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 .
Priority
Receipt is acknowledged of the certified copy of JP2023136972 as required by 37 CFR 1.55.
However, note that while acknowledgment is made of applicant's claim for foreign priority based on an application filed in on JP2023178414, applicant has not filed a certified copy of the JP2023178414 application as required by 37 CFR 1.55.
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 1-10 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.
Claims 1-4 all include the limitations “main material” and note that “main” is a relative term which renders the claims indefinite. The term “main” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, it is unclear how much material needs to be present to be considered a “main” material. Does it have to form 50% of the layers and/or film? Does it need to just need to be present in an amount that would be reasonably considered to be essential? Does it need to form the entirety of layers and/or film? The scope is simply not clear.
For examination, as long as the prior art material is in an amount that would be reasonably considered to be essential, the limitation will be considered to be met.
Claims 5-10 are rejected for being dependent on rejected claims above.
Claim 3 is additionally rejected for the following reasons.
-The term “high” in claim 3 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, what level of adhesiveness would the prior art be required to have to be considered “high”? The scope is simply not clear.
For examination, as long as the second layer is adhesive to the first layer, the
limitation will be considered to be met.
It is unclear what is meant by a reflectance more than or equal to a
predetermined value. Specifically, given that it is unclear what is meant by a predetermined value nor is an actual value given, it is unclear what the reflectance of the prior art needs to have to meet this limitation.
For examination, as long the material of second layer has reflectance that can be reasonably said to be greater than some other material, the limitation is considered to be met.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by USPub20040142213.
Regarding claims 1-2: ‘213 teaches the following two Figures.
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338
554
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Greyscale
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384
644
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Greyscale
As shown above ‘213’s Figures include base material 12, a film 14, with a decorative multilayer film comprising a plurality of layers including a first layer 16 in contact with the layer 14 and wherein the material of the first layer 16 is the same material as film 14.
As film 14 is a form of matter forming a barrier between the base and layers overlying it, it would be expected to provide at least some degree of protection, no matter how negligible, to the underlying base from the overlying layers (i.e. protective film 14).
Regarding the claimed limitations that the protective film is formed by wet plating and the decorative film is formed by dry plating, note that these are product by process and even though product by process claims may be limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). In the instant case, as ‘213’s product meets that of Applicants’, the claim is considered to be met.
However, in the instance Applicants argue against the above, note initially that ‘213 does teach their first layer 14 being formed by wet plating (see electroplating discussed in par 0012 which is well known in the art as a wet plating method) thereby meeting the requirements of the formation of the protective film.
Further, note that the language that the decorative film is formed by dry plating does not necessarily require the entirety of the film (i.e. each and every layer of the decorative film) to be formed by dry plating. It only requires that dry plating be used in the formation of the decorative film. For instance, even if one layer in a decorative film is deposited by a dry plating technique, it can be said that the decorative film is formed (even if only in part) by dry plating. In the instant case, given that ‘213 does teach layers within their decorative film being deposited by dry plating (see layer 22 which can be formed by physical vapor deposition in par 0020, layer 32 which can be formed by physical vapor deposition in par 0030, layer 36 formed by sputtering in par 0041, layer 46 formed by sputtering in par 0047 and note these methods are all well known dry plating methods as understood in the art), ‘213’s decorative film can be said to be formed by dry plating as claimed.
Regarding the limitation of “watch component” in the preamble is considered intended use of the film coated base material and it has been held by the courts that in such instances, if the prior art is capable of such use, the claim will be met. In the instant case, as ‘213’s coated base material meets the structure claimed, it would be expected to have the same capabilities of use.
Regarding claims 3 and 4: As shown above, the decorative film includes a second layer (32 in Fig. 1 and 22 in Fig. 2) in contact with the first layer 16 and third layer and subsequent layers stacked on the surface side of the second layer.
The material constituting the second layer (32 in Fig. 1 and 22 in Fig. 2) can be Cr (see 0015, 0029).
Given that Cr is the same second layer material used by Applicants and as discussed above, 213’s first layer 16 material is Ni which is the same first layer material used by Applicants, it would be expected that ‘213’s second layer will have the same adhesiveness to the first layer and the same reflectance as claimed (MPEP 2112).
Regarding claim 5-6 and 7: The third layer and subsequent layers can include a layer formed of a metal material (for instance, see layer 40, par 0038 indicates layer 40 can be Cr, see layer 38 and par 0044 indicating the top layer 38 can be Cr) and can include a layer formed of an oxide (see layer 35, 0036, layer 48, 0049).
Note that layer 48 formed of an oxide can be tantalum oxide (Ta2O5), titanium oxide (TiO2) or even zirconium oxide (ZrO2) (0049).
Regarding claim 8: ‘213’s Figures shows that a topcoat film 48 can be on a surface of a decorative multilayer film.
Regarding claim 9: The limitations of claim 9 refer to the intended use of the preamble of claim 1 and as discussed, it has been held by the courts that in intended use, if the prior art is capable of such use, the claim will be met. In the instant case, as ‘213’s coated base material meets the structure claimed, it would be expected to have the same capabilities of use as a dial or component of movement as claimed.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a1 and a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPub20040142213 as applied to claim 5 above.
Regarding claim 7: The layer 35 formed of an oxide can be a refractory metal oxide (0036). Note that although par 0036 may only recite the layer being a refractory metal oxide without explicitly specifying in this paragraph what specific metal, given that ‘213 suggests throughout their disclosure when referring to “refractory metals” as being metals including hafnium, tantalum, zirconium, titanium (see par 0029 and 0049 for instance), one skilled in the art would reasonably conclude, or at the very least find it obvious, that the refractory metal oxides referred to for layer 35 being that of hafnium oxide, tantalum oxide (Ta2O5), titanium oxide (TiO2) or even zirconium oxide (ZrO2).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20040142213 as applied to claim 1 above, in view of either one of USPub20110123815 or USPub20100086756.
Regarding claim 10: While ‘213 may not explicitly disclose a watch comprising the coated base material of claim 1, note that ‘213 does not exclude such an article and instead, only generally suggests that their coated base material being a metallic article such as stainless steel, brass, etc. with their decorative coating having corrosion resistance, etc. thereon (see 0004, 0009). As such, it would have been well within the skill in the art to look to the prior art to determine desirable applications for such an article.
As it is well suggested in the art that watch components are metallic articles including stainless steel, brass, etc. wherein decorative coatings having corrosion resistance are desirably coated thereon (see for instance 0004, 0015, 0143 in ‘815, abstract, 0002, 0004, 0009 in ‘756), one having ordinary skill at the time of invention would have found it obvious to modify ‘213 to include a watch including their metallic coated with decorative coating thereon for aesthetics while providing corrosion resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN ROBINSON COLGAN whose telephone number is (571)270-3474. The examiner can normally be reached Monday thru Friday 9AM to 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN ROBINSON COLGAN
Primary Examiner
Art Unit 1784
/LAUREN R COLGAN/Primary Examiner, Art Unit 1784
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