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
The amendment filed July 08, 2025, has been entered. Claim 1 – 11, 13 – 16, and 20 are amended. Claims 12, and 17 – 19 are cancelled. Claims 21 – 22 are new. Claims 1-11, 13 – 16, and 20 – 22 are pending and under examination.
New Grounds of Rejection
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.
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 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).
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 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 (6) to solidify in order to obtain a resin structured insert (3) [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 [0029]).
Fiaccabrino does not explicitly disclose the method then manufacturing a jewelry or timepiece component using the structured insert, wherein the manufacturing of the timepiece component comprises: positioning the structured insert in a housing of a mold for manufacturing the timepiece component: filling the mold including the structured insert with a component material, including filling the negative pattern of the structured insert, 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: removing the blank of the timepiece component from the mold.
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 structured mold inserts of Bardet et al. for the purpose of providing a resin insert comprising self-cleaning and super-hydrophobic surfaces, as taught by Bardet et al. (Bardet et al. lines 320 – 327).
Regarding claim 2. Fiaccabrino/Bardet 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 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).
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), as applied to claim 1 above, and further in view of Sameoto (US 2015/0343442 A1; of record).
Regarding claim 3. Fiaccabrino/Bardet 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” [0025]), except for explicitly disclosing, 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.
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, 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.
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 Sameoto (US 2015/0343442 A1), as applied to claim 3 above, and further in view of Bourquard (US 2020/0316822 A1; of record).
Regarding claim 4. Fiaccabrino/Bardet/Sameoto teaches the method as claimed in claim 1, wherein the structured surface of the template element comprises an artificial pattern (e.g., Sameoto’s FIG. 8; 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/Sameoto, 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.
10. Claim(s) 5 - 6 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 Sameoto (US 2015/0343442 A1), as applied to claim 3 above, and further in view of Bourquard (US 2020/0316822 A1), and as evidenced by the non-patent literature of OlinTM (“North America Epoxy Resins”; “Olin”; of record), and Morita et al. (US 2023/0048853 A1; of record).
11. Regarding claim 5. Fiaccabrino/Bardet/Sameoto/Bourquard 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.
Nonetheless, Fiaccabrino [0023] discloses “the resin may comprise at least one of the following polymer materials polycarbonate, poly(methyl methacrylate), cyclic olefin polymer, cyclic olefin copolymer and/or polystyrene.” [0027] “The cooling may occur according to a desired temperature sequence to influence the cooling down and the hardening of the resin, in particular such that viscosity of the resin during the pressing phase and the hardening process during the releasing phase are optimized.”
Bardet, lines 235 – 256 “The resin of the first part of the insert according to the invention can be chosen from: thermosetting resins such as epoxy, polyurethane, polyester, vinyl ester, phenolic, bis-maleimideresins; thermoplastic resins such as polycarbonate of bisphenol A, polyetherketone, polyaryletherketone, polyphenylene bisphenol A, polysulfone, polyphenylsulfone, poly-2,6-phenylene dimethyloxide, polyetherimide, polyether sulfone, polyamide- imide and polypyromellitimide; organic-inorganic hybrid resins; sol-gel resins, the sol-gel resin may be an acrylic resin modified with nanoparticles of silicon dioxide”; Bardet, lines 291 – 292 “these polymeric materials can be chosen from polycarbonates, styrenics, polyolefins, polyamides, polyvinyls, elastomeric thermoplastics and silicones.” See Bardet lines 392 – 410.
Sameoto [0003] “PDMS”; [0006] “silicone”; [0041] “a flexible negative silicone mold or flexible elastomer negative mold is made”; [0046] “acrylic”;
Bourquard [0038] “The first elastomeric material constituting these calendered sheets will also be chosen from a fluorinated elastomeric material, in particular of the FKM type, or nitrile (NBR). A fluoroelastomer will be particularly suitable for overmoulding and texture acquisition from relatively dense and resistant materials such as leather, bark or stones, while nitrile will be more suitable for overmoulding fragile materials and fine surface roughness such as hair coats or feathers.”
In view of Applicant’s instant US published application (US 2020/0305700 A1) disclosure at [0046] “By way of an example, the molding resin comprises polyurethane, latex, acrylic resin, fluoroelastomer, such as FKM, PDMS (PolyDimethylSiloxane), an epoxy resin, or two-component silicone, in particular two-component addition-vulcanizing silicone, in particular from the family of vinyl-polydimethyl-siloxanes, or in particular comprising vinyl, silicic acid and aggregating materials.” One of ordinary skill in the art has good reason to pursue the known option within his or her technical grasp (i.e., selecting the molding resin from polyurethane, acrylic resin, fluoroelastomer, such as FKM, PDMS, an epoxy resin, or two-component silicone, as disclose by the prior art), with good expectations of anticipated success.
Therefore, since the prior art teaches an analogous method for manufacturing a timepiece or jewelry component to Applicant’s method, and further teaches the use of substantially identical options for the molding resin composition, the claimed physical properties are presumed to be inherent – that is, the claimed viscosity range for the molding resin is presumed to be inherent in the prior art molding resin. 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).
As evidenced by Olin, p. 9, Epoxy Resins Solutions, D.E.R. 337-X80 with a viscosity @25 °C of 500-1,200 mPa.s (0.5 – 1.2 Pa.s); Olin p. 6, Epoxy Novolac Resins D.E.N. 440 with a viscosity @25 °C of 50,000-90,000 mPa.s (50 – 90 Pa.s), and
as evidenced by Morita [0007] “aqueous polyurethane resin composition has a viscosity of not less than 500 Pa·s and not more than 50,000 Pa·s when the polyurethane resin is contained in an amount of 65% by weight”.
12. Regarding claim 6. Fiaccabrino/Bardet/Sameoto/Bourquard teaches the method as claimed in claim 1, wherein the molding resin comprises polyurethane, acrylic resin, fluoroelastomer, epoxy resin, or two-component silicone – see the discussion of claim 5 above.
13. Claim(s) 7 – 9 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), Sameoto (US 2015/0343442 A1), and Bourquard (US 2020/0316822 A1), and as evidenced by the non-patent literature of OlinTM (“North America Epoxy Resins”; “Olin”), and Morita et al. (US 2023/0048853 A1), as applied to claim 5 above, and further in view of Slafer (US 2015/0048048 A1; of record).
14. Regarding claim 7. Fiaccabrino/Bardet/Sameoto/Bourquard 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/Sameoto/Bourquard 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).
15. 22. Regarding claim 8. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer teaches the method for manufacturing a structured insert 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.”; Bourquard [0036] “Within the scope of the invention, calendered sheets with a thickness preferably between 0.5 mm and 10 mm, preferably still between 1 mm and 3 mm, will be used for the cavity acquisition assembly.”). 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.
23. Regarding claim 9. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer teaches the method as claimed in claim 1, except for explicitly 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.
Bardet at lines 427 – 429 discloses, “left to crosslink at room temperature for the time prescribed by the manufacturer, or heated to a temperature and for a time recommended by the manufacturer to promote crosslinking”.
Sameoto at [0044] discloses, “suitable thermoplastic reversible bonded microfluidic structures may be desirably cast in an exemplary flexible mold using compression molding, with a replication time including setup, casting, cooling and demolding, of about two (2) minutes or less, and more preferably about 30 seconds” – overlapping with the claimed range of from 1 to 30 minutes. 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 selected the portion of Sameoto solidifying time range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). MPEP § 2144.05 (I).
24. Claim(s) 10 – 11, 16, and 20 – 22 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), Sameoto (US 2015/0343442 A1), Bourquard (US 2020/0316822 A1), and Slafer (US 2015/0048048 A1), as evidenced by the non-patent literature of OlinTM (“North America Epoxy Resins”; “Olin”), and Morita et al. (US 2023/0048853 A1), as applied to claim 7 above, and further in view of Sameoto (US 2014/0363610 A1; “US’610”; of record).
25. Regarding claim 10. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer teaches the method as claimed in claim 1, except for, wherein a hardness of the structured insert is in a range of from 20 to 90 Shore A.
Nonetheless, Bardet lines 303 – 304 discloses “the resin has a hardness of around 90 Shore D”.
US’610 teaches compression, extrusion and injection molding of interlocking dry adhesive microstructures with flexible mold technology including dry adhesives and methods of production therefor involving photolithographically formed flexible molds [0004]; [0080] “In a further embodiment of the present invention, suitable dry adhesive materials for casting interlocking dry adhesive structures from suitable flexible molds may… comprise a Shore A hardness between about 20 and 100, and more particularly between about 30 and 90. In another optional embodiment, suitable dry adhesive materials may be selected having higher Shore A hardnesses above about 90, for example, where a practical limitation for the hardness of a suitable material may be limited to avoid plastic yielding of the dry adhesive fibers under preload forces, for example.” – overlapping with the claimed range of from 20 to 90 Shore A. 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 selected the portion of US’610 structured insert hardness range that corresponds to the claimed range. In re Malagari, 184 USPQ 549 (CCPA 1974). MPEP § 2144.05 (I). One of ordinary skill would have been motivated to choose a material hardness within the claimed ranges, e.g., US’610 teaches selecting shore hardness between 30 and 90, e.g., a hardness of 90 for the purpose of avoiding plastic yielding of the dry adhesive fibers under preload forces (US’610 [0080]).
26. Regarding claim 11. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 teaches the method as claimed in claim 1, except for explicitly disclosing, wherein the method further comprises: depositing a coating of a release agent onto the structured insert.
Wang et al. teaches a device and method of forming nanoimprinted structures (analogous to the claimed “structured surfaces”), and teaches that “Typically, either the source pattern layer or target layer or both are treated with a mold release agent, to reduce sticking forces between the source layer and the cured target layer, to ease separation.” [0027].
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 method of
of Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 with a step of depositing a coating of a release agent onto the structured insert, as suggested by the prior art of Wang et al., for the purpose of e.g., reduce sticking forces between the source layer and the cured target layer, to ease separation. Wang et al. [0027]. See MPEP 2143 (I)(G).
27. Regarding claim 13. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 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).
28. Regarding claim 14. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 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]).
29. Regarding claim 15. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 teaches the method as claimed in claim 1, wherein the timepiece component is flexible and has a non-planar shape at rest (the modified method in view of Slafer’s non-planar molding would produce a timepiece component having non-planar shape at rest, and the prior art method teaching the use of identical molding resin would predictably result in a flexible timepiece, e.g., Bourquard discloses “it is known to manufacture pasts such as watch straps, in natural or synthetic rubber, or various plastic materials” [0004].
30. Regarding claim 16. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 teaches the method as claimed in claim 1, wherein a material of the timepiece component is based on an elastomer (e.g., Bourquard [0010]).
31. Regarding claim 20. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 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., Slafer discloses “the pattern is die-cut from the web”).
32. Regarding claim 21. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 teaches the method as claimed in claim 1, further comprising finishing the blank (e.g., see Fiaccabrino [0028]).
33. Regarding claim 22. Fiaccabrino/Bardet/Sameoto/Bourquard/Slafer/US’610 teaches the method as claimed in claim 1, wherein the molding resin comprises two-component silicone (see the discussion of claim 5 above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11, 13-16, and 20-22 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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Applicant argues (Remarks, pages 2-4) that in Fiaccabrino, the support 12 is not part of the mold but only a support for mold 3, and argues that the claimed method differentiates from Fiaccabrino by the step of positioning the structured insert in a housing of a mold for manufacturing the time piece component. These assertions are not persuasive of error. In fact, Fiaccabrino at [0021] does indeed discloses the support 12 as “a fixed support (or lower mould part) 12”, said lower mould part 12 in Fiaccabrino been virtually identical to Applicant’s mold structures shown in Applicant’s FIGs. 3a-3c. Furthermore, Applicant’s arguments disregards the combination of Fiaccabrino with the teachings of Bardet et al., addressing the modification of Fiaccabrino with the structured mold insert of Bardet et al. (see the discussion of claims 1-2 above). Applicant’s arguments are unpersuasive.
In response to applicant's argument that the prior art of Sameoto is nonanalogous art (Remarks, pages 5-7), it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Sameoto discloses methods for manufacturing structured surfaces having properties such as hydrophobicity (see Sameoto [0016]), similarly to Bardet et al., which discloses hydrophobicity as a desired property of said structured surfaces, see the discussion of claim 1 above (see Bardet et al. lines 320 – 327). Therefore, the prior art of Sameoto is reasonably pertinent to the particular problem with which the inventor was concerned (e.g., Applicant’s Specification at page 2, lines 7-10 discloses, “The first aim of the invention is to be able to manufacture a timepiece or jewelry component with a defined technical functionality, in particular, a hydrophilic or hydrophobic character, and/or with an attractive aesthetic appearance, in particular having a structured surface with a selected pattern.”
Applicant’s argument is unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Keller et al. (US 2003/0075814 A1): Methods of manufacturing a surface utility microstructure, [0080] An advantage of the use of such a mould in the process of the invention is that various inserts having similar or different microstructures may be shaped on a same plane band, and then cut and used in the mould depending upon the required microstructure. Moreover, such inserts may be thrown away and easily substituted.
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/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742