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 .
Response to Arguments
In response to the amendments filed 11/12/2025, the previous rejections under 112(b) are withdrawn however the amendments necessitated other rejections under 112(b), see below. The previous objections to the claims are maintained, see below. The double patenting rejection is withdrawn in response to the terminal disclaimer filed 11/12/2025.
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant argues with respect to claim 1 that the cited references do not describe the claimed order where the ornamental elements. Applicant says the advantages are not taught by Poll but does not describe what the advantages of this particular order are. As per MPEP §2144.04(IV)(C), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Poll does describe all of the claimed steps but in a separate order.
With respect to the newly added dependent claims and independent claim 29, Applicant argues that the references do not describe the newly recited claim elements because Poll does not describe a cylindrical ring. Examiner disagrees. Poll describes a layer that can conform to shapes of different gems. After further search and consideration, new references are cited to teach claims 21-22 and 26-27 and 29. Poll is recited to teach 23-25 and 29. Claim 28 is rejected under 112(b) below but appears to contain allowable subject matter.
Claim Objections
Claims 1, 5, and 29 are objected to because of the following informalities: Claims 1, 5, and 29 include dashes or bullet points. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation, see MPEP §609.01(m). 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 2 and 4 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 21 is unclear. Claim 21 recites “at least one independent component of the half-moulds and of the timepiece component…the independent component” but it is not clear how many independent components there are or what the independent component is independent from. For example, does the claim require one independent component that is independent from both the molds and the timepiece component or is the claim requiring an independent component from each of the molds and the timepiece component? The claim first recites “at least one” but then refers to “the independent component.” Additionally, “independent component of” is unclear. It is not clear if the independent component belongs to the half molds and the timepiece component or if it is supposed to be independent from the half molds and timepiece component. This claim is being interpreted to refer to at least one component that is not structurally connected to either the mold or the timepiece component.
Claims 27-28 recite the limitation “the hooking element.” There is insufficient antecedent basis for this limitation in the claim. Claims 27-28 are written as being dependent from claim 1 but the hooking element is not recited until claim 26. Examiner suggests claims 27-28 should depend from claim 26 and are being interpreted as such.
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.
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.
Claims 1-2, 4-6, 23-25, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over modified Poll (US 4,936,116.)
Regarding claim 1, Poll meets the claimed, A process for manufacturing a timepiece component comprising at least one fastening element, the method comprising: - positioning the at least one fastening element within a manufacturing mould (Poll col. 3 lines 23-27 describe a melt adhesive layer 3, see Figure 4 showing it within the pressing head 18 and pressing table 17) using at least one guide element; (see Figure 4 showing the melt adhesive layer 3 is placed between the cutting knives 19) - filling the manufacturing mould with a material so as to overmould by at least partially enveloping and setting the at least one fastening element in the material; (Poll col. 3 lines 35- col. 4 line 6 describing adding several material layers over and around the adhesive layer 3, see also Figure 4) - removing the timepiece component from the manufacturing mould, the timepiece component being at least partly formed by the material and the at least one fastening element (Poll Figure 5 shows the final product having been removed from the mold including the layered material and the adhesive layer 3) setting an ornamental element into the at least one fastening element (Poll col. 3 lines 23-28 describes gems 1 set into the melt adhesive layer 3.)
Poll does not describe the claimed order which includes inserting the fastening element prior to filling the mold, then removing the timepiece component before setting the ornamental elements into the fastening element, however, Poll does describe each of these steps in a different order. As per MPEP §2144.04(IV)(C), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.
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Regarding claim 2, Poll meets the claimed, The process according to claim 1, wherein the manufacturing mould comprises at least two complementary half-moulds delimiting a cavity having a shape that corresponds or substantially corresponds to a shape of the timepiece component to be manufactured, (Poll Figure 4 sows the pressing head 18 and pressing table 17 and a cavity created between the knives 19 on the pressing table 17) and
- wherein at least one of the half-moulds comprises the at least one guide element to allow the positioning of the at least one fastening element within the cavity of the manufacturing mould; (Poll Figure 4 shows the knives 19 on the pressing table 17).
Regarding claim 4, Poll meets the claimed, The process according to claim 1, wherein the manufacturing mould comprises at least two complementary half-moulds delimiting a cavity having a shape that corresponds or substantially corresponds to a shape of the timepiece component to be manufactured (Poll Figure 4 sows the pressing head 18 and pressing table 17 and a cavity created between the knives 19 on the pressing table 17) and wherein the at least one fastening element is positioned within the cavity of the manufacturing mould and extends over the entire height of this cavity from a first half-mould to a second different half-mould (Poll Figure 4 shows the knives 19 extend upward and form the walls of the cavity of the pressing table 17.)
Regarding claim 5, Poll meets the claimed, The process according to claim 1, comprising
an intermediate texturing and/or adding a binding primer to a surface of the at least one fastening element intended to receive the overmoulding of the material; (Poll col. 3 lines 35-46 describe adding an effect layer 4 such as a metallic foil to the adhesive layer 3 which would add a smooth and metallic texture to the adhesive layer 3) and/or an intermediate adding a hooking element arranged at least partially around the at least one fastening element.
Regarding claim 6, Poll meets the claimed, The process according to claim 1, wherein the filling of the manufacturing mould with a material includes pressure injection of the material into a cavity of the manufacturing mould, or compression moulding of a blank of the material (Poll col. 4 lines 52-53 describes pressing the additional layers into a compound sheet.)
Regarding claim 23, Poll does not explicitly meet the claimed, The process according to claim 1, wherein the fastening element comprises a cylindrical ring, however, Poll col. 3 lines 23-28 describe the melt adhesive layer 3 should extend over the equator of the gems to ensure a stable bond. Poll is describing that the shape of the melt adhesive layer 3 should conform to the surface of the gems to ensure proper bonding and adhesion. Since the gems are decorative, it would be obvious to a person of ordinary skill in the art to change the shape of the adhesive layer 3 as needed, to cylindrical, to appropriately cover the surface of a cylindrical gem. See also MPEP §2144.04(IV)(B).
Regarding claim 24, Poll does not explicitly meet the claimed, The process according to claim 1, wherein the fastening element comprises a straight cylindrical ring however, Poll col. 3 lines 23-28 describe the melt adhesive layer 3 should extend over the equator of the gems to ensure a stable bond. Poll is describing that the shape of the melt adhesive layer 3 should conform to the surface of the gems to ensure proper bonding and adhesion. Since the gems are decorative, it would be obvious to a person of ordinary skill in the art to change the shape of the adhesive layer 3 as needed, to a straight cylindrical shape, to appropriately cover the surface of a cylindrical gem. See also MPEP §2144.04(IV)(B).
Regarding claim 25, Poll meets the claimed, The process according to claim 1, wherein the fastening element comprises a and a cylindrical portion arranged around so as to define a seating (Poll Figure 3 shoes a continuous portion of the melt adhesive layer 3 in between the gems, see col. 3 lines 31-33 describing the continuous melt adhesive layer.)
Poll does not explicitly meet the claimed, straight cylindrical ring portion, the straight cylindrical ring portion however, Poll col. 3 lines 23-28 describe the melt adhesive layer 3 should extend over the equator of the gems to ensure a stable bond. Poll is describing that the shape of the melt adhesive layer 3 should conform to the surface of the gems to ensure proper bonding and adhesion. Since the gems are decorative, it would be obvious to a person of ordinary skill in the art to change the shape of the adhesive layer 3 as needed, to a straight cylindrical shape, to appropriately cover the surface of a cylindrical gem. See also MPEP §2144.04(IV)(B).
Regarding claim 29, Poll meets the claimed, A process for manufacturing a timepiece component comprising at least one fastening element, the method comprising:- positioning the at least one fastening element within a manufacturing mould (Poll col. 3 lines 23-27 describe a melt adhesive layer 3, see Figure 4 showing it within the pressing head 18 and pressing table 17) using at least one guide element; (see Figure 4 showing the melt adhesive layer 3 is placed between the cutting knives 19) - filling the manufacturing mould with a material so as to overmould by at least partially enveloping and setting the at least one fastening element in the material; (Poll col. 3 lines 35- col. 4 line 6 describing adding several material layers over and around the adhesive layer 3, see also Figure 4) - removing the timepiece component from the manufacturing mould, the timepiece component being at least partly formed by the material and the at least one fastening element, (Poll Figure 5 shows the final product having been removed from the mold including the layered material and the adhesive layer 3.)
Poll does not explicitly describe, wherein the fastening element comprises a cylindrical ring, however, Poll col. 3 lines 23-28 describe the melt adhesive layer 3 should extend over the equator of the gems to ensure a stable bond. Poll is describing that the shape of the melt adhesive layer 3 should conform to the surface of the gems to ensure proper bonding and adhesion. Since the gems are decorative, it would be obvious to a person of ordinary skill in the art to change the shape of the adhesive layer 3 as needed, to cylindrical, to appropriately cover the surface of a cylindrical gem. See also MPEP §2144.04(IV)(B).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Poll modified by Covi (US 4,353,765).
Regarding claim 3, Poll meets the claimed, The process according to claim 1, wherein the at least one guide element is an element projecting in one direction into a cavity of the manufacturing mould, (Poll Figure 4 shows the knives 19 projecting upwards).
Poll does not show the adhesive layer wrapped around the knives and does not meet the claimed, and wherein the at least one fastening element extends around the at least one guide element.
Analogous in the field of gem setting and molding, Covi meets the claimed, and wherein the at least one fastening element extends around the at least one guide element (Covi Figure 2 and col. 6 lines 19- 39 show and describe an adhesive foil 4 similar which is wrapped around the ornamental stones 1 and up and over onto projecting portions of the stamping part 15. )
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the method of Poll which includes wrapping an adhesive layer 3 around the gems 1 with the step of wrapping the adhesive around the mold guide portions as described in Covi in order to ensure that the adhesive layer is wrapped all the way around the faces of the stones so they can be mechanically mounted, see Covi col. 6 lines 29-39.
Claims 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over modified Poll as applied to claim 1 above, and further in view of Kyoung (KR 1020120070185, see English translation provided.)
Regarding claim 21, Poll meets the claimed, The process according to claim 1, wherein the manufacturing mould comprises at least two complementary half-moulds delimiting a cavity having a shape that corresponds or substantially corresponds to a shape of the timepiece component to be manufactured, (Poll Figure 4 sows the pressing head 18 and pressing table 17 and a cavity created between the knives 19 on the pressing table 17.)
Poll does not describe the guide component being independent from the mold or the timepiece component and does not meet the claimed, and wherein at least one independent component of the half-moulds and of the timepiece component is added to the manufacturing mould, the independent component comprising the at least one guide element to allow the positioning of the at least one fastening element within the cavity of the manufacturing mould.
Analogous in the field of jewelry manufacturing, Kyoung meets the claimed and wherein at least one independent component of the half-moulds and of the timepiece component is added to the manufacturing mould, the independent component comprising the at least one guide element to allow the positioning of the at least one fastening element within the cavity of the manufacturing mould (Kyoung Figure 4 and [0043]-[0045] describe a gripping arm 23 (fastening element) which surrounds the jewel 30 is inserted into a gripper 20 (guide element) which is inserted into a ceramic component (mold.))
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute or combine the guide elements described in Poll with the guide element that is an independent component as described in Kyoung in order to fit the gripper (guide element) into designated grooves so the jewel does not escape, see Kyoung [0043]-[0044]. Additionally, making elements separable is obvious, see MPEP §2144.04(V)(C).
Regarding claim 22, Poll meets the claimed, The process according to claim 1, wherein the manufacturing mould comprises at least two complementary half-moulds delimiting a cavity having a shape that corresponds or substantially corresponds to a shape of the timepiece component to be manufactured, (Poll Figure 4 sows the pressing head 18 and pressing table 17 and a cavity created between the knives 19 on the pressing table 17.)
Poll does not describe the guide component being on an insert and does not meet the claimed, and wherein at least one insert of the timepiece component to be manufactured is positioned within the cavity of the manufacturing mould, the insert comprising the at least one guide element to allow the positioning of the at least one fastening element within the cavity of the manufacturing mould, the at least one guide element belonging to the insert and having a shape of a projection or of an aperture in the insert.
Analogous in the field of jewelry manufacturing, Kyoung meets the claimed and wherein at least one insert of the timepiece component to be manufactured is positioned within the cavity of the manufacturing mould, the insert comprising the at least one guide element to allow the positioning of the at least one fastening element within the cavity of the manufacturing mould, the at least one guide element belonging to the insert and having a shape of a projection or of an aperture in the insert. (Kyoung Figure 4 and [0043]-[0045] describe a gripping arm 23 (fastening element) which surrounds the jewel 30 is inserted into a gripper 20 (guide element) which is inserted into a ceramic component (mold.) The gripper is a separate component.)
It would have been obvious to a person of ordinary skill in the art before the filing date to substitute or combine the guide elements described in Poll with the guide element that is an separate insert component as described in Kyoung in order to fit the gripper (guide element) into designated grooves so the jewel does not escape, see Kyoung [0043]-[0044].
Claims 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Poll as applied to claim 1 above, and further in view of Poll 2 (US 5,338,591)
Regarding claim 26, Poll does not describe a honeycomb hooking element and does not meet the claimed, The process according to claim 1, wherein the fastening element is surrounded by a hooking element having a honeycomb structure.
Analogous in the field of jewelry making, Poll 2 meets the claimed, The process according to claim 1, wherein the fastening element is surrounded by a hooking element having a honeycomb structure (Poll 2 Figure 1 and col. 3 lines 12-25 describe gems 5 embedded in a layered carrier. The layered carrier includes an upper and intermediate layers 2 and 4 and a lower layer 3 surrounding those layers made. Figure 1 shows the lower layer 3 has holes in it where the gems are placed which give the layer a honeycomb structure.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the structure described in Poll with the honeycomb layer described in Poll 2 in order to accommodate the gem tip and protect it, see Poll col. 3 lines 37-40.
Regarding claim 27, Poll 2 further meets the claimed, The process according to claim 1, wherein the hooking element comprises a foam. (Poll 2 col. 3 lines 12-25 describe the lower layer 3 surrounding the other layers is made of a foam material.) It would have been obvious to a person of ordinary skill in the art before the filing date to combine the structure described in Poll with the foam layer described in Poll 2 in order to accommodate the gem tip and protect it, see Poll col. 3 lines 37-40.
Allowable Subject Matter
Claim 28 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 28 describes a hooking element, which is previously described in claim 26 as surrounding the fastening element, as being conical or frustoconical shape and having a volume that increases towards an interior of a thickness of the timepiece component. These limitations are not taught by Poll. Poll describes a number of the claimed elements but does not describe a hooking element in the shape or location (surrounding the fastening element) as claimed. Covi also does not describe such an element . Kyoung, while describing an element that could potentially be a hooking element, does not describe it being conical or describe the thickness in the claimed manner.
While Poll 2 describes a layer 3 that can be interpreted as being the hooking element as claimed in claim 26, Poll 2 does not describe or show a conical or frustoconical shape but rather a planar layer. While Poll 2 does describe the thickness of the layer 3, there is no motivation described in Poll 2 to modify the thickness of the layer 3 beyond what is described in the specification such that it would meet the claims. There is no evidence or suggestion beyond these teachings that would motivate a person of ordinary skill in the art to modify the shape or the thickness of the hooking element to meet the claimed invention. Additionally, no other reference could be located which describes an element similar to the hooking element also meeting the other claim limitations. Therefore, claim 28 would be allowable if corrected to overcome the 112(b) rejection noted above. Additionally, if the limitations of claim 28 is included into the independent claims, other claims such as claim 5 should be checked for compliance under 112(b) and 112(d).
Conclusion
Applicant's amendment necessitated the new ground(s) 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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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744