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
Claims 55-74 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (methods of manufacture), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/14/25.
Claim Interpretation
Claim 40 recites the limitation “wherein the stone is set within the bed using a setting element” under the broadest reasonable interpretation of the claim this could be interpreted by a person of ordinary skill in the art to include two different interpretations. First, this limitation could be read to require either a product by process limitation wherein “using a setting element” is a process step and the setting element is not a part of the component. A setting element is substantially broad and realistically could be any element used in the process of setting the stone. Alternatively, this limitation could be interpreted to mean that the component or the stone comprises a setting element. Under the BRI of the current language of the claim, this limitation would be met by prior art disclosing either interpretation.
Claim Rejections - 35 USC § 112(b)
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.
Claim 38-54 and 75 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 Claim 38, it recites the limitation “the internal parts” and there is insufficient antecedent basis for this limitation in the claim.
Claims 39-54 and 75 depend from claim 38 and are also rejected therein.
Regarding Claim 39, it recites the limitation “the table” and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 42, it recites the limitation “wherein it includes a plurality of alignments of stones” and it is indefinite “it” refers to in this limitation.
Regarding Claim 43, it recites the limitation “preferably at least 10 wt% of carbon nanotubes” and the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 44, it recites the limitation “wherein the black layer contains at least 50 wt%, at least 60 wt%, at least 70 wt%, at least 80 wt%, or at least 90 wt%” and it is not clear why the percentage limitations following at least 50 wt% are recited because they are met by being at least the 50 wt% value and it is therefore unclear if these limitations are required to more narrowly define the claim limitations or are simply unnecessary.
Regarding Claim 47, it recites the limitation “preferably 100 wt% of aluminum oxide” and the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 48, it recites the limitation “preferably between 45 wt% and 50 wt%” and the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding Claim 49, it recites the limitation “preferably between 2 and 10 microns, and more preferably between 4 and 7 microns” and the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 38-46, 50, and 54 are re rejected under 35 U.S.C. 103 as being unpatentable over Arnaud et al. (CH 713156 A2, hereinafter “Arnaud”) in view of Lebreton (US 20150359303 A1).
Regarding Claim 38, Arnaud discloses a component of the internal parts or movement for a timepiece or piece of jewelry (dial 1) comprising a substrate (3) partially coated with a black layer (21) [fig. 3a] said black layer comprising carbon nanotubes or aluminum oxide [0032], said substrate being at least devoid of the black layer on some surfaces of the substrate [fig. 3a].
Arnaud does not disclose that the component is decorated with at least one stone seated in a bed provided in the substrate or in a support positioned on the substrate, said substrate being at least devoid of the black layer on the surface of the bed.
Lebreton discloses a dial [0026] comprising a colored surface layer (20) decorated with at least one stone (10) seated in a bed (200) provided in the substrate or in a support (also 20) positioned on the substrate, and devoid of the colored layer on the surface of the bed [fig. 2].
Lebreton discloses that watches, especially luxury watches, made of metal, are often set with precious, semiprecious or synthetic stones [0002] and a dial including a plurality of stones, and from this disclosure it would have been obvious a person having ordinary skill in the art before the effective filing date of the claimed invention to add the stones of Lebreton to the dial of Arnaud. Both disclosures provide for aesthetic dial components and Arnaud already including areas devoid of the black layer on the substrate in which the stones of Lebreton could be applied such that the combination of Arnaud and Lebreton would have been obvious and predictable to one of ordinary skill in the art.
Regarding Claim 39, Arnaud and Lebreton disclose the component according to claim 38, and Lebreton further discloses that the top of the surround surface (top of 20) is flush with the table of the stone (top of 10) [fig. 2] when the stone is set.
Regarding Claim 40, Arnaud and Lebreton disclose the component according to claim 38, and Lebreton further discloses the stone set within the bed using a setting element (300).
Regarding Claim 41, Arnaud and Lebreton disclose the component according to claim 40, and Lebreton further discloses wherein said setting element is matched in color with the surrounding surface layer where the stone is mounted [0073]. In combination with Arnaud, a person having ordinary skill in the art would therefore find it obvious from this disclosure of Lebreton to apply a black layer on to the setting element to match it with the black layer of the surrounding surface of Arnaud.
Regarding Claim 42, Arnaud and Lebreton disclose the component according to claim 40, and Lebreton further discloses providing a plurality of alignments of stones [0074] for aesthetic purposes, all with the same surrounding layer meaning that the black layer being disposed between the alignments.
Regarding Claim 43, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses wherein the black layer is a varnish comprising at least 1 wt% [0034], and while it is not explicitly stated wherein Arnaud discloses that the black layer comprise a varnish a person having ordinary skill in the art would recognize that said carbon nanotubes having a random orientation within the varnish because in applying a varnish the direction applied of the components is random due to the nature of the varnish, unlike using a deposition of carbon nanotubes which may be aligned.
Regarding Claim 44, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses wherein the black layer contains at least 50 wt% of carbon nanotubes aligned vertically relative to the plane of the substrate, the remainder consisting of other forms of carbon [0036].
Regarding Claim 45, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses the black layer comprising “at least 50% by weight of carbon nanotubes, or even at least 60%, 70%, 80% or 90% by weight” [0036] and that the carbon nanotubes are aligned vertically [0037]. While it is not explicitly disclosed that the black layer contains 100 wt% of carbon nanotubes aligned vertically relative to the plane of the substrate, from the disclosure of Arnaud increasing in percentage as stated it would have been obvious to a person having ordinary skill in the art to implement 100% carbon nanotubes by weight for the black layer because the range of at least 90% is sufficiently close to having the whole layer be carbon nanotubes. There also does not appear to be any criticality presented between at least 90% carbon nanotubes and 100% carbon nanotubes by weight described in the present application or obvious in the art to suggest against selecting 100% carbon nanotubes by weight from the disclosure of Arnaud.
Regarding Claim 46, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses wherein the black layer comprising carbon nanotubes has a thickness of between 1 and 100 µm [0037].
Regarding Claim 50, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses wherein it is selected from the group consisting of a dial, an index, a hand, an applique, an oscillating weight, a plate and a bridge (dial) [abstract] [fig. 1].
Regarding Claim 54, Arnaud and Lebreton disclose the component according to claim 38, and Arnaud further discloses a timepiece or piece of jewelry comprising the component according to claim 38 [abstract].
Claims 47-49 are rejected under 35 U.S.C. 103 as being unpatentable over Arnaud and Lebreton as applied to claim 38 above, and further in view of Ito (US 20150212493 A1)
Regarding Claim 47, Arnaud and Lebreton disclose the component according to claim 38, but do not disclose wherein the black layer comprises at least 90 wt% of aluminum oxide.
Ito discloses a watch part, such as a dial [0053], comprising a substrate (P1) and a coating layer (P3) [0055] in which the coating layer is used as part of particularly excellent aesthetic appearance of the watch part [0058] in addition to appearing to have an excellent texture [0065], the coating layer comprising at least 90% by weight aluminum oxide [0073-0074] and also optionally a black coloring agent [0078], providing a black colored dial layer. Ito provides discloses that the black layer it describes is an alternative to carbon materials for the coating layer [0076].
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, that the black layer of Arnaud formed by carbon nanotubes and the black layer of Ito serve similar aesthetic purposes and are reasonable alternatives to one another, as suggested by Ito [0076], and as such would be predictably and obviously interchangeable for a person of ordinary skill in the art. While the prior art may not include all of the limitations of claim 47 in a single reference, the simple substitution of known elements serving the same function, an aesthetic colored layer for a watch dial, is both predictable and obvious to a person having ordinary skill in the art in light of disclosures of Arnaud and Ito.
Regarding Claim 48, Arnaud, Lebreton, and Ito disclose the component according to claim 47, and Ito provides for aluminum oxide which as a property has an aluminum content of between 45 wt% and 65 wt%,
Regarding Claim 49, Arnaud, Lebreton, and Ito disclose the component according to claim 47, and Ito further discloses wherein the black layer has a thickness between 1 and 50 microns [0092].
Claims 51-53 and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Arnaud and Lebreton as applied to claim 38 above, and further in view of Ito (US 20150212493 A1) and Le Gall (WO 2018167599 A1)
Regarding Claim 51, Arnaud and Lebreton disclose the component according to claim 38 in which the component is a dial.
Ito discloses that the watch external part which is provided with excellent aesthetics may include a dial but may also include several other components such as the hands [0054].
Le Gall discloses that the minute hand (1) of the watch may be equipped with a housing and receive a stone (7) [fig. 1].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention from the disclosures of Ito and Le Gall that not only can the dial be provided with a colored layer and stones to improve its aesthetics but so can the hands of the watch in addition to the dial. Providing the hands and the dial with the black layer and at least one stone like that provided by the combination of Arnaud and Lebreton would be obvious to try for advancing the aesthetics of the watch even further in light of the disclosures of Ito and Le Gall
Regarding Claim 52, Arnaud, Lebreton, Ito, and Le Gall disclose the assembly according to claim 51, and from this combination together further disclose that the component (hand) is disposed facing said other component and mounted such that it can move relative to said other component (dial).
Regarding Claim 53, Arnaud, Lebreton, Ito, and Le Gall teach the assembly according to claim 51, and further disclose wherein the component is a hand and in that the other component is a dial (both have black layer and at least one stone following combination of Arnaud and Lebreton with Ito and Le Gall in rejection of claim 51 above).
Regarding Claim 75, Arnaud, Lebreton, and Le Gall disclose the component according to claim 51, and Arnaud further discloses a timepiece [abstract] or piece of jewelry comprising the component according to the assembly according to claim 51.
Citation of Relevant Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Perret (US 20180157214 A1) discloses a method of fabrication of a black watch dial, comprising the step of providing a substrate; deposition of a black coating on said substrate, wherein said coating comprises carbon nanotubes.
Matthey et al. (CH 709669 A1) discloses a protective layer and / or decorative layer, in one embodiment comprising a first layer VD aluminum, while the second layer is an ALD layer of aluminum oxide (Al2O3), whose thickness is chosen according to the color.
Conclusion
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/KEVIN ANDREW JOHNSTON/Examiner, Art Unit 2831
/renee s luebke/Supervisory Patent Examiner
Art Unit 2831