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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
fig. 1d-1e, “1”
The drawings are further objected to because:
fig. 1a, cross section line not shown
fig. 1a-1e, contain multiple views in the same figure (perspective and cross section)
The following is an excerpt from the MPEP § 608.02(V):
V. DRAWING STANDARDS
(h) Views.
(3) Sectional views. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic or Roman numerals corresponding to the view number of the sectional view, and should have arrows to indicate the direction of sight.
(i) Arrangement of views. One view must not be placed upon another or within the outline of another. All views on the same sheet should stand in the same direction and, if possible, stand so that they can be read with the sheet held in an upright position.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The term “external timepiece component” (claims 10-11) is being interpreted to mean “an external component chosen from the non-exhaustive list that includes a middle, a back, a bezel, a crown, a push-piece, a bracelet link, a bracelet, a tongue buckle, a clasp, a dial and a hand” in accordance with para. [0016] of the specification.
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.
Claims 1-13 rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 1 recites the broad recitation “machining”, and the claim also recites “preferably by grinding” which is the narrower statement of the limitation.
Claim 2 recites the broad recitation “a further machining step”, and the claim also recites “preferably by grinding” which is the narrower statement of the limitation.
Claim 6 recites the broad recitation “the number of layers of enamel deposited is between 2 and 15”, and the claim also recites “preferably between 3 and 10” which is the narrower statement of the range.
Claim 9 recites the broad recitation “an enamel thickness greater than or equal to 0.5 mm”, and the claim also recites “preferably greater than or equal to 0.8 mm” which is the narrower statement of the range.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is: (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 recites the limitation "the steps" in ln. 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim 9-11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by J.X. Su (“Watches by SJX” NPL, cited on 03 March 2025 IDS, hereinafter Su).
Regarding claim 9, Su discloses a plique-à-jour decorative element (a dial) for use in a timepiece, comprising a front and rear surface and a through-decoration with an overall thickness greater than 0.8mm (the plique-à-jour dial adds 2.58 mm in thickness to the 9.1mm base version of the timepiece without the plique-à-jour decoration for a total thickness of 11.68mm).
Regarding claim 10, Su discloses that the decorative element is a dial.
Regarding claim 11, Su discloses that the decorative element is a dial.
Allowable Subject Matter
Claims 1-8 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action.
Claims 12-13 are objected to as being dependent on a rejected base claim, however the claims contain subject matter which would be allowable if incorporated into independent claim 9.
The following is a statement of reasons for the indication of allowable subject matter:
No prior art was found wherein a decorative element for a timepiece comprising a decorative enamel element is manufactured by creating a mold-like cavity in a component blank, depositing one or more layers of enamel which are then individually fired before the bottom surface of the mold-like cavity is machined away to create a light-transmitting plique-à-jour element.
The closes prior art includes: Su.
Regarding claim 1, Su discusses a plique-à-jour decorative element for use in a timepiece, namely the dial. However, the plique-à-jour dial of Su is not a manufactured component, but is rather hand-made by artisans and is not machined to remove the back surface of a mold during the process of making.
No prior art was found which teaches or suggests, alone or in combination, the distinguishing features discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jaquet Droz (New Flight of the Hummingbird” NPL) – Discloses another implementation of a plique-à-jour dial for a timepiece. However, as with Su, the dial for the timepiece is hand-made by an artisan and unmachined.
Buttet (US 20170031321) – Discloses a method for manufacturing a timepiece with a dial having a stained-glass effect similar to plique-à-jour. However, the effect is achieved with class and ceramic objects held in a skeleton framework rather than an enamel decoration created via a mold and machining process.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WALKER whose telephone number is (571)270-7599. The examiner can normally be reached from 8:00 AM - 4:00 PM ET Monday through Friday.
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, Renee Luebke can be reached at (571)272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JAMES WALKER/Examiner, Art Unit 2831
/EDWIN A. LEON/Primary Examiner, Art Unit 2831
