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 .
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 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Koike (US 2019/0094804) in view of Uesugi (US 2012/0237149) and Spat (US 2,999,000).
Regarding claim 1, Koike discloses a timepiece mechanism comprising at least two coaxial tubes and an outer tube configured to receive said at least two coaxial tubes (Fig. 4 and [0049]), the two tubes and the outer tube being spaced apart from each other on a first side and on a second side, so that a first side gap and a second side gape are located between each of the two tubes and outer tube. Fig. 4 shows a first side gap separating the left sides of 411, 421, and 741, and a second side gap separating the right sides of 411, 421, and 741.
Koike does not show each of the at least two coaxial tubes including a lateral opening on a first side of the tubes and on a second side of the tubes opposite the first side, wherein the lateral openings of each of the at least two coaxial tubes on the first side are radially aligned with each other in a first radial direction and the lateral openings of each of the at least two coaxial tubes on the second side are radially aligned with each other in a second radial direction, wherein the first and second radial directions are opposite directions from each other, and wherein the lateral openings of the two coaxial tubes on the first side are spaced apart on the first side.
Uesugi teaches (Fig. 2) a mechanism comprising: at least two coaxial tubes (11, 31), wherein each of the at least two coaxial tubes includes a lateral opening (16, 45) on a first side of the tubes in a first radial direction, the lateral opening of each of the at least two coaxial tubes being radially aligned with each other (Fig. 2).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the lateral openings of Uesugi with each of Koike’s at least two coaxial tubes on a first side of the tubes such that the lateral openings of the at least two coaxial tubes are spaced from each other on the first side. One of ordinary skill in the art would have been motivated to make this combination to create an entry hole for lubricating the timepiece and preventing wear.
The combination of Koike and Uesugi does not show each of the at least two coaxial tubes including a lateral opening on a second side of the tubes opposite the first side, wherein the lateral openings of each of the at least two coaxial tubes on the second side are radially aligned with each other in a second radial direction opposite from the first radial direction and the lateral openings of each of the at least two coaxial tubes on the second side are spaced apart from each other.
Spat teaches (Fig. 2) lateral openings (23-24) on a second side (right side of Fig. 2) of a tube (17) opposite a first side, wherein the lateral openings on the second side are aligned in a second radial direction opposite from a first radial direction to which lateral openings on the first side are aligned (see image below).
PNG
media_image1.png
231
518
media_image1.png
Greyscale
Also, one of ordinary skill in the art would recognize that including radially aligned lateral openings on a second side of Koike’s tubes opposite the first side simply involves duplicating the radially aligned lateral openings on the first side of the tubes.
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 the at least two coaxial tubes of Koike in view of Uesugi to include lateral openings on a second side of the tubes opposite the first side, as suggested by Spat, wherein the lateral openings on the second side are radially aligned with each other in a second radial direction opposite from the first radial direction and spaced apart from each other. One of ordinary skill in the art would have been motivated to make this modification because an opposite opening would ensure oil is distributed to the far side of the first side the tubes (see also column 2, lines 53-55 of Spat). Additionally, the courts have held that the mere duplication of the essential working parts of a device involves only routine skill in the art. See St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 and MPEP 2144.04.
The combination of Koike, Uesugi, and Spat Koike does not show the outer tube comprising a lateral opening on a first side of the outer tube and on a second side of the outer tube opposite the first side of the outer tube, wherein the lateral opening on each of the first and second sides of the outer tube are radially aligned with and spaced apart from respective lateral openings on the first side and second side of the at least two coaxial tubes.
One of ordinary skill in the art would recognize that the claimed outer tube’s lateral holes and arrangement with respect to the two coaxial tubes simply involves duplicating the two coaxial tubes’ lateral holes and arrangement with respect to each other. One of ordinary skill in the art would also recognize that Koike’s hour, minute, and second tubes all need lubrication, not just two of the tubes.
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 added to Koike’s outer tube a lateral opening on a first side and on a second side opposite the first side, wherein the lateral opening on each of the first and second sides of the outer tube are radially aligned with and spaced apart from respective lateral openings of the first and second side of the at least two coaxial tubes. One of ordinary skill in the art would have been motivated to make addition to provide access to the inner tubes so that the hour, minute, and second hands/shafts may be lubricated and operate smoothly without wear. See also paragraph [0006] of Koike.
Regarding claim 4, Koike in view of Uesugi and Spat teaches a method according to claim 1, the method comprising: assembling said coaxial tubes and outer tube (Fig. 4 of Koike) and radially aligning said lateral openings on each of the coaxial tubes and the outer tube (Fig. 2 of Uesugi and explained in claim 1’s rejection).
Koike does not teach a lubrication method for coaxial tubes comprising injecting a lubricant into said lateral openings.
Uesugi teaches a lubrication method for coaxial tubes comprising injecting a lubricant into lateral openings ([0023] and [0027]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have lubricated the timepiece mechanism of Koike in view of Uesugi and Spat according to the lubrication method of Uesugi. One of ordinary skill in the art would have been motivated to use this method to prevent wearing out the timepiece.
Regarding claim 5, Koike teaches (Fig. 4) the lubrication method according to claim 4, wherein the assembly step includes at least one step of inserting said at least two coaxial tubes (411, 421) in an outer tube (741).
Response to Arguments
Applicant's arguments filed 2026-02-18 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In this case, Applicant states that Koike does not teach lateral openings, but Uesugi does. Applicant also states that Uesugi does not teach radially aligned lateral openings on a first side and second side, but Spat does. Applicant argues that Spat does not teach lateral openings of a first side spaced apart from each other and lateral openings of a second side spaced apart from each other, but Koike teaches left sides of multiple tubes spaced apart from each other and right sides of multiple tubes spaced apart from each other, so that the limitation is obvious over Koike in view of Uesugi and Spat.
Applicant argues that there is no gap in Spat, but there is a gap in Koike; Spat only teaches the radial alignment and other limitations stated in the rejection.
Applicant argues that there is no motivation to modify Uesugi’s assembly, and that “it is not clear” how a modification could be achieved without interfering with the anti-rotation pin, pin hole, bearing member, and bearing house. Regardless of whether or not such a modification could be exactly bodily incorporated, the rejection does not modify Uesugi’s assembly; the rejection modifies Koike’s timepiece by combining only Uesugi’s lateral openings with Koike’s timepiece.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant argues that one of ordinary skill in the art would not have had any motivation to provide openings in Koike’s two coaxial tubes and outer tube on both the first side and second side. The rejection sets forth that such a modification would ensure oil is distributed all around the tubes for full lubrication., and that mere duplication of the essential working parts of a device involves only routine skill in the art that would be obvious for one of ordinary skill in the art to provide. See St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 and MPEP 2144.04.
Conclusion
THIS ACTION IS MADE FINAL. 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 Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F from 10-6 PM PT.
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