DETAILED ACTION
Response to Amendment
Applicant’s amendments filed 6/22/26 have been entered. Currently claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The specification does not provide support for a non-repeatable pattern. The term is not supported within the specification.
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, 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 are rejected under 35 U.S.C. 103 as being unpatentable over Kauppi et al (US Publication 20050098924) in view of Green (US Patent 5851032) or Delaigle et al (US Publication 20110240739).
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. However this reference is silent to the pattern being unique and non-repeatable.
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.
Green discloses a composite image arrangement of patterns to prevent counterfeiting of an item. The image produced can be considered unique to the article to show it’s not a counterfeit item.
Delaigle discloses a method of forming an authentication pattern on the surface of an article to prevent counterfeiting. This pattern could be considered unique and non-repeatable.
It would have been obvious to one of ordinary skill in the art to have formed the pattern of Kauppi as suggested by Green or Delaigle and formed the pattern to be a unique and non-repeatable pattern to help authenticate the product of Kauppi and prevent counterfeiting as Kauppi discloses that the pattern can serve as some kind of authenticity certificate of the product (paragraph 25).
As to claim 2, Kauppi discloses that the decorative pattern can be used to authenticate the product (paragraph 25). It should be noted that the pattern is capable of being comparing received information associated with the unique and non-repeatable authentication pattern with stored information associated with the electronic device.
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.
Response to Arguments
Applicant's arguments filed 6/22/26 have been fully considered but they are not persuasive.
Applicant’s argue that that the patterns of Kauppi are not unique and non-repeatable. The examiner respectfully disagrees and argues that even though the patterns are intentionally designed that does not mean they are not unique. An image that has an unusual or rare quality to it would be considered to be unique. Further there are many different combinations of materials in Kauppi and it would allow for random combination of these materials when forming the pattern and layers that could be changed and therefore be non-repeatable. Further the claims are directed to a single pattern that could be considered random not multiple items and the fact that the pattern within the article can be a non-repeating pattern it would read on the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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, Mark Ruthkosky can be reached at 5712721291. 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.
/CHRISTOPHER M POLLEY/ Primary Examiner, Art Unit 1785
Prosecution Insights