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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 32-49 in the reply filed on 16 January 2026 is acknowledged.
The traversal is on the grounds that restriction is not appropriate if a serious burden does not exist. This argument is not deemed persuasive as the process claims are separately classified which is sufficient to establish a serious burden.
Applicants further argue that the examiner did not interpret the invention in light of the specification when ascertaining unity of invention. This argument is not deemed persuasive because the examiner reviewed the specification in ascertaining the scope of the claims when interpreting the claim language.
The traversal is on the ground(s) that inventions related as product and process of making the product are considered to have unity of invention in view of MPEP 1893.03(d). However, Subsection (c) of 37 CFR 1.475 states that if the application contains more or less than the combinations listed in subsection (b) then unity of invention might not exist. Nothing in the rules states unity must exist merely by having the listed combinations in section (b).
Non-elected claims 50-62 can be rejoined if they are amended to include all of the limitations of claim 32.
The requirement is still deemed proper and is therefore made FINAL.
Claims 50-62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 January 2026.
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.
Claims 32-49 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following table provides a summary of the broad and narrower ranges in the claims:
Claim
Line
Preferable Range
32
5
L*
32
5
a*
32
5
b*
33
2
Aluminum oxide
34
3
Aluminum content
35
2-3
Thickness (two occurrences)
Claim 37 refers to “another decoration,” but claim 32 does not refer to a first decoration. As a result, one might infer that claim 32 requires the presence of a decoration without the express limitation regarding a decoration. Claim 37 will be treated as depending from claim 36.
Regarding claim 38, the phrase “including” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 36, 39-49 are rejected for failing to correct the deficiencies of claim 32.
Allowable Subject Matter
Claims 32-49 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action.
The closest prior art is deemed to be Takazaki (US 2020/0354825 A1); JP 06-122961; and Schiller et al. (EP 1522606 A1).
Takazaki teaches a black member for use in timepieces. See the title. The black color is formed by a coating comprising aluminum and oxygen (as well as titanium and nitrogen). See paragraph [0041]. The black layer has CIELAB coordinates of L* ≤ 48, -2.0 ≤ a* ≤ 3.0 and -3.5 ≤ b* ≤ 3.0. See the abstract. These coordinates exhibit a broad overlap with the coordinates of claim 32. The issue, however, is with the L* values taught by Takazaki (L* ≤ 12) as compared to the L* of claim 32 (L* ≤ 12). All of the examples of Takazaki exhibit an L* that far exceeds 12. See Tables 1-11. The remainder of the teachings of Takazaki fail to lead one of ordinary skill in the art to L* to values far below 48 such as 12 or below.
JP 06-122961 teaches forming black-colored layers on the exterior portions of timepieces. See the abstract. JP 06-122961 fails to teach interior parts or portions of the movement should be coated. Moreover, JP 06-122961 does not teach or suggest the CIELAB coordinates of the resultant coatings.
Schiller et al. teaches forming Al2O3 coatings having CIELAB coordinates of L* ≤ 12, -2.5 ≤ a* ≤ 2.5 and -2.5 ≤ b* ≤ 5.5. See the abstract. These coordinates closely overlap the coordinates of claim 32. Schiller et al. teaches forming this black layer on a continuous plastic film for use in laser writable films. See the abstract and paragraph [0002]. Continuous plastic films do not appear to be employed in an internal part or movement component of a timepiece. Even if one of ordinary skill in the art possessed a rationale for applying the coating of Schiller et al. to an internal part or movement component of a timepiece (which is lacking in the current record), it is unclear what the resultant CIELAB coordinates would be because the substrate would be different than a continuous plastic film.
Accordantly, the prior art fails to disclose or suggest an internal part or a movement component of a timepiece comprising an aluminum oxide coating on a substrate, where the coating has CIELAB coordinates of L* ≤ 12, -2 ≤ a* ≤ 2 and -3.5 ≤ b* ≤ 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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/David Sample/Primary Examiner, Art Unit 1784