Prosecution Insights
Last updated: May 04, 2026
Application No. 18/184,397

Timepiece Component Decoration Method And Timepiece Component

Non-Final OA §103§DP
Filed
Mar 15, 2023
Priority
Mar 16, 2022 — JP 2022-041090
Examiner
SHEWAREGED, BETELHEM
Art Unit
1785
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Seiko Epson Corporation
OA Round
1 (Non-Final)
72%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
80%
With Interview

Examiner Intelligence

Grants 72% — above average
72%
Career Allowance Rate
722 granted / 1010 resolved
+6.5% vs TC avg
Moderate +9% lift
Without
With
+8.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
41 currently pending
Career history
1051
Total Applications
across all art units

Statute-Specific Performance

§103
61.3%
+21.3% vs TC avg
§102
22.3%
-17.7% vs TC avg
§112
7.7%
-32.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1010 resolved cases

Office Action

§103 §DP
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 II Claims 6-15 in the reply filed on 10/09/2025 is acknowledged. Claims 1-5 are canceled. 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 6-9 and 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 14, 15, 19, 24-26 of copending Application No. 18/184,425. Although the claims at issue are not identical, they are not patentably distinct from each other because current claim 6 corresponds to claims 14 and 24 of ‘425 where a timepiece component, comprising: a base material having a surface on which a first pattern shape used as a base is formed; a first light-transmissive layer formed from a light-transmissive resin on the surface of the base material; a first liquid repellent layer formed on a surface of the first light-transmissive layer; and a first printed layer formed by printing a second pattern shape on a surface of the first liquid repellent layer by an inkjet method, the second pattern shape being formed by dots of ink and overlapping with the first pattern shape. Current claim 7 corresponds to claim 25 of ‘425 where a second light - transmissive layer formed from a light-transmissive resin on a surface of the first printed layer. Current claim 8 corresponds to claim 25 of ‘425 where a second liquid repellent layer formed by performing a liquid repellent treatment on a surface of the second light-transmissive layer; and a second printed layer formed by printing a third pattern shape on a surface of the second liquid repellent layer by an inkjet method. Current claim 9 corresponds to claim 26 of ‘425 where the first pattern shape, the second pattern shape and the third pattern shape are overlapping with each other. Current claim 11 corresponds to claim 15 of ‘425 where the ink of the second pattern shape is silver nanoparticle ink. Current claim 12 c orresponds to claim 4 of ‘425 where the ink of the second pattern shape is transparent titanium oxide ink. Current claim 13 corresponds to claim 19 of ‘425 where a distance between one dot of the ink and another dot of the ink adjacent to the one dot is larger than one time and smaller than three times a diameter of the dot. Current claim 14 corresponds to claim 14 of ‘425 where the first pattern shape is formed by irregularities on the surface of the base material. Current claim 15 corresponds to claims 14 and 24 of ‘425 where a timepiece/dial comprising the timepiece component. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 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 6 -10 , 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Raillard et al. (US 2020/0338809 A1) in view of Noguchi et al. (US 2019/0152846 A1). Claim 6 : Raillard teaches a timepiece 40 comprising a dial 11 that can be a skeleton-type dial (lines 1-5 of [0044]). The skeleton-type dial 11 meets the claimed base material having a surface on which a first pattern shape. Raillard teaches forming a layer on the dial 11, wherein the layer can be a transparent layer ([0086] and method step 45), wherein this layer meets the claimed first light-transmissive layer. Raillard teaches further forming another layer which can be a continuous transparent layer ([0087] and method sub-step 46), wherein the another layer meets the claimed first liquid repellent layer. Raillard teaches further selectively forming at least one three-dimensional element 30 which can be colored ([0093] and sub-step 49), wherein the selectively formed 3D element 30 meets the claimed first printed layer having a second pattern shape. Raillard teaches the layers can be formed with an ink jet method [0047]. Raillard does not teach any of the layers comprises an antifouling liquid used in forming the timepiece 40. However, Noguchi teaches an antifouling liquid used in formation of a timepiece [0125], wherein the antifouling liquid is used to repel foreign matters such as water, oil, sand, dust and the like so as to reduce adhesion of the foreign matters [0058]. Raillard and Noguchi are analogous art because they are from the same field of endeavor that is the timepiece art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the antifouling liquid of Noguchi with any of the layers of Raillard , and the motivation for combining would be, as Noguchi suggested, to provide a timepiece with antifouling, (i.e., water repelling) property. Claim 7 : With respect to the claimed second light-transmissive layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the transparent layer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co ., 193 USPQ 8. Claim 8 : With respect to the second liquid repellent layer and the second printed layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the transparent another layer and the selectively formed 3D element 30, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co ., 193 USPQ 8. Claim 9 : Raillard teaches the timepiece has raised portions [0093]. However, it would have been obvious before the effective filing date of the invention to for m the patterns in an overlapping manner so as to provide a timepiece with raised portions. Claim 10 : With respect to the claimed light-transmissive resin layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the transparent layer, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co ., 193 USPQ 8. Claim 14 : Raillard teaches the dial 11 that can be skeleton-type dial (lines 1-5 of [0044]), and the skeleton-type dial 11 meets the claimed base material having surface with the first pattern shape formed by irregularities . Claim 15 : Raillard teaches timepiece 40 [0044] which meets the claimed timepiece. Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Raillard et al. (US 2020/0338809 A1) and Noguchi et al. (US 2019/0152846 A1) as applied to claim 6 above, and further in view of Sakasai (US 2007/0070158 A1). Raillard and Noguchi teach the claim invention as set forth above. Claim 11 : Raillard does not teach a silver ink. However, Sakasai teaches an ink jet ink comprising silver ink (abstract and [0053]). Raillard and Sakasai are analogous art because they are from the same field of endeavor that is the ink jet ink art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the silver ink of Sakasai with the invention of Raillard , and the motivation for combining would be to control cost and tinting strength. Claim 12 : Raillard does not teach a titanium oxide ink. However, Sakasai teaches an ink jet ink comprising titanium oxide ink (abstract and [0053]). Raillard and Sakasai are analogous art because they are from the same field of endeavor that is the ink jet ink art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the titanium oxide ink of Sakasai with the invention of Raillard , and the motivation for combining would be to control cost and tinting strength. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Raillard et al. (US 2020/0338809 A1) and Noguchi et al. (US 2019/0152846 A1) as applied to claim 6 above, and further in view of Edamura et al. (US 2004/0046813 A1). Raillard and Noguchi teach the claim invention as set forth above. Claim 13 : Raillard does not teach distance between dots of the ink. However, Edamura teaches a n ink jet printing apparatus, wherein each nozzles ejects a main droplet that is an ink droplet forming a main dot and a satellite droplet that forms a satellite dot near the main dot, the satellite dot having a smaller dot diameter than the main dot, and an impact position of the satellite droplet varying between the forward scan and backward scan of the print head, and determine the adjustment value so that in connection with a high-density portion formed on a print medium and composed of the main dots and the satellite dots, the high-density portion formed during the forward scan is adjacent to the high-density portion formed during the backward scan, in a scan direction of the print head (claim 12) . Raillard and Edamura are analogous art because they are from the same field of endeavor that is the ink jet ink art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention, and the motivation for combining would be to control print density. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT BETELHEM SHEWAREGED whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1529 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday -Friday 7am-4:30pm . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice . If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Ruthkosky can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1291 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. BS March 27, 2026 FILLIN "Examiner Stamp" \* MERGEFORMAT /BETELHEM SHEWAREGED/ Primary Examiner Art Unit 1785
Read full office action

Prosecution Timeline

Mar 15, 2023
Application Filed
Oct 09, 2025
Response after Non-Final Action
Mar 27, 2026
Non-Final Rejection — §103, §DP (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
72%
Grant Probability
80%
With Interview (+8.8%)
2y 7m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1010 resolved cases by this examiner. Grant probability derived from career allowance rate.

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