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 .
Status Of Claims
Claims 1-12, received 1/17/2024, are pending for examination.
If applicant is aware of any relevant prior art, or other co-pending application not already of record, he/she is reminded of his/her duty under 37 CFR 1.56 to disclose the same.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statement(s) (IDS) filed on 1/17/2024, 7/23/2024 were considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 10 is objected to because of the following informalities: on line 3 of claim 10, “or, an alloy” should be changed to “or an alloy”, and on lines 6-7 of claim 10 “and, NdF3” should be changed to “and NdF3”. 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 4-10 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.
Claims 4-6 include the language “color difference”, but color difference is not defined as to how a color difference is measured, and/or what units are associated with a color difference, and/or how a color difference is defined. Therefore, the scope of claims 4-6 are unclear.
Claims 5-6 are rejected for inheriting the same indefiniteness of the claim from which they depend.
Claim 7 includes the language “a brightness of the first region is higher than a brightness of the second region”, but brightness is not defined as to how a brightness is measured, and/or what units are associated with brightness, and/or how a brightness is defined for at least the reason as there is no light source. Therefore, the scope of claim 7 is unclear.
Claims 8-9 are rejected for inheriting the same indefiniteness of the claim from which they depend.
Claim 10 is rejected for including improper Markush groupings which do not include closed groups of alternatives. The Markush groups are indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. For example, claim 10 recites that the metal layer “includes one type selected from among” which uses the open language “includes” so therefore it is not clear if “an alloy thereof” is limited to including only the recited metals. The same indefiniteness applies to the “includes one type selected from among” language with respect to the oxide film/fluoride film.
Claim Rejections - 35 USC § 102
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 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 1, 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Furusato, U.S. Patent Application Publication Number 2018/0217558 A1 (hereafter Furusato).
Regarding claim 1, Furusato discloses an apparatus comprising: a base material made of metal (see at least element(s) 11(5), 5 and/or 11(6), paras. [0048]-[0050]) with a surface having unevenness (see at least paras. [0060]-[0061]) formed by machining (product-by-process; see at least para. [0061]);
a first coloring film formed at the surface of the base material (see at least element(s) 11(6), and/or 13 and/or 12, paras. [0048]-[0050], [0064]-[0068], [0076]-[0080], [0083]-[0088], [0092], [0095]-[0100]) by a dry plating method (product-by-process; see at least paras.[0077]-[0080], [0096]-[0100]), and including a stack of at least one layer of an oxide film or a fluoride film (see at least element 13, paras. [0083]-[0088], [0092], [0095]-[0100]), and at least one layer of a metal layer (see at least element(s) 11(6), and/or 12, paras. [0048]-[0050], [0064]-[0068], [0076]-[0080]); and
a second coloring film formed on a part of the first coloring film (see at least elements 2 and 21, paras. [0106]-[0111], [0114]-[0115], [0120]) by coating (product-by-process; see at least para. [0120]).
The recitation “watch dial” has not been given significant patentable weight under MPEP Chapter 2111.02 [R-3] – Effect of Preamble because the recitation occurs in the preamble where it merely recites the intended use of a structure and fails to structurally limit the body of the claim.
MPEP 2112.02 (II) states that “statements in the preamble reciting the purpose of intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, then the recitation serves to limit the claims.” Additionally, In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962), is a case where the “statement of intended use in an apparatus claim did not distinguish over the prior art apparatus”.
Furusato meets all of the structural limitations required by the claim in support thereof. As such, Furusato must support a watch dial in the same way as the structure of the claim.
It is noted that the limitations “formed by machining”, “by a dry plating method”, and “by coating” are process limitations in a product claim and therefore are considered to be product by process language, and therefore is not given significant patentable weight as per the MPEP section 2113. The above citations of the prior art establish a rationale to show the claimed product is the same as what is taught by the prior art.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, 966.
Once the Examiner has provided a rationale showing the claimed product to be the same or similar to that of the prior art, although by a different process, the burden shifts to the Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 10, as best understood, Furusato discloses the limitations of claim 1, wherein the metal layer includes one type selected from among Ag, Pt, Au, Cu, Al, Cr, Sn, Fe, Ti, or an alloy thereof (see at least para. [0049]), and the oxide film or the fluoride film includes one type selected from among Ta2O5, SiO2, TiO2, Al2O3, ZrO2, Nb2O5, HfO2, Na5Al3F14, Na3AlF6, AlF3, MgF2, CaF2, BaF2, YF3, LaF3, CeF3, and, NdF3 (see at least para. [0088]).
Regarding claim 11, Furusato discloses the limitations of claim 1, further comprising a third coloring film (see at least another of layer elements 21, paras. [0106]-[0111], [0114]-[0115], [0120]) formed by coating on a part of the second coloring film (product-by-process; see at least para. [0120]).
It is noted that the limitations “formed by coating” are process limitations in a product claim and therefore are considered to be product by process language, and therefore is not given significant patentable weight as per the MPEP section 2113. The above citations of the prior art establish a rationale to show the claimed product is the same as what is taught by the prior art.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, 966.
Once the Examiner has provided a rationale showing the claimed product to be the same or similar to that of the prior art, although by a different process, the burden shifts to the Applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218, USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 12, Furusato discloses the limitations of claim 1, further including a watch (see at least the title and abstract, and element W10, para. [0158]) comprising: an exterior case (see at least element W22 and/or W23, para. [0158]); and the watch dial according to claim 1 disposed inside the exterior case (see at least para. [0158]).
Other Related Art
This prior art, made of record, but not relied upon is considered pertinent to applicant's disclosure since the following references have similar structure and/or use similar optical elements to what is claimed and/or disclosed in the instant application:
Furusato, US 2021/0063968 A1, discloses a watch dial including similar materials and coloring films (figs. 1-3);
Fuji et al., US 2022/0413439 A1, discloses a watch dial including similar materials and coloring films (figs. 1-2, 6-8);
Kawakami et al., US 2011/0123815 A1, discloses a watch dial including similar materials and coloring films (figs. 1-2);
Awano et al., US 2017/0060093 A1, discloses a watch dial including similar materials and coloring films (figs. 1-2, 6-9);
Saito, US 3,910,033, discloses a watch dial including a layer of varying thickness for varying color (fig. 2);
Ishida, US 2020/0310350 A1, discloses a watch dial including a layer of varying thickness for varying color (fig. 2);
Fuji, US 2024/0427292 A1, claims a similar watch dial (claims 1-2, 5-7, 9); and
Fuji et al., US 12,379,692 B2, claims a similar watch dial (claims 1, 4, 6, 7).
Allowable Subject Matter
Claims 2-3 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4-9 would be objected to as being dependent upon a rejected base claim, if rewritten to overcome the 112(b) rejections set forth above, and if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable over the cited art of record, if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for at least the reason that the prior art and cited art of record fails to teach or reasonably suggest a first region where only the first coloring film is formed at the surface of the base material, and a second region where the first coloring film and the second coloring film are formed at the surface of the base material are provided, and a film thickness of the second coloring film gradually increases with a distance from a boundary with the first region, as generally set forth in claim 2, the device including the totality of the particular limitations recited in claim 1 from which claim 2 depends.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK S. CHAPEL whose telephone number is (571)272-8042. The examiner can normally be reached M-F 9:30am-6pm.
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/Derek S. Chapel/Primary Examiner, Art Unit 2872 5/6/2026
Derek S. CHAPEL
Primary Examiner
Art Unit 2872
Prosecution Insights