DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on February 24, 2026 was received. Claim 1 was amended. Claims 15-17 and 22-23 were canceled. No claim was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued January 13, 2025.
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.
The claim rejections under 35 U.S.C. 102(a)(1) as being anticipated by Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) on claims 1 and 14 are withdrawn, because the claims have been amended.
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.
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 claim rejection under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) on claim 21 is withdrawn, because the claim has been amended.
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 claim rejections under 35 U.S.C. 103 as being unpatentable over Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) as applied to claims 1 and 14, and further in view of Grossenbacher (US20110259753), on claims 3-12 are withdrawn, because the claims have been amended.
The claim rejections under 35 U.S.C. 103 as being unpatentable over Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) as applied to claims 1 and 14, and further in view of Bae (KR20090042648) on claims 13 and 27 are withdrawn, because the claims have been amended.
The claim rejections under 35 U.S.C. 103 as being unpatentable Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) as applied to claims 1 and 14, and further in view of Matossian (EP0499215) on claims 19 and 24 are withdrawn, because the claims have been amended.
The claim rejections under 35 U.S.C. 103 as being unpatentable Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) as applied to claims 1 and 14, and further in view of Matossian (EP0499215) and Cors (CH705973) on claims 25-26 are withdrawn, because the claims have been amended.
Claims 1-2, 14, 18 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) in view of Busardo (US20190032198).
Regarding claim 1, Gupta teaches a method of forming decorative black coatings on metallic surface (abstract). Gupta teaches to load a Ti metal substate in a implanter chamber at a base pressure of 7X10-8 hPa, (vacuum) for implanting ions on the surface to obtain the black color, wherein carbon monoxide is used as the precursor gas in the ion source to form a positive ion beam(C+ ion, mono charged ions) (page 387 2.1 Synthesis) (implanting mono ions selected from carbon in a surface layer of the part to be treated by directing towards the part to be treated a ono charged ion beam produced by a source of mono charged ions in a vacuum, a color of the part being changed to a desired color by the charged ions striking the part and penetrating into the surface of the part). Gupta teaches black color is desired by the correct fluence and the black color is shown right after the implantation (page 387 2.1 Synthesis, see figure 1), thus, Gupta teaches toe observe a change of the color of the part to the desired color (black) during implanting of the mono charged ions and interrupting the implanting in the vacuum when the desired color is observed.
Gupta does not explicitly teach the ion beam is composed of a mixture of ions having different degrees of ionization. However, Busardo teaches a method of coloring metal by implanting an ion beam of mono and multicharged ions on the surface of the metal (abstract, paragraphs 0001-0002, 0015 and 0018 and 0024, see figure 1). Busardo teaches ion beam comprising both mono and multicharged ions mean ions of one and the same gas exhibiting different charge states, which reads on the limitations of “ion beam is composed of mixture of ions having different degrees of ionization” (paragraph 0027). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ion beam composed of a mixture of ions having different degrees of ionization as suggested by Busardo in the method of Gupta, because Busardo teaches it is more effective to conduct the bombardment (ion implantation) with both mono and multicharged ions than with just mono charged ions (paragraph 0026).
Regarding claim 2, Gupta does not explicitly teach the ion source is an ECR ion source. However, Busardo teaches the ion source is an ECR (electron cyclotron resonance) ion source (paragraph 0026 and 0051). It would have been obvious to one of ordinary skill in the art at the time the invention was made to use ECR ion source for ion implanting on a metal surface as suggested by Busardo in the method of Gupta because Busardo teaches the ECR is effective and has the advantage of being compact and economical in energy (paragraphs 0026 and 0051).
Regarding claim 14, Gupta teaches the part is titanium (abstract, page 387 2.1 Synthesis).
Regarding claim 18, Gupta teaches all limitations of this claim except the claimed parameters. However, Busardo teaches the ions are accelerated under voltages of 5kV to 1000kV (paragraph 0020), which overlaps with the claimed range. Busardo teaches the ions intensity if 5mA (paragraph 0061). Busardo teaches the ion dose is 1016 ions/cm2 to 1019 ions/cm2 (paragraph 0019), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the parameters suggested by Busardo in the method of Gupta because Busardo teaches they are appropriate for ion implantation on metal surface for coloring (paragraph 0019). In addition, It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Regarding claim 20, Gupta teaches all the limitations of this claim, except the annealing heat treatment. However, Busardo teaches to heat treat the implanted metal (paragraphs 0021-0022). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat treat the ion implanted substrate as suggested by Busardo in the method of Gupta because Busardo teaches the heat treatment can promote the color change (paragraphs 0036 and 0024-0025).
Regarding claim 21, It is noted that claim 21 is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thrope, 777 F.2d 695, 698, 227 USPQ 94, 966 (Fed. Cir. 1985). The colored metal disclosed by Gupta in view of Busardo (colored metal with mono and multi-charged ions implanted on the titanium metal surface) (abstract, page 387 2.1 Synthesis; Busardo paragraphs 0026-0027) is similar to that of the Applicant’s, thus, Applicant’s process is not given patentable weight in this claim. Gupta in view of Busardo discloses all limitations of this claim. In addition, it will be obvious to have the same product as the claimed invention as the process are the same (see claim 1 rejections).
Claims 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) in view of Busardo (US20190032198) as applied to claims 1-2, 14, 18 and 20-21 above, and further in view of Grossenbacher (US20110259753).
Regard claims 3-4, Gupta teaches the black coatings on the titanium surface is intended for watch making (page 386 1. Introduction). Thus, Gupta in view of Busardo teaches all limitations of these claims, except the metal is fixed on a support part insensitive to the ion plantation treatment. However, Grossenbacher teaches a method of making an inlaid ceramic element for a watch (paragraphs 0003 and 0012), and discloses the watch made with ceramic bezel is decorated with metal component (paragragraphs 0003 and 0005-0012). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to fix the metal in the ceramic watch component as suggested by Grossenbacher in the method of Gupta in view of Busardo because Grossenbacher teaches such the metal can form decorative elements, such as scale or a brand name, on the ceramic component (paragraphs 0003 and 0012). It is the position of the examiner that property of the support part is insensitive to the ion implanting, is inherent, given that the method and material (ion implantation, metal part on the ceramic support) disclosed by Gupta in view of Busardo and Grossenbacher and the present application are the same. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999).
Regarding claims 5-6, Grossenbacher teaches the support part is ceramic (paragraphs 0005-0012).
Regarding claims 7-8, Grossenbacher teaches the support part is an external part (paragraph 0012, see figure 1).
Regarding claims 9-10, Grossenbacher teaches the external part is intended for watchmaking (see figure 1, paragraphs 0003 and 0012).
Regarding claim 11-12, Grossenbacher teaches the external part is watch bezel, bracelet or case (paragraph 0012).
Claims 13 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) in view of Busardo (US20190032198) as applied to claims 1-2, 14, 18 and 20-21 above, and further in view of Bae (KR20090042648).
Regarding claim 13, Gupta in view of Busardo teaches all limitations of this claim, except the metal is precious metal. However, Bae teaches a method of coating a material to implement various colors in the material by ion implantation (abstract, paragraphs 0020-0021). Bae teaches the gold and titanium (Gupta’s metal) and functional equivalent metal to be colored by carbon ion implantation (paragraphs 0020-0021 and 0032-0034). Therefore, it would have been obvious to one of ordinary skill in the art to substitute gold for titanium as the metal in the method as disclosed by Gupta in view of Busardo.
Regarding claim 27, Gupta in view of Busardo teaches all limitations of this claim, except the metal part is made of aluminum zirconium and the mono or multi charged ion is nitrogen. However, Bae teaches the aluminum zirconium and titanium (Gupta’s metal) and functional equivalent metal to be colored by ion implantation, and nitrogen can replace the carbon ions (paragraphs 0020-0021 and 0032-0034). Therefore, it would have been obvious to one of ordinary skill in the art to substitute aluminum zirconium for titanium as the metal, and nitrogen for carbon ions, in the method as disclosed by Gupta in view of Busardo to obtained the desired color. Since Bae teaches the color changes is due to the ions, the blue color is intrinsic for the nitrogen ions implantation in the aluminum zirconium alloy.
Claims 19 and 24 are rejected under 35 U.S.C. 103 as being unpatentable Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) in view of Busardo (US20190032198) as applied to claims 1-2, 14, 18 and 20-21 above, and further in view of Matossian (EP0499215).
Regarding claim 19, Gupta in view of Busardo teaches all the limitations of this claim, except the color is blue or violet. However, Matossian teaches a method of ion implantation on the metal surface to change the color (page 5 lines 12-35). Matossian teaches when O2+ ions are implanted to titanium, the visible color of the surface will change to blue (page 5 lines 12-35). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use oxygen ion for implantation as suggested by Matossian to replace the carbon ions in the method of Gupta in view of Busardo, because Matossian teaches oxygen ions implantation on the titanium produces blue color (page 5 lines 25-35), and the visible color is based on the type of implanted ions (page 5 lines 12-25).
Regarding claim 24, Gupta in view of Busardo teaches all the limitations of this claim, except the implanting ions is nitrogen ions and the color is gold. However, Matossian teaches a method of ion implantation on the metal surface to change the color (page 5 lines 12-35). Matossian teaches when N2+ ions are implanted to titanium, the visible color of the surface will change to gold (page 5 lines 12-35, page 6 lines 50-58). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use nitrogen ion for implantation as suggested by Matossian to replace the carbon ions in the method of Gupta in view of Busardo, because Matossian teaches nitrogen ions implantation on the titanium produces gold color (page 5 lines 25-35), and the visible color is based on the type of implanted ions (page 5 lines 12-25).
Claims 25-26 are rejected under 35 U.S.C. 103 as being unpatentable Gupta (Decorative black coatings on titanium surfaces based on hard bi-layered carbon coatings synthesized by carbon implantation) in view of Busardo (US20190032198) as applied to claims 1-2, 14, 18 and 20-21 above, and further in view of Matossian (EP0499215) and Cors (CH705973)
Regarding claim 25, Gupta in view of Busardo teaches all the limitations of this claim, except the implanting ions is nitrogen ions and the color is blue. However, Matossian teaches a method of ion implantation on the metal surface to change the color (page 5 lines 12-35). Matossian teaches when N2+ ions are implanted to titanium, the visible color of the surface will change to gold (page 5 lines 12-35, page 6 lines 50-58). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use nitrogen ion for implantation as suggested by Matossian to replace the carbon ions in the method of Gupta in view of Busardo, because Matossian teaches nitrogen ions implantation on the titanium produces gold color (page 5 lines 25-35), and the visible color is based on the type of implanted ions (page 5 lines 12-25).
Cors further teaches the color of the TiN can be adjusted accordingly to the power of discharges and the nitrogen content of the titanium nitride, and the color includes blue (paragraph 0043). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the nitrogen in TiN as suggested by Cors in the method of Gupta in view of Busardo and Matossian because Cors teaches it can adjust the color of TiN to other color, such as blue (paragraph 0043).
Regarding claim 26, Gupta in view of Busardo teaches all the limitations of this claim, except the implanting ions is nitrogen ions and the color is blue. However, Matossian teaches a method of ion implantation on the metal surface to change the color (page 5 lines 12-35). Matossian teaches when N2+ ions are implanted to titanium, the visible color of the surface will change to gold (page 5 lines 12-35, page 6 lines 50-58). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use nitrogen ion for implantation as suggested by Matossian to replace the carbon ions in the method of Gupta in view of Busardo, because Matossian teaches nitrogen ions implantation on the titanium produces gold color (page 5 lines 25-35), and the visible color is based on the type of implanted ions (page 5 lines 12-25). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the nitrogen in the TiN in the process to yield the desired color. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Cors further teaches the color of the TiN can be adjusted accordingly to the power of discharges and the nitrogen content of the titanium nitride, and the color includes blue and other color (maybe violet) (paragraph 0043). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the nitrogen in TiN as suggested by Cors in the method of Gupta in view of Busardo and Matossian because Cors teaches it can adjust the color of TiN to other color, such as blue or voilet (paragraph 0043). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the nitrogen in the TiN in the process to yield the desired color. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14, 18-21 and 24-27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/N.V.L/Examiner, Art Unit 1717 /ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
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