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 .
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.
Claim 10 is 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.
Amended claim 1 and new claim 17 each recites “the method performed without annealing an entirety of the substrate”. There is no support for this negative requirement in the Specification in view of reasoning that a negative claim requirement introduces new concepts since an express exclusion of certain elements implies permissible inclusion of all other elements not so expressly excluded. Ex parte Grasselli, 231 USPQ 393, 394 (BD. App. 1983; aff’dmem., 738 F.2d 453 (Fed. Cir, 1984). Claims 2-4, 7, 9-11, 14, and 16 are also rejected as depending on claim 1.
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 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.
Claims 1-4, 7, 9-11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys) in view of Russell-Clarke et al (US 10,328,527) and Fischer et al (JP No. 4763108).
With respect to claims 1-3, 7, and 14, Furrer discloses a method of coating a sample (i.e. substrate) comprising a step of depositing a film (i.e. thin intermetallic layer) of a binary or ternary Au- and/or Pt-based alloy (i.e. intermetallic compound) (Abstract; 2. Experimental; 5. Summary), the step of depositing via PVD deposition method of ionic sputtering of targets of different metals of Pt, Al, Au, and/or In (2. Experimental). The step of depositing obtains an external part of the substrate with the thin intermetallic layer having a predetermined final colour, wherein the external part is jewellery or other item fashioned by a goldsmith (e.g. jeweler) (1. Introduction; 4. Discussion). The step of depositing is then followed by a step of annealing a predetermined area (e.g. a top surface and/or a bottom surface and/or a side surface) of the thin intermetallic layer to at least 200oC (2. Experimental; Table 1), wherein the step of annealing modifies the predetermined final colour of a predetermined area of the external part from an original colour or hue (3. Results, fig. 1 and fig. 5).
However Furrer is limited in that the step of annealing comprising a localized annealing step performed with a laser is not suggested.
Russell-Clarke teaches a method for laser-forming features after a physical vapor deposition process to deposit gold or other metal material (i.e. thin intermetallic layer) on a substrate usable as a timepiece or jewellery (Abstract; col. 8, lines 49-67; col. 9, lines 1-11; col. 22, lines 20-45), similar to the step of depositing aluminum and/or gold as the thin intermetallic layer of Furrer. Russell-Clarke further teaches the method comprises using a laser to ablate, vaporize, or otherwise remove material in a localized annealing operation on a predetermined area (which is without annealing an entire area) of a surface of the gold or other metal to alter color, appearance, and/or specular properties (col. 7, lines 36-61; col. 8, lines 11-42), wherein the laser is emitted as pulses having a duration of 20-200 ns at variable frequency of 500 kHz with a diameter of 20-30 microns (col. 7, lines 36-61; col. 8, lines 11-26).
It would have been obvious to one of ordinary skill to incorporate the localized annealing operation using a laser as taught by Russell-Clarke as or with the step of annealing of Furrer to gain the advantages of altering color, appearance, and/or specular properties as desired on a predetermined area.
However the combination of references Furrer and Russell-Clarke is further limited in that while Furrer teaches that after the step of depositing and/or step of annealing, a step of depositing a protective coating (i.e. protective layer) is conducted (4.2 Ternary alloys (Au/Pt)Al2), a specific material of the protective layer that is transparent is not suggested.
Fischer teaches a method of coating a substrate that is a timepiece or jewelry item, the method comprising a step of depositing a metal layer (i.e. thin intermetallic layer) [8] of gold, aluminum, and/or platinum via sputtering, followed by a step of depositing a protective layer [14] (para 0001, 0019, and 0021), similar to the method of Furrer. Fischer further teaches that the protective layer [14] comprises a transparent (i.e. translucent) polymer layer (para 0021).
It would have been obvious to one of ordinary skill in the art to incorporate the translucent polymer layer of Fischer as the protective layer that is transparent of the combination of references since the combination of references fails to specify a particular material for the protective layer that is transparent, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Fischer has shown a similar substrate type having a thin intermetallic layer deposited via sputtering of Furrer that is then covered with a transparent protective layer.
With respect to claim 4, modified Furrer further discloses the thin intermetallic layer has a thickness of 300-900 nm (2. Experimental).
With respect to claims 9 and 10, the combination of references Furrer, and Russell-Clarke, and Fischer has: Furrer teaching the diffusion barrier (i.e. surface structuring step) (2. Experimental), wherein only a portion of a surface of the substrate is structured with an additional layer of the diffusion barrier that corresponds to a predetermined area where the thin intermetallic layer is then deposited via the step of depositing, followed by a localized annealing operation of the thin intermetallic layer (2. Experimental); and Russell-Clarke teaching the localized annealing operation with the laser uses pulses having the duration of 20-200 ns at the variable frequency of 500 kHz (col. 7, lines 36-61; col. 8, lines 11-42).
With respect to claim 11, modified Furrer further discloses a step of depositing a diffusion barrier (i.e. surface structuring step) on the substrate prior to the step of depositing the thin intermetallic layer (2. Experimental), wherein an entire top surface of the substrate is structured with an additional layer of the diffusion barrier (2. Experimental).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys), Russell-Clarke et al (US 10,328,527), and Fischer et al (JP No. 4763108) as applied to claim 1 above, and further in view of Hurly (EP 0421731).
With respect to claim 16, the combination of references Furrer, Russell-Clarke, and Fischer is cited as discussed for claim 1. However Furrer is limited in that while alloys of Au, Cu, Ag, Al, In, Pd, and Pt are suggested (1. Introduction; Table 1), specific ranges of alloys of Pt, Al, and Cu are not suggested.
Hurly teaches an intermetallic compounds of Pt/Al including Cu in different proportions to provide desirable color for jewellery (Abstract, p. 2, lines 1-5), similar to the alloys of Pt, Al, and Cu of Furrer. Hurly further teaches ranges of Pt being 50-81% by weight, Al being 12.5-30% by weight, and Cu being 1-47.5% by weight (Abstract); a prima facie case of obviousness exists in the case where the claimed ranges (e.g. Pt at 36-7-54.6% by weight; Al at 11.2-14.3% by weight; Cu at 32.7-49% by weight) “overlap or lie inside ranges (e.g. Pt at 50-81% by weight; Al at 12.5-30% by weight, Cu at 1-47.5% by weight) disclosed by the prior art” (MPEP 2144.05, I).
It would have been obvious to one of ordinary skill in the art to incorporate the ranges of Hurly as the ranges for the alloys for the Pt, Al, and Cu of the combination of references since the combination of references fails to suggest a specific ranges for the alloys, and one of ordinary skill would have had a reasonable expectation for success in making the composition since Hurly has shown ranges for alloys of Pt, Al, and Cu for jewellery similar to the alloys of Pt, Al, and Cu of Furrer.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys) in view of Russell-Clarke et al (US 10,328,527).
With respect to claim 17, Furrer discloses a method of coating a sample (i.e. substrate) comprising a step of depositing a film (i.e. thin intermetallic layer) of a binary or ternary Au- and/or Pt-based alloy (i.e. intermetallic compound) (Abstract; 2. Experimental; 5. Summary), the step of depositing via PVD deposition method of ionic sputtering of targets of different metals of Pt, Al, Au, and/or In (2. Experimental). The step of depositing obtains an external part of the substrate with the thin intermetallic layer having a predetermined final colour, wherein the external part is jewellery or other item fashioned by a goldsmith (e.g. jeweler) (1. Introduction; 4. Discussion). The step of depositing is then followed by a step of annealing a predetermined area (e.g. a top surface and/or a bottom surface and/or a side surface) of the thin intermetallic layer to at least 200oC (2. Experimental; Table 1), wherein the step of annealing modifies the predetermined final colour of a predetermined area of the external part from an original colour or hue (3. Results, fig. 1 and fig. 5).
However Furrer is limited in that the step of annealing comprising a localized annealing step performed with a laser is not suggested.
Russell-Clarke teaches a method for laser-forming features after a physical vapor deposition process to deposit gold or other metal material (i.e. thin intermetallic layer) on a substrate usable as a timepiece or jewellery (Abstract; col. 8, lines 49-67; col. 9, lines 1-11; col. 22, lines 20-45), similar to the step of depositing aluminum and/or gold as the thin intermetallic layer of Furrer. Russell-Clarke further teaches the method comprises using a laser to ablate, vaporize, or otherwise remove material in a localized annealing operation on a predetermined area (which is without annealing an entire area) of a surface of the gold or other metal to alter color, appearance, and/or specular properties (col. 7, lines 36-61; col. 8, lines 11-42), wherein the laser is emitted as pulses having a duration of 20-200 ns at variable frequency of 500 kHz with a diameter of 20-30 microns (col. 7, lines 36-61; col. 8, lines 11-26).
It would have been obvious to one of ordinary skill to incorporate the localized annealing operation using a laser as taught by Russell-Clarke as or with the step of annealing of Furrer to gain the advantages of altering color, appearance, and/or specular properties as desired on a predetermined area.
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 nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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 provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7, 9-11, 14, and 16-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 18-20 of copending Application No. 18/062292 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 18/062292 are encompassed by the scope of the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-16 and 18-20 of 18/062292 would also meet the requirements set forth in claims 1-4, 7, 9-11, 14, and 16-17 of the current invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s Remarks on p. 6-8 filed 10/10/2025 are addressed below.
112 Rejections
Claim 10 has amended to refer to ; the previous 112(a) and 112(b) rejections are moot.
103 Rejections
In response to Applicant's arguments on p. 6-7 to claims 1 and 17 against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references (MPEP 2145, IV). In this case, the combination of Furrer and Russell-Clarke has Furrer teaching the annealing of the substrate is at least 200oC (Table 1), and Russell-Clarke teaching for the annealing to be the lcoalised area of the substrate (and not an entirety of the substrate). Thus the combination teaches claims 1 and 17.
Double Patenting Rejections
No Terminal Disclaimer has been filed; the rejection is maintained.
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 MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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