DETAILED ACTION
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 .
Priority
A certified copy of applicant’s priority documents to KR10-2022-0074971 and PCT/KR2023/008269 are included with the instant Office action to be placed within the file wrapper as no other copy of these documents has been found.
Claim Objections
Claims 1, 3, and 13 are objected to because of the following informalities: Claim 1 recites “disposed the plurality of pores” and appears to be missing “disposed in the plurality of pores” per paragraph 6 and Fig. 6 of the originally filed specification. Claims 3 and 13 recite “PH” all capitalized and should be “pH”. Appropriate correction is required.
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.
Claims 11-12 and 17-19 are rejected under 35 U.S.C. 112(b) 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.
Claims 11-12 and 17-19 recite “the coloring dye particle” and this phrase lacks antecedent basis as claim 9 only recites “an organic dye”. As such, the scope of the claims is unclear and the public is not appropriately appraised of the metes and bounds of the claims. This may be overcome by amending claim 9 to recite language similar to that of claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5, 7-15, and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Curran et al. (US 2019/0382911 – cited by applicant).
Considering claim 1, Curran teaches enclosures for a portable electronic device (abstract) including a metal substrate which is polished (Paragraph 38) and is subsequently anodized (Paragraph 39). Fig. 2H (reproduced below) depicts where the anodized layer has a plurality of pores and a pore wall where the pores contain organic dye particles (222) (Paragraph 43) and zinc ions (234) (e.g. a conductivity enhancer) (Paragraphs 52 and 56). As such, Curran anticipates that which is claimed.
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Considering claim 2, Curran teaches where the zinc ions are uniformly dispersed throughout the oxide layer (Paragraph 51) (e.g. a depth of ~100%).
Considering claim 3, Curran teaches the use of zinc acetate (Paragraph 49) which is evidenced by PubChem as having pH of 6-8.0 when formed in a 5% solution. See MPEP 2131.03.
Considering claims 4-5, Curran does not specify the claimed L* or RGB values. However, as outlined above, Curran teaches a substantially identical enclosure and electronic device as that which is claimed and therefore these features are expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claims 7-8, the recitation of speed of the coloring dye particle and H+ ion incorporation are considered product-by-process limitations and are not considered to afford a patentable distinction over the prior art absent a showing as to how these affect the final structure of the claimed electronic device. See MPEP 2113. As outlined above, Curran teaches a substantially identical electronic device and housing and therefore is considered to meet these limitations.
Considering claim 9, Curran teaches a method of manufacturing an enclosure for the electronic device comprising subjecting a metal substrate to polishing then anodizing (Paragraphs 38-39) and coloring via adsorption of dye particles (222) (Paragraph 43) and zinc ions (234) (e.g. a conductivity enhancer) (Paragraphs 52 and 56- Fig. 2H – reproduced above). As such, Curran anticipates that which is claimed.
Considering claim 10, Curran teaches where the enclosure of the metal substrate has the anodized layer on the surface (Paragraph 56).
Considering claim 11, Curran teaches where the anodized layer comprises a pore wall with a plurality of pores and where the dye and Zn particles are disposed in the pores (Fig. 2H).
Considering claim 12, Curran teaches where the zinc ions are uniformly dispersed throughout the oxide layer (Paragraph 51) (e.g. a depth of ~100%).
Considering claim 13, Curran teaches the use of zinc acetate (Paragraph 49) which is evidenced by PubChem as having pH of 6-8.0 when formed in a 5% solution. See MPEP 2131.03.
Considering claims 14-15, Curran does not specify the claimed L* or RGB values. However, as outlined above, Curran teaches a substantially identical enclosure and electronic device as that which is claimed and therefore these features are expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.02.
Considering claims 17-18, Curran teaches a method of coloring as outlined above with the use of zinc acetate and organic dye particles (Paragraphs 52 and 43) which is substantially identical to that which is claimed. Therefore, one would reasonably expect the speed of coloring dye particle and H+ ion incorporation to behave the same as that which is claimed as substantially identical materials treated in a substantially identical manner are expected to behave the same, absent an objective showing. See MPEP 2112.02.
Considering claim 19, Curran teaches where the metal substrate is capable of being anodized (Paragraph 39) and where the dye particles are adsorbed in the pores (Fig. 2H).
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Curran et al. (US 2019/0382911 – cited by applicant) as applied to claims 1 and 9 above further in view of Tatebe et al. (US 2011/0056836).
Considering claims 6 and 16, the teachings of Curran as applied to claims 1 and 9 are outlined above. Curran teaches where the metal substrate is polished (Paragraph), but does not teach the claimed gloss value.
In a related field of endeavor, Tatebe teaches a metal surface having a cosmetic appearance (abstract) for electronic components (Paragraph 6) and enclosures thereof (Paragraph 41). Tatebe teaches a method of where the metal part is polished and then anodized (Paragraph 9) and the treatment affords a desired cosmetic effect including having a glossy or shiny appearance without the requirement of lacquer or paint (Paragraph 34). In order to achieve the desired effects the gloss value may be between 130-280 gloss units (Paragraph 66).
As Curran and Tatebe teach polished enclosures for electronic devices they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Curran with the gloss values taught by Tatebe as this is known to afford a glossy or shiny appearance without the use of lacquer or paint and one would have had a reasonable expectation of success. Further, the gloss values taught by modified Curran overlap those which are claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Tatebe (US 2013/0153427), Cabot et al. (US 2016/0160372), and Dean et al. (US 2019/0093251) teach anodized layers and the coloring thereof similar to that which is claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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