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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/12/26 has been entered.
The amendment filed 12/11/25 has been considered and entered per the filing of the RCE. Claims 1-26,29,34-41 and 48 have been canceled. Claims 27,28,30-33,42-47 and 49-52 remain in the application for prosecution thereof.
Considering the amendment filed 12/11/25, the 35 USC 103 rejections have been withdrawn. However, the following rejections have been necessitated by the amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 27,28,30-33,42-47 and 49-52 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.
Regarding claims 27,42-45,51 and 52 the term “said second material” lacks antecedent basis as the claim previously recites “at least one second material”.
Regarding claims 28,30-33,46,47,49 and 50, the claims are rejected based upon a rejected base claim and do not correct the lacking antecedent basis 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.
Claims 27,28,30-33,42-47 and 49-52 are rejected under 35 U.S.C. 103 as being unpatentable over Charbon (2017/0146954) or WO2008/052378 in combination with Fussinger et al. (2018/0024502) in combination with Dubois et al. (9,658,597).
Charbon (2017/0146954) teaches a timepiece component whereby the component is electroformed from nickel-phosphorus or material containing nickel phosphorus. The electroforming is performed by LIGA (abstract). Charbon (2017/0146954) teaches 8-15% phosphorus in the component [0022]-[0031]). Charbon (2017/0146954) teaches a post or pre heat-treatment of the coating component and the heat treatment can be performed at 150-600C for 0.5-6 hours [0049].
WO2008/052378 teaches a timepiece made of nickel or nickel-phosphorus and a coating of nickel on the surface of the timepiece whereby the timepiece is a wheel made of Ni-P and a coating of nickel devoid of phosphorus is applied thereto for improved sliding, i.e. less friction (pg. 3, line 24 – pg. 4, line 4)
Charbon (2017/0146954) or WO2008/052378 fails to teach coating the wheel with a coating only consisting of nickel and boron.
Fussinger et al. (2018/0024502) teaches a component for a timepiece movement relating to a pivot arbor made of a magnetic material and coated with a second material of Ni or NiP (abstract). Fussinger et al. (2018/0024502) teaches a pivot arbor to be defined as a pallet staff or escape pinion [0018] or wheel set arbors [0033]. Fussinger et al. (2018/0024502) teaches the timepiece to include copper/nickel/phosphorus [0037]. Fussinger et al. (2018/0024502) teaches wheel set arbors [0033].
Therefore, it would have been obvious for one skilled in the art to have modified Charbon (2017/0146954) or WO2008/052378 timepiece wheel to include a NiP coating hereon to improve mechanical properties such as shock resistance of the Ni or NiP coating as evidenced by Fussinger et al. (2018/0024502).
Charbon (2017/0146954) or WO2008/052378 in combination with Fussinger et al. (2018/0024502) fails to teach the timepiece coating to include boron such as NiB.
Dubois et al. (9,658,597) teaches coating a timepiece (a wheel) including boron of greater than 10% (abstract, col. 5, lines 25-30). Dubois et al. (9,658,597) teaches the coating to include NiB only (col. 5, lines 58-65).
Therefore, it would have been obvious for one skilled in the art before the effective filing date of the claimed invention to have modified Charbon (2017/0146954) or WO2008/052378 in combination with Fussinger et al. (2018/0024502) process to include only consisting of a NiB coating on the timepiece as evidence by Dubois et al. (9,658,597) with the expectation of producing a coated timepiece wheel.
Regarding claim 28, Fussinger et al. (2018/0024502) fails to specifically teach coating the surface adjoining a friction surface of the wheel but Fussinger et al. (2018/0024502) does teach a timepiece including pivot arbor, balance staff, pallet staff, escape pinion [0018] and these would be “adjoining a friction surface of the wheel” as they all are integrated structures of a timepiece and the coating to reduce friction would be desirable on these pieces.
Regarding claim 30, Fussinger et al. (2018/0024502) teaches the NiP layer can be applied by CVD [0017],[0075] or chemical deposition [0024],[0075]. WO2008/052378 teaches coating galvanically the Ni coating.
Regarding claims 31-33, Fussinger et al. (2018/0024502) teaches the NiP coating to include between 0-15% phosphorus [0058]. WO2008/052378 teaches nickel devoid of phosphorus.
Regarding claims 42-45, Fussinger et al. (2018/0024502) teaches the coating layer thickness to be 0.5 -10 microns [0015],[0023].
Regarding claims 46-47, Charbon (2017/0146954) teaches a post or pre heat-treatment of the coating component and the heat treatment can be performed at 150-600C for 0.5-6 hours [0049].
Regarding claim 49, Charbon (2017/0146954) teaches the electroforming is performed by LIGA (abstract).
Regarding claim 50, Fussinger et al. (2018/0024502) teaches the timepiece to include an escape pinion or a pallet staff [0018],[0033].
Regarding claims 51 and 52, Fussinger et al. (2018/0024502) teaches the claimed thickness to be less than 10 microns [0015],[0023].
Response to Amendment
Applicant’s arguments with respect to claims 27,28,30-33,42-47 and 49-52 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 argued the prior art fails to teach coating a nickel/phosphorus (NiP) timepiece wheel with a coating material only consisting of nickel and boron.
Dubois et al. (9,658,597) teaches this as detailed above whereby the coating to include NiB only (col. 5, lines 58-65).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN K TALBOT whose telephone number is (571)272-1428. The examiner can normally be reached Monday -Friday 7-4PM.
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/BRIAN K TALBOT/ Primary Examiner, Art Unit 1712