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 .
Withdrawn Rejection
The objections to the claims 18-20, made of record in the office action mailed on 03/31/2026, page 3 have been withdrawn due to Applicant’s amendment in the response filed on 06/25/2026
The 35 U.S.C. §112, 2nd, rejection(s) of claim 18, made of record in the office action mailed on 03/31/2026, page 3, have been withdrawn due to Applicant’s amendment in the response filed on 06/25/2026.
The 35 U.S.C. §103, rejection(s) of claim 1-4, 7-11, 18-21 and 23, made of record in the office action mailed on 03/31/2026, page 5, have been withdrawn due to Applicant’s amendment in the response filed on 06/25/2026.
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) and Ogino et al. (JP 2968118).
Regarding claims 1-3, 7-11, 21, 23 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). 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 and the core comprises at least one particle of the inorganic pigment is an oxide of at least one element selected from iron, chromium, aluminum.
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.
Whereas, Ogino discloses substrate (A) composed of flaky inorganic pigment particles and a composite film covering the surface of the substrate (A) composed of the flaky inorganic pigment particles and comprising a zirconium / chromium-containing composite material A substrate (A) comprising a layer (B) and comprising the flaky inorganic pigment particles, wherein (1) a surface of a core comprising the inorganic flaky particles is at least selected from a metal, an alloy and a metal oxide (claim 1). The core body composed of particles comprises at least one selected from the group consisting of (a) mica flakes, (b) aluminum flakes, (c) amorphous alloy flakes, and (d) mica-like iron oxide (MIO) powder (claims 1-4).
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 and to include mica like iron oxide of Ogino in the nanoparticles of the pigment of Fink-Petri motivated by the desire to have improved barrier properties and anticorrosion characteristics.
Although Fink-Petri in view of Hirai and Ogino 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 and Ogino meets the requirements of the claimed product, Fink-Petri in view of Hirai and Ogino 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 Ogino 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.
Response to Arguments
Applicant’s arguments filed on 06/25/2026 have been fully considered, but they are moot in view of new grounds of rejections as stated above.
Conclusion
Applicants’ 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 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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