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 without traverse of Group I, claims 1-7, in the reply filed on 12/19/2025 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/19/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1 and 5-7 are objected to because of the following informalities:
In claim 1, the phrase “external part component of a watch” is objected to grammatically. The objection can be overcome by changing the phrase to “external part component for a watch” which is how the claim will be interpreted.
In claim 5, the phrase “including a lower base layer” is objected to grammatically. The objection can be overcome by changing the phrase to “further including a lower base layer” which is how the claim will be interpreted.
In claim 6, the phrase “formed by an external part component” is objected to grammatically. The objection can be overcome by changing the phrase to “formed by the external part component” which is how the claim will be interpreted.
In claim 7, the phrase “decorative element of a phone case including an external part component” is objected to grammatically. The objection can be overcome by changing the phrase to “decorative element for a phone case including the external part component” which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 5 is 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.
In claim 5, the limitations of a “structured second portion of the lower face” render the claim indefinite because claim 1 requires the lower face to be “a polished lower face”, and therefore it is unclear what the word “structured” means. It is unclear if the word “structured” includes any type of structure, including polished structure.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 5, the limitations of “a structured second portion of the lower face” fail to limit claim 1 as claim 1 requires a “polished lower face”. In the embodiment where “structured” means not polished, this fails to limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1, 3, 4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jeanrenaud et al. (US 2020/0293001).
With regard to claims 1, 6 and 7, Jeanrenaud et al. teach the dial or jewelry component of Figure 10, wherein a jewelry component reads on applicants’ decorative element for a phone case as intended use limitations are not dispositive of patentability [0008], [0009] and [0022].
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Please note there is an error in this drawing as the layer 2 should not exist at the bottom and hollow decoration 3 (or 31) (see Figures 5 and 8) as Figure 10 is made from the blank of Figure 8 [0020], [0022] and [0029]. The base 1 reads on applicants’ substrate and can be made from glass, which is inherently transparent, and is mirror polished on each apparent surface of the base intended to be seen by the user, which teaches polishing every surface including the lower surface [0011], [0015] and [0026]. The first layer 2 reads on applicants’ base layer on a first portion and the second layer 5 reads on applicants’ secondary layer over a second portion [0029] and [0034].
There is no definition of “surface conditions” in applicants’ specification, and therefore the broadest reasonable interpretation from the definition on Merriam-Webster is the “circumstances” of the surface, which means the different locations of the first and second portions read on different surface circumstances/conditions. Alternatively, the hollow decoration 3 (or 31) reads on the second portion and this has a different surface condition from the portions having the surface relief 20 and the first layer 2.
With regard to claim 3, there may be different densities of colored pigments in the superposed layers, which are referring to the first and second layers [0042]. This means those layers would necessarily be different compositions.
With regard to claim 4, although not shown in the figures, after the second coating operation, laser ablation may be performed on the second layer 5 to reveal the base 1, which reads on applicants’ through opening in the base layer and secondary layer to lead to a third portion of the substrate [0035].
Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Derriey et al. (US 2015/0146504).
With regard to claims 1, 6 and 7, Derriey et al. disclose the decorative piece of Figure 4 that can form a dial of a wristwatch or part of a lid of a jewelry box, wherein a lid reads on applicants’ decorative element for a phone case as intended use limitations are not dispositive of patentability [0018], [0019] and [0029].
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The decorative piece can have a transparent substrate 10 that reads on applicants’ substrate, a layer of enamel 25, which reads on applicants’ base layer deposited on a first portion, and another layer of enamel 27, which reads on applicants’ secondary layer deposited over a second portion [0022]. The layer 27 is formed in the recess 13 that was formed by mechanical abrasion, which means the upper surface of transparent substrate 10 in the recess 13 will inherently have a different surface condition from the portion not subjected to mechanical abrasion [0021]. The decorative piece is finished by polishing the two faces, which means the lower face 12 of the transparent substrate 10 is polished [0022].
With regard to claim 3, in an alternative reading, the markings 4 formed by metallizing also read on applicants’ base layer [0023]. A metallized layer has a different composition than the layer of enamel 27.
Claim Rejections - 35 USC § 103
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jeanrenaud et al. (US 2020/0293001).
Jeanrenaud et al. teach all of the limitations of claim 1 above. They also teach that the structured surface relief 20 is formed into a fine-pattern etch and the second layer 5 is coated on all visible surfaces of the component [0028] and [0034]; however, they do not specifically teach the structure of claim 2.
It would have been obvious to one having ordinary skill in the art to have mirror polished the entire upper face of the base 1 and to then form the structured surface relief 20 on only a portion of the upper face in a pattern as suggested by Jeanrenaud et al. The rationale is to provide a more aesthetic and varied appearance to the surface of the dial. The portion with the surface relief would read on the second portion with structuration and the portion without the surface relief would read on the polished first portion. Please note in this interpretation the first layer 2 reads on applicants’ secondary layer and the second layer 5 reads on applicants’ base layer.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Derriey et al. (US 2015/0146504).
Derriey et al. teach all of the limitations of claim 1 above; however, they do not specifically teach that the surface of the transparent substrate 10 under the layer of enamel 25 is polished.
It would have been obvious to one having ordinary skill in the art to have initially polished the transparent substrate 10 before subjecting it to the mechanical abrasion steps in forming the recess 13. The rationale is to have the transparent substrate have a perfectly transparent appearance at the hour circle 5 to enhance the aesthetic appearance of the timepiece and allowing the inside of the watch to be visible therethrough. The surface of the transparent substrate 10 in the recess 13 was formed by mechanical abrasion [0021], which means the upper surface of transparent substrate 10 in the recess 13 reads on the claimed structuration as it meets applicants’ definition of this term in their specification of a modified topography.
Claims 1-3, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (JP 2002-148359), machine translation included.
With regard to claims 1-3, 6 and 7, Yamaguchi et al. teach the timepiece display plate according to Figure 9, which reads on applicants’ watch dial and decorative element as “for a phone case” is an intended use limitation that is not dispositive of patentability [0109].
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The timepiece display plate includes a translucent ceramic substrate 23 that reads on applicants’ substrate, wherein the substrate may have a flat surface that is formed as a polished mirror surface, which reads on applicants’ first portion [0110] and [0118]. There may be a metallic thin film 31, which reads on applicants’ base layer, formed only on this flat surface via an etching process that forms a sandy pattern where the metal thin film is removed, wherein the sandy pattern reads on applicants’ second portion having different surface conditions of structuration [0112], [0113] and Figure 9. A transparent acrylic resin 34 is applied to the entire upper surface, which reads on applicants’ secondary layer being a different composition from the base layer [0114].
It is known taught that the substrate 16 in the basic structure can have its lower surface be formed into a polished mirror surface [0046]; however, Yamaguchi et al. do not specifically teach this for the embodiment of Figure 9.
It would have been obvious to have polished the lower surface of the transparent ceramic substrate 23 of Figure 9 as is taught in Yamaguchi et al. so that it would be completely smooth and let through the desired amount of light for the specific aesthetics of the watch.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (JP 2002-148359) in view of Jeanrenaud et al. (US 2020/0293001).
Yamaguchi et al. render obvious all of the limitations of claim 1 above; however, they do not specifically teach the through opening claimed.
Jeanrenaud et al. teach that after the second coating operation, laser ablation may be performed on the second layer 5 to reveal the base 1, which reads on applicants’ through opening in the base layer and secondary layer to lead to a third portion of the substrate [0035].
Since Yamaguchi et al. and Jeanrenaud et al. are both drawn to watch faces, it would have been obvious to one having ordinary skill in the art to have combined in the laser ablation of Jeanrenaud et al. on the transparent acrylic protective layer of Yamaguchi et al. as a further design on the display plate. The rationale to include this is to allow for more intricate designs that would be pleasing to the watch customer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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