adhering the screen protector substrate to a screen.
Inventions I and II clearly do not overlap in scope and are not obvious variants amongst each other. Inventions I and II initiate separate searches and are in a different field. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Ms. Laura Dellal on July 6, 2026 a provisional election was made without traverse to prosecute the invention of Invention I, Claims 1-20, 29-37. Affirmation of this election must be made by applicant in replying to this Office action. Claims 21-28 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20, 29-37 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 pre-AIA the applicant regards as the invention.
Examiner submits it is unclear what it means for an “inactivated screen through light passing through unetched portions of said image.” In the context of an “inactivated screen,” there should not be any light passing through which makes this limitation contradictory. Examiner suggests removing this limitation.
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.
Claims 1-20, 29-37 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Mody (US 20180307278), in view of Hill (US 20130059117).
With respect to claim 1, 12, 29, Mody discloses screen protector and screen, comprising a screen protector substrate including an image etched on a top surface thereof, said image being formed by micro-fractures in said top surface created by a laser and activated by a chemical process, said screen protector substrate operatively attached to said screen through an adhesive layer on a bottom surface of said screen protector substrate (Paragraph 0025-0026, 0030, 0032). Examiner submits this is equivalent to how etching or engraving processes can be utilized to apply indicia (image) to one or both of the side surfaces of the tempered glass protector 30. Examiner is not giving patentable weight to the method of production of the “image,” and the feature of “image being formed by micro-fractures in said top surface created by a laser and activated by a chemical process.” Per MPEP 2113, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966.
Mody does not disclose said image being visible when said screen is inactivated through light passing through unetched portions of said image and said image being transparent/translucent when said screen is activated. However, Hill discloses said image being visible when said screen is inactivated through light passing through unetched portions of said image and said image being transparent/translucent when said screen is activated (Paragraph 0004, 0011-0012, Figures 1-2). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify Hill to incorporate the limitations of Mody and for the display screen protecting film of Hill to be tempered glass and image 14 of Hill to be engraved on the top surface of this modified tempered glass screen protector, since both Mody and Hill identically disclose an image on a screen protector substrate as disclosed in Paragraph 0025-0026, 0030 of Mody; Paragraph 0004, 0011-0012, Figures 1-2 of Hill.
With respect to claim 2, Mody discloses “wherein said screen protector substrate is made from a material chosen from the group consisting of tempered glass, plastic, wood, fabric, metal, fiber, stone, natural material, synthetic material, and composite material” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 3, Mody discloses “wherein said screen protector substrate is made of tempered glass with a thickness of 0.1 mm to 0.4 mm and a tempering range between 4H-9H” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 4, Mody discloses “wherein said image is chosen from the group consisting of graphical images, letters, numbers, and symbols.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 5, Mody discloses “wherein said image has a resolution of dots per inch of 50-2400” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 6, Mody discloses “wherein said chemical process is further defined as a compound chosen from the group consisting of water and alcohol” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 7, Mody discloses “further including an anti-fingerprinting coating on said top surface” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 8, Mody discloses “further including an adhesive layer on a bottom surface of said screen protector substrate for adhering the screen protector substrate to a screen.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 9, Mody discloses “wherein the adhesive layer is an acrylate-based glue with a thickness of 90 to 300 micrometers” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 10, Mody discloses “wherein said screen protector is adhered to a screen through said adhesive layer” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 11, Mody discloses “wherein said screen is one chosen from the group consisting of a mobile phone, a tablet computer, a laptop computer, a flat screen monitor, a flat screen television, a watch face, a display screen on a building, a window, an appliance, furniture, a product display, a vehicle light, a vehicle window, a vehicle windshield, and a vehicle interior display screen.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 13, Mody discloses “wherein said screen protector substrate is made from a material chosen from the group consisting of tempered glass, plastic, wood, fabric, metal, fiber, stone, natural material, synthetic material, and composite material.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 14, Mody discloses “wherein said screen protector substrate is made of tempered glass with a thickness of 0.1 mm to 0.4 mm and a tempering range between 4H-9H” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 15, Mody discloses “wherein said image is chosen from the group consisting of graphical images, letters, numbers, and symbols” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 16, Mody discloses “wherein said image has a resolution of dots per inch of 50-2400” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 17, Mody discloses “wherein said chemical process is further defined as a compound chosen from the group consisting of water and alcohol” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 18, Mody discloses “further including an anti-fingerprinting coating on said top surface” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 19, Mody discloses “wherein the adhesive layer is an acrylate-based glue with a thickness of 90 to 300 micrometers” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 20, Mody discloses “wherein the adhesive layer is an acrylate-based glue with a thickness of 90 to 300 micrometers” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 30, Mody discloses “wherein the screen protector substrate is made from a material chosen from the group consisting of tempered glass, plastic, wood, fabric, metal, fiber, stone, natural material, synthetic material, and composite material” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 31, Mody discloses “wherein the screen protector substrate is made of tempered glass with a thickness of 0.1 mm to 0.4 mm and a tempering range between 4H-9H” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 32, Mody discloses “wherein the image is chosen from the group consisting of graphical images, letters, numbers, and symbols” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 33, Mody discloses “wherein the image has a resolution of dots per inch of 50-2400” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 34, Mody discloses “wherein said chemical process is further defined as a compound chosen from the group consisting of water and alcohol” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 35, Mody discloses “wherein said installing step is further defined as applying the screen protector substrate to the screen through an adhesive layer on a bottom surface of the screen protector substrate.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 36, Mody discloses “wherein said installing step is further defined as applying the screen protector substrate to the screen through an adhesive layer on a bottom surface of the screen protector substrate.” (Paragraph 0025-0026, 0030, 0032).
With respect to claim 37, Mody discloses wherein the screen is one chosen from the group consisting of a mobile phone, a tablet computer, a laptop computer, a flat screen monitor, a flat screen television, a watch face, a display screen on a building, a window, an appliance, furniture, a product display, a vehicle light, a vehicle window, a vehicle windshield, and a vehicle interior display screen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANKUR JAIN whose telephone number is (571)272-9747. The examiner can normally be reached on Monday-Friday 10:00-6:00
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 http://pair-direct.uspto.gov. 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.
/ANKUR JAIN/Primary Examiner, Art Unit 2649
Prosecution Insights