DETAILED ACTION
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: identification means in claim 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: enclosure means in claim 16.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 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.
The term “random pattern” in claims 1, 10 and 16 is a relative term which renders the claim indefinite. The term “random pattern” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One of ordinary skill in the art would know not when a pattern becomes a random pattern because a random pattern to one person may not be considered random to another person.
As to claim 19, the phrase “identification means” has invoked 112 6th paragraph as the claims require a means for computer readable identification. However, this claim is indefinite because the corresponding specification fails to provide adequate structure to determine the metes and bounds of this limitation.
As to claims 2-9, 11-15, 17, 18 and 20 they are rejected as being dependent from a rejected claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-20 are rejected under 35 U.S.C. 102a1 as being anticipated by Kauppi et al (US Publication 20050098924).
As to claim 1, 10, and 16 Kauppi discloses an injected molded product including a foil 501, first injection molded part 503 and a second injection molded part 504 (paragraphs 38-40). The first molded part 503 can have color and consist of several differently colored areas or patches with metal flakes, dyes mixed within the polymer resin (embedded) (paragraph 39). Therefore, the first material can be a first patch of color and the second material can be the different colored patch. Kauppi discloses that the decorative pattern can be used to authenticate the product (paragraph 25). The molded product can be used as a cover for electronic components such as a mobile telecommunication device (paragraph 43 and claim 15). The cover for a mobile telecommunication device will read on an enclosing means surrounding the electronic device as the cover will enclose the electronic device on multiple sides.
It should be noted that claim 1 is a product by process claim in that it defines how the enclosure was formed. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply the structure of an enclosure that has a pattern, and the reference discloses such a product.
It should be noted that any pattern that is formed will read on the claimed term random pattern as any pattern could be considered a random pattern
As to claim 2, Kauppi discloses that the decorative pattern can be used to authenticate the product (paragraph 25).
As to claim 3, Kauppi discloses that metallic flakes (pigments) which can be used as either the first or second colorant (property).
As to claim 4, Kauppi discloses that the materials can be different colors or metal flakes and therefore these materials will have different absorption properties (paragraph 43).
As to claims 5 and 20, Kauppi discloses that the molded article can comprises metal flakes (particulate) and that can be the second material instead of a colorant.
As to claims 6, 7, 15, and 19, Kauppi discloses that the layers can be made of fluorescent dye (which can be the first material instead of a colorant) or contain secret security codes not visible under normal conditions and therefore use an x-ray or other machine to read the code (paragraphs 39 and 50).
It should be noted that claims 8 and 9 are product by process claims in that it defines how the enclosure was formed. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply the structure of an enclosure that has a pattern with different properties, and the reference discloses such a product.
As to claim 11, Kauppi discloses that the molded article has a surface texture as all articles contain a surface texture. It should be noted that any texture, smooth glossy, matte, rough would read on the pattern having a surface texture.
As to claim 12, Kauppi discloses that the materials can be different colors or metal flakes and therefore these materials will have different absorption properties as different colors/materials will have different absorption properties and therefore will have two absorption properties (paragraph 43).
As to claim 13, Kauppi discloses that the first molded part 503 can have color and consist of several differently colored areas or patches with metal flakes, dyes mixed within the polymer resin (embedded) (paragraph 39). Therefore, the first material can be a first patch of color and the second material can be the different colored patch.
As to claim 14, Kauppi discloses that the molded article can comprises metal flakes (particulate) and that can be the second material instead of a colorant (paragraph 43).
As to claims 17 and 18, Kauppi discloses that the first molded part 503 can have color and consist of several differently colored areas or patches with metal flakes, dyes mixed within the polymer resin (embedded) (paragraph 39). The different colors will be a different dye content/pigment content.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785