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 with traverse of Group I claims 1-4, 7-11 and 18-23 in the reply filed on 03/04/2026 is acknowledged. The traversal is on the ground(s) that with respect to inventions I, and II, independent claim I (of invention I) is directed towards a solid composite material, independent claim 12 (of invention II) is directed towards a method for producing a solid composite material. In other words, although slight differently worded preambles, all have to do with a solid composite material. Furthermore, because inventions I and II are all related, not distinct, and have similar characteristics as described above, and can be classified in the same class C04B35/01, there would be no serious burden placed on the examiner if election were not required.
This is not found persuasive because
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/04/2026.
Claim Objections
Claims 18-20 are objected to because of the following informalities: In claims 18-20, in order to ensure proper antecedent basis, Applicant is advised to change “a” solid composite material to “the” solid composite material. Appropriate correction is required.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 18 is 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 18 provides for the use of composite material, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Further, claim 18 is also rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
It is suggested that “A use” of should be changed to “a process of using”
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.
Claims 1-4, 7-11, 18-21, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Fink-Petri et al. (US 2008/0026207) in view of Hirai et al. (US 2016/0085169).
Regarding claims 1-3, 18-20 Fink-Petri discloses pigmented ceramic in which the pigment is comprised of nanoparticles based on a metal from column IB of the periodic table of the elements or of an alkaline metal, or an alloy of both, coated with a layer of silica (abstract). The metals from column IB of Mendeleev's periodic table of the elements, named class 11 according to the presentation, include copper, silver and gold (paa 0008 and claim 7), where the gold and silver corresponds to the first type and second type of particles of inorganic core. The ceramic is zirconia (claim 7), where the zirconia corresponds to the matrix which would intrinsically be adapted to allow light to pass through and would prevent interactions between the colored cores during sintering and contains discrete particles. The average particle diameter of the pigmented particles in the range of 0.1-0.2 microns (para 0020).
However, Fink-Petri fails to disclose that the shell coating is one of mica, alumina, zirconia and titanium dioxide which is adapted to prevent interactions between the colored cores during sintering.
Whereas, Hirai discloses brilliant pigment includes a metal pigment, a first coating layer that coats a surface of the metal pigment and includes at least one metal oxide selected from the group consisting of silica, alumina and titania (claim 7). Examples of the brilliant pigment include, but are not particularly limited to, as long as the pigment particles have brilliance, metal powders, such as aluminum, brass, bronze, nickel, stainless steel, zinc, copper, silver, gold, and platinum (para 0031), where alumina or silica corresponds to the coating being adapted to allow light to pass through.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include alumina or titania as taught by Hirai in the shell layer of Fink-Petri motivated by the desire to have improved optical properties and decorative appearance.
Although Fink-Petri in view of Hirai does not disclose matrix being a sintered material, it is noted that “[E]ven though product-by-process claims are 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) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Fink-Petri in view of Hirai meets the requirements of the claimed product, Fink-Petri in view of Hirai clearly meet the requirements of present claims of matrix based on metal oxide.
Regarding claims 18-20, While there is no disclosure that the solid composite material is used in an article of watchmaking or article of jewelry as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. article of watchmaking or article of jewelry, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art Fink-Petri in view of Hirai and further that the prior art structure which is a solid composite material identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 4, with respect to the inorganic pigment representing between 2-50% volume fractions, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges through process optimization motivated by the desire to get desired strength and physical and mechanical properties, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Fink-Petri et al. (US 2008/0026207) in view of Hirai et al. (US 2016/0085169) as applied to claim 7, further in view of Musick et al. (US 2015/0291778).
Regarding claim 22, Fink-Petri fails to disclose that the matrix is a glass selected from the group consisting of silicates, borosilicate and glasses used in the production of enamels.
Whereas, Musick discloses core shell composite inorganic metal oxide (corresponds to solid composite material of the present invention). The core comprises discrete inorganic particles of homogenous particle distribution. The core material may be of any metal oxide, metal compound, or mixed-metal oxide with particular attention to those metals that have been shown to promote thermal oxidative degradation (para 0019). Included are materials composed of an inorganic pigment core such as copper chrome oxide particle (para 0025). The core particles are in the range of 0.05-50 microns in diameter (para 0021). The resulting encapsulating shell may be a unique metal oxide or a mixture of metal oxides present as amorphous oxide mixtures, ceramic, or glass shells (para 0022).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to include glass shells as taught by Musick in the ceramic of Fink-Petri motivated by the desire to have chemical corrosion resistance and high hardness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONAK C PATEL whose telephone number is (571)270-1142. The examiner can normally be reached on M-F 8:30AM-6:30PM (FLEX).
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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