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 Objections
Claim 7 is objected to because “the light” lacks antecedent basis and should be -light-.
Claim 7 lacks antecedent basis for “said extraction micro-structures.” Applicant may (1) change “said extraction” to -extraction-, or (2) change claim 7 to depend on claim 2 and change “for light coupling” to -for said light coupling-.
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.
Claim 10 is 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 10 lacks antecedent basis for the limitation “the manufacture” in line 2. Claim 10 also has ambiguous antecedent basis for “a hand” in line 2 because claim 1 already recites a hand. Claim 10 is suggested to be changed to -wherein said method illuminates said hand only on one side or only on a tip of the hand-. This suggestion would also correct the lack of antecedent basis for “the tip.”
Claim Rejections - 35 USC § 103
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.
Claims 1 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Habraken (US 6575584) in view of Tortora ‘688 (US 20150346688) and Tortora ‘155 (US 20210200155).
Regarding claim 1, Habraken discloses a method, wherein in a first group of operations, at least one light guide is manufactured by replication of micro-structures (column 4, lines 46-47 and 51) made initially on a master (column 4, lines 44-45).
Habraken does not show the method manufacturing a luminous horological hand, wherein through a second group of operations, at least one hand body is manufactured, which is assembled with the at least one light guide through a bonding operation and an assembly operation before said luminous hand is finished through a final cutting operation.
Tortora ‘688 teaches a method for manufacturing a luminous horological hand (title), comprising separately manufacturing, through a first group of operations, at least one light guide ([0010]), and, through a second group of operations, at least one hand body ([0028]: “external part”), which are assembled with said at least one light guide through a bonding operation ([0028]) and an assembly operation (Fig. 4).
Tortora ‘155 teaches a method for manufacturing a luminous horological hand comprising a light guide ([0034]) and a hand body ([0034]) being assembled and then finished through a final cutting operation ([0034]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined manufacturing methods of Tortora ‘688 and Tortora ‘155 with Habraken’s method. One of ordinary skill in the art would have been motivated to make this combination to predictably create a watch with an improved aesthetic appearance ([0004] of Tortora ‘688).
Regarding claim 8, Habraken in view of Tortora ‘688 and Tortora ‘155 discloses the method according to claim 1, wherein said method illuminates said hand on its periphery (Fig. 10 of Tortora ‘688), onto which said micro-structures are replicated (light is emerging from the periphery, so the light guide and micro-structures must be bonded to the hand on the periphery).
Regarding claim 9, Habraken in view of Tortora ‘688 and Tortora ‘155 discloses the method according to claim 1, wherein said method illuminates said hand through an opening (120 in Fig. 11 of Tortora ‘688) of said hand.
The combination of Habraken, Tortora ‘688, and Tortora ‘155 does not disclose the skeleton hand having openings.
The courts have held mere duplication of working parts involves only routine skill in the art. See St. Regis Paper Co. vs. Benis Co., 193 USPQ 8 and MPEP 2144.04.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have duplicated Tortora ‘688’s opening so that there are openings in the hand. One of ordinary skill in the art would have been motivated to make this duplication to improve the hand’s aesthetic appearance.
Regarding claim 10, Habraken in view of Tortora ‘688 and Tortora ‘155 discloses the method according to claim 1, wherein said method is implemented for a manufacture of a hand to be illuminated only on one side ([0048] of Tortora ‘688: “the light sources emit light in the opposite direction to the usual direction of rotation of the hands”).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Habraken in view of Tortora ‘688 and Tortora ‘155, as applied to claim 1 above, and further in view of Blair (WO 2013050853).
Regarding claim 2, Habraken discloses the method according to claim 1, wherein, in said first group of operations, in a first operation said master, which is a positive model of a micro-relief (column 4, lines 44-46 of Habraken: “micro-prisms master structure”) to be transferred onto said at least one light guide, is made with etching means (column 4, lines 44-45), said micro-relief including said micro-structures, the micro-structures comprising light coupling and extraction micro-structures (abstract).
The combination of Habraken, Tortora ‘688, and Tortora ‘155 does not show the micro-structures including alignment micro-structures.
Blair discloses a light guide comprised of micro-structures ([0036]), the micro-structures including alignment micro-structures for layering with other elements ([0038]: “apertures 31 may be present…and may serve…as alignment aids”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Blair’s alignment micro-structures with the micro-structures of Habraken, Tortora ‘688, and Tortora ‘155. One of ordinary skill in the art would have been motivated to make this combination to precisely center and position the light guide and hand body.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Habraken in view of Tortora ‘688, Tortora ‘155, and Blair as applied to claim 2 above, and further in view of Kataho (US 20070289530).
Regarding claim 3, Habraken discloses (Fig. 5) the method according to claim 2, wherein, in said first group of operations, in a second operation (Fig. 5B, Fig. 5D), a negative tool (Fig. 5D) is made based on said master (Fig. 5A), in order to print micro-structures, a plastic substrate is provided (column 4, lines 62-65: “hot embossing under pressure…of a plastic material”), and microstructures are replicated (bottom part of Fig. 5F and column 6, lines 52: “the preparation of a second negative plastic copy”; note that Habraken’s use of “negative” is opposite that of Applicant’s use of “negative”) by reproducing the microstructures created on said master on said plastic substrate (bottom of Fig. 5F is a copy of Fig. 5A), under the action of said negative tool (column 6, lines 51-52: the “second negative plastic copy” is prepared “as above” in lines 35-37 with negative tool Fig. 5D acting as the master) which allows printing said microstructures over said plastic substrate in order to make at least one raw light guide.
The combination of Habraken, Tortora ‘688, Tortora ‘155, and Blair does not show a resin being deposited over the substrate beforehand such that the micro-structures are reproduced on the plastic substrate by means of the resin.
Kataho teaches a resin deposited over a substrate before hot embossing so that microstructures are reproduced in the resin ([0027]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have deposited a resin over the combination of Habraken, Tortora ‘688, Tortora ‘155, and Blair’s substrate beforehand so that micro-structures are reproduced in the resin. One of ordinary skill in the art would have been motivated to make this combination to achieve the predicable result of creating accurate micro-structure reproductions ([0027] of Kataho).
Regarding claim 5, Habraken discloses the method according to claim 3, wherein said replication of said microstructures is performed by hot embossing (column 4, lines 62-65).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Habraken in view of Tortora ‘688, Tortora ‘155, Blair, and Kataho as applied to claim 3 above, and further in view of Gourlay (US 20100296025).
Regarding claim 4, Habraken discloses the method according to claim 3, wherein said substrate is selected from PET (column 4, lines 65-67).
The combination of Habraken, Tortora ‘688, Tortora ‘155, Blair, and Kataho does not show the substrate’s thickness being between 50 and 100 micrometers.
Gourlay teaches a substrate with a microstructure, the substrate having a thickness of 50 microns ([0054] discloses that the substrate and microstructure are 100 microns thick, and that the microstructure is 50 microns thick).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Habraken’s substrate thickness to be 50 microns, as taught by Gourlay. One of ordinary skill in the art would have been motivated to make this sizing as a known dimension that predictably creates a functioning light guide.
Response to Arguments
Applicant's arguments filed 2026-06-12 have been fully considered but they are not persuasive. Examiner notes that Applicant appears to have mistaken Tortora ‘688 for Tortora ‘155: page 3 of the Remarks says that Tortora ‘688 states that “’no assembly…is necessary to arrange the layers of the part.’ See Tortora ‘688, paragraph [0015].” Paragraph [0015] of Tortora ‘688 does not contain this sentence. Paragraph [0015] of Tortora ‘155 does, however.
Applicant also appears to mistake Tortora ‘155 for Blair. Applicant states that Tortora ‘155’s abstract discloses “applying a viscous and curable material.” This disclosure appears to come from Blair’s abstract.
Applicant’s remarks do not discuss why Tortora ‘688 is deficient at all, as the only reference to Tortora ‘688 is actually referring to Tortora ‘155. The combination set forth in the previous action is therefore still maintained since no arguments against the combination in totality have been presented.
Regarding Applicant’s argument the cited art may teach away from the claimed assembly/operations because the cited art states that “no assembly, bonding, or micro-handling…is necessary,” an operation not being necessary does not mean that the operation cannot be performed; it only means that the operation is optional. If one of ordinary skill in the art has a motivation to perform the action, then the action can still be done.
Tortora ‘155 is cited only to teach assembling and cutting operations for forming a luminous horological hand having a light guide and hand body; Tortora ‘155’s teachings on assembly/bonding/micro-handling are not relevant to the combination.
Allowable Subject Matter
Claim 6 is 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.
Claim 7 would be allowable if rewritten to overcome the objections 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: regarding claim 6, the prior art does not show or suggest a raw light guide pre-cut at a location where a pipe of a hand should be placed, using cutting means or a CO2 laser, and aligned with alignment micro-structures present on the raw light guide, in combination with the other limitations.
Regarding claim 7, the prior art does not show or suggest a final cutting operation in which a luminous hand is finished and released using laser cutting means, and a cut formed by the cutting operation being made approximately 0.1 mm wider than a nominal width of the hand due to coupling and extraction micro-structures.
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 Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F from 9:30-5:30 PT.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2831
/EDWIN A. LEON/Primary Examiner, Art Unit 2831
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