DETAILED ACTION
Claims 1-20 have been considered for patentability.
Double Patenting
Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 12,150,264. This is a statutory double patenting rejection.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Application 18/461458 (458 Application). Although the claims at issue are not identical, they are not patentably distinct from each other. The claims in the 458 Application are directed to the same clad electronic device housing comprising an exterior titanium portion joined to an interior aluminum portion, an intermetallic compound/interface layer disposed between the portions, and pore/engagement structures for mechanically coupling non-metallic portions to the housing. The only notable differences between the claims being the recitation of aluminum as the interior metal, particular intermetallic layers, pore dimensions, etched engagement features and polymer/resin/moldable non-metallic materials. All of which are obvious variations of the same disclosed titanium/aluminum housing and mechanical interlocking structures. Therefore, the instant claims are not patentably distinct from the 458 Application claims.
Note this is a provisional obvious type double patenting rejection because the 458 Application has not yet issued as a patent though a Notice of Allowance has been mailed.
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.
Claim(s) 1-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Publication 2009/0197116) in view of Huang et al., “A New Method of Hybrid Friction Stir Welding Assisted by Friction Surfacing for Joining Dissimilar Ti/Al Alloy,” Materials Letters, Vol. 207, pp. 172-175, July 19, 2017 (hereinafter Huang).
In re Claim 1, Cheng discloses a housing for an electronic device, comprising: an exterior titanium portion 11 (Figure 3; paragraph 0010); an interior metal 12 joined to the exterior titanium portion, the interior metal comprising a material different than the exterior titanium portion (paragraph 0010).
Cheng does not explicitly disclose an intermetallic interface disposed between the exterior titanium portion and the interior metal, the intermetallic interface having a thickness disposed between the interior metal and the exterior titanium portion. However, providing such an interface was known in the art before the effective filing date. For example, Huang discloses an intermetallic interface (TiAl3) having a thickness of 1 micrometer to as small as 250 nanometers. Huang, p. 172, Introduction. It would have been obvious to a person having ordinary skill in the art of device housings at a time before the effective filing date to have provided an intermetallic interface between the exterior and interior metal portions, as otherwise disclosed in Cheng, to improve the joining of the titanium and aluminum. Huang teaches that controlling/minimizing the thickness of the TiAl3 intermetallic interface improves joining of the dissimilar materials. Cheng also suggest that the titanium and aluminum portions may be formed by rolling and exploding which suggests formation of an intermetallic interface.
In re Claim 2, Huang discloses wherein the intermetallic interface has a thickness of less than 1 micrometer. Huang, p. 172, Introduction.
In re Claim 3, Huang discloses wherein the thickness of the intermetallic interface may be less than 250 nanometers. Huang, p. 172, Introduction. Huang does not explicitly disclose wherein the intermetallic interface is less than 200 nanometers. However, it would have been obvious to a person having ordinary skill in the art of device housings to have further reduced the intermetallic interface to 200 nanometers being sufficiently close to the less than 250 nanometers disclosed in Huang and encompassed by the nanoscale minimized intermetallic layer thickness taught by Huang. This would only have amounted to routine optimization of the known TiAl3 layer as otherwise taught in Huang. See MPEP §2144.05 (II).
In re Claim 6, Cheng discloses wherein: the intermetallic interface comprises a continuous layer (Figure 3) between the interior metal 12 and the exterior titanium portion 11; and the intermetallic interface separates the interior metal from the exterior titanium portion. Huang also discloses wherein: the intermetallic interface TiAl3 comprises a continuous layer between the interior metal (aluminum) and the exterior titanium portion (See Huang, Figures 1a, 1b); and the intermetallic interface separates the interior metal from the exterior titanium portion.
In re Claim 7, Huang further discloses wherein: the intermetallic interface TiAl3 comprises a discontinuous layer between the interior metal (aluminum) and the exterior titanium portion (See Figure 3c); and the interior metal contacts the exterior titanium portion.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Publication 2009/0197116), Huang et al., “A New Method of Hybrid Friction Stir Welding Assisted by Friction Surfacing for Joining Dissimilar Ti/Al Alloy,” Materials Letters, Vol. 207, pp. 172-175, July 19, 2017 (hereinafter Huang) and further in view of Liu et al., “Atomic Diffusion Mechanism and Interface Nanomechanics in the AI/Ti Composite Structures,” Composites Part B: Engineering, Vol. 230, Article 109507, Feb 1, 2022 (hereinafter Liu).
In re Claim 4, Cheng as modified by Huang discloses the limitations as noted above but does not explicitly disclose wherein the intermetallic interface comprises a high magnesium phase. However, Liu discloses a magnesium enriched cluster (high magnesium phase) that is formed at an intermetallic interface between titanium and an aluminum alloy when combining the titanium and aluminum alloy. Liu, p. 2, col. 1, ll. 9-12. It would have been obvious to a person having ordinary skill in the art of device housings to have used an aluminum alloy, as disclosed in Liu, with the apparatus as otherwise disclosed in Cheng as modified by Huang, to implement the techniques of joining the titanium with the aluminum alloy of Liu which results in the release of a magnesium enriched cluster at the intermetallic interface. Liu, p. 9, col. 1. Select use of a magnesium containing aluminum alloy for the interior metal alloys high magnesium phase into the interface which slows the growth of TiAl3 at the interface which supports Huang’s stated goal of controlling/minimizing brittle TiAl3 thickness in the intermetallic interface.
In re Claim 5, Cheng as modified by Huang disclose the limitations above and Huang further discloses forming high quality titanium-aluminum joints in which excellent bonding is provided on a nanoscale TiAl3 interface with mechanical interlocking (See Huang, Figures 3c, 3d), and further that a non-defect interface was observed in cross-section. Huang, p. 173, col. 1. Cheng as modified by Huang does not explicitly disclose wherein the intermetallic interface is free of discrete oxide particles. However, Liu discloses preparing aluminum and titanium samples by polishing and acid pickling before hot compression and forming a nanoscale solution which, after annealing, provides a metal-to-metal surface (i.e. free of discreet oxide particles) that generates a TiAl3 interface. Liu, p. 2, col. 2. It would have been obvious to a person having ordinary skill in the art of device housings to have used a process like that disclosed in Liu with the techniques and structures as otherwise disclosed in Cheng as modified by Huang to ensure that the titanium and aluminum metals were free of discreet oxide particles before, during and after the joining process. The existence of discreet oxide particles would weaken the bond between the titanium and aluminum.
Claim(s) 8-11, 13 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Publication 2009/0197116) in view of Sun et al. (US Publication 2014/0360974).
In re Claim 8, Cheng discloses a housing 10 for an electronic device, comprising: an exterior titanium portion 11 (Figure 3; paragraph 0010) at least partially defining a first engagement feature (See Figure 3, the curvature at the edges of the portion 11 being a first engagement feature); and an interior metal portion 12 joined to the exterior titanium portion.
Cheng does not explicitly disclose engagement features on the interior surface of the interior metal portion. However, providing such was not new in the art of device housing at a time before the effective filing date. For example, Sun discloses an aluminum substrate that is provided with engagement features (nanopores) on a surface to then have a non-metallic portion (resin) joined to the aluminum by injection molding. Sun, paragraphs 0021-0026. It would have been obvious to a person having ordinary skill in the art of device housings to have used an aluminum to non-metallic attachment technique like that disclosed in Sun with the apparatus as otherwise disclosed in Cheng. Sun teaches an effective way to adhere a non-metallic portion to an aluminum surface. Providing a non-metallic portion to the aluminum portion allows for the connection of components to the housing wall without the need for additional penetrations to the wall (i.e. no screw holes or other potentially damaging/weakening engagement features).
In re Claim 9, Sun also discloses wherein the non-metallic portion comprises plastic. Sun, paragraph 0040.
In re Claim 10, Sun discloses wherein the engagement features comprise a plurality of pores of an oxide layer. Sun, paragraphs 0007, 0021-0026.
In re Claim 11, Sun discloses a density of pores (paragraphs 0021-0026) and a pore depth of about 9.5 micrometers (paragraph 0026). Sun does not explicitly disclose wherein the plurality of pores has a density between approximately 30% and 65%, or an average pore depth between 25 and 50 micrometers. However, it would have been obvious to a person having ordinary skill in the art of device housings to optimize the density and average depth of the pores, including to the claimed density of approximately 30% to 65% and average pore depth of 25 to 50 micrometers, because optimizing a known effective variable to improve a known result, namely resin penetration and mechanical interlocking between aluminum and a non-metallic material, would have involved no more than routine experimentation. See MPEP §2144.05. Sun does disclose that pore structure and the number of pores enables better connectivity between the non-metallic portion (i.e. resin) and the aluminum. Sun, paragraph 0026.
In re Claim 13, Sun discloses wherein the engagement features comprises a plurality of etched features on the engagement surface of the interior metal portion. Sun, paragraphs 0037-0038.
In re Claim 16, Cheng discloses a housing 10 for a portable electronic device, comprising: a clad sidewall portion at least partially defining an internal volume and an external surface of the portable electronic device (Figure 3), the clad sidewall portion comprising: an outer portion 11 comprising a first metal (Figure 3; paragraph 0010), the outer portion at least partially defining an engagement surface (See Figure 3, with a curved engagement surface); an inner portion 12 comprising a second metal bonded to the first metal (paragraph 0010), the inner portion at least partially defining the engagement surface (Figure 3).
Cheng does not explicitly disclose wherein the engagement surface includes at least one of a plurality of pores or a plurality of etched engagement features; and a non-metallic portion engaging at least one of the plurality of pores of the plurality of etched engagement features to couple the non-metallic portion to the clad sidewall. However, providing such was not new in the art of device housing at a time before the effective filing date. For example, Sun discloses an aluminum substrate that is provided with engagement features (nanopores) on a surface to then have a non-metallic portion (resin) joined to the aluminum by injection molding. Sun, paragraphs 0021-0026. It would have been obvious to a person having ordinary skill in the art of device housings to have used an aluminum to non-metallic attachment technique like that disclosed in Sun with the apparatus as otherwise disclosed in Cheng. Sun teaches an effective way to adhere a non-metallic portion to an aluminum surface. Providing a non-metallic portion to the aluminum portion allows for the connection of components to the housing wall without the need for additional penetrations to the wall (i.e. no screw holes or other potentially damaging/weakening engagement features).
In re Claim 17, Sun discloses wherein the non-metallic portion comprises a moldable material (i.e. resin, paragraph 0040) at least partially disposed in at least one of the plurality of pores or the etched engagement features. Sun, paragraphs 0021-0026.
In re Claim 18, Cheng discloses wherein the first metal comprises titanium. Cheng, paragraph 0010.
In re Claim 19, Cheng discloses wherein the second metal comprises aluminum. Cheng, paragraph 0010.
In re Claim 20, Sun discloses wherein the non-metallic portion (i.e. resin) is coupled to the engagement surface via a mechanical surface interlocking structure. See Sun, Figure 1.
Claim(s) 12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Publication 2009/0197116), Sun et al. (US Publication 2014/0360974) and further in view of Huang et al., “A New Method of Hybrid Friction Stir Welding Assisted by Friction Surfacing for Joining Dissimilar Ti/Al Alloy,” Materials Letters, Vol. 207, pp. 172-175, July 19, 2017 (hereinafter Huang).
In re Claims 12 and 14, Cheng as modified by Sun discloses the limitations above, Cheng further disclosing wherein the interior metal portion comprises aluminum (Cheng, paragraph 0010). Cheng does not explicitly disclose an intermetallic compound disposed between the exterior titanium portion and the interior metal portion. However, providing such an interface was known in the art before the effective filing date. For example, Huang discloses an intermetallic interface (TiAl3) having a thickness of 1 micrometer to as small as 250 nanometers. Huang, p. 172, Introduction. Huang also discloses wherein the intermetallic compound between the titanium portion and the aluminum metal portion includes a mechanical surface interlocking structure (See Huang, Figure 3d) between the exterior titanium portion and the interior metal portion. It would have been obvious to a person having ordinary skill in the art of device housings at a time before the effective filing date to have provided an intermetallic interface between the exterior and interior metal portions, as otherwise disclosed in Cheng, to improve the joining of the titanium and aluminum. Huang teaches that controlling/minimizing the thickness of the TiAl3 intermetallic interface improves joining of the dissimilar materials. Cheng also suggest that the titanium and aluminum portions may be formed by rolling and exploding which suggests formation of an intermetallic interface.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng et al. (US Publication 2009/0197116), Sun et al. (US Publication 2014/0360974), Huang et al., “A New Method of Hybrid Friction Stir Welding Assisted by Friction Surfacing for Joining Dissimilar Ti/Al Alloy,” Materials Letters, Vol. 207, pp. 172-175, July 19, 2017 (hereinafter Huang) and further in view of Liu et al., “Atomic Diffusion Mechanism and Interface Nanomechanics in the AI/Ti Composite Structures,” Composites Part B: Engineering, Vol. 230, Article 109507, Feb 1, 2022 (hereinafter Liu).
In re Claim 15, Cheng as modified by Sun and Huang disclose the limitations as noted above but do not explicitly disclose wherein the intermetallic compound comprises a high magnesium phase. However, Liu discloses a magnesium enriched cluster (high magnesium phase) that is formed at an intermetallic interface between titanium and an aluminum alloy when combining the titanium and aluminum alloy. Liu, p. 2, col. 1, ll. 9-12. It would have been obvious to a person having ordinary skill in the art of device housings to have used an aluminum alloy, as disclosed in Liu, with the apparatus as otherwise disclosed in Cheng as modified by Sun and Huang, to implement the techniques of joining the titanium with the aluminum alloy of Liu which results in the release of a magnesium enriched cluster at the intermetallic interface. Liu, p. 9, col. 1. Select use of a magnesium containing aluminum alloy for the interior metal alloys high magnesium phase into the interface which slows the growth of TiAl3 at the interface which supports Huang’s stated goal of controlling/minimizing brittle TiAl3 thickness in the intermetallic interface.
Conclusion
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/ADRIAN S WILSON/Primary Examiner, Art Unit 2841
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