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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2025-09-16 has been entered.
Election/Restrictions
The restriction is maintained because although method claims 8-17 recite the limitations of claim 1, the subject matter of claim 1 is known in the prior art. Therefore, claims 1 and 8-17 do not share a special technical feature and lack unity of invention. Applicant states that “whether the product of claim 1 may be obtained by different methods or from different sources, or whether it may be used in different ways for different purposes, are irrelevant to the ‘unity of invention’ inquiry.” Examiner agrees.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-4, 6-7, and 18-22 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 1 recites “the ceramic” in line 4. This limitation has ambiguous antecedent basis because it may refer to the alumina ceramic or the zirconia ceramic. For the purpose of examination, it has interpreted as referring to the alumina ceramic.
Claim Rejections - 35 USC § 103
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 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, 6-7 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Merdanovic (US 20150301503) in view of Semon (US 20080095968), Verdon (US 20150092524), Gluche (EP2727880), and Abouaf (US 5,871,547).
Regarding claims 1-2 and 21, Merdanovic discloses (Fig. 1) a horological component which is a cam (30), comprising: at least one part having a substantially flat shape having two flat main surfaces opposite one another (top and bottom surfaces of 30), and at least one functional flank (54) having a functional surface extending from one of the two flat main surfaces to the other of the two flat main surfaces (Fig. 1) and substantially perpendicular (Fig. 1) to the two flat main surfaces of the at least one part.
Merdanovic does not show the at least one part being made of entirely of an alumina ceramic, or of a zirconia ceramic or of cermet, wherein the ceramic or cermet has a hardness greater than or equal to 600 HV, the at least one part has a thickness at least equal to 400 microns, and the at least one functional flank has a roughness at most equal to 50 nm.
Semon teaches a cam ([0156]) made entirely of alumina or zirconia ceramic ([0224]). Paragraphs [0149] and [0223] teach machining an entire cam out of ceramic, and [0224] teaches the ceramic being alumina or zirconia ceramic.
Verdon teaches that a ceramic element may have a hardness greater than 600 HV ([0074]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have manufactured the cam of Merdanovic entirely out of alumina or zirconia ceramic, as taught by Semon, wherein the ceramic has a hardness greater than 600 HV, as taught by Verdon. One of ordinary skill in the art would have been motivated to choose this material because ceramic boasts high hardness, is wear resistant, corrosion resistant, and nonmagnetic; these attributes would therefore increase the longevity of a horological timepiece.
Merdanovic does not show the at least one part having a thickness of at least 400 microns.
Gluche teaches that a micromechanical watch component may have a thickness ranging from 60 to 500 microns ([0002] and [0038] in the translation).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have manufactured the at least one part of Merdanovic to have a thickness of at least 400 microns. One of ordinary skill in the art would have been motivated to make this thickness to fit the dimensions of a watch and create a functional component.
Merdanovic does not show the at least one functional flank having a roughness of at most 50 nm.
Gluche teaches a flank (4, Fig. 2b) of a micromechanical watch component having a roughness of less than 20 nanometers ([0037]), which facilitates sliding and reduces breakage ([0007], lines 132-133).
Abouaf (US 5,871,547) teaches an alumina or zirconia part having a surface roughness of at most 20 nm (column 3, lines 18-21).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the roughness of the at least one functional flank of Merdanovic, as suggested by Gluche, to be less than 50 nanometers, as suggested by Abouaf. One of ordinary skill in the art would have been motivated to make this construction because a smoother surface decreases the chance of breakage when structures abut against the surface (Gluche, [0007], lines 132-133) and facilitates sliding over the cam.
Regarding claim 3, Merdanovic in view of Semon, Verdon, Gluche, and Abouaf (MSVGA) discloses the cam-type horological component as claimed in claim 1, wherein the component has a flat main surface and wherein the at least one substantially perpendicular functional flank extends from the flat main surface of the component and has an angle in a range from 89 to 91 degrees inclusive with respect to the flat main surface of the component ([0033], line 409-410 in Gluche).
Regarding claim 4, MSVGA discloses the cam-type horological component as claimed in claim 1, wherein the at least one functional flank has a roughness Ra less than or equal to 40 nm (column 3, lines 18-21).
Regarding claim 5, Merdanovic discloses the cam-type horological component as claimed in claim 1, wherein the component is a cam (30 in Fig. 1).
Regarding claim 6, Merdanovic discloses a horological movement ([0014]) comprising the horological component as claimed in claim 1.
Regarding claim 7, Merdanovic discloses a timepiece (title) comprising the horological movement as claimed in claim 6.
Regarding claim 18, MSVGA discloses the cam-type horological component as claimed in claim 1, wherein the thickness of the at least one part is greater than or equal to 350 microns ([0038] in Gluche).
Regarding claim 19, MSVGA discloses the cam-type horological component as claimed in claim 1, wherein the at least one functional flank has a roughness Ra less than or equal to 30 nm (column 3, lines 18-21).
Regarding claim 20, Merdanovic discloses the cam-type horological component as claimed in claim 1, wherein the component is a heart-shaped cam (30 in Fig. 1), a spiral or notched cam snail, a shuttle or a column-wheel.
Regarding claim 22, MSVGA discloses the horological component as claimed in claim 21. The horological component of the prior art includes all the structural limitations recited in the claims. Claim 22 does not set forth any nonobvious differences that would result from a multi-pass cutting technique. Additionally, the material of MSVGA’s component is capable of being cut by one or more lasers.
Claim 22 is a “product by process” claim. Therefore, these steps have been given little patentable weight since it has been held that 1) the determination of patentability in “product by process” claims is based on the product itself, even though such claims are limited and defined by the process, and 2) the product in a “product by process” claim is unpatentable if it is the same as, or obvious from a product of the prior art, even if the prior art product was made by a different process. In re Thorpe et al., 227 USPQ 964 (Fed. Cir. 1985).
Response to Arguments
Applicant's arguments filed 2025-09-16 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Gluche’s glass-ceramic’s roughness not being applicable to alumina’s or zirconia’s roughness have been considered but are moot because the new reference Abouaf used in claim 1’s rejection teaches the claimed roughness for alumina.
Applicant argues that “Gluche focuses on modifying flanks of a part…a person of ordinary skill in the art…would have found a motivation to modify the perpendicular flank…rather than a motivation to adjusting the roughness.” Applicant cannot definitively state that a person of ordinary skill would not ever be inspired by Gluche’s roughness teaching to adjust the roughness of their own part.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F.
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 on 571-272-2009.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/renee s luebke/Supervisory Patent Examiner
Art Unit 2833