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 without traverse of Invention I in the reply filed on 28 July 2026 (“Response”) is acknowledged.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, there being no allowable generic or linking claim.
Applicant’s election without traverse of Species A1, B1, C1, and D1 in the Response is acknowledged. After reconsideration, the election of species between Species D1 and D2 has been withdrawn.
Claims 5 and 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim.
Claims 1-4, 7-16, and 20 are examined on the merits below.
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 1-4, 7-16, and 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.
Both claims 1 and 20 recite that “an extension direction of the plurality of texture grooves is the same, wherein an angle between the extension direction of the plurality of the texture grooves and the first direction is an extension angle” (emphasis added). Given there are numerous texture units, each with respective texture grooves, and wherein different texture units have different extension angles, recitations of the plurality of texture grooves as emphasized lacks sufficient antecedent basis. Further, this recitation also causes conflict with recitation that extension angles of different texture units vary. This quoted recitation should be amended to recite that the same extension direction applies only in the context of within a particular texture unit.
As claims 2-4 and 7-16 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-4 and 7-16 are also held to be rejected.
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.
(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 1, 8, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2015/0192897 A1 (“Schilling”).
Considering claims 1, 8, and 11, Schilling discloses a decorative element having a decorative region wherein the decorative region has a laminate structure comprising a base plastic layer 25 containing a plurality of integrally formed microstructured elements 41 that rise from a base 40. (Schilling ¶¶ 0164, 0171-0174, 0182, 0183, and 0188). In a particular embodiment, Schilling discloses an array of areas 321, each of which having microstructured elements arranged in the form of regularly spaced elongated bars, each of which having trapezoidal cross-section, and wherein adjacent areas 321 having bars oriented in offset directions, possibly in increments of 15°. (Id. ¶¶ 0227-0233 and Figs. 9a and 9b, reproduced infra).
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In one reading of the reference, the adhesive layer 26 reads on the claimed substrate. Layers 25 and 26 thus read on the claimed decorative plate. Alternative, as layer 23 has topography that is negative of layer 25, and as layer 23 is located on a carrier 21, these two layers also read on the claimed decorative plate. (Schilling ¶¶ 0170-0171). Schilling anticipates claims 1, 8, and 11.
Claims 1, 2, 7, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2018/0215187 A1 (“Whiteman”).
Considering claims 1 and 14, Whiteman discloses a decorative security device comprising a transparent base layer 1 and pattern elements 11 (together mapping onto the decorative layer) formed on the transparent base layer 1, wherein the patterns elements are linear elongated elements. (Whiteman ¶¶ 0140-0143). In various embodiments, Whiteman discloses a decorative image formed from a series of regions, each of which having respective gratings oriented in a respective common direction, but where common directions of adjacent rings are offset. (Id. Figs. 7(a), 8(a) and 8(b), and 17). Whiteman thus anticipates claim 1.
Considering claim 2, in one embodiment, Whiteman discloses a decorative image formed from a series of regions, each of which having respective gratings oriented in a respective common direction, but where common directions of adjacent rings are offset at 10°. (Id. ¶¶ 0192-0195 and Figs. 8(a) and 8(b)).
Considering claim 7, Whiteman discloses line width of the linear elements at 100 µm and pitch of linear elements at 200 µm, which implies spacing of 100 µm. (Id. ¶ 0071).
Considering claim 15, Whiteman discloses usage of metal to form its linear pattern elements. (Id. ¶¶ 0140 and 0238).
Considering claim 16, Whiteman discloses deposition of an additional resist material over the linear pattern elements, the resist material having a different optical appearance and imparting a tint. This resist layer 225b reads on color-developing layer.
Claims 1, 2, 7-9, 11, 12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/031953 A1 (referenced below using its English-language counterpart publication U.S. 2022/0274435 A1, “Zhang”).
Considering claims 1, 2, and 14, Zhang discloses a decorative anti-counterfeit optical article device comprising a substrate 2 and a microstructured layer 3, wherein the microstructures are in the form of linear elongated elements. (Zhang ¶¶ 0042-0046 and 0050; and Figs. 2 and 6a, reproduced infra). In one embodiment, Zhang discloses a decorative image formed from a series of regions, each of which having respective linear elongated elements oriented in a respective common direction, but where common directions of adjacent regions are offset at 5°. Zhang thus anticipates claims 1 and 2.
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Considering claims 7-9, 11, and 12, as shown in Fig. 2 of Zhang, the microstructures have a trapezoidal cross-section, and the spacing between adjacent microstructures is also trapezoidal, albeit inverted with a longer base distal to the substrate. (Id. ¶ 0043 and Fig. 2). The inverted trapezoids read on the claimed grooves of claims 8 and 11, especially as the topography shown in Fig. 2 of Zhang is substantially similar to that of Figs. 11 and 12 of the Instant Application.
Zhang discloses that top portion 51 of its trapezoid has width of 4 µm, bottom portion 52 of its trapezoid has width of 6 µm, and that the pitch of trapezoids is 10 µm. (Id. ¶ 0043). From this, it is readily apparent for the inverted trapezoid, the pitch is 10 µm, with the substrate distal spacing at 6 µm and substrate adjacent spacing at 4 µm. At the respective local minima, spacing between adjacent inverted trapezoid is 6 µm, which is within the range of claim 7.
Furthermore, ratio of substrate adjacent spacing at 4 µm to substrate distal spacing at 6 µm is 0.67, and is within the ranges of claims 9 and 12.
Considering claim 16, dielectric layer located on the microstructured layer affects color and is deemed a color-developing layer.
Claim Rejections - 35 USC § 102/103
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.
(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.
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, 8, 11, and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2022/189211 A1 (referenced below using its English-language counterpart publication U.S. 2024/0294031 A1, “Kratzer”).
Considering claims 1, 8, 11, and 20, Kratzer discloses a decorative plastic film that can be used to decorate 3D or 2.5D articles such as housing shells of portable devices such as laptops and mobile phones, the decorative plastic film having a substrate 33 and a structured top layer 16. (Kratzer ¶¶ 0002-0004 and 0205-0217). Kratzer is analogous art, for it is directed to the same field of endeavor as that of the instant application (decorative film for mobile devices). Kratzer discloses that the topography of the structured top layer 16 can be in the form of a structured relief layer and specifically names four references for possible structures. (Id. ¶¶ 0089-0091 and 0264-0266). It is noted that all four refences are directed to textured layers used in the field of security devices (e.g. for anti-counterfeiting purposes), with DE 102012105571 A1 specifically being the German counterpart publication to Schilling as discussed above. Schilling is analogous art, for it is directed to the same field of endeavor as that of the instant application (decorative film, in particular one having surface relief structure).
Given the specific mention to Schilling and the relief structure taught therein, the teachings of Schilling are considered to have been disclosed as if part of Kratzer. Were this to be challenged (not conceded), then usage of the relief structures taught in Schilling is deemed obvious in view of specific directions in Kratzer. The top layer 16 of Kratzer would thus have topography of layer 25 of Schilling, and applying the specific embodiment from Figs. 9a and 9b of Schilling reads on claims 1, 8, 11, and 20. Kratzer per se anticipates or Kratzer in view of Schilling renders obvious claims 1, 8, 11, and 20.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schilling, as applied to claim 1 above.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/189211 A1 (referenced below using its English-language counterpart publication U.S. 2024/0294031 A1, “Kratzer”) per se or further in view of Schilling, as applied to claim 1 above
Considering claim 3, Schilling discloses the areas 321 have size of up to 100 µm. (Schilling ¶ 0233). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Whiteman, as applied to claim 1 above.
Considering claim 4, in another embodiment, Whiteman discloses a decorative image in the form of a circular structure having a plurality of concentric rings, each of which having respective gratings oriented in a respective common direction, but where common directions of adjacent rings differ. (Id. ¶¶ 0187-0192 and Fig. 7(a)). This embodiment is substantially similar to that of Fig. 8 of the Instant Application, which provides support for claim 4.
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With width of ~0.7 mm per concentric step (in view of number of linear grating and pitch of 200 µm) and 30° difference per step, the change is ~42°. However, as implied by Fig. 17 of the reference, rotation of 90° can take place in many more steps, thereby lowering difference per step of change. In the 5-step rotation implied by Fig. 17, each step would be 18°, resulting in change of ~26° per 1 mm.
Claims 1, 2, 7-14, 16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2022/189211 A1 (referenced below using its English-language counterpart publication U.S. 2024/0294031 A1, “Kratzer”) in view of WO 2021/031953 A1 (referenced below using its English-language counterpart publication U.S. 2022/0274435 A1, “Zhang”).
Considering claims 1, 2, 7-14, 16, and 20, as discussed in ¶¶ 24 and 25 above, Kratzer discloses a decorative plastic film that can be used to decorate 3D or 2.5D articles such as housing shells of portable devices such as laptops and mobile phones, the decorative plastic film having a substrate 33 and a structured top layer 16, wherein the structured top layer 16 can be in the form of a structured relief layer that are typically used for security devices (e.g. for anti-counterfeiting purposes). Kratzer discloses distance between adjacent depressions at 0.5 to 50 µm and profile dept less than 10 µm. (Kratzer ¶ 0091). However, the reference is silent on usage of trapezoid shaped linear relief structures having defined dimensions.
Zhang as discussed in ¶¶ 16-20 above, teaches a specific implementation of an anti-counterfeiting article exhibiting optical effects. In particular, Zhang teaches relief having a trapezoidal cross-section, the spacing between adjacent microstructures is also trapezoidal, albeit inverted with a longer base distal to the substrate, wherein the inverted trapezoid has pitch of 10 µm, substrate distal spacing of 6 µm, and substrate adjacent spacing of 4 µm. Although Zhang provides only very specific examples having dimensions, Zhang otherwise teaches that simple modifications can be made. (Zhang ¶ 0069). The specific relative shapes of Zhang is therefore deemed to be combinable with the disclosure in Kratzer re: size and spacing of linear relief structures. In particular, keeping the general relative dimensions of the trapezoid/inverted trapezoid while enlarging its sides is deemed obvious in view of Kratzer and Zhang, and this results in the dimensions recited in claims 7-13. Alternatively, increasing depth at a rate greater than increasing in width of the trapezoid/inverted trapezoid would also be obvious.
Double Patenting Rejection
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, 7-13, 15, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-12, 15, and 16 of U.S. Application 18/942,982 in view of U.S. 2019/0193453 A1 (“Fournier”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘982 Application recites all limitations found in claims 1, 7-13, 15, and 20 of the Instant Application except for the limitation of relative rotational offset. However, as shown in Fig. 9 of Fournier a configuration as recited in claim 1 of the ‘982 Application can be readily adapted to form a series of gratings exhibiting rotational offset.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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