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 .
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 1-16 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.
Claim 1 has the following issues of indefiniteness:
-a) limitation concerning “the plurality of structural units” (second clause of claim 1);
-b1) sequentially arranged first texture stripes;
-b2) two ends of at least some of the plurality of first texture stripes;
-b3) and b4) falling on a contour of the first structural unit;
-c1) sequentially arranged second texture stripes;
-c2) two ends of at least some of the plurality of second texture stripes;
-c3) and c4) falling on a contour of the second structural unit;
-d1) and d2) end portions of the at least some first texture stripes being in contact with end portions of the at least some second texture stripes; and
-d3) what is required of the connection between the end portions of different grouping of texture stripes.
For issue a), it is not clear if limitations re: the first structural unit and the second structural unit pertains to each first-level region (thereby requiring at least two regions, each with respective plurality of structural units, the latter including respective first structural unit and second structural unit, such that there are least two first structural unit and two second structural unit), or if the plurality of structural units pertains to structural units found in all first-level regions (thereby satisfied by one first structural unit and one second structural unit).
For issues b1) and c1), sequentially arranged implies texture stripes aligned in a sequence (viz. a series). This is not what is actually disclosed, and it appears Applicant actually discloses texture stripes that are (regularly) spaced apart, which would make such texture stripes arranged in parallel rather than in a series.
For issues b2) and c2), it is not clear if the respective limitations requires that within a particular structural unit, at least one texture stripe has two of its ends both “falling” on a “contour” of the particular structural unit; or if the claim can be met when within a particular structural unit, any two ends of texture stripes (the two ends do not need to be ends of the same stripe) can read on the respective recitations.
For issues b3), b4), c3), and c3), both falling and contour are indefinite. Contour as disclosed is an imaginary contour and not an actual physical perimeter. The recitations should be amended accordingly to reflect this. Next, “to fall” in a metaphorical sense implies a degree of preciseness. If an end falls at a boundary, then that end is located at that imaginary boundary. Yet, this is not the case in the Instant Application, as sometimes, a texture stripe terminates at an imaginary boundary, whereas in other cases, the texture stripe merely turns at an imaginary boundary but nonetheless continues onward (viz. does not terminate at the imaginary boundary). (See e.g. Spec. Fig. 5). It is therefore unclear what is required of “falling”, much less for the case of falling on a contour.
For issue d1) and d2), it is not clear if respective end portions are the same as the respective ends previously introduced. Furthermore, d3) it is not clear if the contact must be made between the same first structural unit with the same second structural unit, or if one connection each to respective different second structural units is also deemed to be covered by the limitation.
As claims 2-16 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issues in claim 1, claims 2-16 are also held to be rejected.
Claim 2 is indefinite, as it is not clear if it requires numerous cases in which a single end contacts at least two texture stripes, or if it merely requires the collection of ends to contact at least two texture stripes.
Claim 3 is indefinite, as the offset is indefinite without identification of a direction. Combination of claims 3 and 4 is free of this issue.
As claims 5-7 depend on claim 3, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 3, claims 5-7 are also held to be rejected.
Claim 9 is indefinite for improper Markush recitation. It is suggested that “or” be used in lieu of “and”.
Claim 10 is indefinite for lack of antecedent basis for the term “the width”, as there are at least two referents for protruding structures.
As claim 11 depends on claim 10, and as the limitations of claim 10 do not resolve the aforementioned issue in claim 10, claim 11 is also held to be rejected.
Claim 12 is indefinite, as at least literally, sequential and consecutive have the same meaning, and it is not clear in what ways is consecutive different from sequential.
Claim 13 is indefinite, as it is unclear what is the relationship between the protruding structures and the texture stripes. “[Arranged] at internals” is also idiomatic.
Claim 15 is indefinite for improper Markush recitation. It is suggested that “or” be used in lieu of “and”.
In view of eleven issues of indefiniteness in a single claim, it is not possible to ascertain the appropriate metes and bounds of claim 1. Instead, in view of policy of compact prosecution and solely as a courtesy to Applicant, prior art rejection is applied only to claims 1, 2, and 16, with discussion made using the broadest interpretation taken for claim 1. Namely, claim 1 is considered to require the presence of a plurality of structural units, one of which having characteristics of the first structural unit and another immediately adjacent one having characteristics of the second structural units, each first structural unit and each second structural unit respectively comprising a spaced apart texture stripes. No prior art is applied to any other dependent claim due to the high number of issues of indefiniteness.
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 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 113068347 A (referenced below using its machine translation, “CN ‘347”).
Considering claims 1 and 16, CN ‘347 discloses a cover for a mobile phone, the cover having textured regions exhibiting different brightness and darkness, wherein the texture is in the form of elongated linear element. (CN ‘347 ¶¶ 2-6 and 29). In particular, CN ‘347 discloses applying textured regions as a plurality of polygon regions, each region having respective subregions containing a plurality of the elongated linear elements. (Id. ¶¶ 30-32 and 47; and Figs. 5 and 6). At least the pentagonal region shown in Figs. 5 and 6 contains two non-overlapping areas, each made of two respective triangular subregions (mapping onto the claimed first and second structural unit), wherein all linear elements in all triangular subregions terminate or turns at a boundary, and wherein respective ends of linear elements in one triangular subregion contacts ends of linear elements in an adjacent triangular subregion.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/078664 A1 (referenced below using its English-language counterpart publication U.S. 2022/0111676 A1, “Fraschina”).
Considering claim 1, Fraschina discloses an optically variable element that produces optical images exhibiting different lightness and shadow due to perception angle, the optically variable element comprising an array of pixels, each of which being a respective grating structure. (Fraschina ¶¶ 0260-0281, 0349, and 0367). The particular implementation shown in Fig. 5 of Fraschina has 16 pixels arranged in a 4x4 array, each of which having a respective plurality of linear grating (viz. spaced apart elongated linear structures). (Id. Fig. 5, reproduced infra). It is readily apparent that for each pixel, its respective linear structures terminate at the boundary of said pixel. Furthermore, it is readily apparent that adjacent pixels are in direct contact. (Id. ¶¶ 260-0272 and Figs. 2 and 3). Therefore, there is at least one pixel (a first structural unit) having ends of its elongated linear structure contacting ends of elongated linear structure of an immediately adjacent pixel. (See, e.g. Id. Fig. 5 pixel bb with any of its four immediate neighboring pixels and Fig. 5 pixel cc with any of its four immediate neighboring pixels).
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Considering claim 2, pixel dc has two elongated linear structure whose respective one ends contact two elongated linear structure in adjacent pixels. Same is applicable for each of pixels ad, da, and db.
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, 2, and 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2022/189211 A1 (referenced below using its English-language counterpart publication U.S. 2024/0294031 A1, “Kratzer”).
Considering claims 1, 2, and 16, 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 references are directed to textured layers used in the field of security devices (e.g. for anti-counterfeiting purposes). In particular, DE 102018123482 A1 Fraschina both draw upon the disclosure of German Application 102018123482.1, with all figures of Fraschina (including Fig. 5) having respective counterparts in DE 102018123482 A1.
Kratzer expressly incorporates by reference content of DE 102018123482 A1. (Kratzer ¶ 0093). Given the specific mention to DE 102018123482 A1, and with Fraschina essentially disclosing the same, the teachings of Fraschina 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 Fraschina is deemed obvious in view of its content being effectively the same as that in DE 102018123482 A1. The top layer 16 of Kratzer would thus have topography of the pixels of Fraschina, and applying the specific embodiment from Fig. 5 of Fraschina reads on claims 1, 2, and 16. Kratzer anticipates or renders obvious claims 1, 2, and 16.
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 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 20 of U.S. Application 18/902,502 in view of U.S. CN 113068347 A (referenced below using its machine translation, “CN ‘347”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 1 and 20 of the ‘502 Application recites all limitations found in claims 1 and 16 of the Instant Application except for the limitation of contacts at end portions. However, as shown in Fig. 8 of CN ‘347, the configuration as recited in claim 1 of the ‘502 Application can be readily adapted to have the claimed contacts at end portions.
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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