DETAILED ACTION
Receipt is acknowledged of Applicant’s Response, dated 28 July 2026, which papers have been made of record.
Claims 10-29 are currently presented for examination, of which claims 15-21 have been withdrawn from consideration.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group II, claims 10-14, in the reply filed on 28 July 2026 is acknowledged. The traversal is on the ground(s) that unity of invention is allegedly not missing between groups I, II, III, and IV. Applicant argues that “whether the products of claims 15 or 17 may be obtained by different methods or from different sources, or whether they may be used in different ways for different purposes, are irrelevant to the ‘unity of invention’ inquiry under PCT rules.”
This is not found persuasive because Applicant appears to be relying upon analysis not present in the Office Action of 1 May 2026. The respective Groups share technical features with elected Group II, and those technical features do not make a contribution over the prior art.
Applicant separately asserts that US10088748 teaches “the cavity 14 formed in the metal layer 13 which is part of the component, not the mold.”
The examiner respectfully disagrees. The shared technical feature does not require that the mold not be part of the finished component. Even if layer 13 is part of a finished component, that component may be interpreted as a mold for “second metal layer 23” (Col. 3, lines 54-58).
The requirement is still deemed proper and is therefore made FINAL.
Specification
The disclosure is objected to because of the following informalities: the Specification collectively groups multiple Figures at least at page 2, lines 14-16, lines 18-20, and page 3, lines 27-29 of the Brief Description of the Drawings. The examiner strongly recommends identifying each Figure in its own paragraph with a separate description to reduce the opportunities for confusion as to how many and which Figures are encompassed by the range cited. The examiner notes that, for example, where the Specification groups “Figures 2a to 10a” it is unclear whether the group would include Figures such as 3a, 3b, and 3c.
The use of the term AZ®-BARLi® and HyCeram®, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claims 15-21 are objected to because of the following informalities:
Each of claims 15-21 are presented with improper status identifiers. The MPEP requires that the current status of all of the claims in the Application must be given. (See MPEP714(C)(A)). Even though Applicant is attempting to traverse the restriction of 1 May 2026, the claims must be presented with status identifiers indicating that the claims are withdrawn.
Appropriate correction is required.
In the interest of advancing prosecution, the examiner will treat claims 15-21 as if they were properly presented with the status identifier “Withdrawn”).
Claim Rejections - 35 USC § 112
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 10-14 and 22-29 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.
Claim 10 recites duplicative limitations at lines 3-11 and 12-20, which appear to be literal copies of each other. It is unclear whether the method actually requires performing the same method steps twice. In the interest of advancing prosecution, the examiner will interpret the duplicate limitations at lines 12-20 as being erroneously duplicative.
Claim 10 recites “producing a recess” at line 3 and “form a recess” at line 4. It is unclear how many recesses are formed.
Claim 10 recites “manufacturing a mold” at line 2, then “producing at least one wall of the mold” at line 6, and further “so as to form a mold” at line 9. It is unclear whether the “a mold” of line 9 is one of the previously recited molds.
Claim 10 recites the limitation "the substrate" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 23 recites the limitation "the resin" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 10-14, 22-24, and 26-29
Claims 10-14, 22-24, and 26-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication 2021/0191258 to Cusin et al. (hereinafter “Cusin”).
Regarding claim 10, Cusin discloses a method for manufacturing a timepiece component (6), the method comprising: manufacturing a mold (see Figs. 3 and 4) by a method comprising: producing a recess () originating from an upper surface of at least one substrate (1) so as to form a recess (upward facing recesses shown in Figs. 3 and 4; see Annotated Figure) delimited by at least one surface (see Annotated Figure) inclined relative to a plane in which the upper surface of the substrate (1) extends; producing at least one wall (sides of recesses) of the mold (see Fig. 4), comprising depositing a material (3) on at least part of the upper surface of the substrate (1; resin is deposited on substrate; see paragraph [0051]) and/or of the recess, optionally covered with a conductive layer and/or an anti-reflective layer, so as to form a mold (see Figs. 3 and 4) at least partially delimited by at least one wall (see Annotated Figure) of the material (3, 3a) and by the at least one inclined surface of the recess (see Fig. 4), and optionally by at least part of the upper surface of the substrate, and forming the timepiece component comprising filling all or part of the mold (see Figs. 3 and 4) with a component material (see paragraph [0061]; layer of material misidentified as 7 in Specification, illustrated as 6 in Figures).
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Regarding claim 11, Cusin discloses the limitations of claim 10, and further Cusin discloses that the filling of the mold (see Fig. 5 and paragraph [0061]) comprises carrying out electrodeposition, electroforming (paragraph [0061]), electroplating, slip casting, thermoforming, or filling by casting the component material.
Regarding claim 12, Cusin discloses the limitations of claim 10, and further Cusin discloses detaching from the mold (see Figs. 3 and 4) the timepiece component (see Fig. 6) obtained in the filling of the mold (see paragraph [0068]).
Regarding claim 13, Cusin discloses the limitations of claim 10, and further Cusin discloses that the component material (6 in Figures, 7 in text) is selected from the group consisting of a metal (see paragraph [0061]), a metal alloy, a ceramic-based material, and a composite material.
Regarding claim 14, Cusin discloses the limitations of claim 10, and further Cusin discloses that the timepiece component is an exterior timepiece component, or a component of a movement (see paragraph [0072]; method may make at least movement parts such as appliques).
Regarding claim 22, Cusin discloses the limitations of claim 10, and further Cusin discloses that the producing of the at least one wall of the mold comprising depositing a resin (3; paragraph [0053]) on part of the upper surface of the substrate (1) and/or of the recess comprises: depositing a layer of photosensitive resin (3) on at least part of the upper surface and/or of the recess of the substrate (1); exposing the photosensitive resin to exposing radiation in a predefined pattern (see paragraph [0056]), then developing the resin (see paragraph [0059]).
Regarding claim 23, Cusin discloses the limitations of claim 10, and further Cusin discloses that the material or the resin forms at least one wall of the mold in line with an interface between the upper surface and the recess of the substrate, and/or the material or the resin (3) forms at least one wall of the mold inside the recess (see Annotated Figure above), and/or the material of the resin forms at least one wall of the mold outside the recess on the upper surface of the substrate.
Regarding claim 24, Cusin discloses the limitations of claim 10, and further Cusin discloses that the producing of the recess (left recess in Fig. 3) forms the at least one inclined surface (see Annotated Figure above, rightmost wall portion of left recess in Figs. 3 and 4) having an inclination forming an angle in a range from 10 to 80 degrees (see Fig. 4; inclined angle appears to be approximately 45 degrees from horizontal upper surface) relative to the upper surface of the substrate (1).
Regarding claim 26, Cusin discloses the limitations of claim 22, and further Cusin discloses applying an anti-reflective treatment (2) to the substrate (1), at least on part of surfaces of the substrate that are not perpendicular to an incident exposing radiation (radiation source above mask 4; see Fig. 3 and paragraph [0056]) intended to expose the resin (3), before the depositing of the layer of photosensitive resin (see paragraph [0047]), in order to prevent reflection of the exposing radiation used to expose the photosensitive resin (conductive layer 2 understood to absorb at least some energy).
Regarding claim 27, Cusin discloses the limitations of claim 26, and further Cusin discloses that the applying of the anti-reflective treatment (2) comprises depositing an anti-reflective layer by spin coating, or spray coating, or dip coating, or chemical vapor deposition, or physical vapor deposition (see paragraph [0047]), or atomic layer deposition, or pulsed laser deposition.
Regarding claim 28, Cusin discloses the limitations of claim 27, and further Cusin discloses partially or fully removing an anti-reflective layer (layer 2 removed from component; see paragraph [0068]) after the developing of the photosensitive resin (3) with exposing radiation (see paragraph[ 0056]).
Regarding claim 29, Cusin discloses the limitations of claim 10, and further Cusin discloses that the substrate (1) is made from a material selected from the group consisting of a metal wafer, a silicon wafer, a glass wafer, a ceramic wafer, a polymer, and a composite (see paragraph [0047]; material may be a composite of silicon and conductive material).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 25
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Cusin as applied to claim10 above, and further in view of United States Patent Application Publication 2020/0201173 to Calame et al. (hereinafter “Calame”).
Regarding claim 25, Cusin discloses the limitations of claim 10, Cusin does not explicitly disclose that the producing of the recess makes use of a two-photon polymerization, grey photolithography, or stereolithography technique. Cusin teaches that its resin may be formed into a shape by a technique such as stamping (see paragraph [0053]).
Calame teaches a method for forming a timepiece component using a mold. The mold may be formed in part by providing photosensitive resins (see paragraph [0043] using a technique such as two-photon polymerization to form a desired shape (see, e.g., Fig. 5) such that side surfaces thereof may be formed.
It would have been obvious to one having ordinary skill in the art to modify the method taught by Cusin to form shapes from the resin using another and conventional technique, such as by to-photon polymerization as taught by Calame. (See MPEP 2143(A)). The resulting method would be reasonably expected to produce a conventional shape using the known technique without modification of the principles of operation of Cusin. Because both Cusin and Calame are directed to forming timepiece components, one having ordinary skill in the art would find it obvious to consider the use of the different techniques for the same process.
Thus, the combination of Cusin and Calame teaches the limitations of claim 25.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
United States Patent 8,636,403 to Maier et al. teaches a method for making timepiece components using a mold (see Fig. 7) formed on a substrate (35).
United States Patent Application Publication 2021/0255589 to Golfier et al. teaches a method for making a timepiece component using a mold (see Figs 1-5) formed on a substrate (1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARRELL C. FORD whose telephone number is (313)446-6515. The examiner can normally be reached 8:30 AM to 5:15 PM, Monday to Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Hong can be reached at (571) 272-0993. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARRELL C FORD/Examiner, Art Unit 3726
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