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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2026-02-09 has been entered.
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 1-6 and 12-13 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 1 recites the limitation "the smoothing step" in line 10. There is insufficient antecedent basis for this limitation in the claim. It has been read as -the smoothening step-.
Claim 4 recites the limitation "the smoothing step" in line 2. There is insufficient antecedent basis for this limitation in the claim. It has been read as -the smoothening step-.
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 4-6 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), and Noirot et al. (US 2016/0263698).
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 smoothing 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.
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 smoothing step.
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.
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).
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 smoothing step being performed using a square endmill.
Komatsuzaki teaches a smoothening step performed using a square endmill (([0005]).
Claims 12-13 are 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 Linstrument et al. (US 20220317630).
Regarding claims 12-13, 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 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 less than or 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 or lower than 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).
Response to Arguments
Applicant's arguments filed 2026-02-09 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim 1 concerning whether Noirot teaches material between adjacent grooves have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Komatsuzaki teaches smoothening a bottom of a groove, and that there is no teaching or suggestion that Komatsuzaki’s smoothening tool may be used to smooth material between grooves. Komatsuzaki teaches using a square endmill to smooth metal; metal is metal and has the same material properties regardless of whether that metal is at the bottom of a groove or in between grooves. Komatsuzaki therefore at least suggests to one of ordinary skill in the art that metal in an area between grooves can be smoothened by a square endmill. Furthermore, in light of Applicant’s amendments, the new rejection cites Yamaguchi for explicitly teaching smoothening material between grooves.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The art made of record and not relied upon is considered pertinent to applicant's disclosure. Credor, a subsidiary of Seiko Epson Corporation, released a watch with roughened and smoothed groove portions and jewels in jewel receiving holes (GCLX999.pdf).
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2831
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