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 1-8, in the reply filed on May 15, 2026 is acknowledged. New claims 11-15 belong to the invention of Group I and will be examined therewith.
Claims 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 15, 2026.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on March 30, 2023. It is noted, however, that applicant has not filed a certified copy of the JP 2023-055532 application as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/29/2024, 09/23/2024, 12/20/2024, and 01/15/2025 have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: In paragraph [0037] of the as-filed specification, the disclosure reciting “the design having the part where the first pattern (40) in a lattice shape is recognized relatively clearly and the part where the first pattern (40) in a lattice finish is recognized relatively unclearly can be expressed” appears to contain a typographical error. Based on the disclosure in paragraphs [0036] and [0038], in reference to the embodiment shown in Figs. 6-7, the disclosure in paragraph [0037] appears to intend to state that the design having the part where the second pattern (50A) in a lattice shape is recognized relatively clearly, while the part where the first pattern (40A) in a matte finish is recognized relatively unclearly can be expressed.
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 and 8 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.
Regarding claim 6, the limitation reciting “the metal nanoparticles are configured to contain any one of gold, silver, copper, and platinum” is indefinite because it is not clear what is meant by the phrase “configured to” in the context of the claimed invention.
In particular, claim 1 requires that the ink is composed of metal nanoparticles. Due to the use of the phrase “configured to,” it is not clear whether the limitation in claim 6 is intended to require that the metal nanoparticles contain gold, silver, copper, or platinum, or if this limitation is intended to be interpreted as a functional limitation where the material of the metal nanoparticles is not specifically limited to the recited metals. For the purpose of applying prior art, the limitation in claim 8 will be interpreted to mean that the metal nanoparticles contain gold, silver, copper, or platinum.
Regarding claim 8, the limitation reciting “a desired design is expressed with the ink having metallic luster” is indefinite because the phrase “the ink having metallic luster” lacks proper antecedent basis in the claims. Although claim 1 sets forth that a second pattern is formed by printing an ink composed of metal nanoparticles on the surface of the base material, the claims do not specifically set forth that the ink has metallic luster. For the purpose of applying prior art, the limitation in claim 8 reciting “the ink having metallic luster” is interpreted as referring to the previously-recited ink composed of nanoparticles.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 7, and 11 of copending Application No. 18/184,397 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 1 of the instant invention, claim 6 of the ‘397 application recites a timepiece component comprising a base material having a top surface on which a first pattern shape is formed, wherein the first pattern shape include a plurality of depressions provided in the top surface, and a first printed layer formed by printing a second pattern shape by an inkjet method, the second pattern shape being formed by dots of ink and overlapping with the depressions of the first pattern shape. Claim 7 further recites that a second light-transmissive layer formed from a light-transmissive resin is present on a surface of the first printed layer. Claim 11 further recites that the ink of the second pattern shape is silver nanoparticle ink.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-16 of copending Application No. 18/184,425 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 1 of the instant invention, claim 14 of the ‘425 application recites a dial (watch component) comprising a base having a surface on which a first pattern is formed by irregularities, and a first printed layer formed by ink jet printing a second pattern constituted by a plurality of dots of ink, wherein the first and second patterns overlap each other when viewed in a direction perpendicular to the surface of the base. Claim 15 further recites that the ink constituting the second pattern is silver nanoparticle ink, and claim 16 recites that the dial further comprises a light-transmissive resin layer formed on the first printed layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 5 of copending Application No. 19/027,739 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Regarding claim 1 of the instant invention, claim 1 of the ‘739 application recites a watch part comprising a base, a first layer formed by applying a decorative material to a surface of the base, a second layer formed by applying a first resin material to a surface of the first layer, and a third layer (second pattern) formed by performing ink jet printing using a metal nano-ink containing metal nanoparticles on a surface of the second layer. Claim 2 further recites a fourth layer (transparent film) formed by applying a second resin material having light-transmitting properties to a surface of the third layer, and claim 5 recites that the surface of the base has a bumpy pattern (first pattern).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8, 11, 12, and 15 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Nakazawa et al. (US 2023/0297032, cited on IDS).
Regarding claims 1-3, 6, 8, and 11, Nakazawa et al. teaches a dial (1; watch component) comprising a base material (2) having a pattern shape (21; first pattern) formed on a surface of the base material, a light-transmissive layer (3) formed on the surface of the base material, a liquid repellent layer (4; surface in a hydrophobic state) formed on the surface of the light-transmissive layer, and a printed layer (5; second pattern) formed on the surface of the liquid repellent layer ([0015], Fig. 1). Nakazawa et al. further teaches that the ink may be ejected onto the surface of the water repellent layer to form a printed layer, and two printed layers may be provided with a light-transmissive layer interposed therebetween ([0055]), such that the light-transmissive layer located above the printed layer corresponds to the claimed polished transparent film.
Nakazawa et al. further teaches that the pattern shape (21) is formed by providing irregularities (recessed portions) on the surface of the base material by engraving or the like, and that the printed layer may be formed with silver nanoparticle ink while the base material is formed of a dark color such as black ([0017], [0023]). Dots of the ink which are ejected by an inkjet method and attached to the surface of the liquid repellent layer are formed in a circular design, wherein the diameter of the dots of the ink has a size of 20 µm or more and 50 µm or less [0025].
Regarding claim 4, Nakazawa et al. teaches all of the limitations of claim 2 above and further teaches that the base material may be a metal plate, a hard plastic plate, or the like [0017].
Regarding claim 5, Nakazawa et al. teaches all of the limitations of claim 2 above. As noted above, Nakazawa et al. teaches that a light-transmissive layer (3) is formed on the surface of the base material (2) (Fig. 1), such that the light-transmissive layer corresponds to the claimed coating material.
Regarding claim 12, Nakazawa et al. teaches all of the limitations of claim 1 above and further teaches that the pattern shape (21) may be formed in a radial shape, while the pattern shape (51) of the dot pattern of the printed layer is set such that the density of dots is low in a central portion and increases towards a peripheral portion of the dial ([0043], Fig. 6). The first and second patterns are therefore both formed radially from a center of the surface as claimed.
Regarding claim 15, Nakazawa et al. teaches all of the limitations of claim 1 above. Nakazawa et al. teaches a dial (1; watch component) for a timepiece (watch) ([0051]), which would inherently comprise a case into which the dial is incorporated.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa et al. (US 2023/0297032, cited on IDS) as applied to claim 2 above.
Regarding claim 7, Nakazawa et al. teaches all of the limitations of claim 2 above. As noted above, Nakazawa et al. teaches that the diameter of the dots of the ink is within the range of 20 µm or more and 50 µm or less ([0025]), which overlaps the claimed range. 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).
Claims 1, 11, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroe et al. (JP 2006-214733, machine translation via EPO provided).
Regarding claim 1, Hiroe et al. teaches a watch display panel (50; watch component) comprising a light-transmitting substrate (41; base material), a colored layer (42; second pattern), a matte layer (43), and a transparent resin coating layer (44; polished transparent film) ([0066], Fig. 5). The light-transmitting substrate has a striped pattern (first pattern) formed on its upper surface by a pattern of raised and recessed areas (41a) [0066]. A surface of the transparent resin coating layer is lapped with a polishing disc to create a glossy, smooth surface [0070].
It is noted that the limitation reciting that the plurality of dots formed with ink composed of metal nanoparticles is “formed through ink-jet printing” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113. The product-by-process limitation is interpreted as requiring the structure of a plurality of ink dots. There does not appear to be a nonobvious difference between the prior art structure and the structure resulting from the claimed method because the Hiroe et al. teaches that the colored layer can be formed by printing, painting, plating, transfer, or other means, wherein a colored resin ink can be printed or a colored resin paint can be spray painted ([0023]), such that the printing or spray painting method would result in a plurality of dots of ink formed on the surface of the substrate.
Hiroe et al. teaches that the colored layer is provided to reveal the shape and contour of the uneven pattern on the upper surface of the substrate and to enhance its decorative appeal [0034]. Although Hiroe et al. teaches that the pigment used to form the colored layer (42) can be selected according to the design specifications, and further teaches that the colored layer may also have the form of a plated thin metal film in order to obtain a metallic-looking color ([0023], [0074]), the reference does not expressly teach that the ink may be composed of metal nanoparticles.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an appropriate pigment such as metal nanoparticles in order to achieve the desired ornamental effect for the watch display panel, given the disclosure in Hiroe et al. regarding the pigment being selected according to the design specifications.
Regarding claim 11, Hiroe et al. teaches all of the limitations of claim 1 above. As noted above with respect to claim 1, Hiroe et al. does not expressly teach that the ink is composed of metal nanoparticles. It would, however, have been obvious to one of ordinary skill in the art to select any desired pigment, including metal nanoparticles containing gold or silver, in order to achieve the desired aesthetic effects for the display panel.
Hiroe et al. also differs from the claimed invention in that the reference does not teach that the light-transmitting substrate (base material) is black. It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the watch display panel of Hiroe et al. by incorporating a black pigment into the light-transmitting substrate, for example at an amount that ensures the light transmission properties of the substrate are maintained. One of ordinary skill in the art would have been motivated to form the substrate to have a black color in order to obtain the desired aesthetic effects for the display panel. With respect to aesthetic considerations such as the color of the base material and the type of metallic nanoparticles used in the ink, it is noted that matters relating to ornamentation only and which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
Regarding claim 12, Hiroe et al. teaches all of the limitations of claim 1 above and further teaches that the raised and recessed pattern (first pattern) is provided to enhance the decorative aspect of the display panel, and that various patterns such as sunburst (radial) patterns can be selected for the raised and recessed pattern [0032]. The colored layer is said to be placed on the uneven surface of the raised and recessed pattern to make the shape and contours of the uneven surface more clearly visible ([0034]), such that the second pattern formed by the color layer is also formed radially by the dots of the ink.
Regarding claim 15, Hiroe et al. teaches all of the limitations of claim 1 above and further teaches that the watch display panel (watch component) may be applied to the dial, wherein a wristwatch includes a dial (95) fixed inside a watch case (97) ([0030], [0086], Fig. 8).
Claims 2-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hiroe et al. (JP 2006-214733, machine translation via EPO provided) as applied to claim 1 above, and further in view of Osawa (JP 2000-111660, cited on IDS, machine translation via EPO provided).
Regarding claims 2 and 7, Hiroe et al. teaches all of the limitations of claim 1 above but does not expressly teach a diameter of a dot formed by causing the ink to impact on the surface of the substrate.
However, in the analogous art of decorative watch components, Osawa teaches a method of printing a watch dial in which a base (1) is plated with metal (2), an ink-receiving layer (3) is formed by coating the metal-plated surface with a water-soluble polymer in a film-like manner, and ink droplets (5) are ejected from the nozzle of an inkjet head, forming pixels (6; dots) of 25 to 30 µm on the ink receiving layer ([0001], [0009]-[0010]). Osawa teaches that the pixel diameter (diameter of a dot) can be controlled by suppressing spreading of ink upon collision with the ink receiving layer, for example, by making the ink droplet diameter extremely small and ejecting the ink droplets at a low speed [0024]. Osawa teaches that the pixel diameter is preferably small in order to achieve a high print quality and resolution, where pixel diameters of 50 µm and above resulted in insufficient print quality ([0006], [0015], [0028]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the watch display panel of Hiroe et al. by setting a diameter of the printed dots within the claimed range, such as by forming an ink receiving layer on the substrate and by controlling the ink droplet diameter and ejection speed, as taught by Osawa, in order to improve the resolution and quality of the printed features. Furthermore, Osawa teaches a dot diameter which falls within the ranges of claims 2 and 7. 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, Hiroe et al. in view of Osawa teaches all of the limitations of claim 2 above. Hiroe et al. further teaches that the light-transmitting substrate (base material) may be formed using a transparent polycarbonate, polyimide, polyethylene, polypropylene resin, or the like [0050]. Osawa further teaches that the ink receiving layer formed on the substrate is formed of polyvinyl alcohol and is capable of absorbing ink [0009]. The surface of the base material may therefore either be in a hydrophobic state or a hydrophilic state.
Regarding claim 4, Hiroe et al. in view of Osawa teaches all of the limitations of claim 2 above, and Hiroe et al. further teaches that the light-transmitting substrate (base material) may be made of resin [0009].
Regarding claim 5, Hiroe et al. in view of Osawa teaches all of the limitations of claim 2 above. As noted above, Osawa teaches that the ink receiving layer formed on the substrate is formed of polyvinyl alcohol and is capable of absorbing ink [0009]. The ink receiving layer formed on the light-transmitting substrate therefore corresponds to the claimed coating material.
Regarding claim 6, Hiroe et al. in view of Osawa teaches all of the limitations of claim 2 above. As noted above, Hiroe et al. does not expressly teach the colored layer including metal nanoparticles. However, Hiroe et al. does further teach that the colored layer may be composed of a thin metal film that exhibits a metal color, where the metal materials can include Au, Ag, Cu, Pt, and the like [0037]. For example, in the case of Au-Ag, a yellow gold color is obtained, and in the case of Au-Cu, a red gold color is obtained [0037].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the watch display panel of Hiroe et al. in view of Osawa by selecting metal nanoparticles containing at least one of gold, silver, copper, or platinum, as suggested by Hiroe et al., in order to achieve the desired color tone of the color layer.
Regarding claim 8, Hiroe et al. in view of Osawa teaches all of the limitations of claim 2 above. As shown in Fig. 6, Hiroe et al. teaches that the watch display panel (watch component) may be configured as a dial. As explained above with respect to claim 1, Hiroe et al. teaches that a desired design (i.e., a second pattern) may be expressed by the colored layer, which may be an ink having metallic luster. Hiroe et al. differs from the claimed invention in that the reference does not teach that a deep color is added to the light-transmitting substrate (base material).
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the watch display panel of Hiroe et al. by adding a deep color to the light-transmitting substrate, for example by incorporating a pigment at an amount that ensures the light transmission properties of the substrate are maintained. One of ordinary skill in the art would have been motivated to add a deep color to the substrate in order to obtain the desired aesthetic effects for the display panel. With respect to aesthetic considerations such as the color of the base material, it is noted that matters relating to ornamentation only and which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
Claims 13 and 14 rejected under 35 U.S.C. 103 as being unpatentable over Hiroe et al. (JP 2006-214733, machine translation via EPO provided) as applied to claim 1 above, and further in view of Yamaguchi et al. (US 2009/0129210).
Regarding claims 13 and 14, Hiroe et al. teaches all of the limitations of claim 1 above. Although Hiroe et al. teaches that the raised and recessed pattern (first pattern) may be formed in various patterns such as grid patterns, stripe patterns, circle patterns, geometric patterns, and the like to enhance the decorative aspect of the display panel, and that the colored layer (second pattern) enhances the decorative appeal of the display panel ([0032], [0034]), the reference does not expressly teach that the raised and recessed pattern forms a matte finish or that the second pattern is a lattice.
However, in the analogous art of decorative watch components, Yamaguchi et al. teaches a display plate for a solar watch provided with a solar cell, comprising a first transmission colored film (32) formed on a light transmission substrate (31) and a transparent film formed on the first transmission colored film ([0001], [0541], Fig. 6). The top surface of the light transmission substrate has a pattern (31b; first pattern) with a concave and convex shape formed thereon, and the first transmission colored film (32; second pattern) is formed by a printing method with an ink made by mixing copper metal powder with a resin to form a display plate having a gold color tone ([0544], [0546]). Yamaguchi et al. teaches that the pattern (31b) can be any pattern with a concave and convex shape, such as a satin pattern, a stripe pattern, a radial pattern, a geometric pattern, or the like, depending upon a desired design [0552].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the watch display panel of Hiroe et al. by selecting any desired pattern, such as a satin pattern which forms a matte finish, for the pattern of the raised and recessed areas of the light-transmitting substrate, as suggested by Yamaguchi et al., in order to obtain the desired aesthetic effects for the display panel.
Similarly, although neither Hiroe et al. nor Yamaguchi et al. expressly teaches that the second pattern formed by ink is in a lattice shape formed with gradation, it would have been obvious to one of ordinary skill in the art to form the decorative colored layer to have any pattern, such as a lattice pattern formed with gradation, depending upon the desired ornamental design of the watch display panel. With respect to aesthetic considerations such as the form of the pattern of ink dots, it is noted that matters relating to ornamentation only and which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See MPEP 2144.04(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shimode et al. (JP 2022-044857, machine translation via EPO provided) teaches an exterior component (5) for a watch, comprising a base material (51), a colored layer (52), a first transparent layer (53), a decorative component (54), and a second transparent layer (55) (Figs. 1-2). Shimode et al. teaches that the decorative elements such as gold powder or other metal powders are scattered on the second transparent layer ([0030]), thus forming a pattern comprising a plurality of dots as shown in Fig. 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785
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