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 Objections
Claim 18 is objected to because of the following informalities: the limitation “arranged at the periphery” in line 3 lacks antecedent basis and should be changed to -arranged at a periphery-.
Claim 35 is objected to because claim 16 already recites a timepiece and movement in lines 1-2.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Rachdi et al. (US 20190018367) in view of Mutrux et al. (DE 102009005690).
Regarding Claim 21, Rachdi discloses an oscillating winding weight [1] of a movement of a timepiece [[0020]], said oscillating winding weight being configured to be mounted such that the oscillating winding weight can rotate on an arbor of the movement [[0021]], said oscillating winding weight comprising:
a main element [4, 10, 2] being a solid disc and conferring an overall shape of the oscillating winding weight [e.g. Figs. 1-2];
a heavy part [2] allowing the oscillating winding weight to oscillate in response to the movement of the timepiece and to a force of gravity [Figs. 1-2]; and
a decorative element [10] attached to the main element [4], wherein
the main element comprises a first material [[0022]: sapphire],
the decorative element is opaque and comprises a second material [[0023]: steel]
the heavy part comprises a third material [[0023]: tungsten alloy], and
the third material has a higher density than the second material [[0023] discloses that the tungsten alloy is a high-density metal in contrast to steel], such that the heavy part is heavier than the decorative element in order to position the decorative element in a predefined position [Figs. 1-2: the heavy part is by definition heavier, and orients the winding weight so that the heavy part is down], the heavy part is integral with the decorative element [Figs. 1-2], and wherein the heavy part comprises a weighting member [10] arranged at a predetermined location on a surface of the decorative element [10] to orient the decorative element in a preferred direction when the winding weight is at rest. As the main element, decorative element, and heavy part are all integral, the heavy part orienting the winding weight such that the heavy part is down due to gravity necessarily orients the decorative element in a predetermined location with respect to the heavy part.
Rachdi does not show the decorative element being a logo or initials entirely inside an outer periphery of the disc.
Mutrux teaches (Fig. 5) a decorative element (engraved “CARL F. BUCHERER”) being a logo or initials entirely inside an outer periphery of circle (the inscription is inside the outer periphery of 9).
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 Mutrux’s decorative element with Rachdi’s decorative element such that the decorative element is logo/initials entirely inside an outer periphery of the disc. One of ordinary skill in the art would have been motivated to make this combination so that a wearer can advertise to other people that the wearer is affluent and sophisticated, and so that a watch company can increase brand recognition and boost the prestige of their company so as to occupy a larger share of the market.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Rachdi in view of Mutrux, and further in view of the Wikipedia article “Tungsten carbide” (NPL attached).
Regarding Claim 23, the combination of references from Claim 16 teaches using a tungsten alloy [Rachdi [0023]], but does not explicitly teach that the weighting member and/or the third material comprises a high-density material with a density greater than 10 g/cm3.
However, a person having ordinary skill in the art would have known that tungsten carbide is a common tungsten alloy with a density of 15.6 g/cm3 [see Wikipedia article “Tungsten carbide”] and has many advantageous properties such as hardness. A person having ordinary skill in the art would have been motivated to use tungsten carbide as the “tungsten alloy” disclosed by Rachdi in order to take advantage of its high density, allowing the majority of the mass to be concentrated near the edge [thus maximizing the torque] while maintaining a smaller size and weight for the user’s comfort.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Rachdi in view of Mutrux, and further in view of Balmer (US Pat. No. 10048650).
Regarding Claim 24, Rachdi does not teach that the additional element is pressed into the main element, overmolded on the main element, or bonded to the main element.
Balmer teaches an additional element that is pressed, overmolded, or bonded to a main element [Col. 4, lines 19-22].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to assemble the components taught by the combination of references from Claim 16 using the methods taught by Balmer with a reasonable expectation of success and predictable results. A person with ordinary skill in the art would have been motivated to create this combination in order to take advantage of known assembly techniques in the art.
Allowable Subject Matter
Claims 16-17, 20, and 25-34 are allowed.
Claims 18 and 35 would be allowed after addressing the objection set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter: regarding claim 16, Rachdi shows (Fig. 7) a heavy part (2) of a winding weight disposed entirely within an outer periphery of a main element (4). However, Rachdi does not show or suggest the heavy part being disposed on a top surface of the main element.
The prior art does not show or suggest a winding weight comprising a main element being a solid disc and a heavy part formed on a top surface of the disc and entirely inside an outer periphery of the disc, in combination with the other limitations.
Response to Applicant’s Remarks
Applicant’s arguments with respect to claim(s) 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The amendment to claim 21 reciting that the heavy part is integral with the decorative element has been rejected under Rachdi.
Conclusion
Applicant's amendment necessitated the new ground(s) 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.
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 9:30-5:30 PT.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
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