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 § 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 5-13 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, 8 and 11 recite the limitation "the undercoat" in claim 1. There is insufficient antecedent basis for this limitation in the claim. Claims 6-7, 9-10 and 12-13 are rejected as being dependent on claims 5, 8 or 11.
Claim 7 further contains the limitation “wherein each layer n of the stack has pigments with a d90 percentile equivalent to n * k/10 µm, where k is a homothetic factor between the d90 percentile of the pigments in two consecutive layers of the stack”. It is not clear what a “homothetic factor” (k) refers to and given that there is no value given for the term, the formula appears to not have a definite upper and lower boundaries. For example, for a n value of 2 (i.e. the second layer in the multilayer coating), the d90 value of the second layer can be any smaller or larger number depending on the value of “k” which is not explicitly defined. As such, the metes and bounds of the claim are unclear and the claim is indefinite under 35 U.S.C. §112(b).
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2, 4-12 and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gontani et al. (EP 3 862 101) (cited in the IDS filed on 11/06/2024), as evidenced by Susonity (Xirallic T60-21 Technical data sheet) and Jeschenko et al. ( J. Appl. Polym. Sci. 2024, 141(43), e56144. https://doi.org/10.1002/app.56144)
Regarding claim 1, Gontani et al. discloses a multilayer coating film comprising a first layer (X), a second layer (Y) and a clear layer (Z). (Abstract). The coating film is applied to a substrate (base material ). (par. [0080]). Gontani et al. discloses a specific example wherein the first layer includes a pigment dispersion of X-1 for the first layer and a pigment dispersion Y-3 (see Table 7, Example 4) wherein X-1 is a dispersion containing Raven 5000 Ultra III Beads (par. [0100], Table 1-2) and Y-3 is a pigment dispersion of Xirallic T60-21 WNT (Table 4, Table 6-7). The layers include resin binder materials. (par. [0018]-[0019]).
Susonity demonstrates that Xirallic T60-21 has a pigment having a d90 particle diameter of 26-36 micrometers (page 1) and Jeschenko et al. discloses that Raven 5000 Ultra III Beads have primary particles of about 30 nm in diameter with aggregates in the range of 200-1000 nm. (page 4, Results and Discussion). Where a prior art specific example discloses a claimed range, the prior art anticipates that range. MPEP 2131.03.I. Therefore, Gontani et al. implicitly discloses a coating comprising pigments of different particle sizes, as claimed.
Regarding claim 2, the first layer in Example 4 of Table 7 would have pigments of nano and micrometric dimensions, as discussed above.
Regarding claim 4, the first coating containing Raven 5000 Ultra III Beads would meet the limitation of “an undercoating” and would include the particles having a d90 in the nanometer range.
Regarding claims 5-6, the first and second layers would include successive layers superimposed on one another wherein the d90 of the second layer (containing Xirallic T60-21) would be in the micrometer range which is different than the d90 of the first layer containing Raven 5000 Ultra III Beads in the nanometer range.
Regarding claim 7, the second layer would satisfy the percentile equivalent formula of claim 7, given that n= 2 and there would inherently exist a “homothetic factor” in difference in particle size such that a value of “k” exists.
Regarding claims 8-10, the layers would inherently cover a predetermined portion of the substrate or undercoating and the layer containing Xirallic T60-21 would be micrometric in size. (See rejection of claim 1, above.
Regarding claims 11-12, as disclosed in Jeschenko et al., Raven 5000 Ultra III Beads form agglomerates ranging in sizes of 200-1000 nm (page 4, Results and Discussion) and therefore are composed of pigments of different primary particle size.
Regarding claims 14-15, Gontani et al. teaches a binder material including epoxy polymers, polyurethanes and polyacrylics. (par. [0018]).
Regarding claim 16, the pigments in Example 4 of Table 7 are carbon black containing layers.
Regarding claim 17, the first coating has a lightness of less than 20. (par. [0012]).
Regarding claims 18-19, the limitation “timepiece component” does not impart additional structural features to claim 1. The multilayer coated substrate material would therefore meet the limitation of a “timepiece component” since it would be capable of being used as presently claimed.
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gontani et al. (EP 3 862 101) in view of Nguyen et al. (EP 2 059 388).
Gontani et al. is relied upon as described in the rejection of claim 1, above.
Gontani et al. does not disclose the presence of glass beads in the multilayer coating.
Nguyen et al. teaches a decorative/information containing label which contains polymer layer having therein several types of pigments, for rendering a portion of the label visually discernible, including metallic pigments, metallized glass beads, unmetallized beads for retroreflective properties, inorganic pigments such as carbon black and organic pigments such as azo pigments. (Abstract, par. [0023]-[0025]).
It would have been obvious to one of ordinary skill in the art to include glass beads into the coating composition of Gontani et al.
One of ordinary skill in the art would have found it obvious to include glass beads into the coating composition of Gontani et al. to rendering a portion thereof visually discernible from the rest of the coating including by coating a with a reflective metallic layer or absent a metallic coating for use as a retroreflective pigment, as taught in Nguyen et al.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Gontani et al. (EP 3 862 101) in view of Bernhardt et al. (U.S. Pat. No. 5,286,291).
Gontani et al. is relied upon as described in the rejection of claim 1, above. In addition to the rejection of claim 11 above based on the use of Raven 5000 Ultra III Beads, claim 11 is further rejected as follows:
Bernhardt et al. teaches pigments containing carbon black having improved abrasion resistance comprising a platelet-shaped substrate with carbon black particles fixed onto the substrate by means of a surfactant and organosilane. (Abstract). These pigments are “aggregates” as claimed and the platelet has a larger particle size than the carbon blacks. (Example 1: mica particles are micron sized, col. 4, lines 3-5: carbon black are nanosized).
It would have been obvious to one of ordinary skill in the art to use the pigment material disclosed in Bernhardt et al. in one or more of the coating compositions in Gontani et al.
One of ordinary skill in the art would have found it obvious to use the pigments as disclosed in Bernhardt et al. in view of the improved properties thereof including abrasion and bleeding resistance, as disclosed in the secondary reference.
Regarding claim 12-13, the pigments of Bernhardt et al. would have d90 diameters in both micrometric and nanometric sizes and the carbon blacks are chemically grafted to the surface of the platelets via organosilanes. (Abstract, Example 1, col. 4, lines 3-5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 08/29/2026
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