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 .
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) 1-12 and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over El Garrag et al. (EP2881808) of which the attached corresponding English translation is attached in view of Herrera (EP3002635) of which the attached corresponding English translation is cited.
Regarding Claim 1, El Garrag teaches a method for manufacturing a timepiece movement component (page 3, line 14: crown) (page 4, 45: wheel, balance spring) comprising at least a first portion comprising a surface, the method comprising:
- etching the surface (Fig. 1A, 2) (Fig. 2A, 2) of the timepiece movement component (Fig. 1A, 1) (Fig. 2A, 1) to form at least one cavity (Fig. 1C, 5) (page 3, lines 29-page 4, line 10) (Fig. 2C, 5) (page 5, lines 1-6); and
- depositing a material (Fig. 1D, 6) (page 5, line 7: coating) in the at least one cavity (Fig. 1C, 5) (Fig. 2C, 5), wherein the material constitutes a visible marking component (page 4, lines 23-24: a two-tone appearance) on the surface of the timepiece movement component (page 4, lines 11-19) (page 5, lines 7-9) without affecting a functionality of the timepiece movement (El Garrag is silent on whether the deposited material affects a functionality of the timepiece movement, therefore, it would be reasonable to anticipate that the deposited material does not affect the functionality of the timepiece movement.).
El Garrag teach implementing deep reactive ion etching by photolithography to produce components (Fig. 2A, 1) (page 4, lines 48-50), however, it does not explicitly teach using such technique for the etching step.
Herrera teaches the etching implementing deep reactive ion etching (page 2, lines 4-5: DRIE) by photolithography (page 2, lines 6-7: electron beam lithography) through a mask (page 2, lines 6-7: the etching mask) in addition to a direct laser structuring method or by a direct laser interference patterning method (page 2, lines 13-16).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply ERIE method of Herrera in addition to or instead of the laser treatment of El Garrag depending on design requirements (e.g. depth and accuracy of etching) and cost and availability of equipment for each method.
Regarding Claim 2, El Garrag/Herrera teach the method as claimed in claim 1, wherein the at least one cavity can different depth (El Garrag page 7, lines 29-32) such as at least 10 mm (El Garrag page 7, lines 14-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the optimal depth of the cavity through routine optimization that would provide a desired appearance of the timepiece movement component.
(According to MPEP 2144.05 (I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.).
Regarding Claim 3, El Garrag/Herrera teach the method as claimed in claim 1, wherein a depth of the at least one cavity is in a range of from 80 mm to 120 mm (El Garrag page 7, lines 14-16) which overlaps with from 10 mm to 100 mm.
(According to MPEP 2144.05 (I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.).
Regarding Claim 4, although El Garrag/Herrera do not explicitly teach wherein the at least one cavity extends over surface over a length of 100 mm in at least one direction, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design the shape, number and size of cavities including over a length of 100 mm depending on the desire appearance/design of the timepiece movement component as suggested in El Garrag page 7, lines 32-35.
Regarding Claim 5, El Garrag/Herrera teach the method as claimed in claim 1, wherein the first portion comprising the surface is in a micro-machinable material (El Garrag page 4, line 23: brass which is highly micro-machinable).
Regarding Claim 6, El Garrag/Herrera teach the method as claimed in claim 1, wherein
the etching the surface of the first portion of the timepiece movement component is carried out before etching the contour of the timepiece movement component (El Garrag page 5, lines 12-13: the hollows and the coating could be made before the deep etching), and/or
the method comprises:
- positioning a first mask (Herrera page 2, lines 6-7: the etching mask) on a substrate so as to carry out the etching of the at least one cavity from the first mask (Herrera page 2, lines 13-16), and
- positioning a second mask (El Garrag page 5, line 13: resin layer) on the substrate so as to etch a contour of the blank of a timepiece movement component from the second mask (El Garrag page 4, lines 48-50).
Regarding Claim 7, El Garrag/Herrera teach the method as claimed in claim 1, wherein the etching of the surface (El Garrag Fig. 1A, 2) of the first portion of the timepiece movement component (El Garrag Fig. 1A, 1) further comprises laser etching (El Garrag page 3, lines 29-page 4, line 10).
Regarding Claim 8, El Garrag/Herrera teach the method as claimed in claim 1, wherein the depositing of the material in the at least one cavity comprises depositing a metal, a metal alloy (El Garrag page 4, line 12: metal or metal alloy).
Regarding Claim 9, El Garrag/Herrera teach the method as claimed in claim 8, wherein the depositing of the material in the at least one cavity comprises depositing a metal or a metal alloy by vapor phase deposition (El Garrag page 4, line 14: physical vapor deposition which is a part of vapor phase deposition technique).
Regarding Claim 10, El Garrag/Herrera teach the method as claimed in claim 1, wherein
the depositing of the material in the at least one cavity comprises depositing the material on the bottom of the cavity to a thickness equal or substantially equal to the depth of the cavity (El Garrag page 4, lines 17-19).
Regarding Claim 11, El Garrag/Herrera teach the method as claimed in claim 1, comprising:
- before the etching of the surface and the depositing of the material, providing a substrate (El Garrag page 4, line 48: silicon wafer) based on a micro-machinable material (silicon is micro-machinable) comprising one or more blanks of the timepiece movement component to be manufactured (El Garrag page 4, lines 48-50: components 1 are produced from a silicon wafer); and
- before the depositing of the material in the at least one cavity of the surface of the at least one first portion of the at least one blank of the timepiece movement component, detaching the at least one blank of the timepiece movement component from the substrate (El Garrag Fig. 2A shows detached blanks (1)).
Regarding Claim 12, El Garrag/Herrera teach the method as claimed in claim 1, wherein the timepiece component is a wheel or a spring (El Garrag page 4, line 46).
Regarding Claim 17, El Garrag/Herrera teach the method as claimed in claim 5, wherein the micro- machinable material comprises a base of silicon and a silicon oxide coating (El Garrag Fig. 1B, 3) (El Garrag page 2, line 20: oxide) having a thickness in a range of from 10 μm to 30 μm.
Although El Garrag/Herrera do not explicitly teach a silicon oxide coating having a thickness in a range of from 0.5 mm to 5 mm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine an optimal thickness range of coating including a range of from 0.5 mm to 5 mm that would provide a desired masking effect for the deposition process.
(According to MPEP 2144.05 (I), a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.).
Regarding Claim 18, El Garrag/Herrera teach the method as claimed in claim 7, wherein the laser etching is performed using a femtosecond laser (El Garrag page 3, line 28).
Claim(s) 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over El Garrag et al. (EP2881808) of which the attached corresponding English translation is attached in view of Herrera (EP3002635) of which the attached corresponding English translation is cited, as applied to Claim 8, and further in view of Issartel (WO2015150552) of which the attached corresponding English translation is cited.
Regarding Claim 19, El Garrag/Herrera teach the method as claimed in claim 8, however, do not explicitly teach wherein the depositing of the material in the at least one cavity comprises depositing a composite.
Issartel teaches depositing of the material (Fig. 4, 6) in the at least one cavity (Fig. 1, 4) comprises depositing a composite (page 2, line 22: composite).
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 composite in the cavity of El Garra/Herrera as taught by Issartel in order to achieve a beautiful appearance as suggested in Issartel “Description” page 1, lines 2-7.
Regarding Claim 20, El Garrag/Herrera/Issartel teach the method as claimed in claim 19, comprising, prior to the depositing of the material in the at least one cavity, depositing an adhesion layer (Issartel page 3, lines 25-28: depositing a mixture of ceramic powder and carbon).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply an adhesion layer on the surface of the at least one cavity of El Garrag/Herrera as taught by Issartel in order to improve adhesion of the composite material of Issartel deposited in the at least one cavity as suggested in Issartel page 3, lines 25-28.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 and 17-20 have been considered but are moot because the new ground of rejection does not rely on a combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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 11/1/2025