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 1-13, 16-20) in the reply filed on 1/13/2026 is acknowledged. Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 4 is objected to because of the following informalities: “aluminium” should be changed to “aluminum.” 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.
Claims 6, 17 and 18 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 6 recites the limitation "at least one cavity" and “a bottom and side wall” in line 4. It is not clear whether these limitations refer to the ones recited in Claim 1 or new elements. For examination purpose, they are interpreted as “the at least one cavity” and “the bottom and the side wall.”
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 3-8, 12, 13 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284).
Regarding Claim 1, Grippo teaches a method for manufacturing a horological component (Fig. 1, 1) ([0001]: a ceramic element intended to be fitted onto a watch case) comprising at least one portion comprising a surface (Fig. 4, 1a), wherein the method comprises:
- engraving the surface of the horological component or of a blank of the horological component to form at least one cavity (Fig.1, 2) comprising side walls (Fig. 1, 2a) and a bottom (Fig. 1, bottom of cavity (2));
- depositing a metal or metal alloy layer (Fig. 2, 3) (abstract: Ti, Ta, Cr or Th) on the surface, both in the at least one cavity (Fig.1, 2) and outside of the at least one cavity (Fig. 2 shows a layer (3) over the upper surface (1a) outside of the cavity (2)), and not extending over the side walls or not extending over the entire height of the side walls (Fig. 2 shows no layer (3) over the side wall (2a) of the cavity (2));
- depositing a material on the metal or metal alloy layer (Fig. 2, 3), at least within the at least one cavity, to form a layer of material (Fig. 3, 4), the material (abstract: a second layer from the group Au, Ag, CrN, Ni, Pt, TiN, ZrN, Pd or alloys thereof) being different from the metal or the metal alloy (abstract: a first tie layer of Ti, Ta, Cr or Th type) of the metal or metal alloy layer (Fig. 2, 3), the metal or metal alloy layer (Fig. 2, 3) forming an adhesion layer of the layer of material ([0025]: deposition of the adhesion layers);
- removing the metal or metal alloy layer deposited outside of the at least one cavity, subsequent to the depositing of the material in the at least one cavity ([0024]: the visible surface 1a of the layers 3 and 4 is abrasively stripped off…).
Although Grippo teaches that thicknesses of both the metal or metal alloy layer and the layer of material being at least 100 nm in the abstract, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use different thicknesses for these layers such as a thickness of the layer of material being greater than a thickness of the metal or metal alloy layer since the thickness of the metal or metal alloy layer can be thin as long as it provides a good adhesion between the blank component and the functional top layer while the functional top layer needs to be thicker to provide a certain physical property such as hardness and a base color.
Furthermore, MPEP states that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I)
Regarding Claim 3, Grippo teaches the method according to claim 1, wherein a depth of the at least one cavity is in a range of from 10 µm to 100 µm ([0025]: 0.08 mm).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I)
Regarding Claim 4, Grippo teaches the method according to claim 1, wherein the
metal or metal alloy of the metal or metal alloy layer (Fig. 2, 3) is made of at least one metal selected from the group consisting of chromium and titanium. (Abstract: first tie layer of Ti, Ta, Cr or Th)
Regarding Claim 5, Grippo teaches the method according to claim 1, wherein the depositing of the material (Fig. 2, 4) in the at least one cavity comprises depositing at least one selected from the group consisting of a metal, a metal alloy, and a composite material (Abstract: a second layer from the group Au, Ag, Crn, Ni, Pt, TiN, ZrN, Pd or alloys.
Regarding Claim 6, Grippo teaches the method according to claim 1, wherein
the engraving said of the surface forms the at least one cavity (Fig.1, 2) comprising the bottom (Fig. 1, bottom of cavity (2)) and the side walls (Fig. 1, 2a) at right angles to said the bottom (see Fig. 1)([0021]: perpendicular), and/or
the depositing of the metal or metal alloy layer (Fig. 2, 3) is performed so that the metal or metal alloy layer does not extend over the side walls or does not extend over an entire height of the side walls (Fig. 2 shows that the metal or metal alloy layer covering only the bottom of the cavity.).
Regarding Claim 7, Grippo teaches the method according to claim 1, wherein the depositing of the metal or metal alloy layer and/or the depositing of the material in the at least one cavity (Fig.1, 2) is performed by a directional deposition process ([0022]: Physical vapor deposition. PVD is generally considered a direction deposition process as the vaporized material travels in relatively straight-line paths toward the substrate).
Regarding Claim 8, Grippo teaches the method according to claim 1. wherein the portion of the horological component comprising the surface comprises a micro-machinable material or a metal or a metal alloy ([0021]: ZrO2 and Al2O3 are ceramic and ruby respectively which are micro-machinable material as disclosed in the current specification [0020]).
Regarding Claim 12, Grippo teaches method for manufacturing a horological component according to claim 1, comprising depositing a mask [0015], but does not explicitly teach comprising, between the depositing of the metal or metal alloy layer and the depositing the material on the metal or metal alloy layer, an intermediate depositing of a mask on the metal or metal alloy layer, the mask comprising at least one opening superposed on the at least one cavity, with a surface area greater than or equal to the surface area of the cavity so as not to cover the at least one cavity.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to deposit a mask over the substrate surface outside of the cavity before or after the depositing of the metal or metal alloy layer in order to reduce the need for costly polishing/griding operation to remove the surplus coating outside the cavity.
Regarding Claim 13, Grippo teaches the method according to claim 1, wherein the horological component is an external part component ([0001]: a ceramic element intended to be fitted onto a watch case).
Regarding Claim 17, Grippo teaches the method according to claim 6, wherein the depositing of the metal or metal alloy layer is performed so that the metal or metal alloy layer does not extend in an upper part of the side walls. (Fig. 2 shows the metal or metal alloy layer (3) covering just the bottom of the cavity.)
Regarding Claim 18, Grippo teaches the method according to claim 6, wherein the depositing of the metal or metal alloy layer is performed so that the metal or metal alloy layer extends only over the bottom of the at least one cavity. (Fig. 2 shows the metal or metal alloy layer (3) covering just the bottom of the cavity.)
Regarding Claim 19, Grippo teaches the method according to claim 7, wherein the depositing of the metal or metal alloy layer in the at least one cavity is performed by a physical vapour deposition (PVD) ([0022]: the tie layer 3 is deposited by the technique of PVD).
Claim(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284) and in view of Rey et al. (U.S. Patent Publication No. 2010/0310839).
Regarding Claim 2, Grippo teaches the method according to claim 1, but does not explicitly teach wherein a depth of the at least one cavity is less than 10 µm.
Rey teaches a depth of the at least one cavity (Fig. 1B, 6) is less than 10 µm ([0029]: thin layer (Fig. 1B, 2) is meant a layer for which the thickness is less than 10 μm. Since the recess (6) is formed in the thin layer (2), the depth of the recess must be less than 10 μm. Furthermore, Rey teaches that the thickness of the layer 14 is between 50 nm and 100 nm and sum of the thicknesses of the layers 12 and 14 is greater than the depth of the recesses 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the recess depth of Rey in the method of Trippo in order to form a graphic element, graphics, such as a decoration, typographic characters, a drawing or a further a photograph with micrometric and/or namometric dimensions as suggested in Rey [0001].
Regarding Claim 10, Grippo teaches the method according to claim 1, wherein the engraving of the surface of the portion of the horological component or of a blank of the horological component comprises a mechanical operation ([0021]: mechanical operation).
Grippo does not explicitly teach wherein the engraving of the surface of the portion of the horological component or of a blank of the horological component comprises a laser engraving.
Rey teaches the engraving of the surface of the portion of the horological component or of a blank of the horological component comprises a laser engraving ([0050]: laser ablation).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engrave the surface of the horological component to form the at least one cavity of Grippo using a laser ablation method as taught by Rey as it offers superior precision, speed and minimal invasiveness compared to mechanical operations.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284) and in view of Maier et al. (U.S. Patent Publication No. 2010/0054089).
Regarding Claim 9, Grippo teaches the method according to claim 1, wherein but does not explicitly teach wherein the portion comprising the surface comprises silicon and wherein the method comprises oxidizing the silicon, forming a layer of silicon dioxide on the surface, both in the at least one cavity and outside of the at least one cavity,
wherein the oxidizing is performed after the engraving of the surface, and/or
wherein the oxidizing is performed the depositing of the metal or metal alloy layer on the surface.
Maier teaches the portion (Fig. 10, 28) comprising the surface comprises silicon ([0040]: silicon structure 28) and wherein the method comprises oxidizing the silicon, forming a layer of silicon dioxide on the surface ([0041]: the silicon structure is generally covered by a silicon oxide comprising silicon dioxide),
wherein the oxidizing is performed before the depositing of the metal or metal alloy layer (Fig. 10c, 26) on the surface ([0040]: metal is electroformed in the cavity 43).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the horological component of Grippo with a silicon material and oxidize the horological component to form a silicon dioxide layer on its surface in order to improve the coefficient of friction or an adhesion for the metal or metal alloy layer as suggested in Maier [0041].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284) and in view of Rey et al. (U.S. Patent Publication No. 2010/0310839) and Shibuya et al. (U.S. Patent Publication No. 2018/0150029).
Regarding Claim 11, Grippo teaches the method according to claim 1, but do not explicitly teach engraving an outline of the horological component, wherein
the engraving of the surface of the portion comprises positioning a first mask on a substrate, performing the engraving of the at least one cavity from the first mask, and positioning a second mask distinct from the first mask on the substrate, and etching an outline of the blank of the horological component from the second mask.
Rey teaches the engraving of the surface (Fig. 1B, surface of the substrate 2) of the portion comprises positioning a first mask (Fig. 1B, 4) on a substrate (Fig. 1B 2), performing the engraving of the at least one cavity (Fig. 1B, 6) from the first mask ([0064]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the etching method of Rey to form the hollows of Grippo as the etching method offers a precise removal of a material following a cavity pattern and sharp vertical sidewalls.
Shibuya teaches positioning a second mask (Fig. 7C, 212) on the substrate (Fig. 7B, 200), and etching an outline of the blank of the horological component from the second mask ([0099]: etching is performed on the base material 200 by using the above-described photoresist patter 212 as the mask).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to etch the outline of the substrate of Grippo as taught by Shibuya as the etching method offers a precise removal of a material following an outline pattern and sharp vertical sidewalls.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284) in view of Stranczl (U.S. Patent Publication No. 2016/0179057).
Regarding Claim 16, Grippo teaches the method according to claim 5, but does not explicitly teach wherein the depositing of the material in the at least one cavity comprises depositing a luminescent composite material.
Stranczl teaches the depositing of the material (Fig. 1b, 4) in the at least one cavity (Fig. 1b, a cavity formed by a base support (5)) comprises depositing a luminescent composite material ([0028]: filled with a luminescent substance (4)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to deposit a luminescent substance in the at least one cavity of Grippo as taught by Stranczl in order to provide a desired appearance of the timepiece especially in the dark as suggested in Stranczl [0016].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grippo et al. (U.S. Patent Publication No. 2005/0136284) in view of Curchod et al. (EP4202075) of which its corresponding U.S. Patent Publication No. 2023/0193454 is cited.
Regarding Claim 20, Grippo teaches the method according to claim 7, wherein the depositing of the metal or metal alloy layer in the at least one cavity, is performed by physical vapor deposition.
Grippo does not explicitly teach wherein the depositing of the metal or metal alloy layer and/or the depositing of the material in the at least one cavity, is performed by electron beam evaporation (EBE).
Curchod teaches the depositing of the metal layer is performed by electron beam evaporation (EBE) or physical vapor deposition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to interchangeably use either physical vapor deposition or electron beam evaporation method to deposit the metal or metal alloy layer of Grippo as taught by Curchod as both methods are effective in coating a metallic layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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/JUN S YOO/Primary Examiner, Art Unit 3726 4/13/2026
