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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/26/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 7, 9-11, 14, and 16-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claims 1 and 17 each recites the limitation "the intermetallic layer". There is insufficient antecedent basis for this limitation in each claim. 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, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sogo et al (US 2018/0267476) in view of Russell-Clarke et al (US 10,328,527).
With respect to claims 1-4, 7, 14, and 17, Sogo discloses a method for depositing a coating onto a substrate [1] that is an external part of a timepiece (Abstract; fig. 1; para 0116), wherein a “first coating” [2] is sputter deposited at a temperature of 150-250oC (para 0115 and 0128), and the first coating [2] is formed of specific atomic ratios of a metal alloy such as Co, Cr, and Mo from a target of CoCrMo alloy (i.e.. intermetallic compound) of thickness 0.02-2.0 mm (20-2000 nm) or further preferably 0.07-1.6 mm (70-1600 nm) (Abstract; para 0113, 0451, 0463, 0471, and 0493); thus the first coating [2] is the claimed “thin intermetallic layer” [2] that includes a desired or predetermined final colour. Since Sogo teaches the claim requirements of the method of sputter depositing the thin intermetallic layer [2] from the intermetallic compound onto the substrate [1] to the thickness of 70-1600 nm at the temperature of 150-250oC, a prima facie case of either anticipation or obviousness has been established that Sogo also teaches the resulting thin intermetallic layer [2] having a property of “an amorphous state”, with that “amorphous state according to a predetermined final colour” of the timepiece (MPEP 2112.01, I). Sogo also teaches in fig. 5 (which is applicable to fig. 1) a step of depositing a “coating layer” [6] of a “fluorine-containing organosilicon compound” covering the thin intermetallic layer [2] (para 0231 and 0240), wherein the coating layer [6] of the fluorine-containing organosilicon compound prevents “deterioration of aesthetic qualities due to staining” which “makes it possible to maintain the desirable aesthetic over extended time periods in a variety of environments” since the “fluorine-containing organosilicon compound has little impact on the overall external appearance of the timepiece” (i.e. coating layer [6] is transparent or translucent) (para 0232), and the fluorine-containing organosilicon compound is a polymer (para 0233-0240); thus the coating layer [6] is the claimed “translucent polymer layer” [6]. Sogo further suggests that the thin intermetallic layer [2] “may be subjected to, for example, a reduction treatment” (emphasis added) (para 0130), wherein the reduction treatment “may be performed by, for example, exposure to a reducing gas such as hydrogen gas (specifically, exposure to a reducing gas under heated conditions” (emphasis added) (para 0132); thus while Sogo explicitly suggests that one specific example for the reduction treatment may specifically be performed under heated conditions, Sogo also implicitly suggest that the reduction treatment may not necessarily be performed at all, or even if performed, may not necessarily be under heated conditions. As such, Sogo suggests that heating (i.e. claimed “annealing”) of an entirety of the substrate [1] is not performed.
However Sogo is limited in that a localised annealing with a laser on a predetermined area of the thin intermetallic layer [2] is not suggested.
Russell-Clarke teaches a method for laser-forming features after a physical vapor deposition process to deposit metal alloy 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 the metal alloy as the thin intermetallic layer of Sogo. Russell-Clarke further teaches the method comprises using a laser to ablate, vaporize, or otherwise remove material in a localized annealing on a predetermined area (which is without annealing an entire area) of a surface of the metal alloy material 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 using a laser as taught by Russell-Clarke to the thin intermetallic layer [2] of Sogo to gain the advantages of altering color, appearance, and/or specular properties as desired on a predetermined area.
In summary, the combination of references Sogo and Russell-Clarke has: Sogo teaching sputter depositing the thin intermetallic layer [2] to the thickness of between 20-1000 nm from the target of at last two metals at the temperature of at least 100oC (Abstract; para 0113, 0115, 0128, 0451, 0463, 0471, and 0493), resulting in the thin intermetallic layer [2] having the amorphous state according to the predetermined final colour; and Russell-Clarke teaching applying the localised annealing step of the laser to the thin intermetallic layer [2] of Sogo to ablate the predetermined area (of the thin intermetallic layer [2] of Sogo) 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). Since the combination of references Sogo and Russell-Clarke teaches the claim requirements of the method of claim 1, a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting thin intermetallic layer [2] having a property of ‘locally changing the amorphous state at the predetermined area to a crystalline state, thereby changing an original hue of the thin intermetallic layer at the predetermined area to grey’ (MPEP 2112.01, I).
With respect to claims 9-11, the combination of references Sogo and Russell-Clarke has: Sogo teaches an entire surface or portion thereof of the substrate [1] undergoes a “surface treatment“ or “indentation patterns” (i.e. claimed “surface structuring step”) prior to sputter depositing the thin intermetallic layer [2] (para 0082-0084); and Russell-Clarke teaching the localized annealing 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 14, as discussed above, claim 1 recites “wherein during the step of depositing a protective layer (120), the thin intermetallic layer (110) is covered by a stack of thin dielectric layers and/or a translucent polymer layer” (emphasis added). Thus the “thin dielectric layers” is an optional limitation for the ”protective layer” due to the alternative language ‘or’, and accordingly not required by claim 1. Claim 14 is dependent upon this optional limitation; accordingly claim 14 is not required due to being dependent upon the optional limitation from claim 1. Thus claim 14 is also rejected for the same reasoning set forth above for claim 1.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Sogo et al (US 2018/0267476) and Russell-Clarke et al (US 10,328,527) as applied to claim 1 above, and further in view of Hurly (EP 0421731).
With respect to claim 16, the combination of references Sogo and Russell-Clarke is cited as discussed for claim 1. However Sogo is limited in that while the thin intermetallic layer [2] comprises other metals and alloys such as Al and Pt (para 0093 and 0095), the intermetallic layer [2] comprising Cu is not specifically suggested.
Hurly teaches an intermetallic compound in different proportions to provide desirable color for jewellery (Abstract, p. 2, lines 1-5), similar to the timepiece of Sogo. 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). Hurly cites the advantage of the intermetallic compounds in different proportions of Cu as “permitting the use of a range of aesthetically pleasing colours” (Abstract).
It would have been obvious to one of ordinary skill in the art to incorporate the intermetallic compound of Pt, Al, and Cu at the different proportions of Hurly as the intermetallic compound for the timepiece of the combination of references to gain the advantage of permitting a range of aesthetically pleasing colours for the timepiece.
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, with US 2018/0267476 rendering obvious a temperature during the depositing of the thin intermetallic. 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 in view of US 2018/0267476.
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. 6-7 filed 3/26/2026 are addressed below.
103 Rejections
Applicant’s arguments on p. 6-7 with respect to amended claims 1 and 17 have been considered but are moot because the arguments do not apply to the new combination of references Sogo and Russell-Clarke being applied in the current rejections.
Double Patenting Rejections
No Terminal Disclaimer has been filed; the rejection is maintained.
Conclusion
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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