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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting.
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1-6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 5-7, respectively, of copending Application No. 17/940,216 in view of Turcotte (US 2017/0285575) and Azuma (US 5912064).
Regarding claims 1 and 4, claim 1 of ‘216 recites the limitations of claim 1, except for the stack of thin layers comprising a substrate layer made of a transparent material, which ‘216 recites is reflective instead, and the stack of thin layers is distant from the crystal.
Turcotte teaches a layer of a transparent substrate ([0008]). One of ordinary skill in the art would have been motivated to substitute the reflective layer in claim 1 with the transparent layer of Turcotte so that the stack of thin layers comprises the substrate layer. One of ordinary skill in the art would have been motivated to make this substitution to imbue the stack of layers with a colorful, aesthetic appearance that has an effect of depth ([0008] of Turcotte).
Azuma teaches (Fig. 3) a layer (6) distant from a crystal (8). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made the stack of thin layers distant from the crystal, as suggested by Azuma. One of ordinary skill in the art would have been motivated to make this modification to imbue a watch dial with a colorful appearance, and dials are distant from watch crystals (column 2, lines 6-10).
Regarding claims 2-3, 5-6, and 8, claims 2-3 and 5-7 of ‘216 recite the limitations of claims 2-3 and 5-6, respectively.
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 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Azuma (US 5912064) in view of Hosseini (US 20180203261).
Regarding claim 1, Azuma discloses (Figs. 3, 5) a watch case comprising a middle (1) to which a crystal (8) and a back (10) are fastened so as to form an internal volume, said watch case including, in said internal volume, an external part component (61) whereon a stack of thin layers (62-64) is deposited, wherein the stack of thin layers is deposited on a support (61) formed by all or part of the external part component (Fig. 5), wherein the stack of thin layers is distant from the crystal (Fig. 3), and wherein the external part component is made of transparent material. Col. 7:27-37 discloses that the external part component is a ceramic material that transmits light, which meets Applicant’s definition of “transparent” ([0039] of Applicant’s specification).
Azuma does not show the stack of thin layers comprising a substrate layer, a solid-state phase switching layer and a spacing layer separating said phase switching layer from the substrate layer, the phase switching layer being configured so as to have a refractive index capable of varying under exposure from light rays so as to impart to the stack of thin layers at least two interferential colors, wherein the substrate is made of the transparent material.
Hosseini teaches (Fig. 4) a stack of thin layers (Fig. 4) comprising a substrate layer ([0031]: “substrate…such as a glass”), a solid-state phase switching layer (10) and a spacing layer (14) separating said phase switching layer (10) from the substrate layer ([0031]), the phase switching layer (10) being configured so as to have a refractive index capable of varying under exposure from light rays ([0025]) so as to impart to the stack of thin layers (Fig. 4) at least two interferential colors (Fig. 3 shows the multiple colors reflected), wherein the substrate layer ([0031]) is made of transparent material (glass is transparent).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Hosseini’s stack of thin layers for Azuma’s stack of thin layers. One of ordinary skill in the art would have been motivated to make this substitution to predictably create a colorful, decorative timepiece display element ([0052] of Hosseini and column 2, lines 5-12 of Azuma).
The combination of Azuma and Hosseini does not disclose the external part component and the substrate layer being made of the same transparent material.
Azuma teaches the external part component being alumina or zirconia (col. 7:38-40), which is a glass-ceramic, while Hosseini teaches the substrate layer being glass ([0031]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made the external part component and substrate layer out of the same, transparent glass-ceramic. One of ordinary skill in the art would have been motivated to make this material selection as a known material that predictably synergizes with Azuma in view of Hosseini’s stack of thin layers.
Regarding claim 2, Azuma in view of Hosseini discloses the watch case according to claim 1, wherein the phase switching layer (10 in Hosseini) is configured to have two reversibly switchable phase states, said phase states being a crystalline phase and an amorphous phase ([0025] of Hosseini).
Regarding claim 3, Azuma in view of Hosseini discloses (Hosseini, Fig. 4) the watch case according to claim 1, further comprising an encapsulation layer (16) such that the solid-state phase switching layer (10) is between the encapsulation layer (16) and the spacing layer (14), and wherein the encapsulation layer (16) is “as transparent as possible” (Hosseini, [0019]).
The combination of Azuma and Hosseini does not show the encapsulation layer being specifically transparent at the wavelength of the light rays under the exposure whereof the refractive index of the phase switching layer is capable of varying.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made Azuma in view of Hosseini’s encapsulation layer transparent at the wavelength of light rays under the exposure whereof the refractive index of the phase switching layer is capable of varying. One of ordinary skill in the art would have been motivated to make this specification so that the phase switching layer receives as much light as possible to expedite phase switches and color changes and reduce exposure time.
Regarding claims and 8, Azuma discloses the watch case according to claim 1, wherein the external part component is a dial (col. 6:46-48).
Regarding claim 5, Azuma in view of Hosseini discloses a method for decorating the external part component of a watch case according to claim 1, comprising exposing the stack of thin layers to light rays (Hosseini, [0025]), on a predefined exposure zone (Hosseini, [0033] and [0052]), so as to locally change the phase of the phase switching layer (Hosseini, [0025]) and to generate a pattern (Hosseini, [0052]) on said external part component.
Regarding claim 7, Azuma in view of Hosseini discloses (Hosseini, Fig. 4) the watch case according to claim 1, wherein the spacing layer is transparent and comprises a dielectric material including indium tin oxide ([0029] of Hosseini), wherein the substrate layer is made of glass (Hosseini, [0031]), and the spacing layer (14) is disposed on a mirror layer (12), which is disposed on the substrate layer (Hosseini, [0031]).
The combination of Azuma and Hosseini does not show the spacing layer being disposed directly on the substrate layer.
One of ordinary skill in the art would recognize that removing Hosseini’s mirror layer would not render the stack of thin layers inoperable, as the mirror layer only provides a supplemental reflecting effect in combination with the other light-altering effects of the other layers.
As such, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have omitted Azuma in view of Hosseini’s mirror layer so that the spacing layer is disposed directly on the substrate layer. One of ordinary skill in the art would have been motivated to make this omission because Azuma’s watch case already has reflective properties (col. 7:40-45), so the mirror layer is not required, and removing the mirror layer would simplify manufacture and reduce component cost. Also, the aesthetic effect of the mirror layer may simply be undesirable. See In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965) and MPEP 2144.04.II.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Azuma in view of Hosseini as applied to claim 5, and in further view of Yoshinaga (US 20220212287).
Regarding claim 6, Azuma in view of Hosseini discloses the decoration method according to claim 5, wherein the light rays are generated by a laser beam (Hosseini, [0025]), so as to control the localized temperature rise of the phase switching layer (Hosseini, [0025]) and the shape of the predefined exposure zone (Hosseini, [0033] and [0052]).
The combination of Azuma and Hosseini does not explicitly show the laser beam being controlled by a control unit so as to also control the exposure time of the predefined exposure zone.
Yoshinaga teaches a laser beam being controlled by a control unit ([0030] and Fig. 4) so as to control an exposure time of a predefined exposure zone. Because the control unit’s control of the laser is preprogrammed ([0039]), the exposure time and exposure zone are therefore controlled.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Azuma by using a control unit to control the laser, as suggested by Yoshinaga. One of ordinary skill in the art would have been motivated to make this modification to create a precise and accurate laser irradiation.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are unpersuasive. Applicant argues that Azuma’s substrate 61 diffuses light and does not transmit light. However, col. 7:27-37 states that up to 70% of light will be transmitted through the substrate. Azuma therefore meets Applicant’s definition of a transparent material being a material that allows “part of a light radiation…to pass through” ([0039] of specification).
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 Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/EDWIN A. LEON/Primary Examiner, Art Unit 2831
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