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 .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 31 October 2025, claims 1, 3-6, 12, 14-17, and 19-20 are amended and claim 22 is added. Claim 2 is cancelled. Claims 1, 3-18, and 22 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 31 October 2025, new grounds of rejection are presented.
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.
Claims 1, 3-18, and 22 are 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.
Previously, claim 1 included a metal binder, comprising at least one element or alloy thereof selected from a list of elements. Now applicant has amended the claim to recite that the binder comprises at least one element selected from a list of elements, and/or at least one alloy of an element selected from a list of elements. Some of the elements are repeated in both of these lists. Silver is specifically included in one list of elements, and now excluded in the other list of elements.
Claim 1 as amended includes new matter. At no point was it disclosed, implicitly or explicitly, that the binder may contain both of ruthenium and an alloy of ruthenium also, for just one example. It was not disclosed that these were two separate components of the binder material as such. Claim 1 recites that an element may be present, AND its alloy may be present simultaneously, which are distinct by the applicant’s inclusion of two separate Markush groups and the words “and/or” separating the two Markush groups. The word “and/or” requires that the “and” embodiment be included in the scope of the claim. Thus the claim includes new matter. Such a feature does not have literal support in the specification, nor is there indication that these two embodiments were actually combined in this way prior to the claim amendment.
Each one of claims 3-18 and 22 are dependent on claim 1 and are also new matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-7, 11-18, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CH561281 A5 (machine translation provided by examiner; hereinafter “Suwa”).
Regarding claim 1, Suwa teaches a sintered titanium nitride alloy having gold-like appearance for watches (see TITLE). Suwa teaches that the alloy has 70-97% TiN, and a balance of Ti alloy as binding agent (see abstract or claim). Suwa teaches that the alloy is for decorative purposes (abstract). Suwa further teaches examples of the alloy at Table 1. Suwa teaches Example number 46, including 90% TiN, and 2% Ag (see Table 1). Thus Suwa teaches a combination of titanium and silver as the binder alloy at 10% total, so the binder meets the limitation of an alloy of a silver element. The composition of Example 46 falls entirely within the claimed ranges, anticipating the entire ranges. Applicant is directed to MPEP 2131.03.
Regarding claim 3, Suwa teaches that the composition of Number 46 includes 90% TiN (Table 1).
Regarding claim 4, Suwa teaches that the composition of Number 46 includes 90% TiN (Table 1).
Regarding claims 5-6, Suwa does not teach oxides or oxynitrides. In a broadest reasonable interpretation of the claim, these elements are optional and the claim is thus anticipated.
Regarding claim 7, Suwa teaches that the composition of Number 46 includes 90% TiN (Table 1).
Regarding claim 11, Suwa teaches that the Example 46 has a Vickers hardness of 940 (see Table 2), falling in the range as claimed and anticipating the range.
Regarding claim 12, the claim is considered to be a contingent limitation based on the language “when.” The claim limitation is considered met as the limitation is optional.
Regarding claim 13, Suwa does not describe a value of a kic. In this case, Suwa teaches the same composition as claimed, including the same nitrides and the same binder in the same proportions, used for the same purpose of watch parts, and having the same hardness values as claimed. The properties not disclosed by the prior art would have been inherently present in the composition of Suwa. Applicant is directed to MPEP 2112.01.
Regarding claims 14-17, Suwa does not teach any results for a CIELAB color space for the a*, b*, or L* components. Suwa teaches that the composition is made for watches, and has a gold-like appearance (see title, claim or Description).
In this case, Suwa teaches the same composition as claimed, including the same nitrides and the same binder in the same proportions, used for the same purpose of watch parts, and having the same hardness values as claimed. The properties not disclosed by the prior art would have been inherently present in the composition of Suwa. Applicant is directed to MPEP 2112.01.
Regarding claim 18, Suwa teaches that the material is made into a watch case (See abstract or last paragraph). Thus the limitation is considered to be met.
Regarding claim 22, Suwa teaches Example number 46, including 90% TiN, and 2% Ag (see Table 1). Suwa teaches that to produce the invention, individual component powders are mixed together in order to generate the material (See translation at p. 2 of 6). This meets the limitation of “elemental” silver.
Response to Arguments
Applicant's arguments filed 31 October 2025 have been fully considered but they are not persuasive.
Applicant has amended claim 1. Applicant has argued specifically that the added limitation does not include new matter (Remarks, p. 8). The examiner cannot agree with applicant’s arguments at this time for reasons stated above. Specifically applicant has presented claims with a scope that was not presented before 31 October 2025. Applicant cites no portion of the specification which would support the new limitations, and there is none. Applicant argues that the exclusion of silver from the one Markush group is supported, citing case law (Remarks, pp. 7-8). For completeness it is noted that the exclusion of silver from the one Markush group would not be considered to be new matter if that were the sole change that was made. Applicant now presents limitations that were not presented before. Further, applicant has now added in a combination of embodiments (the one list of elements not including silver and the one list of alloys including silver) that was never presented prior to the rejection of claims.
Even assuming arguendo that the embodiment of an element being present in the binder with an alloy of the same element in the binder also were supported, the narrowing of one of these excluding silver while the other does not represents a new combination of components that was not presented prior to amendment. If this combination were the preferred embodiment applicant chose not to disclose this until after a rejection was issued. The introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996) (a "laundry list" disclosure of every possible moiety for every possible position does not constitute a written description of every species in a genus because it would not "reasonably lead" those skilled in the art to any particular species); and Regents of the Univ. of Minnesota v. Gilead Scis., Inc., 61 F.4th 1350, 1356-58, 2023 USQ2d 269 (Fed. Cir. 2023).
Applicant argues that the prior art Suwa does not anticipate claim 1 as amended. Applicant argues that the Suwa reference does not teach an example of a composition having one of the elements and/or one of the alloys of elements as listed. The examiner disagrees. Specifically, Suwa as was previously cited teaches a “titanium alloy” is used as a binder. The “titanium alloy” of titanium and silver is also an alloy of a silver element based on a broadest reasonable interpretation of those terms consistent with the art. Example 46 of Suwa includes an “alloy” of silver, and all of the requirements of amended claim 1 are met by this example.
Regarding Chugai, applicant argues that the prior art does not teach an example having the “precious metal” binder component present at less than 30%, and is therefore outside of the claimed compositional range (Remarks, p. 10-14). In response, no rejection is made over Chugai.
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759