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 with traverse of Group I, claims 1-11 and 19-20, in the reply filed on 6/26/2026 is acknowledged. The traversal is on the grounds that claim 12 of Group II depends from claim 1 of Group I, and therefore should be considered for rejoinder and examination together with the product claims. This is not found persuasive. The process claims are already eligible for rejoinder, and consideration for rejoinder at this point is premature when the product claims have not been found allowable. Furthermore, a process claim which depends from a product claim is not, by itself, reason to withdraw a restriction requirement.
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
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 8, 10 and 20 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 8 recites: “wherein most of the pores of the at least one porous core are filled with a filling material”. This limitation is indefinite. When a pore is filled, it is no longer a pore. For purposes of examination, it is presumed the first material is a foam or has a skeleton framework, and another material fills in the cells of the foam or skeleton framework.
Regarding claim 10, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “a decorative timepiece component”, and the claim also recites “such as a component taking the form of a watch case or a bracelet” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 20 recites: “the porous framework”. There is insufficient antecedent basis for this limitation.
Claim 20 recites “TPMS”. This abbreviation is not defined. For purposes of examination, it has not been considered.
Dependent claims not addressed are indefinite by virtue of dependence from an indefinite claim.
Claim Rejections - 35 USC § 102
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, 3-4, 9 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dunlop (FR 2043575).
Regarding claims 1 and 3-4, Dunlop teaches a metal foam (p. 2, ¶ 5). This corresponds to the claimed porous core, as a person having ordinary skill in the art would interpret ‘foam’ to refer to something with a porosity of less than 80%. This in turn indicates a relative density of less than 80% of the metal forming the metal foam. The metallic foam undergoes compression that causes a surface of the foam to undergo a change in porosity (p. 2, ¶ 6). Accordingly, the surface of the compressed foam has a porosity which is lower than the remainder of the foam.
Regarding claim 9, Dunlop teaches applying an additional metal coating on the foam for the purpose of forming an alloy (p. 1, ¶ 11).
Regarding claim 19, Dunlop teaches suitable metals include gold, nickel, and iron (p. 1, ¶ 11).
Regarding claim 20, Dunlop teaches the metal foam has intercommunicating cellular spaces (p. 1, ¶ 5).
Claims 1, 3-8, 10-11 and 19-20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Loarer (US 2021/0046548).
Regarding claims 1, 3-4, 8 and 10-11, Loarer teaches a timepiece component comprising a first fraction having a cellular structure (¶ 8) and consisting of a metal foam (¶ 21). A person having ordinary skill in the art would interpret ‘foam’ to refer to something with a porosity of less than 80%. This in turn indicates a relative density of less than 80% of the metal forming the metal foam. A second fraction fills at least some of the cells of the first fraction (¶ 8) and forms the outer surface of the component (¶ 10). Accordingly, the porosity at the surface of the component is lower than the porosity of the first fraction.
Regarding claim 5, the second fraction is obtained by casting (¶ 26) and is expected to have substantially no porosity, absent objective evidence to the contrary. See MPEP 2112. Loarer also teaches the density of the material for the first fraction is less than the density of the material for the second fraction, and gives examples of aluminum or titanium for the first material and precious metals such as gold or silver for the second material (¶ 10).
Regarding claim 6, Loarer teaches the surface of the component may have an exposed surface of the first fraction and the second fraction (¶ 39). The first fraction is made of titanium (¶ 22), which is expected to have a Vickers hardness of at least 300 HV, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 7, the second fraction is obtained by casting (¶ 26) and is expected to have substantially no porosity, absent objective evidence to the contrary. See MPEP 2112. Accordingly, the corresponding surface is without pores. Loarer also teaches that the component has a porosity which increases from the surface towards the center (¶ 22).
Regarding claim 19, Loarer teaches the material for the first fraction is aluminum or titanium for the first material (¶ 10).
Regarding claim 20, Loarer teaches the cells of the first fraction may be alveoli (see claim 4) or have a cellular structure (¶ 8).
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 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dunlop (FR 2043575), as applied to claim 1.
Regarding claims 10-11, Dunlop teaches the article is for jewelry or decorative purposes (p. 1, ¶ 2). Dunlop does not expressly teach the article is for a timepiece component. However, as watches can have a decorative purpose or can serve as jewelry, it would have been obvious at the effective time of filing for one of ordinary skill in the art to use the article of Dunlop for a timepiece component, thus producing a high premium watch that is aesthetically desirable.
Claims 1-3, 5, 7, 9-11 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Jalanti et al. (US 2021/0178479).
Regarding claims 1 and 10-11, Jalanti discloses a timepiece component comprising a core comprising pores, and a surface zone having lower porosity than that of the core (¶ 11). Jalanti teaches the core has a relative density of less than 99.5% (¶ 98), which implies a porosity of less than 99.5%. This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 2, Jalanti teaches the surface zone extends to a depth of 20-1000 μm (¶¶ 100-101). This overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, Jalanti teaches the core comprises a material such as a metal or ceramic (¶ 27).
Regarding claim 5, Jalanti teaches the surface zone has a porosity rate of less than 0.1% (¶ 99), and a relative density of greater than 99.9% (¶ 98).
Regarding claim 7, the porosity of the component increases from surface to the center (¶ 11).
Regarding claim 9, Jalanti teaches forming a surface coating on the component (¶ 67) for the purpose of improving surface finish (¶ 72). The coating comprises metals or metal alloys (¶ 68).
Regarding claim 19, the material of the component includes a metal such as stainless steel (Fe), Al, Ti, or Au (¶ 27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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