Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on July 29, 2025 has been entered.
DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on July 29, 2025 was received. Claims 1 and 4-7 were amended. Claims 2, 8-11 and 13 were canceled. No claim was added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued August 28, 2024.
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 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.
Regarding claims 5-7, the claims require an object (the electroconductive layer) to represent a percentage of the length of another object (the horological spring). The claim language does not require any particular aspect of the electroconductive layer to represent the percentage of the length of the horological spring. For example, the claim language does not require that it is the dimension of the electroconductive layer that represents a percentage of the length of the horological spring. The claim specifically recites the length of the horological spring but does not correspondingly limit the scope of the electroconductive layer, the scope of the claim is therefore ambiguous to what aspect of one object (the electroconductive layer) represents a percentage of the length of another object (the horological spring). Thus, the limitations of the instant claims are indefinite. The specification also does not describe the particular aspect of the electroconductive layer to represent the percentage of the length of the horological spring. For purpose of examination, the particular aspect of the electroconductive layer representing the percentage of the length of the horological spring is considered to be the length or width (dimension) of the electroconductive layer. However, Applicant should clarify what is intended, without adding new matter.
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, 3-7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Christan (US20170248918) in view of Brocher (WO2014023584A1), Williamson (US20100256289), Sarchi (US20160306324) and Watson (US5489417).
Regarding claim 1, Christan teaches a method of for attachment of a last outer coil of a timepiece balance spring 4 (oscillating system of a horological movement) inside a groove of a balance spring stud by applying a fluid adhesive, wherein the internal coil of the spring is attached by a collet 10 (a deposition method of an electroconductive layer on an oscillating system of a horological movement comprising a horological balance spring with at least one outer coil, a balance-spring stud, and at least one internal coil attached by a collet) (abstract, paragraphs 0004 and 0038). Christan teaches to provide the oscillating system (paragraph 0038). Christan teaches to deposit conductive UV adhesive by a dispenser to bond the balancing spring 4 to stud 14, and cure the UV adhesive to form a layer (paragraph 0043, see figure 2B) (depositing, by a dispenser, at least a first conductive layer connecting said at least one outer coil, said balance spring stud, the firs conductive layer).
Christan teaches the adhesive is conductive but does not explicitly teach it is electroconductive. However, Brocher teaches a method of eliminating electrostatic charge from a balance spring of an oscillating system of a timepiece movement (paragraphs 0001-0003). Brocher teaches to bond the outer coil of the balancing spring with a stud with electroconductive adhesive (paragraphs 0009, 0015-0016, 0030-0034). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the first electroconductive layer with the electroconductive adhesive to bond the outer coil to the stud as suggested by Borcher in the method of Christan because Borcher teaches such layer eliminates electrostatic charges that render the balancing spring unusable (paragraphs 0002, 0004 and 0009).
Christan teaches the adhesive is deposited in liquid form, and the dispenser is reasonable expected to be unidirectional as the liquid adhesive is dropped in the groove of the stud (see figures 2A and 2B, paragraph 0043), but Christan in view of Brocher does not explicitly teaches the dispenser is an atomizer. However, Williamson teaches a curable liquid adhesive (abstract) and discloses it is well known to dispense liquid adhesive by nozzle atomizer, which is conventionally unidirectional (paragraph 0068). In addition, it is known to dispense the atomized liquid with gas (sheathing gas). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dispense the liquid adhesive (first electroconductive layer) by atomizer as suggested by Williamson in the method of Christan in view of Borcher because Williamson teaches atomizer is known to be used for dispensing liquid adhesive (paragraph 0068). It is noted that the claimed limitation does not define “sheathing gas” or its function. Thus, any gas is considered to read on “sheathing gas”. Williamson teaches it is well known to dispense liquid adhesive by nozzle atomizer (paragraph 0068), and an atomizer would have to at least include a gas to propel the liquid out from the nozzle, and the air is surrounding liquid when it being sprayed, which would read on the limitation of sheathing gas. Nevertheless, Watson teaches a method of spraying metal component with atomizer (column 1 lines 5-30) and the atomizer is supplied with a pressurized gas to provide a protective atmosphere to prevent oxidation of the metal (column 1 lines 20-30, column 3 lines 8-13). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide sheathing gas in the atomizer as disclosed by Watson in the method of Christan in view of Brocher and Willamson because Watson teaches the gas can provide the atomized metal from being oxidized (column 1 lines 20-30 and column 3 lines 8-13).
Christan in view of Brocher and Williamson does not explicitly teach the first electroconductive layer is deposited on only the outside of the said at least one outer coil and an outside of said balance spring stud, wherein the outside of said at least one outer coil and the outside of said balance spring stud are both facing in a direction that is radially away from the inner spring. However, Sarchi teaches the attachment mechanism with adhesive being applied on the outside of the outer coil and outside of the balance spring stud and the outsides are facing in a direction that is radially away from the inner spring (see figures 1-4, and 15-16). Sarchi does not explicitly teaches the first electroconductive layer is in a strip. However, it is well settled that the configuration (shape) of the claimed device was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration (shape) of the claimed container was significant (MPEP 2144.04 IV). Thus, it would have been obvious to one of ordinary skill in the art to apply the electroconductive layer as a strip. In addition, the relative dimension of the strip is not defined in the claim, thus, it appears any type of layer would read on the limitation of strip. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the same attachment mechanism for the outer coil and studs with the adhesive on the outside as suggested by Sarchi in the method of Christan in view of Brocher and Williamson because Sarchi teaches such mechanism allows build in means of adjustment for isochronism for balance spring made of micromachinable material such as silicon (paragraphs 0023 and 0007), which is desired by Christan (paragraph 0046).
Regarding claim 3, Christan’s dispenser is reasonable expected to be unidirectional as the liquid adhesive is dropped in the groove of the stud (see figures 2A and 2B, paragraph 0043). Williamson teaches a curable liquid adhesive (abstract) and discloses it is well known to dispense liquid adhesive by nozzle atomizer, which is conventionally unidirectional (paragraph 0068).
Regarding claim 4, Christan teaches the conductive adhesive layer is continuous (a continuous electroconductive layer) (see figures 2A and 2B).
Regarding claim 5, Christan teaches the adhesive is intended to bond the outer coil to the stud (abstract, paragraph 0011), but the weight (associated with the amount) from the adhesive deforms the outer coil slightly which induces undesired mechanical stress of the balance spring (paragraph 0014). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount and the dimension (the length, which also changes the amount) of the first conductive layer (conductive adhesive layer) in the process to avoid deforming the outer coil while provide sufficient adhesiveness to bond the outer coil to the stud. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 6, Christan teaches the adhesive is intended to bond the outer coil to the stud (abstract, paragraph 0011), but the weight (associated with the amount) from the adhesive deforms the outer coil slightly which induces undesired mechanical stress of the balance spring (paragraph 0014). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount and the dimension (the length, which also changes the amount) of the first conductive layer (conductive adhesive layer) in the process to avoid deforming the outer coil while provide sufficient adhesiveness to bond the outer coil to the stud. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 7, Christan teaches the adhesive is intended to bond the outer coil to the stud (abstract, paragraph 0011), but the weight (associated with the amount) from the adhesive deforms the outer coil slightly which induces undesired mechanical stress of the balance spring (paragraph 0014). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount and the dimension (the length, which also changes the amount) of the first conductive layer (conductive adhesive layer) in the process to avoid deforming the outer coil while provide sufficient adhesiveness to bond the outer coil to the stud. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 12, It is noted that instant specification does not include the term “bond”, but it discloses the outer coil is attached to the stud without providing any specific detail of such attachment; thus, without the definition of “bond”, any type of connection/attachment would be considered to read on the claim limitation. Christan teaches the outer coil is placed inside of the stud before the deposition of the adhesive (paragraphs 0043-0044, see figures 2A and 2B), thus Christan’s outer coil is considered to be bonded to the stud before the deposition. Nevertheless, Sarchi teaches a method of making a timepiece balance spring made of micromachinable material with plurality of stages (paragraph 0002). Sarchi teaches the outer coil has an attachment means that is attached to the studs before adhesive bonding (paragraphs 0058, 0050). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the same attachment mechanism for the outer coil and studs as suggested by Sarchi in the method of Christan in view of Brocher and Williamson because Sarchi teaches such mechanism allows build in means of adjustment for isochronism for balance spring made of micromachinable material such as silicon (paragraphs 0023 and 0007), which is desired by Christan (paragraph 0046).
Response to Arguments
Applicant's arguments filed on July 29, 2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
“at least one dimension” feature is removed from claim 1 to overcome 35 USC 112(b) indefinite rejections.
In response to Applicant’s arguments, please consider the following comments:
As discusses on the Appeal Decision of July 9, 2025, and the 112 rejections above, the limitations of claims 5-7 are indefinite because the claim language does not require any particular aspect of the electroconductive layer to represent the percentage of the length of the horological spring. The claim specifically recites the length of the horological spring but does not correspondingly limit the scope of the electroconductive layer, the scope of the claim is therefore ambiguous to what aspect of one object (the electroconductive layer) represents a percentage of the length of another object (the horological spring).
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717