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 .
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.
Claim 20 is 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 20 recites the limitations "the first film layer" and “the second film layer” in lines 2 and 5. There is insufficient antecedent basis for these limitations in the claim. Appropriate correction is required.
Double Patenting
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,228,759. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,228,759 encompass or include that which is recited in the present patent application.
Regarding claim 1, U.S. Patent No. 12,228,759 discloses a mobile terminal, comprising an enclosure, applied to a mobile terminal, wherein the enclosure comprises a substrate and a composite film layer coated onto the substrate, a thickness of the composite film layer gradually decreases or increases in a first direction, wherein the composite film layer comprises a first region, a second region, and a third region, the first region is adjacent to the second region, the second region is adjacent to the third region, and a difference between average film thicknesses of any two adjacent regions is less than or equal to 350 nanometers, wherein a difference between an average film thickness of the first region and an average film thickness of the second region is a first value, a difference between the average film thickness of the second region and an average film thickness of the third region is a second value, and a ratio of the first value to the second value is within a range of 0.5 to 2.0; the first region, the second region, and the third region are of a same arca and sequentially arranged at equal intervals in the first direction (claims 1, 4, 7, 9, 12, 14 and 19).
Regarding claim 2, U.S. Patent No. 12,228,759 discloses wherein the thickness of the composite film layer gradually decreases or increases in a second direction, wherein the second direction intersects with the first direction (claims 1, 7, 9, 14 and 16).
Regarding claim 3, U.S. Patent No. 12,228,759 discloses wherein an angle between the second direction and the first direction is less than or equal to 90°, and change trends of the thicknesses of the composite film layer in the first direction and the second direction are the same (claims 1, 7, 9, 14 and 16).
Regarding claims 4-6, U.S. Patent No. 12,228,759 discloses wherein the composite film layer comprises first film layers and second film layers that are disposed in stacks, a refractive index of a coating material used for the first film layer is different from a refractive index of a coating material used for the second film layer, and change trends of thicknesses of the first film layer and the second film layer in a same direction are the same (claims 1-4, 6, 7, 9-12 and 14-19).
Regarding claims 7-9, U.S. Patent No. 12,228,759 discloses wherein the first region, the second region, and the third region of the enclosure present a gradient color of adjacent colors of a wavelength ranging from 400 nanometers to 760 nanometers (claims 1, 4, 5, 7, 12-14, 19 and 20).
Regarding claims 10-12, U.S. Patent No. 12,228,759 discloses wherein the first region, the second region, and the third region of the enclosure present a gradient color of adjacent colors of a wavelength ranging from 350 nanometers to 492 nanometers (claims 1, 4, 5, 7, 12-14, 19 and 20).
Regarding claims 13-19, U.S. Patent No. 12,228,759 discloses the thickness of the composite film layer is less than or equal to 400 nanometers (claims 1, 7 and 14).
Regarding claim 20, U.S. Patent No. 12,228,759 discloses wherein the first film layer is made of a titanium oxide material, the second film layer is made of a silicon oxide material, the composite film layer is located on an inner surface of the substrate, and the inner surface faces an inside of the mobile terminal; or the first film layer is made of a silicon nitride material, the second film layer is made of a silicon oxide material, the composite film layer is located on an outer surface of the substrate, and the outer surface faces an outside of the mobile terminal (claims 1, 3, 6, 7, 11, 12, 14, and 17-19).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
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