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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2025-09-18 has been entered.
Claim Objections
Claim 8 is objected to because of the following informalities: "comprises simultaneous doping and growing" is idiomatically incorrect and should be -comprises simultaneously doping and growing-. Appropriate correction is required.
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 1-4, 12-13, 15-16, 18-20, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Despont (US 20200050150) in view of Fiaccabrino (CH 710308).
Regarding claim 1, Despont discloses a process for manufacturing a timepiece component (title) which is capable of thermally compensating a functional assembly comprising the timepiece component, wherein the process comprises: providing a substrate made of semiconductor material ([0024]) or metal material; carrying out a deposition by growth of a polycrystalline- or monocrystalline-silicon layer onto the substrate ([0068] and [0077]), the timepiece component being formed in one piece ([0001]); and releasing said timepiece component from the substrate ([0072]).
Despont does not show the timepiece component being formed entirely in the polycrystalline- or monocrystalline-silicon layer.
Fiaccabrino teaches (Fig. 1) forming a timepiece component (15) entirely in a crystallized silicon layer (10 and [0033]-[0034] of Applicant’s provided translation).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to formed Despont’s timepiece component entirely in the polycrystalline- or monocrystalline-silicon layer, as suggested by Fiaccabrino, so that the timepiece component is in one piece as a result of the deposition by growth. One of ordinary skill in the art would have been motivated to make this modification to create a resonator with a higher quality factor and lower hysteresis ([0041] of Fiaccabrino).
Regarding claim 2, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the process additionally comprises forming an oxide layer on a surface of the substrate before depositing the silicon layer ([0066]).
Regarding claim 3, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the process comprises etching the silicon layer before releasing the timepiece component ([0067]).
Regarding claim 4, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the process comprises a polishing step before etching the timepiece component. Paragraph [0069] teaches an intermediate polishing step occurring after deposition to create a flat surface.
Regarding claim 12, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the process additionally comprises smoothing the timepiece component or adjusting dimensions of the timepiece component, by a succession of oxidations and oxide dissolutions ([0066] and [0075]).
Regarding claim 13, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the process additionally comprises oxidizing at least one surface of the timepiece component ([0035]).
Regarding claim 15, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the timepiece component released from the substrate is an oscillator hairspring or an arrangement of flexible geometries forming an elastic virtual pivot ([0001]).
Regarding claim 16, Despont discloses a timepiece component ([0001]) for a timepiece which is entirely ([0061]) made of polycrystalline silicon ([0058]), in one piece ([0048]), made by growth of the polycrystalline silicon ([0023]), wherein the polycrystalline silicon is doped over an entire thickness of the polycrystalline silicon ([0015] and [0077]), or wherein the polycrystalline silicon comprises a surface-doped layer ([0034]-[0035]).
Regarding claim 18, Despont discloses the timepiece component for a timepiece as claimed in claim 16.
The combination of Despont and Fiaccabrino does not explicitly show the timepiece component being a hairspring for an oscillator or a component of an arrangement of flexible geometries forming an elastic virtual pivot, or a component of an oscillator with flexible guidance.
Despont teaches using micromechanical timepiece elements as oscillators and regulator components for clockmaking ([0001]). Despont also teaches hairsprings and virtual pivots being manufactured using semiconductor technologies ([0005]-[0007]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the timepiece component of Despont as a hairspring for an oscillator, as suggested by Despont. One of ordinary skill in the art would have been motivated to use the component in this way to be able to mass-produce robust, compact, monolithic timepiece components that would be easier to manufacture and be less likely to break ([0011] and [0060]).
Regarding claim 19, Despont discloses the timepiece component for a timepiece as claimed in claim 16, wherein the timepiece component comprises a layer or portion made of silicon dioxide ([0016]).
Regarding claim 20, Despont discloses a timepiece component as claimed in claim 16.
The combination of Despont and Fiaccabrino does not explicitly show an oscillator for a timepiece comprising the timepiece component and a balance, wherein the timepiece component is a hairspring, and wherein the oscillator is thermally compensated.
Despont teaches using micromechanical timepiece components as oscillators ([0001]) and balances and hairsprings ([0006]) that are thermally compensated ([0015]-[0016]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the timepiece component of Despont as a thermo-compensated hairspring. One of ordinary skill in the art would have been motivated to use the component in this way so as to mass-produce robust, compact, monolithic timepiece components that are easier to manufacture and less likely to break ([0011] and [0060]).
Regarding claim 22, Despont discloses the timepiece component as claimed in claim 16.
The combination of Despont and Fiaccabrino does not explicitly teach a timepiece comprising the component.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used Despont’s timepiece component in a timepiece. One of ordinary skill in the art would have been motivated to use the component in this way to fulfill Despont’s invention’s purpose of being used in a timepiece (title and [0001]).
Regarding claim 23, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the depositing is a depositing of a polycrystalline-silicon layer onto the substrate ([0027]), the timepiece component being formed entirely in the polycrystalline-silicon layer (see claim 1 rejection) and having isotropic elastic properties. Page 8, lines 12-15 of Applicant’s specification disclose that components made of polycrystalline silicon have isotropic elastic properties, so Despont’s timepiece component has isotropic elastic properties.
Regarding claim 24, Despont in view of Fiaccabrino discloses the process for manufacturing a timepiece component as claimed in claim 23, wherein at least a portion of the polycrystalline-silicon layer is grown epitaxially perpendicularly to a surface of the substrate. The polycrystalline-silicon layer is grown on top of the substrate, so the layer is therefore grown perpendicular to the flat substrate surface. See Figs. 1-4 of Despont, which show the growth layer 20 on top of the substrate S, and Fig. 1 of Fiaccabrino, also showing the growth layer 10 being deposited on top of, and therefore perpendicular to the surface of, the substrate 13.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Despont in view of Fiaccabrino as applied to claim 1, and further in view of Semon (US 20190212702).
Regarding claim 5, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1.
The combination of Despont and Fiaccabrino does not show the deposition of the silicon layer continuing until a height of greater than or equal to 80 microns is reached.
Semon teaches growing a layer of composite material that corresponds to a timepiece component ([0073]) having a height greater than 80 microns ([0071]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have continued the deposition of the silicon layer of Despont until the height of the layer is greater than 80 microns, as suggested by Semon. One of ordinary skill in the art would have been motivated to make this construction to create a structure whose dimensions are appropriate for a timepiece so as to create a functional and accurate timepiece component ([0012] of Semon).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Despont in view of Fiaccabrino as applied to claim 1, and further in view of Miyashita (US 20200292991).
Regarding claims 6-7, The combination of Despont and Fiaccabrino discloses the process for manufacturing a timepiece component as claimed in claim 1. The combination of Despont and Fiaccabrino does not show the deposition of the silicon layer includes depositing the silicon by chemical vapor deposition (CVD) or physical vapor deposition (PVD).
Miyashita teaches depositing a silicon layer by PVD ([0146]) or by CVD ([0146]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the silicon layer of Despont by PVD or CVD, as suggested by Miyashita. One of ordinary skill in the art would have been motivated to make this modification as a known, predictable technique for growing a silicon layer.
Claims 8, 10-11, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Despont in view of Fiaccabrino as applied to claim 1, and further in view of Bossart (US 2017/0108831).
Regarding claim 8, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the silicon layer is doped ([0034]).
The combination of Despont and Fiaccabrino does not show the deposition of the silicon layer comprising simultaneously doping and growing a doped-silicon layer.
Bossart teaches the deposition of a silicon layer comprising simultaneous doping and growing ([0040]).
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 process of Despont such that the silicon layer is doped as it is grown, as suggested by Bossart. One of ordinary skill in the art would have been motivated to make this modification as a known technique for doping silicon.
Regarding claim 10, Despont discloses the process for manufacturing a timepiece component as claimed in claim 8, wherein the silicon layer is doped ([0034]).
The combination of Despont and Fiaccabrino does not show the silicon layer being doped with antimony, arsenic, or phosphorus.
Bossart teaches doping silicon with antimony, arsenic, or phosphorus ([0023]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have doped Despont’s silicon layer with antimony, arsenic, or phosphorus, as suggested by Bossart. One of ordinary skill in the art would have been motivated to choose these dopants to obtain a thermo-compensated component resistant to temperature changes ([0023] of Bossart).
Regarding claim 11, Despont discloses the process for manufacturing a timepiece component as claimed in claim 8.
The combination of Despont and Fiaccabrino does not show the process comprising doping all or part of a volume of silicon to have an ion density greater than or equal to 10^18 at/cm^3.
Bossart teaches a timepiece component comprising heavily doped polycrystalline with an ion density greater than or equal to 10^18 at/cm^3 (abstract of Bossart).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polycrystalline silicon of Despont for the polycrystalline silicon of Bossart ‘831. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of permitting thermo-compensation of the component (abstract of Bossart).
Regarding claim 14, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1.
The combination of Despont and Fiaccabrino does not show the substrate being provided in monocrystalline silicon.
Bossart teaches the substrate being provided in monocrystalline silicon ([0043]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the substrate of Despont for the substrate of Bossart. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of providing a known substrate material for growing micromechanical components.
Regarding claim 17, Despont discloses the timepiece component for a timepiece as claimed in claim 16, wherein the timepiece component is thermally compensated ([0015]-[0016]).
The combination of Despont and Fiaccabrino does not show the component comprising heavily doped polycrystalline silicon with an ion density greater than or equal to 10^18 at/cm^3.
Bossart teaches a timepiece component comprising heavily doped polycrystalline with an ion density greater than or equal to 10^18 at/cm^3 (abstract of Bossart).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the polycrystalline silicon of Despont for the polycrystalline silicon of Bossart ‘831. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of permitting thermo-compensation of the component (abstract of Bossart).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Despont in view of Fiaccabrino as applied to claim 1, and further in view of Kohler (US 20170176942).
Regarding claim 9, Despont discloses the process for manufacturing a timepiece component as claimed in claim 1, wherein the silicon layer is doped ([0034]).
The combination of Despont and Fiaccabrino does not show the silicon layer being doped by diffusion or ionic implantation of a dopant.
Kohler teaches doping silicon by diffusion ([0068]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have doped the silicon layer of Despont by diffusion, as suggested by Kohler. One of ordinary skill in the art would have been motivated to use this method because it is a known, predictable solution for doping silicon.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Despont in view of Fiaccabrino as applied to claim 16, and further in view of Huot-Marchand (US 20200096943).
Regarding claim 21, Despont discloses the timepiece component as claimed in claim 16, wherein the component is thermally compensated ([0015]-[0016]).
The combination of Despont and Fiaccabrino does not explicitly show an oscillator for a timepiece comprising the timepiece component, wherein the oscillator is thermally compensated, and the timepiece component having flexible guidance.
Despont teaches micromechanical timepiece elements applied to oscillators and regulator components for clockmaking ([0001]).
Huot-Marchand teaches a micromachinable timepiece component for a resonator having flexible guidance ([0006]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used the timepiece component of Despont as part of an oscillator, as suggested by Despont, wherein the component has flexible guidance, as disclosed by Huot-Marchand. One of ordinary skill in the art would have been motivated to use Despont’s component in this manner to create a robust, compact oscillator that is less likely to break ([0011] and [0060] of Despont) and ensure a consistent oscillation frequency ([0006] of Huot-Marchand).
Response to Arguments
Applicant's arguments filed 2025-09-18 have been fully considered but they are not persuasive.
Applicant argues that Fiaccabrino and Bossart do not disclose depositing a layer on a substrate in the manner taught by Despont or Applicant. However, Fiaccabrino and Bossart are not being used to teach Applicant’s method of deposition; Fiaccabrino evinces that forming a timepiece component entirely out of a polycrystalline or monocrystalline layer would have been known to a person of ordinary skill in the art before the effective filing date of Applicant’s invention. Bossart evinces that growing and doping and monocrystalline silicon layers would have been known to a person of ordinary skill in the art before the effective filing date of Applicant’s invention. A prior art reference in the field of the inventor’s endeavor or reasonably pertinent to the particular problem with which the inventor was concerned, may 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 response to applicant's argument that Despont, Fiaccabrino, and Bossart disclose different processes, 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).
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).
Conclusion
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/renee s luebke/Supervisory Patent Examiner
Art Unit 2833