Ex Parte Nashner

Patent Trials and Appeals BoardMar 29, 2019

12895384 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/895,384 09/30/2010 62579 7590 04/02/2019 APPLE INC./BROWNSTEIN c/o Brownstein Hyatt Farber Schreck, LLP 410 Seventeenth Street Suite 2200 Denver, CO 80202 FIRST NAMED INVENTOR Michael Nashner UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. P8431USX1 7689 EXAMINER EV ANS, GEOFFREY S ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 04/02/2019 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket@bhfs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL NASHNER Appeal2018-000393 Application 12/895,384 Technology Center 3700 Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and ALYSSA A. FINAMORE, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-000393 Application 12/895,384 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-9 and 21-38, which constitute all the claims pending in this application. Final Act. 3-7. Claims 10-20 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm-in-part. CLAIMED SUBJECT MATTER Appellant's claimed invention relates to marking outer housing surfaces of electronic devices. Spec. i-f3. Claims 1, 28, and 31 are independent, and claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for marking a portable electronic device, compnsmg: providing a metal structure for a housing of the portable electronic device, the metal structure being a multi-layered structure; anodizing at least a first surface of an outer layer of the multi-layered structure to form an outer surface for the housing of the portable electronic device; and subsequently altering surface characteristics of selective portions of an inner unanodized surface of the metal structure, wherein the outer layer of the multi-layered structure is formed of a first metal, and an inner layer of the multi-layered structure is formed of a second metal, the second metal being different than the first metal. 2 Appeal2018-000393 Application 12/895,384 REJECTIONS I. Claims 1-9, and 21-27 are rejected under 35 U.S.C. Â§ I03(a) over Cheng, Ng, Smithers, and Yeo. 1 Final Act. 3--4. II. Claims 28-30 are rejected under 35 U.S.C. Â§ I03(a) over Cheng, Ng, Zhao, Smithers, and Yeo. 2 Final Act. 4---6. III. Claims 31-38 are rejected under 35 U.S.C. Â§ I03(a) over Cheng, Ng, Smithers, and Yeo. Final Act. 6-7. ANALYSIS Claims 1, 7, and 31 3 Appellant contends that: [T]here is no reasonable rationale why anyone skilled in the art would reasonably seek to combine Cheng, Ng, Smithers, and Yeo. As discussed above, the references that the Final Office Action proposed to combine concern very different products, technologies and problems. To say that one skilled in the art would pick and choose from these references to cobble together a rejection, as the Office Action does, ignores reality. Common sense dictates that one of ordinary skill in the art would not 1 Cheng (US 2009/0197116 Al; pub. Aug. 6, 2009), Ng (US 2008/0274375 Al; pub. Nov. 6, 2008), Smithers (US 2005/0127123 Al; pub. June 16, 2005), and Yeo (US 2003/0201259 Al; pub. Oct. 30, 2003). 2 Zhao et al., "Anodizing Behavior of Aluminum Foil Patterned with Si02 Mask," 152 J. Electrochem. Soc'y, B4I 1-14 (2005) ("Zhao"). 3 Claims 1 and 31 are representative of their respective dependent claims for purposes of Rejections I and III. 37 C.F.R. Â§ 4I.37(c)(iv). Claim 7 is argued in the Appeal Brief under a separate subheading, but is discussed together with claim 1 for purposes of exposition. 3 Appeal2018-000393 Application 12/895,384 attempt to combine Cheng, Ng, Smithers, and Yeo as proposed in the Office Action. Appeal Br. 8. In particular, Appellant argues that one of ordinary skill in the art would not have had reason to combine Yeo' s teaching of marking a sole of a steam iron by laser irradiation with the teachings of Cheng or Smithers. Appeal Br. 7-9 and 12. Cheng describes a multi-layer metal sheet including a layer of an inexpensive metal such as aluminum laminated to a strong metal such as stainless steel by a cladding process. Cheng i-fi-flO, 15, and 16. Cheng teaches that the multi-layer metal sheet may be punched to fabricate a metal housing for a portable electronic device such as a mobile phone, an MP3 player, or a personal digital assistant. Cheng i-flO, 15. When used as a housing, the stainless steel may form an inner layer, and the aluminum may form an outer layer. Cheng ,II 3. The interface between the aluminum and stainless steel layers delimits a surface of the inner layer of stainless steel. In addition, Cheng teaches that an electrochemical treatment may be applied to the outer surface of such a housing (that is, to the aluminum layer), so as to provide the outer surface an attractive appearance. Id. See Final Act. 3; Ans. 11. Cheng does not disclose an outer layer of aluminum oxide or laser marking the electronic device. Final Act. 3; Ans. 11. Ng teaches that aluminum or aluminum alloy housings for electronic components may be anodized to enhance corrosion resistance, abrasion resistance, and aesthetic properties. Ng i-fi13, 4, and 36; Final Act. 3. Anodizing an aluminum or aluminum alloy housing may produce a 4 Appeal2018-000393 Application 12/895,384 transparent, opaque, or colored oxide surface over a layer of opaque aluminum metal. Ng ,r,r 35, 84. Ng's teachings would have suggested applying a specific electrochemical treatment, anodizing, to the aluminium outer layer of a housing fabricated from Cheng's multi-layer material to enhance corrosion resistance, abrasion resistance and aesthetic appeal. Final Act. 4. Because the strength advantages provided by the use of a stainless steel inner layer complement the enhanced corrosion resistance, abrasion resistance, and aesthetic appeal provided by anodizing the aluminum outer layer, it would have been obvious to combine the teachings of Cheng and Ng in a single portable electronic device housing. Id. Smithers discloses that it was known to mark the housings of portable electronic devices such as mobile phones, MP3 players, and personal digital assistants with designators such as brand names, logos, and other information. According to Smithers, such markings enhanced the prestige value of electronic devices, as well as providing useful information regarding the devices. Smithers i-fi-f5, 17, and 28; Fig. 1. Similar commercial reasons would have led one of ordinary skill in the art to mark portable electronic devices having housings fabricated from multi-layer material anodized in accordance with the teachings of Cheng and Ng. Although, as pointed out by Appellant, Smithers also describes a carrier for a portable electronic device, made from a resilient material and designed to be worn by the device's owner (Appeal Br. 7; Smithers i-fi-f27-29), this teaching does not 5 Appeal2018-000393 Application 12/895,384 detract from the suggestion in Smithers' teachings to mark the housing of the portable device for commercial purposes (Final Act. 7-8). Yeo describes marking the lower side of an anodized aluminum sole of a steam iron by irradiating the sole with a laser. Yeo i-fi-f l 5, 16, and 24. Yeo criticizes the use of paint, silk-screen printing, or stickers to mark the surface of a metal item because marks ceated by such means might be defaced when the item is used. Yeo i-f2. Yeo also criticizes methods that use a laser to ablate portions of the oxide layer on an anodized surface, since such methods yield uneven surface textures or expose underlying metal to corrosion. Yeo i-fi13, 6. Instead, Yeo teaches using a laser to create a mark situated at the interface ( that is, at an inner unanodized surface) where the oxide layer meets the underlying metal. Yeo i-fi18, 10, and 24. Yeo teaches that this may be accomplished by irradiating the anodized surface with a nanosecond infrared laser, that is, a laser having a wavelength in the near infrared range between 1000 nm and 1100 nm, and a pulse duration less than 30 nsec. Yeo i-fi-f25-26. According to Yeo, irradiation of the anodized surface by a laser having these characteristics causes material near the inner unanodized surface to melt and resolidify, thereby changing a visual characteristic of the material. Yeo i-f27; Final Act. 3--4; Ans 3-5. Smithers would have suggested marking the housing of a portable electronic device, fabricated in accordance with the teachings of Cheng and Ng, for commercial purposes. Yeo would have suggested the means to do so. Final Act. 4. 6 Appeal2018-000393 Application 12/895,384 Appellant "submits that is unreasonable to presume that one skilled in the art seeking to mark a portable electronic device would consider that the teachings of Yeo, which [concern] an iron, and would also consider the teachings of Smithers, which [concern] a carrier." Appeal Br. 7. This statement raises an issue whether Smithers and Yeo are non-analogous art. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). As an initial matter, Appellant's argument is unpersuasive because it only broadly asserts the prior art would not have been considered and does not tie the facts of this case to either test. Nevertheless, the evidence supports an affirmative finding that Smithers and Yeo are within the scope and content of the prior art. Appellant's Specification describes the field of endeavor as "marking products and, more particularly, marking outer housing surfaces of electronic devices." Spec. i-f3. Smithers is the same field of endeaver and therefore analogous art because it teaches marking portable electronic devices. Smithers i-f28; Final Act. 3. The field of endeavor cannot be narrowed to "seeking to mark a portable electronic device," as suggested in the contention quoted above. If seeking to mark a portable electronic device were a separate field of endeavor, then practitioners within the field must 7 Appeal2018-000393 Application 12/895,384 have had some reason to mark such a device. If so, the Examiner would not need the teachings of Smithers to prove it was known to mark portable electronic devices. In other words, Appellant can only define a field of endeavor narrower than portable electronic devices with housings in general if the Appellant concedes that the teachings for which the Examiner cites Smithers were known independently of Smithers. The Examiner correctly finds that Yeo would have been reasonably pertinent to those seeking to mark a portable electronic device, particularly to mark a device having an anodized housing as taught by Ng. Ans. 10. We adopt the Examiner's findings: Yeo is considered to be analogous art by solving the problem of marking a substrate of aluminum and an anodized outer layer by using [a] laser beam to selectively alter surface characteristics of selective portions and teaches how to mark with a laser beam a substrate of aluminum with an outer layer that has been anodized. [Appellant's] apparent distinction of Yeo not being a multi[-]layered structure of metal layers is not persuasive since Cheng . . . discloses a mutli-layered metal housing and [Appellant] only marks the outer metal layer and no other metal layer. Id.; see also Ans. 2-3. Appellant contends that one of ordinary skill in the art would not have adopted the marking process taught by Yeo to mark a multi-layer housing fabricated in accordance with the teachings of Cheng and Ng because Yeo' s description of the sole is consistent with fabrication from a homogenous layer of aluminum rather than from a multi-layer material. Appeal Br. 7-9. 8 Appeal2018-000393 Application 12/895,384 For the reasons that follow, this contention is not persuasive as applied to the subject matter of claims 1, 7, and 31. Claim 7 depends from claim 1. Claim 7, and thus claim 1 also, encompasses portable electronic devices having housings in which only a portion of the first metal ( for example, aluminum or aluminum alloy) is oxidized during the anodizing process. In this situation, to quote claim 7, the "inner unanodized surface corresponds to a surface ... within the outer layer of the multi-layer structure." Claim 31 similarly recites that the metal structure of the housing is "a multi-layered structure, with an anodized outer surface of an outer layer of the multi-layered structure." Claim 31 encompasses housings in which the inner unanodized surface corresponds to a surface within the outer layer of the multi-layered structure. The combined teachings of Cheng and Ng would have provided one of ordinary skill in the art reason to fabricate the housing of a portable electronic device from a multi-layer material including a stainless steel inner layer and an anodized, aluminum outer layer. If, for example, only a portion of the aluminum outer layer were anodized, an interface between the surface oxidized layer and an underlying, unanodized aluminum surface would define an inner unanodized surface within the aluminum outer layer. The Examiner correctly finds that, were Yeo' s marking process applied to a housing fabricated from such a material, the activity of the laser used to mark the housing would be confined substantially to the aluminum outer layer. The stainless steel inner layer might be anticipated to have a limited 9 Appeal2018-000393 Application 12/895,384 effect on the marking process. Ans. 3, 5; see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (explaining that persons skilled in the art "must be presumed to know something" about the art "apart from what the references disclose"). For this reason, one of ordinary skill in the art would have had reason to apply Yeo' s marking process to mark a housing fabricated according to the teachings of Cheng and Ng, and would have had a reasonable expectation that the process would be successful, despite Yeo' s failure to describe use of the marking process on a multi-layered material. In other words, one of ordinary skill in the art would have had reason to combine the teachings of Cheng, Ng, Smithers, and Yeo in a marking process satisfying the limitations of claims 1, 7, and 3 1. Claim 8 Claim 8 recites "wherein the inner unanodized surface corresponds to a surface of the inner layer of the multi-layered structure." To meet this limitation, the marking process taught by Yeo would have to be applied to mark a housing at or near the interface between the aluminum outer layer and the stainless steel inner layer. Reply Br. 3; see also Appeal Br. 13. Yeo does not describe marking a multi-layered material, much less marking such a material at or near an interface between layers of different metals. The Examiner's response to the Appellant's arguments regarding claim 8 does not address this deficiency in a persuasive manner. On the contrary, the Examiner appears to interpret claim 8 as encompassing marking at an inner 10 Appeal2018-000393 Application 12/895,384 unanodized surface within the aluminum outer layer. E.g., Ans. 6 ("The anodization of the outer layer of the multi-layered structure results in an outer layer that is anodized and there is a surface of an inner layer of outer metal (e.g.[,] aluminum) that touches the anodized layer."); see also Reply Br. 4, 6. The Examiner has not shown that one of ordinary skill in the art would have had reason to combine the teachings of Cheng, Ng, Smithers, and Yeo in a marking process satisfying the limitations of claim 8. Claims 3, 22 and 27 Appellant argues that none of the cited references describes the use of a nanosecond infrared laser, as recited in claims 3, 22, and 27. Appeal Br. 10. The use of a nanosecond infrared laser is taught in Yeo. Ans. 3--4; Yeo ,T,T25, 26. Claim 25 Appellant argues that Yeo is silent regarding marking as called for in claim 25. Appeal Br. 16. Yeo is not silent regarding marking. The Examiner found, and we agree, that Yeo discloses a laser marking process that does not noticeably disturb the zones of the anodized outer layer as claimed, in that the outer layer is "entirely or substantially unchanged" by the marking process. Ans. 8; Yeo ,TIO. Patent Owner's argument does not persuasively address this finding. 11 Appeal2018-000393 Application 12/895,384 Claim 34 Appellant argues that none of the cited references describes "wherein the portable electronic device is a hand-held electronic device and the outer layer of the metal structure is at least an exposed outer portion of a housing for the portable electronic device," as recited in claim 34. Appeal Br. 22-23. The marking of an exposed outer portion of a housing of a hand-held electronic device is described in Smithers. Ans. 2; Smithers ,r,rs, 28. Claims 28-30 Independent claim 28 recites a marking process including: applying a mask to protect a portion of the outer layer of the multi-layered structure; anodizing at least a first surface of the outer layer of the multi-layered structure to form an outer surface for the housing of the portable electronic device, the first surface not including the portion of the multi-layered structure being protected by the mask; [and] removing the mask following the anodizing. 12 Appeal2018-000393 Application 12/895,384 The Examiner finds that: Zhao ... teach[es] anodizing only portions of [an a]luminum substrate ... after applying a Si02 mask (see figure 4 on page B412) and that[,] 'if anodizing time is short, metallic Al can be effectively protected by Si02 mask (see Fig. [2a---d])'. Zhao ... also discloses removing the mask after the anodization ( see page B411, column 2, lines 3-5). Final Act. 5. The Examiner explains that Zhao "is not being relied upon for marking but for teaching how to anodize only portions of an [a]luminum substrate. While Zhao ... performs the masking and anodization at a smaller scale[,] that would not preclude [the masking] from working at a larger scale." Ans. 13. Zhao teaches that aluminum foil has been anodized to produce a patterned microporous material. According to Zhao, anodized aluminum oxide produced by traditional methods has suffered from fragility. In order to improve the toughness of the material, silica has been used as a protective mask to prevent portions of the foil from being oxidized. Zhao B411. Zhao suggests that silica can effectively mask portions of an aluminum sample from oxidation as the sample is being anodized. Nevertheless, the Examiner has not articulated a reason why one of ordinary skill in the art might have wanted to mask portions of a housing for a portable electronic device such as those described by Cheng and Ng during an electrochemical surface treatment such as anodizing. In particular, the Examiner has not persuasively shown Zhao's suggestion that masking might improve the toughness of a patterned microporous material formed by 13 Appeal2018-000393 Application 12/895,384 anodizing aluminum foil would have suggested a reason to employ masking while anodizing a material intended to house a portable electronic device. Appeal Br. 26. The Examiner has not shown that one of ordinary skill in the art would have had reason to combine the teachings of Zhao with the teachings of Cheng, Ng, Smithers, and Yeo in a marking process satisfying the limitations of claims 28-30. DECISION I. We affirm the Examiner's decision rejecting claims 1-9, and 21-27 under 35 U.S.C. Â§ 103(a) over Cheng, Ng, Smithers, and Yeo. We reverse the Examiner's decision rejecting claim 8 under 35 U.S.C. Â§ 103(a) over Cheng, Ng, Smithers, and Yeo. II. We reverse the Examiner's decision rejecting claims 28-30 under 35 U.S.C. Â§ 103(a) over Cheng, Ng, Zhao, Smithers, and Yeo. III. We affirm the Examiner's decision rejecting claims 31-38 under 35 U.S.C. Â§ 103(a) over Cheng, Ng, Smithers, and Yeo. IV. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 14