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 without traverse of Group I, claims 1-18, drawn to a method for manufacturing an external part, in the reply filed on 06/09/2026 is acknowledged. Claim 19 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Information Disclosure Statement
The information disclosure statement (IDS)s submitted on 10/23/2024 and 01/27/2026 have been considered by the examiner.
Claim Objections
Claims 10 and 18 are objected to because of the following informalities:
In claim 10, Applicant has been advised to replace “the reflective particles consist” in line 2 to -- the reflective particle filler consists --; and
In claim 18, Applicant has been advised to replace “the head” in line 4 to -- the decorative head --.
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 5-7 and 15 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 5 recites the limitation “a decorative head (120) connected to an anchoring foot (121) specific thereto” in lines 3 and 4. It renders indefinite since it is unclear whether it is meant to be the at least one decorative head (120) connected to the anchoring foot (121) recited in the referred claim 1 or an additional/new decorative head (120) connected to an additional/new anchoring foot (121). For the compact prosecution, Examiner has interpreted it as the former.
The remaining dependent claims 6 and 7 are also rejected under 112 (b) because they depend from, and thus include all the limitations of rejected claim 5.
Claim 15 recites the limitation “the walls of the mould” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1-5, 8-12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya (JP 2019/158817A_Machine Translation provided herewith) in view of Reinauer et al. (US 2021/0088209A1). Additional supporting evidence provided herewith by Vulcan Plastics (“What is Polycarbonate & is Polycarbonate a Plastic | Vulcan Plastics”, 06/05/2023).
With respect to claims 1 and 5, Tsuchiya teaches a method for manufacturing an external part (“method for manufacturing the watch face 2”, Pa [0064]) comprising the steps of:
producing a substrate (“the dial body 3”) comprising a cavity (“through hole 32”, Pa [0065]) (“the dial body 3 and the typesetting connector 6 are prepared.”, Pa [0064]),
producing, by moulding, a decorative element (“the typesetting connector 6”) made of a transparent polymer material (“resin material 6'”, Pa [0059]; “polycarbonate…”, Pa [0040]), wherein the decorative element (“the typesetting connector 6”) is formed so as to have at least one decorative head connected to an anchoring foot (“the manufacturing method of the typesetting connector 6”, Pa [0056]-[0063]; “the typesetting connector 6 is formed using a mold 30, preferably by injection molding.”, Pa [0041]) (See the annotated Fig. 6 below), and
fastening the decorative element in the cavity so that the anchoring foot cooperates with the cavity in a form-fitting manner (“the typesetting connector 6 is placed on the back side of the dial body 3, and each clock typesetting 4 of the typesetting connector 6 is inserted into the through hole 32 of the dial body 3 corresponding to each clock typesetting 4. As a result, each clock indice 4 fits into the through hole 32, and thus the indice connector 6 is fixed to the dial body 3.”, Pa [0065]).
PNG
media_image1.png
494
1321
media_image1.png
Greyscale
Fig. 6
Tsuchiya teaches the decorative element (“the typesetting connector 6”) made of a transparent polymer material (“resin material 6'”, Pa [0059]; “polycarbonate…”, Pa [0040]), but is silent to having a reflective particle filler.
In the same field of endeavor, watchmaking, Reinauer teaches that decorative item 1 comprises an element 3 made of a polymeric material in which one or more optical fibres 2 are arranged and at least one light source 4 external or internal to element 3 (Pa [0011]), the optical fibres are embedded in a polymer matrix, and the polymer matrix optionally comprises fillers making it possible to change the mechanical properties of the material, the colour, density of the material, to make the material luminescent and/or to opacify the polymer if necessary (Pa [0016]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Tsuchiya with the teachings of Reinauer to provide the fillers with the resin material in order to change the mechanical properties of the material, the colour, density of the material, to make the material luminescent and/or to opacify the polymer if necessary.
With respect to claim 2, Tsuchiya as applied to claim 1 above further teaches that the decorative element is produced by injection moulding, with the anchoring foot being formed by an injection sprue (“the typesetting connector 6 is formed using a mold 30, preferably by injection molding.”, Pa [0041]; “At gate 304, the connecting portion 5 (gate 7) is formed…Runner 8 is molded on runner 305.”, Pa [0058]).
With respect to claim 3, Tsuchiya as applied to claim 1 above further teaches that in the decorative element production step, the decorative element is produced in such a way that the anchoring foot forms a support structure connecting a plurality of decorative heads together (See the annotated Fig. 6 above).
With respect to claim 4, Tsuchiya as applied to claim 3 above further teaches that an opaque layer (“a plating layer 9”) is deposited on the anchoring foot (“a plating layer 9 is formed over the entire typesetting connector 6.”, Pa [0061]; “The plating layer 9 is preferably composed mainly of chromium, i.e., chromium plating, but is not limited to this. For example, it may be composed of nickel plating, chromium, nickel, iron, or an alloy plating containing other metals.”, Pa [0052]) by a vacuum thin-film deposition method (“a dry plating method”, Pa [0061]) during the decorative element production step.
With respect to claim 8, Tsuchiya as applied to claim 1 above further teaches that in the decorative element production step, the polymer material is a thermoplastic chosen from a polycarbonate or a polyamide (Pa [0040]).
With respect to claim 9, Tsuchiya as applied to claim 1 above further teaches that in the decorative element production step, the polymer material (“polycarbonate”, Pa [0040]) is chosen, and Vulcan Plastics (provided as an additional supporting evidence) teaches that polycarbonate has an optical transmission coefficient of greater than 80% (“Is polycarbonate a plastic? Yes. It is also known as one of the most transparent of plastics, with an 85%~88% visible light transmission rate on clear sheets”, li 3-4).
With respect to claim 10, Reinauer as applied in the combination regarding claim 1 above further teaches that in the decorative element production step, the reflective particles consist of flakes of metallic material (“inorganic fillers such as metallic … powders”, Pa [0016]).
With respect to claim 11, Reinauer as applied in the combination regarding claim 1 above further teaches that the polymer matrix can thus comprise one or other of the fillers, alone or in combination provided that the percentage by mass of the fillers does not exceed 90% by mass of the polymer matrix (Pa [0016]), but is silent to the claimed range of being less than 1%. However, the one before the effective filing date of the claimed invention would consider the invention to be obvious because the range of the percentage by mass of the fillers taught by Reinauer overlap the instantly claimed range and therefore are considered to establish a prima facie case of obviousness. (See MPEP 2144.05 (I)).
With respect to claim 12, Tsuchiya as applied to claim 1 above further teaches that in the step of producing the decorative element, a thin reflective layer is deposited on at least one face of the decorative element intended to rest facing the cavity in the substrate (“a plating layer 9 is formed over the entire typesetting connector 6.”, Pa [0061]; “The plating layer 9 is preferably composed mainly of chromium, i.e., chromium plating, but is not limited to this. For example, it may be composed of nickel plating, chromium, nickel, iron, or an alloy plating containing other metals.”, Pa [0052]).
With respect to claim 16, Reinauer as applied in the combination regarding claim 1 above further teaches that a step of polishing the decorative head (“the part is machined and polished”, Pa [0017]). Even though the combination is silent to faces of the decorative head having a mirror-polished surface finish, one would have found it obvious to form the faces of the decorative head having a mirror-polished surface finish by polishing for the purpose of decorative effect.
With respect to claim 17, Reinauer as applied in the combination regarding claim 1 above further teaches that in the decorative element production step, a photoluminescent particle filler (“Photoluminescent pigments”) is incorporated into the polymer material (Pa [0016]), but is silent to the claimed range of being less than 1%. However, the one before the effective filing date of the claimed invention would consider the invention to be obvious because the range of the percentage by mass of the fillers taught by Reinauer overlap the instantly claimed range and therefore are considered to establish a prima facie case of obviousness. (See MPEP 2144.05 (I)).
With respect to claim 18, Tsuchiya as applied to claim 1 above further teaches that in the decorative element production step, once the decorative element has been obtained by moulding (“the typesetting connector 6 is formed using a mold 30, preferably by injection molding.”, Pa [0041]), a thin layer is deposited on the faces of the head intended to rest facing the cavity in the substrate (“a plating layer 9 is formed over the entire typesetting connector 6”, Pa [0061]; “The plating layer 9 may be a laminate of two or more layers. In this case, for example, an example is a laminate comprising a first plating layer and a second plating layer having a different composition from the first plating layer.”, Pa [0053]), but does not explicitly teach that a thin layer of photoluminescent material is deposited on the faces of the head.
Reinauer as applied in the combination regarding claim 1 above teaches that the polymer matrix optionally comprises fillers making it possible to change the mechanical properties of the material, the colour, density of the material, to make the material luminescent and/or to opacify the polymer if necessary, the polymer matrix can thus comprise one or other of the fillers, alone or in combination, and preferably, the polymer matrix will comprise at least the inorganic filler (Pa [0016]), and further teaches that photoluminescent pigments can also be mentioned, added in an amount between 10% and 90% by mass (for example lanthanide doped strontium aluminates) to the resin to obtain luminescence in the dark after charging the material in the light (Pa [0016]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Tsuchiya with the teachings of Reinauer to provide additional layer made of polymer matrix and photoluminescent pigments on the decorative head to obtain luminescence in the dark after charging the material in the light.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya (JP 2019/158817A_Machine Translation provided herewith) in view of Reinauer et al. (US 2021/0088209A1) as applied to claim 5 above, and further in view of Hayashi (JP 2019/164044A-of record _Machine Translation provided herewith).
With respect to claims 6 and 7, Tsuchiya as applied to claim 5 above teaches that in the decorative element fastening step, the anchoring foot is bonded in the portion of the cavity with a complementary shape (“each clock indice 4 fits into the through hole 32, and thus the indice connector 6 is fixed to the dial body 3.”, Pa [0065]), but does not explicitly teach that the anchoring foot is bonded in the portion of the cavity.
In the same field of endeavor, a method for manufacturing a timepiece typesetting, Hayashi teaches that with the metal pin 43 inserted through the through hole 32 of the dial body 3, the portion (protruding portion 431) that protrudes to the back side of the dial body 3 can be plastically deformed, for example, by a crimping tool 20, and the deformed portion 432 formed by the plastic deformation of the protruding portion 431 can engage with the back side of the dial body 3, and this engagement secures the watch numerals 4 (precious stones 41) to the dial body 3 (Pa [0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Tsuchiya with the teachings of Hayashi to plastically deform the anchoring foot by a crimping tool in order to bond and secure the typesetting connector 6 to the dial body 3.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya (JP 2019/158817A_Machine Translation provided herewith) in view of Reinauer et al. (US 2021/0088209A1) as applied to claims 1 and 12 above, and further in view of Barbos et al. (US 2022/0299689A1).
With respect to claim 13, the combination as applied to claim 1 above does not explicitly teach that in the step of producing the substrate, a reflective layer is deposited in the cavity.
In the same field of endeavor, watchmaking or jewellery, Barbos teaches an external part having a predetermined interference colour resulting from the addition of destructive interference and constructive interference (Pa [0008]), and an external part comprising a substrate including a coating composed of an opaque or semi-opaque reflective layer, configured to have a reflectance of at least 90% for wavelengths comprised between 600 nm and 780 nm, a transparent or semi-transparent layer, having a refractive index comprised between 1.45 and 2.8 for a wavelength of 630 nm, and an absorbent layer (Pa [0009]-[0012]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination with the teachings of Barbos provide the coating on the dial body 3 in order to give a predetermined interference colour resulting from the addition of destructive interference and constructive interference.
With respect to claim 14, the combination as applied to claim 12 above does not explicitly teach that the thin reflective layer is deposited by a vacuum deposition method and is made of SiO2 or TiO2.
In the same field of endeavor, watchmaking or jewellery, Barbos teaches an external part having a predetermined interference colour resulting from the addition of destructive interference and constructive interference (Pa [0008]), and an external part comprising a substrate including a coating composed of an opaque or semi-opaque reflective layer, configured to have a reflectance of at least 90% for wavelengths comprised between 600 nm and 780 nm, a transparent or semi-transparent layer, having a refractive index comprised between 1.45 and 2.8 for a wavelength of 630 nm, and an absorbent layer (Pa [0009]-[0012]). Barbos further teaches that the deposition of the reflective, transparent and absorbent layers is carried out by a method of physical vapour deposition with electron gun evaporation (Pa [0036]), and the transparent layer 122 is made of SiO2, in particular for economic reasons, ease of implementation and repeatability (Pa [0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination with the teachings of Barbos to provide the coating on the dial body 3 in order to give a predetermined interference colour resulting from the addition of destructive interference and constructive interference.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya (JP 2019/158817A_Machine Translation provided herewith) in view of Reinauer et al. (US 2021/0088209A1) as applied to claim 1 above, and further in view of Ko (KR 950006708Y1_Machine Translation provided herewith).
With respect to claim 15, Reinauer as applied in the combination regarding claim 1 above further teaches that a step of polishing the decorative head (“the part is machined and polished”, Pa [0017]), but does not explicitly teach that when the decorative element is moulded, the walls of the mould intended to form the decorative head have a mirror-polished surface finish.
In the same field of endeavor, method of forming a precious metal, Ko teaches that after polishing the surface 4a of the die 4 heat-treated as described above, gold, which is an example of the noble metal 1, is melted and injection molded, so that the precious metal 1 corresponding to the surface 4a of the mold 4 is melted, the surface 1a has a gloss treatment capable of reflecting light, and this work eliminates the work process of polishing the precious metal surface by injection molding precious metals (rings and bracelets) that can be mass-produced in such a way, and reduces the surface profile of the pattern by polishing the precious metals (pg 2 li 10-11, 14-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the combination with the teachings of Ko to perform polishing and heat-treating the surface of the mold and injection molding the typesetting connector in order to obtain the typesetting connector having the polished surface by injection molding without further the work process of polishing the molded typesetting connector.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUNJU KIM whose telephone number is (571)270-1146. The examiner can normally be reached 8:00-4:00 EST M-Th; Flexing Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached on 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YUNJU KIM/Primary Examiner, Art Unit 1742
Prosecution Insights