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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 9, 2025 has been entered.
Response to Amendment
The amendment filed on December 9, 2025 have been entered. Claims 1-9 and 12 remain pending in the application. Claims 10 and 11 are canceled by applicants. In response to the applicant’s arguments and amendments, a more detailed action is provided
Response to Arguments
Applicant’s arguments filed December 9, 2025 have been fully considered, but they are not fully persuasive. Regarding the applicant’s arguments that:
Applicant’s Amendment to delete the term deposited and replace with the word formed overcomes the previously set forth 112a rejection: The examiner agrees that the amendment overcomes the originally set forth rejection. As a result, it is withdrawn.
The amendments overcome the originally set forth rejection in view of Fitzer in view of Mariko: The examiner agrees that the amendments overcome the previously rejection in view of Fitzer. In order to address the limitations introduced by the applicant’s amendments, new grounds of rejection are provided in in view of Fitzer in view of Oliveira where the latter teaches scanning includes scanning paths (a “first scan line” and a consecutive “new scan line” which indicates a plurality of scanning paths and reads on the limitations of the claim [0065]) that overlap with one another (“the [laser] beam is moved [in conjunction with the scanning line]… and allows a degree of lateral overlap to be defined” [0066]) and an amount of overlap of the scanning paths (“degree of overlap” [0066]) in controlled to adjust a thickness (it would be understood by one of ordinary skill in the art that the thickness is created by the “degree of overlap” [0066] wherein a greater amount of overlap results in greater thickness and vice versa [0085]) of the oxide film to change a color of the metal component (“to…obtain a colored engraving” [0086]).
Claim Rejections - 35 USC § 103
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 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.
Claims 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fitzer et al. (US Patent No. 6,180,318 B1) in view of Oliveira. (US PG Pub No.2015/0049593 A1):
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Regarding Claim 1: Fitzer et al. teaches a decorating method for decorating a metal component by laser irradiation (the prior art discloses “an article” or component which can be made of metal in the Abstract as well as a “method [for decorating said metal component] …including a “laser beam” Col 8. Lines 5-11), the method comprising: performing laser irradiation while scanning (“imaging” which one of ordinary skill of the art would understand to mean scanning Col 11 Lines 61-67. The inclusion of scanning in the prior art as an essential action step of the disclosed method and this reads on the limitations of the claims), with a first element as a starting point (The first element in question being the first section of the “graphic” being imparted onto the surface Abstract), from one end of the metal component (the prior art discloses that the beam moves along a path which one of ordinary skill in the art would recognized as moving from one end of the component to the other and thus reads on the limitations of the claims in which the component is the surface one which the graphic is imparted Abstract) in a vicinity of the first element toward another end of the metal component, wherein an oxide film (The prior art discloses that the surface component includes a “metal-oxide layer” Col 8 Lines 4-11which reads on the limitations of the claim) is formed at a front surface of the metal component by laser irradiation
Fitzer does not teach that scanning includes scanning paths that overlap with one another, and an amount of overlap of the scanning paths in controlled to adjust a thickness of the oxide film to change a color of the metal component.
However, Oliveira does teach that scanning includes scanning paths (a “first scan line” and a consecutive “new scan line” which indicates a plurality of scanning paths and reads on the limitations of the claim [0065]) that overlap with one another (“the [laser] beam is moved [in conjunction with the scanning line]… and allows a degree of lateral overlap to be defined” [0066]) and an amount of overlap of the scanning paths (“degree of overlap” [0066]) in controlled to adjust a thickness (it would be understood by one of ordinary skill in the art that the thickness is created by the “degree of overlap” [0066] wherein a greater amount of overlap results in greater thickness and vice versa [0085]) of the oxide film to change a color of the metal component (“to…obtain a colored engraving” [0086]).
Therefore, it would be obvious to one of ordinary skill in the art at the time of invention to modify the invention of Fitzer with the limitations of Oliveira in order to create an engraved “surface having a different color and appearance to the other surfaces of the material” [0055] and thus maximize customizability of the end metal decoration.
Regarding Claim 2: Fitzer as modified by Oliveira further teaches a metal component decorating method wherein the scanning is done along the plurality of scanning paths (a “first scan line” and a consecutive “new scan line” which indicates a plurality of scanning paths and reads on the limitations of the claim [0065]), the laser irradiation in the scanning paths adjacent to each other is performed so that spots of the laser irradiation overlap with each other (“the [laser] beam is moved [in conjunction with the scanning line]… and allows a degree of lateral overlap to be defined” [0066]), and an overlap amount of the spots is larger as the spots are closer to the first element (The prior art teaches that the degree of overlap is dependent on the distance between the starting point and the current location of the beam which would result in a larger overlap which decrease distance from starting point [0065-0067] and reads on the limitations of the claims).
Regarding Claim 3: Fitzer as modified by Oliveira further teaches a metal component decorating method, wherein the overlap amount of the spots at a position, of the scanning, furthest from the first element is 50% or more (The prior art states that “the degree of lateral overlap…may be lower than 60%, or even equal to 50%” [0015] which explicitly reads on the limitations of the claims).
Regarding Claim 4: Fitzer further teaches that the laser irradiation is performed by pulse irradiation in a constant cycle (The method uses “continuous or pulsed, single phased or multiphase diode lasers” Col 8 Lines 19-20)” the [laser] beam is moved [in conjunction with the scanning line]” in consecutive pulses [0066]). Fitzer additionally teaches that the laser in question is a nanosecond laser (Col 8 Lines 30-36). All of the limitations of claim 4 are taught by Fitzer.
Regarding Claim 5: Fitzer as modified by Oliveira further teaches the metal component decorating method according to claim 2, Oliveira does not explicitly teach that the scanning path is provided radially from a first center of the first element toward the metal component. However, it does disclose that “the laser beam may be moved over the components along curve… [ or strait lines [or lines at an] angle” [0027-0029] which indicates that the scanning path may proceed in various directions depending on the graphic.
Regarding Claim 6: Fitzer as modified by Oliveira further teaches that the scanning path is provided concentrically from a first center of the first element toward the metal component wherein the scanning path is provided concentrically from a first center of the first element toward the metal component (Shown in Figure 5. Furthermore, the prior art teaches that “the laser beam may be moved over the components along curve… [ or strait lines… or lines at an] angle” [0027-0029] which indicates that the scanning path may proceed in various directions depending on the graphic)
Regarding Claim 7: Fitzer as modified by Oliveira further teaches that the first element is any one of a screw, a logo, a mark, a symbol, and a watch component (The prior art teaches a “timepiece” [0036] as a first element and reads on the limitations of the claims).
Additionally, the applicant should note that to be given patentable weight, the printed matter and associated product must be in a functional relationship. A functional relationship can be found where the printed matter performs some function with respect to the product to which it is associated. See Lowry, 32 F.3d at 1584, 32 USPQ2d at 1035 (citing Gulack, 703 F.2d at 1386, 217 USPQ at 404). For instance, indicia on a measuring cup perform the function of indicating volume within that measuring cup. See In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969). A functional relationship can also be found where the product performs some function with respect to the printed matter to which it is associated. See Gulack, 703 F.2d at 1386-87, 217 USPQ at 405.
Where a product merely serves as a support for printed matter, no functional relationship exists. These situations may arise where the claim as a whole is directed towards conveying a message or meaning to a human reader independent of the supporting product. See Gulack, 703 F.2d at 1386, 217 USPQ at 404. Additionally, where the printed matter and product do not depend upon each other, no functional relationship exists. For example, in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864.
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Regarding Claim 8: Fitzer as modified by Oliveira further teaches a metal component decorating method, wherein the metal component is any one of titanium, stainless steel, nickel silver, pure iron, brass, duralumin, and an alloy (The prior art teaches that the metal component may be “steel” or “titanium” which reads on the limitations of the claim [0046]).
Regarding Claim 9: Fitzer as modified by Oliveira further teaches that the metal component further includes a second element (the second element being the final section of the “graphic” being imparted as disclosed in the abstract Fitzer), and in addition to the scanning with the first center as the starting point, the method comprises: performing laser irradiation while scanning (“imaging” which one of ordinary skill of the art would understand to mean scanning Col 11 Lines 61-67. The inclusion of scanning in the prior art as an essential action step of the disclosed method and this reads on the limitations of the claims Fitzer ), with a second center of the second element as a starting point, from one end of the metal component in a vicinity of the second element toward another end of the metal component ( the prior art discloses that “preferably, the beam is focused on of the surface of the component to be machined” [0064] and that “once a scan line is terminated…a new scan line is [initiated]” which indicates that the scanning path may proceed from one end of the metal component in a vicinity of the second element toward another end of the metal component [0065] Oliveira).
Regarding Claim 12: Fitzer as modified by Oliveira teaches a decorating method for decorating a metal component by laser irradiation (the prior art discloses “an article” or component which can be made of metal in the Abstract as well as a “method [for decorating said metal component] …including a “laser beam” Col 8. Lines 5-11 Fitzer), the method comprising: performing laser irradiation while scanning (“imaging” which one of ordinary skill of the art would understand to mean scanning Col 11 Lines 61-67. The inclusion of scanning in the prior art as an essential action step of the disclosed method and this reads on the limitations of the claims Fitzer), with a first element as a starting point (The first element in question being the first section of the “graphic” being imparted onto the surface Abstract Fitzer), from one end of the metal component in a vicinity of the first element toward another end of the metal component (the prior art discloses that the beam moves along a path which one of ordinary skill in the art would recognized as moving from one end of the component to the other and thus reads on the limitations of the claims in which the component is the surface one which the graphic is imparted Abstract Fitzer); wherein an oxide film is formed at a front surface of the metal component by the laser irradiation (The prior art discloses that the surface component includes a “metal-oxide layer” Col 8 Lines 4-11 which reads on the limitations of the claim Fitzer) and the oxide film has a different thickness (it would be understood by one of ordinary skill in the art that the thickness is created by the “degree of overlap” [0066] wherein a greater amount of overlap results in greater thickness and vice versa [0085] Oliveira ) wherein that the scanning is done along a plurality of scanning paths (a “first scan line” and a consecutive “new scan line” which indicates a plurality of scanning paths and reads on the limitations of the claim [0065] Oliveira), the laser irradiation in the scanning paths adjacent to each other is performed so that spots of the laser irradiation overlap with each other (“the [laser] beam is moved [in conjunction with the scanning line]… and allows a degree of lateral overlap to be defined” [0066] Oliveira), and an overlap amount of the spots is larger as the spots are closer to the first element (The prior art teaches that the degree of overlap is dependent on the distance between the starting point and the current location of the beam which would result in a larger overlap which decrease distance from starting point [0065-0067] and reads on the limitations of the claims).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOLAN OLIVA whose telephone number is (571-)272-2518. The examiner can normally be reached Monday-Thursday 7:00-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-8241. The fax phone number for the organization where this application or proceeding is assigned is 571-270-5569.
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/SOLAN OLIVA/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761