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
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.
The requirement is still deemed proper and is therefore made FINAL.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-2, 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 lacks antecedent basis for “the group” in line 3. The limitation has been read as -a group-.
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 1-2, 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). See also [0017] disclosing the “setting surface 54.”
Merdanovic does not show the at least one part being made of entirely of a material selected from a group consisting of an alumina ceramic, a zirconia ceramic, and cermet, wherein the material has a hardness greater than or equal to 600 HV, the at least one part has a thickness at least equal to 400 microns, , wherein the at least one functional flank is substantially perpendicular so as to have an angle in a range from 89 to 91 degrees inclusive with respect to the main surface of the component, wherein 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 made of a glass ceramic ([0001]) 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 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 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 Abouaf, column 3, lines 45-50) and facilitates sliding over the cam.
Merdanovic does not show that the at least one functional flank is substantially perpendicular so as to have an angle in a range from 89 to 91 degrees inclusive with respect to the main surface of the component.
Gluche teaches (Fig. 1) a functional flank of a component being substantially perpendicular and having an angle in a range from 89 to 91 degrees inclusive with respect to a main surface of the component ([0033], lines 409-410).
One of ordinary skill in the art would also recognize that if a flank against which an arm slides is not perpendicular, the arm will slide off the flank as the arm moves across the flank.
Accordingly, 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 Merdanovic’s functional flank to have an angle ranging from 89 to 91 degrees inclusive with respect to the main surface, as suggested by Gluche. One of ordinary skill in the art would have been motivated to specify this angle so that the cam can properly function and guide elements that bear/slide against it.
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 of Abouaf).
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 of Abouaf).
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 2026-05-21 have been fully considered but they are not persuasive.
In response to applicant's argument that Gluche is nonanalogous art because it focuses on beveling side surfaces to form planar chamfreins, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Gluche discloses a gear with a 90 degree functional flank ([0033]). Gears rotate and mesh with other components via their side surfaces. Gears are therefore analogous to cams, which rotate and cooperate with other components via their side surfaces.
Applicant argues that even if a person having ordinary skill in the art would have found a motivation to modify Merdanovic in view of Gluche, such a person would have modified Merdanovic to include all of Gluche’s multiple functional flanks each having a partial-height and transitional chamfers rather than create only one flank with a surface extending from one flat main surface to another. However, a reference containing multiple teachings does not mean that one of ordinary skill in the art is obligated to use all the teachings in a combination or otherwise give up on the combination; the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). As such, one of ordinary skill in the art would have found Gluche’s perpendicular flank useful and been motivated to combine it with Merdanovic’s cam to ensure that elements cooperating with the cam maintain contact with the cam and do not undesirably slide off the cam.
Applicant also argues that Abouaf is concerned with medical prostheses and is therefore not relevant to subject of perpendicular surfaces of functional flanks of horological components. However, as Applicant states, Abouaf is focused on “improving the smoothness of curved surfaces” (page 5 of Remarks). This improved smoothness is for the purpose of reducing friction to lower wear (column 3, lines 45-50). Timepiece components such as cams and gears likewise are worn down through wear. Abouaf’s teaching that lower roughness lowers the wear of ceramic materials can therefore be analogously applied to Merdanovic’s cam to lower its wear and increase its lifespan/durability.
Applicant argues that “none of the cited references discloses a manufacturing method whose capability to achieve such objective could be predicted with a reasonable expectation of success.” The cited references exist—therefore, they must have had a successful manufacture. Claims 1-2, 4, 6-7 and 18-22 under consideration are product claims, so any specific methods disclosed or not disclosed by Applicant or by the cited references are not considered.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Vovelle (US 3815351) teaches (Fig. 2) a cam with a substantially perpendicular functional flank (column 4, lines 19-23). To be perpendicular is to be 90 degrees, so Vovelle teaches a functional flank with a 90 degree angle.
Applicant's amendment necessitated the new grounds 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.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/renee s luebke/Supervisory Patent Examiner
Art Unit 2831
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