DETAILED ACTION
After the restriction requirement filed on August 24 ,2026, claims 1 – 13 are pending. Claims 10 – 13 have been withdrawn from consideration.
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 – 9 and Species I-A-1: ALD Technology in the reply filed on August 24 ,2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
The claim(s) contain a references to ALD, which appears to reference atomic layer deposition. As an acronym that can mean many things at face value, it is inappropriate to place within a claim without clarification as it obfuscates clear and apparent understanding of the claim. 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 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 1:
Claim 1 recites a step of preparing (22) a coloured enamel composition constituting the coloured enamel plating of said watch component (2), said step (22) involving the encapsulation (24) of colour pigments in transparent protective shells made of inorganic material and the mixing (25) of said encapsulated colour pigments with an enamel preparation. It is unclear whether the limitations after “involving” is to be a broad substep of the preparation of the recited coloured enamel composition, describing reagents or objects that are to be manipulated in the preparation step, or an intended result of a set of unrecited substeps. For the purpose of art rejection, the Examiner interprets the step as either requiring steps of encapsulating color pigments into transparent shells followed by mixing of color pigments with an enamel preparation; or requiring the preparing of the recited colored enamel composition results in a mixture of encapsulated color pigments, without necessarily requiring an act of encapsulating color pigments (e.g. a step of providing encapsulated pigments).
Additionally, claim 1 recites “at least one layer of prepared coloured enamel layer”. There is a lack of antecedent basis for the limitation as it is whether the “prepared coloured enamel layer” refers to the result of the “preparing ..” step or another unrecited step that results in a prepared enamel composition. The deficiency can be cured by adding the article “the” before “prepared cooured enamel composition …”.
Regarding claim 3:
The present wherein clause is written in passive voice and does renders unclear whether the wherein clause is directed to a functionality or intention of the method as a whole, a functionality, intention or end result of a particular manipulative act positively recited by the claimed method. Additionally, the claim requires the “use” of “ALD technology” but does not recite what is considered ALD technology and its use. Does it mean the use of the apparatus commonly associated with atomic layer deposition? The act of performing an atomic layer deposition process? Lastly, how does one apply a “process” to an entire surface of each color pigment?
Dependent claims not enumerated above are rejected on the basis of their parent claims.
Claim Rejections - 35 USC § 103
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.
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 1, 2, 6, 8, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0244326 JeanRenaud A1 (hereinafter “JeanRenaud”) in view of Kuntz et al. US 5753026 A (hereinafter “Kuntz”).
Regarding claims 1, 2, 6, 8, 9:
JeanRenaud is directed to an enameled part for a dial comprising a ceramic substrate coated with a first enamel layer [plating] (Abstract; Fig. 1). Kuntz discloses a method of decorating an enameled part for a dial [watch component] comprising ([0012] – [0023]; Claims 9, 11):
providing a ceramic-based substrate having a first enamel layer ([0013]);
selectively forming [applying] another enamel layer of the first enamel layer [receiving zone] by applying a precursor solution comprising pigments and enamel powder in oil [enamel preparation] ([0014], [0050]); and
transforming [firing] the precursor into enamel ([0014], [0018] – [0020]).
JeanRenaud does not expressly teach the step of preparing a coloured enamel composition involves the encapsulating of pigments in transparent shells (in view of the indefiniteness of the claims) made of inorganic materials.
Kuntz is directed to a reaction spray process for preparing inclusion pigments onto substrates, and in particular as glaze pigments, e.g. spinel color pigments [brightly colored, e.g. ruby-colored] in the decorative firing of ceramics (Abstract; col 1 lines 15 – 35, col 3 lines 30 – 35). Kuntz discloses that their process coats pigments in inclusion materials (Claim 1; col 5 line 60 – col 6 line 5). The inclusion materials comprises a coating of silicon oxide, zirconium oxide, ect [meeting claim 2] on the pigments (col 1 lines 20 – 35, col 3 lines 1 – 35). The coatings may be of a substantially uniform thickness (col 3 lines 20 – 30, col 6 lines 15 – 35) By coating the pigments in the inclusion materials, agglomeration of particles of pigment is avoided.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of JeanRenaud by including a step of preparing colored pigments with transparent protective shells and include such coated pigments in the enamel powder and oil –thus preparing the composition – because JeanRenaud teaches that encapsulating color pigments in a transparent shell helps prevent agglomeration of the pigments in one another.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over JeanRenaud in view of Kuntz as applied to claims 1, 2, 6, 8, 9 above, and further in view of King et al. US 2010/0326322 A1 (hereinafter “King”).
Regarding claim 3:
JeanRenaud in view of Kuntz does not expressly teach that the process for applying the metal oxide coating onto the pigment particles is by “ALD technology”.
In analogous art, King is directed to titanium dioxide pigment particles and methods of coating such particles by atomic layer deposition (ALD)(Abstract). King discloses that titanium dioxide particles can be coated with silicon dioxide coating layers. Like JeanRenaud, King discloses that ALD may be used for forming ultrathin, conformal coatings onto particles and prevent the agglomeration of the TiO2 particles ([0007]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Kuntz or the method of JeanRenaud in view of Kuntz by depositing the transparent SiO2 shells by ALD because as taught by King, such conformal shells help prevent the agglomeration of pigment particles.
Claim(s) 4, 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JeanRenaud in view of Kuntz as applied to claims 1 ,2, 6, 8, 9 above, and further in view of Sakoske et al. US 20160185657 A1 (hereinafter “Sakoske”).
Regarding claims 4, 5:
JeanRenaud in view of Kuntz does not expressly teach that the mass percent of the encapsulated color pigments is at most 30% or 50% of the coloured enamel composition.
Sakoske is directed to a multi-layer glass enamel. Sakoske discloses that it is known the the art that the opacity of enamels depends on the thickness of the applied enamel and the loading [mass percent] of pigment within the enamel ([0004]). The loading also affects the mechanical properties of the resulting enamel.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of JeanRenaud in view of Kuntz to include at most the claimed amounts of encapsulated colored pigments as a matter of routine experimentation in order to obtain a desired enamel opacity and maximimize mechanical properties as taught by Sakoske. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JeanRenaud in view of Kuntz as applied to claims 1,2,6, 8, 9 above, and further in view of Bourban et al. US 2006/0280040 A1 (hereinafter “Bourban”).
Regarding claim 7:
JeanRenaud in view of Kuntz does not expressly teach a finishing step comprising stone-cutting and polishing substeps.
In analogous arts, Bourban is directed to devices for assembling a tacticle or touch type crystal on a case, such as for wristwatches ([0002] – [0004]). Bourban discloses that as part of forming the wristwatch and device, enamel gets deposited and then subsequently machined [stone-cut] and polished as part of making surfaces of the enamel level with that of a crystal and other decorative features ([0014], [0031]; Claim 10).
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of JeanRenaud in view of Kuntz to include polishing and stonecutting steps as needed in order to render enamel layers even with other features and layers of a watch for aesthetic purposes, as suggested by Bourban.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
