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 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) 1-5, 7-10, 14-16, and 20-21, is/are rejected under 35 U.S.C. 103 as being unpatentable over Lambert Oberson et al. (U.S. Patent Application Publication 2023/0015564), in view of Godiker et al. (U.S. Patent Application Publication 2022/0273403). Regarding Claim 1, Lambert Oberson et al., hereafter “Lambert Oberson” show that it is known to carry out a method for manufacturing a watch component with a colour gradient by uniaxial pressing (Abstract), said method comprising the following steps: preparing at least a first ceramic material and a second ceramic material, the first ceramic material differing in colour from the second ceramic material (0008); preparing a filling shoe (0009-0010, compression tool); preparing the mold and filling the mold with the mixed materials deposited in the mold (0009-0010); and compacting the mixed materials to form a green body (0011); debinding the green body to obtain a brown body (0038); sintering the brown body to form an blank part to obtain the ceramic part with a colour gradient (0012); machining the resulting blank to obtain an external or moving watch component (0013-0014, 0024). Lambert Oberson does not show a mold with compartments. However, it would have been obvious to one of ordinary skill to fashion a mold with the desired shaping areas, including various cavities or designs, because configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (MPEP 2144.04 (IV)(B)). Lambert Oberson shows different coloured materials which form a desired design of the article (0024, 0035), but he does not show two materials mixed in varying weight ratios. Godiker et al., hereafter “Godiker,” show that it is known to make a ceramic article by preparing a plurality of mixed materials in which wherein the first ceramic material and the second ceramic material are mixed in different weight ratios while varying the weight ratio to form a desired colour gradient (0009, 0011, 0050, 0056; depositing the materials in the compartments of the mold in ascending or descending order according to the weight ratio (0051, 0060; Table 1). It would have been obvious to use Godiker’s method of forming differently colored sections by varying weight ratio of a material during Lambert Oberson’s method in order to be able to use less distinct materials.
Regarding Claim 2, Lambert Oberson shows the method of claim 1 above, including one wherein the first ceramic and second ceramic material comprise a zirconium oxide powder (0023).
Regarding Claim 3, Lambert Oberson shows the method of claim 1, including one wherein the first ceramic material and the second ceramic material each comprise a different pigment (0023).
Regarding Claims 4-5, Lambert Oberson shows the method of claim 1 above, but he does not show the specifically claimed pigment. Godiker shows the method of claim 1, including one wherein the pigment is a metal oxide (0011), an iron oxide (0014). It would have been obvious to use Godiker’s specific pigment as that in Lambert Oberson’s method because there is art recognized suitability for using such a pigment in the processing of ceramic articles (MPEP 2144.07).
Regarding Claim 7, Lambert Oberson shows the method of claim 1, including one wherein the first and second ceramic powders each comprise a binder (0023).
Regarding Claim 8, Lambert Oberson shows the method of claim 1, including one wherein the debinding step consists of thermal debinding (0038).
Regarding Claims 9 and 20, Lambert Oberson shows the method of claim 1, including one wherein the sintering step is carried out at 1400C and for a time of 48 hours (0045). Lambert Oberson’s time range is outside of applicant’s time range, but it would have been obvious to one of ordinary skill in the art to adjust the time range based on specific materials and desired physical characteristics which arise based on varying sintering time lengths because where the general conditions of a claim are disclosed by the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2144.05 (II)(A)).
Regarding Claim 10, Lambert Oberson shows the method of claim 1 above, including one wherein the sintering step is carried out in an oxidizing environment (0045).
Regarding Claim 14, Lambert Oberson shows the method of claim 1 above, including one method of claim 1, wherein the watch component is the moving part (0024).
Regarding Claim 15, Lambert Oberson shows the method of claim 1 above, including one wherein the watch component is a middle, back, bezel, or bezel insert (0024).
Regarding Claim 16, Lambert Oberson shows the method of claim 1 above, including one wherein the ceramics are of different colors, one of which being black (0024), and describes that colors can be chosen based on desired decoration (0025). Lambert Oberson does not specifically describe turquoise blue, however it would have been obvious to choose turquoise blue as the second color in order to satisfy specific customer requirements about the desired decoration of the final article.
Regarding Claim 21, Lambert Oberson shows the method of claim 1 above, including one wherein the first ceramic material and/or the second ceramic material comprise nitrides, carbides, and oxides (0023: it is interpreted that this disclosure reasonably implies the claimed nitrides, carbides, and oxides).
Claim(s) 6 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Lambert Oberson, in view of Nagayama et al. (CN 105849064, translation attached).
Regarding Claims 6 and 17, Lambert Oberson shows the method of claim 4 and 1, respectively, above, but he does not show using a spinel pigment. Nagayama et al., hereafter “Nagayama,” show that it is known to make a zirconia body with pigment variations, wherein the pigment is a cobalt/aluminum spinel (pg 5, para 6). It would have been obvious to use Nagayama’s cobalt/aluminum spinel pigment as that in Lambert Oberson’s method because there is art recognized suitability for spinel pigments in ceramic bodies (MPEP 2144.07).
Regarding Claim 18, Lambert Oberson shows the method of claim 1 above, but he does not show using the specific pigment. Nagayama shows that it is known to make a zirconia body with pigment variations, wherein the pigment is a manganese oxide (claim 9). It would have been obvious to use Nagayama’s manganese oxide pigment as that in Lambert Oberson’s method because there is art recognized suitability for spinel pigments in ceramic bodies (MPEP 2144.07).
Regarding Claim 19, Lambert Oberson shows the method of claim 1 above, but he does not show using the specific pigment. Nagayama shows that it is known to make a zirconia body with pigment variations, wherein the pigment is a cerium oxide (pg 4, last paragraph; pg 13, 3rd paragraph). It would have been obvious to use Nagayama’s cerium oxide pigment as that in Lambert Oberson’s method because there is art recognized suitability for spinel pigments in ceramic bodies (MPEP 2144.07).
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.
Claims 1-5, 7, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 7-9 of copending Application No. 18/894104 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because there are only small variances between wording (e.g. filling shoe versus impression, compartments versus grid) and otherwise the claims are drawn to the same invention, so the instant claims are not patentably distinct from the ‘104 claims as they are effectively anticipated by the ‘104 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to the prior art rejection of claim(s) 1-10 have been considered but are moot because the arguments are drawn to the claims as-amended which required further consideration and search.
Regarding the rejection under Double Patenting, applicant contends that ‘104 does not mention preparing a filling shoe fitted with compartments. This is not persuasive because this feature is interpreted to be taught by ‘104’s “preparing an impression; placing a grid in the impress to form compartments in the impression”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MONICA HUSON whose telephone number is (571)272-1198. The examiner can normally be reached M-F 8a-4p.
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MONICA ANNE HUSON
Primary Examiner
Art Unit 1742
/MONICA A HUSON/Primary Examiner, Art Unit 1742
