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 Objections
Claims 1 and 12 are objected to because of the following informalities: "the bottom portions" in each claim lacks antecedent basis and should be changed to -bottom portions-. Appropriate correction is required.
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.
Claim 12 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.
Claim 12 recites that “a surface roughness of the bottom portions…is lower than a surface roughness of the smooth portion.” However, claim 1 recites that “a surface roughness of the bottom portions…is same as a surface roughness of the smooth portion.” Claim 12 therefore contradicts claim 1 and cannot be considered on the merits.
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 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto (US 2005/0126917) in view of Colomb (US 1,621,325), Yamaguchi (US 20090129210), Noirot et al. (US 2016/0263698), and Linstrument et al. (US 20220317630).
Regarding claim 1, Morimoto discloses a method for decorating a train wheel bridge ([0170]).
Morimoto does not show the bridge including a jewel and the method comprising: a cutting step for forming a plurality of groove portions at a first surface of the train wheel bridge, the groove portions being separated by a top portion defining a peak having an apex; a smoothening step for smoothening the top portion formed between the groove portions adjacent to each other such that after the smoothening step the top portion is flat and defines a smooth portion; a roughening step for roughening a decorative portion including the groove portions and the smooth portion as a result of the smoothening step; and a drilling step for forming a jewel receiving hole extending from the first surface to a second surface on an opposite side to the first surface, wherein in the roughening step, a surface roughness of the bottom portions of the groove portions is same as a surface roughness of the smooth portion.
Colomb teaches a bridge including a jewel, wherein the bridge is decorated by a drilling step that forms a jewel receiving hole. Column 1, lines 35-40 and 48-49 teach drilling a jewel receiving hole (“holes for stone-setting”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Colomb’s jewel and jewel receiving hole with Morimoto’s bridge. One of ordinary skill in the art would have been motivated to make this combination to create a bridge with an improved visual appearance.
The combination of Morimoto and Colomb does not show explicitly the jewel receiving hole extending from a first surface to a second surface on an opposite side to the first surface.
Holes by definition include through-holes that extend from a first surface to an opposite second surface.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Colomb’s hole to be a through-hole extending from a first surface to a second surface opposite to the first surface. One of ordinary skill in the art would have been motivated to make this modification to create a deeper jewel receiving hole that would provide a more secure attachment for the jewel.
The combination of Morimoto and Colomb does not show the method comprising: a cutting step for forming a plurality of groove portions at a first surface of the train wheel bridge, the groove portions being separated by a top portion defining a peak having an apex; a smoothening step for smoothening the top portion formed between the groove portions adjacent to each other such that after the smoothening step the top portion is flat and defines a smooth portion; a roughening step for roughening a decorative portion including the groove portions and the smooth portion as a result of the smoothening step, wherein in the roughening step, a surface roughness of the bottom portions of the groove portions is same as a surface roughness of the smooth portion.
Yamaguchi discloses (Fig. 35) a cutting step (“digging method such as…a machining”) for forming a plurality of groove portions (261b) at a first surface (261A), the groove portions being separated by a top portion defining a peak having an apex (261a); and a smoothening step for smoothening the top portion formed between the groove portions adjacent to each other such that after the smoothening step the top portion is flat and defines a smooth portion (261c).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have decorated Morimoto’s bridge by implementing Yamaguchi’s cutting step that forms groove portions at a first surface of the bridge and smoothening step for smoothening peaks of top portions between the groove portions. One of ordinary skill in the art would have been motivated to make this modification to create a bridge with an improved visual appearance ([0053], [0056] of Yamaguchi).
The combination of Morimoto, Colomb, and Yamaguchi does not show a roughening step for roughening a decorative portion including the groove portions, wherein in the roughening step, a surface roughness of the bottom portions of the groove portions is same as a surface roughness of the smooth portion.
Noirot teaches a roughening step for roughening a decorative portion including the groove portions ([0037]: “producing shallow scratches in the surface…with a brush” and [0049]: “the process…allows two types of adornments, especially deep engraving and…brushing, to be combined”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have decorated Morimoto’s bridge by implementing a roughening step for roughening a decorative portion including the groove portions, as suggested by Noirot. One of ordinary skill in the art would have been motivated to make this modification to create a bridge with an improved visual appearance (see [0049] of Noirot).
The combination of Morimoto, Colomb, Yamaguchi, and Noirot does not show the surface roughness of the bottom portions of the groove portions being the same as or lower than a surface roughness of the smooth portion.
Linstrument teaches a first surface having a roughness equal to that of a second surface ([0081]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Morimoto’s roughening step so that the surface roughness of the bottom portions of the groove portions being the same as a surface roughness of the smooth portion, as suggested by Linstrument. One of ordinary skill in the art would have been motivated to make this modification to predictably yield an improved visual appearance or desired aesthetic effect ([0090] of Linstrument).
Regarding claim 2, Morimoto in view of Colomb, Yamaguchi, and Noirot discloses the method for decorating a train wheel bridge according to claim 1 further comprising an embedding step for embedding the jewel into the jewel receiving hole from the second surface. Fig. 1 of Colomb shows embedded jewels in the jewel receiving holes, and column 1, lines 35-36 disclose “holes for the stone-settings,” which in accordance with their name will have stones/jewels set/embedded in them.
Regarding claim 5, Morimoto in view of Colomb, Yamaguchi, and Noirot discloses the method for decorating a train wheel bridge according to claim 1, wherein the roughening step is performed using a brush ([0037] of Noirot).
Regarding claim 6, Morimoto in view of Colomb, Yamaguchi, and Noirot discloses the method for decorating a train wheel bridge according to claim 1.
The combination of Morimoto, Colomb, Yamaguchi, and Noirot does not show the method further comprising a laser irradiation step for engraving the decorative portion through laser irradiation.
Noirot teaches a decorating method comprising a laser irradiation step for engraving a decorative portion through laser irradiation (Fig. 1, E10).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Noirot’s laser irradiation step with Morimoto’s method. One of ordinary skill in the art would have been motivated to make this combination to create a bridge with an improved visual appearance.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of Colomb, Yamaguchi, and Noirot as applied to claim 1, and further in view of Komatsuzaki (2006297546) and Rochat (CH 696989).
Regarding claim 3, Morimoto discloses the method for decorating a train wheel bridge according to claim 1.
The combination of Morimoto, Colomb, Yamaguchi, and Noirot does not show the cutting step being performed using a ball endmill, and the plurality of groove portions being formed at an equal interval.
Komatsuzaki teaches cutting using a ball end mill ([0005]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the machining digger of Yamaguchi for Komatsuzaki’s ball endmill cutter. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of cutting groove portions.
The combination of Morimoto, Colomb, Yamaguchi, Noirot, and Komatsuzaki does not show the plurality of groove portions being formed at an equal interval.
Rochat teaches a plurality of grooves being formed at an equal interval by a milling cutter ([0023] in the translation: “grinding grooves 38…approximately equidistant from each other” and [0008]: “the cutting tool is, for example…a milling cutter”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Morimoto’s bridge to have grooves formed at an equal interval, as suggested by Rochat. One of ordinary skill in the art would have been motivated to make this modification to create a bridge with a desired, improved visual appearance.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of Colomb, Yamaguchi, and Noirot as applied to claim 1, and further in view of Komatsuzaki.
Regarding claim 4, Morimoto in view of Colomb, Noirot, and Komatsuzaki discloses the method for decorating a train wheel bridge according to claim 1.
The combination of Morimoto, Colomb, Yamaguchi, and Noirot does not disclose the smoothening step being performed using a square endmill.
Komatsuzaki teaches a smoothening step performed using a square endmill (([0005]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Morimoto in view of Colomb, Yamaguchi, and Noirot as applied to claim 2, and further in view of Ranganathan et al. (WO 20190181987).
Regarding claim 14, Morimoto in view of Colomb, Yamaguchi, and Noirot discloses the method for decorating a train wheel bridge according to claim 2.
The combination of Morimoto, Colomb, Yamaguchi, and Noirot does not show that the embedding step is performed in a state where the train wheel bridge is set on a base portion of a jig with the first surface facing downward, and the smooth portion is in contact with the base portion.
Ranganathan discloses (Fig. 1) an embedding step in which a train wheel bridge (102) is set on a base portion (100a) of a jig (200) with a first surface facing downward (Fig. 1).
One of ordinary skill in the art would recognize that given a two-sided plate, there are only two ways to lay the plate flat on a base: a first side can face the base, or a second side can face the base. Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have embedded Morimoto’s jewel on the train wheel bridge by setting the bridge on a base portion of a jig, as suggested by Ranganathan, with the first surface facing downward and the smooth portion in contact with the base portion. One of ordinary skill in the art would have been motivated to embed the jewel in this manner as a known technique for embedding jewels in bridges, and as one of a finite number of predictable ways to lay a bridge on a base.
Response to Arguments
Applicant's arguments filed 2026-05-22 have been fully considered but they are not persuasive.
Applicant argues that Linstrument’s teaching that two surfaces have equal roughness is too broad to disclose the claimed narrower limitation that a surface roughness of “the bottom portions” is the same as a surface roughness of “the smooth portion.” However, Yamaguchi teaches a first surface (of bottom portions of the groove portions) and a second surface (of the smooth portion). Therefore, Yamaguchi in combination Linstrument disclose to one of ordinary skill in the art a surface roughness of a first surface of bottom portions of groove portions being the same as a surface roughness of a smooth portion.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new grounds 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.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2831
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