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 .
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 1-7, 9-16, and 18-22 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.
Amended claim 1 recites a limitation of “the localised annealing comprises, by a laser and after the heating by the dedicated enclosure as the furnace has changed the thin intermetallic layer (110) from the amorphous phase to the crystalline phase, further changing the crystallinity, and thereby the colour, of the thin intermetallic layer (110) at just one or more parts that are overall less all of the thin intermetallic layer (110)”. There is no support in the Specification for this limitation. Claims 2-7, 9-16, and 18-22 are also rejected as depending on claim 1.
New claim 21 recites a limitation “the overall annealing comprises changing the crystallinity of the thin intermetallic layer (110) by heating, by the dedicated enclosure as the furnace, of both the substrate (100) and the thin intermetallic layer (110) as the external part (10) until the thin intermetallic layer (110) overall changes from, as the amorphous phase, a mainly amorphous phase to, as the crystalline phase, a mainly crystalline phase”. There is no support in the Specification for this limitation, in particular at para 0052. Claim 22 is also rejected as depending on claim 1.
New claim 22 recites a limitation “the localised annealing further comprises, by the laser and after the heating by the dedicated enclosure as the furnace has changed the thin intermetallic layer (110) from the mainly amorphous phase to the mainly crystalline phase, further changing the crystallinity, and thereby the colour, of the thin intermetallic layer (110) at just the one or more parts that are overall less all of the thin intermetallic layer (110)” There is no support in the Specification for this limitation, in particular at para 0052.
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 1-7, 9-16, and 18-22 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 claim 1 recites “the localised annealing comprises, by a laser and after the heating by the dedicated enclosure as the furnace has changed the thin intermetallic layer (110) from the amorphous phase to the crystalline phase, further changing the crystallinity, and thereby the colour, of the thin intermetallic layer (110) at just one or more parts that are overall less all of the thin intermetallic layer (110)” (emphasis added). It is unclear as to what is intended by the emphasized portion from the claimed “localised annealing”. Claim 7 recites a similar emphasized portion, and is similar rejected. Claims 2-7, 9-16, and 18-22 are also rejected as depending on claim 1.
New claim 21 recites a limitation “the overall annealing comprises changing the crystallinity of the thin intermetallic layer (110) by heating, by the dedicated enclosure as the furnace, of both the substrate (100) and the thin intermetallic layer (110) as the external part (10) until the thin intermetallic layer (110) overall changes from, as the amorphous phase, a mainly amorphous phase to, as the crystalline phase, a mainly crystalline phase” (emphasis added). The claim is indefinite as: 1) it is unclear as to what is meant by changes from “as the amorphous phase, a mainly amorphous phase to, as the crystalline phase, a mainly crystalline phase”; and 2) the term “mainly” is a relative term which renders the claim indefinite. The term “mainly” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 22 is also rejected as depending on claim 1.
New Claim 22 recites “changed the thin intermetallic layer (110) from the mainly amorphous phase to the mainly crystalline phase, further changing the crystallinity, and thereby the colour, of the thin intermetallic layer (110) at just the one or more parts that are overall less all of the thin intermetallic layer (110)” (emphasis added). The claim is indefinite as: 1) it is unclear as to how the “crystallinity” is then further changed; 2) the limitation of “just the one or more parts […] of the thin intermetallic layer” is still indefinite for the reasoning given above for claim 1; and 3) the term “mainly” is a relative term which renders the claim indefinite. The term “mainly” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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, 6-7, 11-14, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys) in view of Curchod et al (US 2020/0264566).
With respect to claim 1-3 and 7, Furrer discloses a method of coating a sample (i.e. substrate) comprising a step of depositing a film (i.e. thin intermetallic layer) (Abstract; 2. Experimental; 5. Summary), the step of depositing via PVD deposition method of ionic sputtering of targets of different metals of Pt, Al, Au, and/or In in an enclosure of a “sputter chamber” (2. Experimental). The step of depositing obtains an external part of the substrate with the thin intermetallic layer, wherein the external part is any type of jewellery fashioned by a goldsmith (1. Introduction; 2. Experimental; 4. Discussion). After the step of depositing, a step of heat treatment comprising overall annealing on the external part in a dedicated enclosure of a “vacuum oven”, the vacuum oven distinct and separate from the enclosure of the sputter chamber in the step of depositing (2. Experimental). Since Furrer teaches the thin intermetallic layer is deposited via PVD (para 0063), the thin intermetallic layer is considered to have the claimed “amorphous phase”, as evidenced by Applicant’s Specification para 0049 stating that the “deposition method is implemented so that the thin intermetallic layer 110 has a mainly amorphous phase after its deposition” (MPEP 2112.01, I).
However Furrer is limited in that the vacuum oven also including a laser of the claimed “localised annealing” is not suggested.
Curchod teaches a method for depositing a coating onto a substrate to obtain an external part of a timepiece or jewellery (Abstract; para 0050), wherein the method comprises: a step of “metallization” (e.g. claimed “depositing”) a thin intermetallic layer onto the substrate via physical vapor deposition (PVD) (figs. 7-13; para 0061-0063); followed by a step of annealing the external part by placing the external part in a chamber (e.g. claimed “dedicated enclosure”) after “metal deposition” (e.g. the metallization) (para 0066), wherein the dedicated enclosure is suggested to be an oven (para 0083); thus the dedicated enclosure is different and separate from an enclosure of the PVD, similar to the method of Furrer. Curchod further teaches that the step of annealing comprises a “whole assembly is then heated” (e.g. the whole external part is heated by an overall annealing) (para 0067), also similar to the method of Furrer; and then using residual heat from the overall annealing as preheating for “local activation” (e.g. claimed “localized annealing”) of a surface of the external part via laser that is “just one or more parts that are overall less all the thin intermetallic layer” in order to selectively activate certain areas of the surface “to obtain improved color diversity or to have a greater possibility of decoration with patterns” (figs. 14-15; para 0052, 0058-0059, and 0067).
It would have been obvious to one of ordinary skill in the art to use the localised annealing with the laser of Curchod after the overall annealing of Furrer to gain the advantages of selectively activating one or more areas of the surface of the external part to obtain improved color diversity or to have a greater possibility of decoration with patterns.
In summary, the combination of references Furrer and Curchod teaches the claimed method of the step of annealing comprises the overall annealing of the external part (including substrate and thin intermetallic layer) followed by the localised annealing via laser of the thin intermetallic layer, wherein the thin intermetallic layer has an “amorphous phase” from the PVD. Since the combination of references teaches the claimed method, a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting thin intermetallic layer having properties of: changing from “amorphous phase” to the claimed “crystalline phase” (and also colour) after the overall annealing, and further changing crystallinity (and also colour) after the localised annealing via laser (MPEP 2112.01, I).
With respect to claims 4 and 18, modified Furrer further discloses the thin intermetallic layer has a thickness of 300-900 nm (2. Experimental).
With respect to claims 6 and 19, the combination of references Furrer and Curchod has: Furrer teaching the overall annealing encompasses the entire external part of the substrate and thin intermetallic layer at a temperature between 200-350oC for a duration between 0.5-1 hr (30-60 mins) (2. Experimental; Table 1); Curchod also teaching similarly as Furrer the overall annealing of the entire external part (para 0067).
With respect to claims 11-13, modified Furrer further discloses a step of depositing a diffusion barrier (i.e. surface structuring step) on the substrate prior to the step of depositing the thin intermetallic layer (2. Experimental), wherein only a portion of a surface of the substrate is structured with an additional layer that corresponds to a predetermined area where the thin intermetallic layer is then deposited via the step of depositing, followed by a localized annealing operation of the thin intermetallic layer via the step of annealing that includes the entire substrate (2. Experimental).
With respect to claim 14, modified Furrer further discloses that after the step of depositing and/or step of annealing, a step of depositing a protective coating (i.e. protective layer) is conducted (4.2 Ternary alloys (Au/Pt)Al2).
With respect to claim 20, modified Furrer further discloses heat treatments in the vacuum oven for samples (i.e. plural external parts) (2. Experimental).
With respect to claims 21 and 22, the combination of references Furrer and Curchod teaches the claimed method of the step of annealing comprises the overall annealing of the external part (including substrate and thin intermetallic layer) followed by the localised annealing via laser of the thin intermetallic layer, wherein the thin intermetallic layer has the “amorphous phase” from the PVD. Since the combination of references teaches the claimed method, a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting thin intermetallic layer having properties of: 1) from the overall annealing, changes from “the amorphous phase, a mainly amorphous phase, to, as the crystalline phase, a mainly crystalline phase” (claim 21); and 2) from the localized annealing, changes from “the mainly amorphous phase to the mainly crystalline phase, further changing the crystallinity, and thereby the colour, of the thin intermetallic layer (110) at just the one or more parts that are overall less all of the thin intermetallic layer (110)” (MPEP 2112.01, I).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys) and Curchod et al (US 2020/0264566) as applied to claim 7 above, and further in view of Russell-Clarke et al (US 10,328,527).
With respect to claims 9 and 10, the combination of references Furrer and Curchod et al is cited as discussed for claim 7. However Curchod et al is limited in that parameters of the laser for the localised annealing are not suggested.
Russell-Clarke teaches a method for laser-forming features after a physical vapor deposition process to deposit gold or other metal 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 aluminum and/or gold as the thin intermetallic layer of Furrer. Russell-Clarke further teaches the method comprises using a laser to ablate, vaporize, or otherwise remove material in a localized annealing operation on a predetermined area of a surface of the gold or other metal 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 parameters of the laser taught by Russell-Clarke as the laser for the localised annealing of the combination of references to gain the advantage of altering color, appearance, and/or specular properties as desired.
Claim 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Furrer et al (Colors of thin films of binary and ternary gold- and platinum-based alloys) and Curchod et al (US 2020/0264566) as applied to claim 14 above, and further in view of Fischer et al (JP No. 4763108)
With respect to claims 15 and 16, the combination of references Furrer and Curchod is cited as discussed for claim 14. However modified Furrer is limited in that while the step of depositing the protective layer that is transparent is taught (4.2 Ternary alloys (Au/Pt)Al2), a specific material of the protective layer that is transparent is not suggested.
Fischer teaches a method of coating a substrate that is a timepiece or fashion item, the method comprising a step of depositing a metal layer (i.e. thin intermetallic layer) [8] of gold, aluminum, and/or platinum via sputtering, followed by a step of depositing a protective layer [14] (para 0001, 0019, and 0021), similar to the method of Furrer. Fischer further teaches that the protective layer [14] comprises a transparent (i.e. translucent) polymer layer (para 0021). Claim 15 recites limitations of the protective layer being “a stack of thin dielectric layers and/or by a translucent polymer layer” (emphasis added), with the limitation of “a stack of thin dielectric layers” being an optional limitation due to the alternative language “or”, and accordingly not required by claim 15. Claim 16 is dependent on claim 15 and the optional limitation, and accordingly also not required. Thus claim 16 is also rejected for the same reasoning set forth above for claim 15.
It would have been obvious to one of ordinary skill in the art to incorporate the translucent polymer layer of Fischer as the protective layer that is transparent of the combination of references since the combination of references fails to specify a particular material for the protective layer that is transparent, and one of ordinary skill would have had a reasonable expectation for success in making the modification since Fischer has shown a similar substrate type having a thin intermetallic layer deposited via sputtering of Furrer of the combination of references that is then covered with a transparent protective layer.
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, 6-7, 9-16, and 18-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 17/989854 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the 17/989854 are encompassed by the scope of the claims of the current invention, and encompass the subject matter of the current claims. Therefore, any reference meeting the limitations set forth in claims 1-14 of 17/989854 would also meet the requirements set forth in claims 1-4, 6-7, 9-16, and 18-22 of the current invention.
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. 8-10 filed 10/10/2025 are addressed below.
112 Rejections
Claim 1 has been amended to clarify the claimed “condition” as “preheated”; this previous 112(a) rejection has been withdrawn.
Claim 1 has been amended to clarify changing to “a crystalline phase”; these previous 112(a) and 112(b) rejections have been withdrawn.
Claim 5 has been canceled; these previous 112(a) and 112(b) rejections are moot.
Claims 7 and 12 have each been amended to refer back to the “localised annealing” of claim 1; these previous 112(a) and 112(b) rejections have been withdrawn.
Claim 19 has been amended to refer back to the “overall annealing” of claim 1; this previous 112(b) rejection have been withdrawn.
103 Rejections
On p. 9, Applicant argues that Curchod does not teach a “dedicated enclosure” with the “laser” as required by claim 1.
The Examiner respectfully disagrees since Curchod at para 0067 teaches that after metal deposition onto the external part, the external part is placed in a distinct chamber (i.e. the claimed “dedicated enclosure”), with para 0076-0077 teaching that the laser is used in that chamber or dedicated enclosure.
On p. 9, Applicant also argues that Curchod does not teach the limitation ‘the laser for the localised annealing occurring subsequent to the overall annealing’ as required by claim 1.
The Examiner respectfully disagrees since Curchod teaches the limitation at least at para 0076-0077 of heating the whole external part (para 0076) followed by the laser for a localized annealing (para 0077).
Double Patenting Rejections
No Terminal Disclaimer has been filed; the previous rejection is maintained in view of the amendment.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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