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 .
Applicant's election with traverse of Group I in the reply filed on 1/21/26 is acknowledged. The traversal is on the ground(s) that the claims have been amended so that the product and method claims include the same special technical features. This is not found persuasive because the product claims have been amended to recite that the matrix is reticulated which is not present in the process claims.
The requirement is still deemed proper and is therefore made FINAL.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11, 25-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The specification as originally filed does not teach that the matrix is reticulated.
Claims 1-11, 25-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification as originally filed does not enable one of skill to make the claimed invention because it does not describe a reticulated structure.
In determining if the specification is enabling the following factors are considered:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
With regard to the breadth of the claims, the claims are drawn to a horological component comprising a densified portion made from molded colored forged carbon fibers secured by a reticulated matrix and at least one pigment, wherein the pigment is in the form of solid particles that cannot be mixed with or are not soluble in the resin of the matrix and wherein the particles of the pigment are situated on the surface of at least some of the cut carbon fibers and located in one or more predefined regions .
With regard to the nature of the invention, is chemical and mechanical because the chemical interactions of each of the components is important and because the structure is also important.
The state of the art is shown by CN 112538262, EP 3819718 and EP 2468127A1 which each teach molded structures comprising carbon fibers in a matrix which can include particles such as pigments
The level of ordinary skill is shown by the above references.
The art is both chemical and mechanical and therefore it has a level of unpredictability since the materials of the carbon fibers, the pigments and the resin may not interact in the expected way.
The amount of direction provided by the specification is low. The specification does not disclose a reticulated structure and teaches molding the structure to have a low porosity of preferably less than 1 percent, see paragraph 0059 of the specification, while a reticulated structure is an open and porous structure.
The specification does not include any working examples.
The person of skill would have to perform undue experimentation because it is not clear how to arrive at a reticulated matrix structure for a material which is formed by molding under heat and pressure to have a low porosity.
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 1-11, 25-32 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 that the pigment “takes the form of solid particles that cannot be mixed with, or are not soluble in, the resin or resins of which said matrix is composed”. Pigments by definition are not chemically in soluble in water or other media and are chemically unreactive. Therefore, it is not clear whether in claim 1, the recitation of “cannot be mixed with, or are not soluble in” is an alternative statement, so that the pigment either cannot be mixed with the resin or does not dissolve in the resin, or if it is intended to require that the pigment is both insoluble and unable to be mixed into the resin, since pigments are already insoluble by definition.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP11193937A discloses a matrix resin which includes reinforcing fillers such as carbon fibers and pigments wherein the composition is useful for molding into jewelry such as watches.
EP 3819718 discloses a coating for plating a watch including a binder, (paragraphs 0027-0042) pigments and fillers which control the color of the structure, (paragraphs 0044-0063), but does not disclose incorporating carbon fibers.
CN 112538262 discloses a composition for molding into a timepiece which includes a polymer resin, a reinforcing carbon fiber and pigments.
None of the above references teach a reticulated matrix.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
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