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 .
Response to Amendment
Applicant’s amendment to the claims filed on March 31, 2026, has been entered. Claims 1, 3 and 10 are currently amended. Claims 12, 17 – 19 and 22 are cancelled. Claim 23 is new. Claims 1 – 11, 13 – 16, 20 – 21 and 23 are pending and under examination. The amendment necessitated the new grounds of rejection.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 11, 13 – 16, 20 – 21 and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding the amendment to claim 1, Applicant did not disclose or demonstrate possession of a “deformation modulus of less than 300 MPa.” It is noted that Applicant’s disclosure provides support for a range of less than 300 MPa for an “apparent modulus of the structured insert 10 for 100% deformation is advantageously less than 300 MPa” (see US 2022/0305700 A1 paragraph [0056]). It is understood that “apparent modulus for 100% deformation” and “deformation modulus” are different tests describing the mechanical properties of materials at certain specific conditions. The disclosure does not ascertain any equivalence between the two, and makes no mention of a “deformation modulus” at all. Applicant’s response can either provide evidence that the “apparent modulus for 100% deformation” and “deformation modulus” are the equivalent, or amend the claim language to recite e.g., “so as to obtain a resin structured insert having an apparent modulus for 100% deformation of less than 300 MPa,” which is supported in the original description.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1 – 2, 5 – 6, 8 – 11, 13 – 16, 20 – 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Fiaccabrino et al. (EP 3266905 A1; of record), in view of Bardet et al. (CH-710919-B1; of record), and further in view of Larrañaga et al. (WO-2018178451-A1).
Regarding claim 1, Fiaccabrino teaches a method for manufacturing a timepiece or jewelry component [0019], wherein the method comprises:
providing a template element (master 1) comprising a structured surface (11) with a pattern to be reproduced on a surface of a timepiece component [0019];
covering the structured surface (11) of the template element (1) with a molding resin (6) capable of reproducing a negative pattern of the pattern of the structured surface (11; see Fig. 2, [0020 – 0024]), and
leaving the molding resin to solidify in order so as to obtain a resin structured insert (3; see [0024 – 0027]); and
separating the structured insert (3) from the template element (1), the structured insert (3) comprising a surface comprising the negative pattern (see S3 in Fig. 1, and [0010, 0017, 0029]), then manufacturing a jewelry or timepiece component using the structured insert ([0015 – 0019, 0039 – 0041]),
wherein the manufacturing of the timepiece component comprises:
filling the mold including the structured insert with a component material, including filling the negative pattern of the structured insert [0029], and then leaving the component material to solidify in order to obtain a blank of the timepiece component comprising a structured surface comprising the pattern of the template element [0030 – 0039];
removing the blank of the timepiece component from the mold [0040 – 0041].
Fiaccabrino does not explicitly disclose wherein the molding resin comprises two-component silicone, the resin structured insert having a deformation modulus of less than 300 MPa and a hardness in a range of from 50 to 90 Shore A; positioning the structured insert ( in a housing of a mold for manufacturing the timepiece component.
Like Fiaccabrino, Bardet et al. teaches mold inserts and molds intended for injection molding processes for parts made of polymeric material, such as thermoplastic and thermosetting polymers, which have a structured surface (e.g., nano-structured), as well as their manufacturing process; the mold inserts and these molds having a structured surface (a texturing pattern), which is the negative of the structured surface of the part obtained by injection (Bardet et al. lines 20 – 38, lines 140 – 157); positioning a structured insert in a housing of a mold (e.g., Bardet et al. at [0102], lines 470 – 495 discloses a structured mold 4 positioned in a housing of a mold 3, a mold 1 with an insert 2 positioned in a housing 19 of the mold 1; see FIGs. 1 – 3).
Bardet et al. discloses that by using an insert according to the invention, the molding surface of which is made of resin, it is however freed from the bimetallic effect which one might have expected when the counter-mold is made of steel (Bardet et al. lines 170 – 211), the inserts being intended for applications such as self-cleaning and super-hydrophobic surfaces (Bardet et al. lines 320 – 327).
It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify in the same way the method for manufacturing a timepiece or jewelry component of Fiaccabrino by making the integral structured mold of Fiaccabrino in various elements, such as the mold inserts suggested and taught by Bardet et al., since it have been held that constructing formerly integral structure in various elements involves only routine skill in art. See MPEP § 2144.04 (V)(C).
One of ordinary skill in the art would have been motivated to modify the molds in the method of Fiaccabrino with the removable structured mold inserts of Bardet et al. for the purpose of providing a removable resin insert comprising self-cleaning and super-hydrophobic surfaces, as taught by Bardet et al. (Bardet et al. lines 320 – 327).
As to the amended limitation “wherein the molding resin comprises two-component silicone, the resin structured insert having a deformation modulus of less than 300 MPa and a hardness in a range of from 50 to 90 Shore A”.
Larrañaga (lines 21 – 24) teaches a two-component silicone elastomeric composition for modeling, that can be used for “obtaining molds for duplicating or copying objects for industrial or artistic use in both jewelry and Arts & Crafts.”
The elastomeric silicone composition has a curing time so that an user can model the design of a product at room temperature, can be prepared easily, safely and efficiently by any inexperienced user as, and “which is also suitable to cure at room temperature, at high temperature or by electromagnetic radiation and support extreme temperatures.” (lines 84 – 89).
Larrañaga discloses that the two-component silicone composition is resistant to high temperatures, can have a Shore hardness after curing between 10 and 80 Shore A (lines 109 – 113) – overlapping with the claimed range of from 50 to 90 Shore A (overlapping ranges are prima facie evidence of obviousness);
and that the mechanical properties of the two-component silicone composition are satisfactory for different uses, inter alia, making molds for copying (lines 120 – 125); manufacture of “molds for duplicating parts. It is also useful for manufacturing a final product, such as jewelry,” and that the mold obtained “is even valid for use with low melting metals such as lead, zamak or pewter usually used in jewelry. Therefore, the invention also provides a finished product (mold), after curing, resistant to high temperatures, where this property of resistance to extreme temperatures does not depend on the method of curing, that is, this property does not depend on whether the mold manufactured it has been cured at room temperature, high temperature or by electromagnetic waves but it has its origin in the composition of the invention.” (lines 228 – 239).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the molding resin in the method for manufacturing a timepiece or jewelry component of Fiaccabrino/Bardet with a molding resin comprising two-component silicone, as suggested and taught by Larrañaga, for the purpose of obtaining a resin structured insert capable of duplicating parts, such as jewelry, as taught by Larrañaga, since Larrañaga teaches that products molded with said two-component silicon resin, after curing, are resistant to high temperatures, where this property of resistance to extreme temperatures does not depend on the method of curing, that is, this property does not depend on whether the mold manufactured it has been cured at room temperature, high temperature or by electromagnetic waves (Larrañaga lines 228 – 239). See MPEP 2143 (I) (Rationale G).
As to the resin structured insert having a deformation modulus of less than 300 MPa and a hardness in a range of from 50 to 90 Shore A, Fiaccabrino/Bardet/Larrañaga does not explicitly disclose the resin structured insert having a deformation modulus of less than 300 MPa. However, Larrañaga discloses that after curing, the molded product using the two-component silicone composition could have a Shore hardness between 10 and 80 Shore A (lines 109 – 113), overlapping with the claimed range. Therefore, the claimed physical properties (e.g., a deformation modulus of less than 300 MPa) implicitly would have been achieved by the resin structured insert molded by the method of Fiaccabrino/Bardet/Larrañaga as claimed and rendered obvious. See MPEP § 2112.01.
It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 2. Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the pattern to be reproduced from the template element comprises at least one raised relief, measured in the direction perpendicular to the structured surface of the template element, in a range of from 1 nm to 2 mm.
Bardet et al. discloses that the texturing pattern of the insert can have micrometric and/or nanometric dimensions, e.g., the height of the pattern can be between 0.01 micrometers and 100 micrometers, the width of the pattern can be between 0.01 micrometers and 100 micrometers and the spacing between each pattern can be between 0.01 micrometers and 100 micrometers – overlapping with the claimed dimensional range of from 1 nm to 2 mm. Overlapping ranges are prima facie evidence of obviousness.
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the method of Fiaccabrino/Bardet/Larrañaga by having selected the portion of Bardet et al. raised relief height range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). MPEP § 2144.05 (I).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP § 2144.04 (IV) (A).
Regarding claim 5, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, except for explicitly disclosing, wherein the molding resin has a viscosity before solidification at ambient temperature and pressure in a range of from 0.5 to 70,000 Pa.s-1.
Larrañaga, however, discloses that “Component A, component B, and the bicomponent composition A + B before curing, that is, in its plastic phase, have a Mooney viscosity, measured according to DIN 53523/23 °C, between 15 and 75 mPa/s.
Therefore, the claimed physical properties (e.g., a viscosity before solidification at ambient temperature and pressure in a range of from 0.5 to 70,000 Pa.s-1) implicitly would have been achieved by the molding resin in the method of Fiaccabrino/Bardet/Larrañaga as claimed and rendered obvious. See MPEP § 2112.01.
It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 6, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the molding resin comprises polyurethane (e.g., Bardet lines 235 – 256), acrylic resin (e.g.,. Fiaccabrino [0012]), fluoroelastomer, epoxy resin (e.g., Bardet lines 235 – 256), or two-component silicone (e.g., Larrañaga lines 99 – 192).
Regarding claim 8, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the structured insert has a maximum thickness ranging in a range of from 0.2 mm to 2 mm (e.g., see Fiaccabrino [0019] “The timepiece component may have a height or thickness in the range of 100 microns – 3 mm.”; Bardet lines 158 – 160 “The insert according to the invention may have a generally parallelepiped shape. For example, its thickness can be between 3 mm and 100 mm.”). See MPEP § 2144.04 (IV) (A).
In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 9, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, except for specifically disclosing, wherein the solidifying of the molding resin comprises polymerizing at ambient temperature for a duration in a range of from 1 to 30 minutes.
Larrañaga (lines 139 – 147), however, discloses that “Advantageously, the modeling time by the user can be several hours, said time being able to be adjusted by modifying in the composition the percentages of curing agent in component A and the percentages of catalyst in component B. The higher the percentage of curing and catalyst, within the ranges described above, less cure or vulcanization time after mixing the two components A and B of the inventive composition of the invention.”
As the modeling time available to the user and the resin curing time are variables that can be modified, among others, by adjusting said percentages of curing agent in component A and the percentages of catalyst in component B, with said modeling time and resin curing time both decreasing and/or increasing by varying the percentages of curing agent in component A and the percentages of catalyst in component B, the precise solidifying duration of the molding resin would have been considered a result effective variable by one having ordinary skill in the art at time the invention was effectively filed.
As such, without showing unexpected results, the claimed solidifying of the molding resin duration cannot be considered critical. Accordingly, one of ordinary skill in the art before the time the invention was effectively filed would have optimized, by routine experimentation, the percentages of curing agent in component A and the percentages of catalyst in component B in the molding resin of Fiaccabrino/Bardet/Larrañaga to obtain the desired balance between the modeling time available to the user and the resin curing time (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223). See MPEP § 2144.05 (II) (A).
Regarding claim 10, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein a hardness of the structured insert is in a range of from 10 to 80 Shore A (Larrañaga lines 217 – 220), overlapping with the claimed range of from 50 to 70 Shore A.
Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of Larrañaga's hardness range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). See MPEP § 2144.05 (I).
Regarding claim 11, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the method further comprises: depositing a coating of a release agent onto the structured insert (e.g., Fiaccabrino [0040] discloses “ the step of coating the mould before the plating step can also be used to enable the adhesion between the mould and the final component 5 to be lessened for this release or separation step.”).
Regarding claim 13, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the removing of the blank (Fiaccabrino’s 5) of the timepiece component from the mold (e.g., Fiaccabrino’s lower mould part 12) comprises: removing the blank (5) of the timepiece component and the structured insert (e.g., modified Fiaccabrino with Bardet et al. structured mold inserts) secured to the blank (e.g., Fiaccabrino’s 5) of the timepiece component, then optionally, finishing the blank (see Fiaccabrino FIG. 1, steps S1 – S6).
Regarding claim 14, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the filling of the manufacturing mold comprises: casting (see Fiaccabrino [0008 – 0010]) or injecting a material of the component (see Fiaccabrino [0021, 0026], and FIG. 2), and allowing the timepiece component to be formed (Fiaccabrino FIG. 1), wherein the timepiece component comprises an integrally formed structured surface (Fiaccabrino [0015]).
Regarding claim 15, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the timepiece component is flexible and has a non-planar shape at rest (e.g., see Larrañaga FIGs. 1 – 4 and lines 264 – 266 “elastic and durable”, and lines 228 – 230 “It is also useful for manufacturing a final product, such as jewelry”; furthermore, using the prior art methods and e.g., Larrañaga’s molding resin would predictably result in a flexible timepiece).
Regarding claim 16, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein a material of the timepiece component is based on an elastomer (e.g., Larrañaga lines 256 – 266).
Regarding claim 20, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, comprising cutting the structured insert to a format corresponding to at least a portion of the timepiece component to be manufactured (e.g., see Fiaccabrino [0018 – 0019]).
Regarding claim 21, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, further comprising finishing the blank (e.g., see Fiaccabrino [0028]).
Regarding claim 23, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein a material of the timepiece component is an elastomer selected from the group consisting of a vinyl methylsilicone (Larrañaga lines 114 – 119).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiaccabrino et al. (EP 3266905 A1) in view of Bardet et al. (CH-710919-B1), and Larrañaga et al. (WO-2018178451-A1), as applied to claim 1 above, and further in view of Sameoto (US 2015/0343442 A1; of record).
Regarding claim 3. Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the pattern to be reproduced from the template element (1) comprises at least one cavity in the structured surface (“voids and cavities in the micro-nano surface pattern 11 on the master” Fiaccabrino [0025]), except for explicitly disclosing, an opening of the cavity is narrower than a largest width of the cavity, or the cavity comprises a lower section parallel to the structured surface with a larger area than another parallel section placed above the lower section, and the molding resin has a flexibility adapted to separate the resin structured insert from the template element without damaging the resin structured insert.
Sameoto teaches a reversible bonded microfluidic structure (capable of reversible bonding to a surface) and methods of its production by compression, extrusion and/or injection molding [0002 – 0004, 0042]; the method comprising –inter alia– [0007] applying a photoresistive material to a mold substrate, and [0008 – 0010] patterning and developing the photoresistive material to form a mask [analogous to the claimed “template element”] comprising a continuous microfluidic channel wall with overhanging gasket structure and adjacent undercut dry adhesive cap structures [analogous to the claimed “providing a template element comprising a structured surface with a pattern”], curing the mold substrate with the patterned surface;
[0011 – 0012] “molding a silicone rubber or other flexible elastomer material in the polymethyl methacrylate mold substrate to form a silicone rubber or flexible elastomer negative mold of said microfluidic structure [analogous to the claimed “covering the structured surface of the template element with a molding resin capable of reproducing a negative pattern”];
[0022 – 0025] flexibly demolding the flexible elastomer negative mold from the thermoplastic polymer material to release the reversible bonded microfluidic structure [analogous to the claimed “separating the structured insert from the template element, the structured insert comprising a surface comprising the negative pattern”] – Hence, Sameoto’s method is virtually identical to the claimed method of manufacturing a structured molding surface.
The negative pattern produces the reversible bonded microfluidic structure (see the annotated copy of Sameoto’s FIG. 8 below):
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In the above Figure, the annotations were added by the Examiner to facilitate the discussion of Sameoto. The above figure shows a cavity produced by the pattern of Sameoto wherein an opening of the cavity is narrower than a largest width of the cavity, or wherein the cavity comprises a lower section parallel to the structured surface with a larger area than another parallel section placed above the lower section.
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the structured pattern to be reproduced from the template in the method for manufacturing a structured insert of Fiaccabrino/Bardet/Larrañaga, with the similar structured pattern taught by Sameoto comprising at least one cavity wherein an opening of the cavity is narrower than a largest width of the cavity, or wherein the cavity comprises a lower section parallel to the structured surface with a larger area than another parallel section placed above the lower section, as taught by Sameoto, for the purpose of e.g., provide the structured surface of the final timepiece component with microfluidic channel structures capable of reversible bonding to a surface, as taught by Sameoto [0002], since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. See MPEP § 2144.07.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
As to the amended limitation, “and the molding resin has a flexibility adapted to separate the resin structured insert from the template element without damaging the resin structured insert,” Fiaccabrino/Bardet/Larrañaga/Sameoto does not explicitly discloses such. However, Larrañaga discloses that molded products using the two-component silicone composition results in a product that is elastic and durable (Larrañaga lines 264 – 265). Therefore, the claimed physical properties (e.g., a flexibility adapted to separate the resin structured insert from the template element without damaging the resin structured insert) implicitly would have been achieved by the resin structured insert molded by the method of Fiaccabrino/Bardet/Larrañaga/Sameoto as claimed and rendered obvious. See MPEP § 2112.01.
It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiaccabrino et al. (EP 3266905 A1) in view of Bardet et al. (CH-710919-B1), and Larrañaga et al. (WO-2018178451-A1), as applied to claim 1 above, and further in view of Bourquard (US 2020/0316822 A1; of record).
Regarding claim 4. Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the structured surface of the template element comprises an artificial pattern (e.g., Bardet lines 41 – 43), except for explicitly disclosing, a natural pattern originating directly from a leather, a skin, a vegetable leaf, or microcrystals.
Nonetheless, Fiaccabrino [0019] discloses the timepiece component may comprise a surface topology or pattern 11 that may be functional, decorative or otherwise comprise markings on the nanometer and/or micrometer scale, with high aspect ratios, faithfully transcribe and replicate in the final timepiece components.
Bourquard teaches a method for creating a moulding cavity of an elastomer part with surface texturing, the texturing of natural material type or a texturing obtained by “own know-how” [0001]; that can be applied to the field of watch making, luxury, leather goods, packaging, display cases, or other industrial sectors using rubber or various elastomers [0003]; Bourquard discloses that before the actual cavity is supplied, it is advisable in a first step 1 to provide a model (of any nature and origin) whose surface finish is to be reproduced on an elastomer part, i.e. with irregularities, surface finish - which “may be extremely small, in particular of the order of a few tenths of a millimeter depth or length/width, or coarser, of the order of several millimeters or even centimeters.”; and that the model to be reproduced may “preferably be a natural material of an animal, vegetable, lithographic or other nature. These may include, but are not limited to: skins, leather, hair coats, feathers, bark, rocks, etc.” [0032 – 0034];
[0048] “Once a flexible textured elastomeric cavity has been obtained as previously described, the invention also proposes a method for moulding a part made of elastomeric material, for example, without limitation a piece of watch strap, textured according to the model obtained by the flexible cavity. Such a moulding method is schematically shown in FIG. 2.”
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the structured surface in the method of Fiaccabrino/Bardet/Larrañaga, wherein the structured surface of the template element comprises a natural pattern originating directly from a leather, a skin, or a vegetable leaf, as taught by Bourquard, since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. See MPEP § 2144.07.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fiaccabrino et al. (EP 3266905 A1) in view of Bardet et al. (CH-710919-B1), and Larrañaga et al. (WO-2018178451-A1), as applied to claim 1 above, and further in view of Slafer (US 2015/0048048 A1; of record).
Regarding claim 7, Fiaccabrino/Bardet/Larrañaga teaches the method as claimed in claim 1, wherein the molding resin is solidified in a flat position (see Fiaccabrino FIG. 2; Bardet FIG. 3), except for explicitly disclosing, or is solidified from a non-planar template element.
Slafer teaches methods and systems for the rapid, low-cost formation of precision patterns on curved surfaces, such as lenses, in order to improve the performance and functionality of these structures [0005]; “an optical element, such as a moth eye antireflective pattern, consisting of an array of submicron sized tall conical shapes, is formed directly onto the curved surface of a concave lens using a stretchable elastomeric mold. The mold pattern, which is complementary to the desired pattern, is formed on one surface of an elastomeric film 1. This can be done by forming the mold pattern directly into the surface of the film, by known thermal or chemical/solvent imprinting means.” ([0025], analogous to the claimed “wherein the molding resin is solidified from a non-planar template element.”, see Slafer’s FIG. 1).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the template element in the method of Fiaccabrino/Bardet/Larrañaga so that the molding resin is solidified from a non-planar template element, and the modification would had not affected the function of the template element (notice that Slafer is also directed to forming submicron sized structured surfaces), as taught and suggested by the prior art of Slafer, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination. See MPEP § 2144.04 (IV) (B).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 – 11, 13 – 16, and 20 – 21 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.
Applicant’s arguments are based on newly amended limitations which have been addressed by the new grounds of rejection above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGAREDMANUEL TROCHE whose telephone number is (571)272-9766. The examiner can normally be reached M-F 7:30-5:30.
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/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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