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
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gandelhman et al. (USPGPub2020/0048081) in view of Jeanneret et al. (EP3543795).
Regarding claims 1, 4-5, 11-13 and 20, Gandelhman teaches that it is known to form horological components of a given shape via a process wherein the components are formed using a thermal oxidation process carried out in the temperature range claimed [0029] followed by a deoxidation process comprising etching with HF [0029] wherein the process removes surfaces roughness. Gandelhman fails to teach any properties of the invention changed by the processing or repeating the oxidation/deoxidation process. However, the Courts have long held that the prior art need not perform the operations suggested by the current application for the same reasons that the process is done by the prior art. It is not necessary to achieve the same result as the current application. Gandelhman fails to teach repeating the oxidation deoxidation steps multiple times to remove a specific amount of silicon material. However, Jeanneret teaches that it is known to repeat the oxidation/deoxidation process of the prior art multiple times in order to improve the mechanical properties of horological components such as those of Gandelhman (see a few paragraphs before the claims describing Figs. 7-10). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to repeat the steps of Gandelhman as guided by Jeanneret in order to receive the increase in mechanical strength gained by the repetition of said steps as described by Jeanneret.
Regarding claims 2-3 and 16-19, Gandelhman teaches wherein the overall production process comprises DRIE of a silicon wafer [0005-0008].
Regarding claims 6 and 14, the teachings of Gandelhman are as shown above. Gandelhman is silent regarding the thickness of the oxidation formed. However, Gandelhman teaches that the purpose of the oxidation/deoxidation process is to reduce a trench depth (P) of 100-200nm from a depth of 300nm for example wherein P may up to 1000nm. Therefore the general scale of Gandelhman is similar in order of magnitude to the scale of processing recited in the current claims. Further there would not reasonably be motivation to provide thicknesses of oxidation in Gandelhman that would exceed the full depth of P is Gandelhman as those of ordinary skill in the art would recognize that this would completely fill all roughness of Gandelhman and any amount above this would not reasonably further provide additional smoothing. Therefore Gandelhman reasonably implies an upper oxidation thickness of about 1000nm wherein those of ordinary skill in the art would also readily recognize that at least some oxide need be provided in order to remove any roughness according to Gandelhman. Therefore one of ordinary skill in the art would generally recognize Gandelhman as implicitly teachings a range that overlaps the range of the current claims. However, it would also be recognized by those of ordinary skill in the art that the coating thickness of oxidation provide directly affect the thickness by which P may be reduced. Therefore, in the absence of criticality of the specific thickness of oxidation claimed it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the oxidation thickness of Gandelhman in order to control the reduction of roughness possible as stated above. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 7, Gandelhman does not require a final coating silicon oxide as claimed.
Regarding claims 8 and 10, Gandelhman teaches wherein the component may be a spring or wheel, springs being implicitly elastic components [0022].
Regarding claims 9 and 15, the teachings of Gandelhman are as shown above. Gandelhman is silent regarding the specific type of spring formed. However, the examiner is taking Official Notice to inform the applicant that main springs are among the most common types of horological components present in time keeping devices and upon mention of ordinary skill in the art of horological component manufacture would reasonably envisage the mention of a “spring” in Gandelhman to be implicit of a “main spring”. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to form a main spring according to the methods of Gandelhman based the commonality of main springs as horological components known in the art combined with the statements of Gandelhman that horological “springs” may be manufactured according to his methods.
Response to Arguments
The applicant argues that the prior art fails to acknowledge the amount of silicon to be removed prior to the start of the oxidation deoxidation process. However, this appears to be inaccurate. Gandelhman explicitly states that his oxidation-deoxidation process is done in order to reduce a trough depth from 300nm to 100-200nm [0029] wherein said troughs are present prior to the start of the oxidation-deoxidation process. Therefore Gandelhman reasonably pre-determines a thickness of material to be removed.
Further the applicants argues new and unexpected results arising from the use of plural oxidation-deoxidation steps to remove a given depth of material. Gandelhman does not teach repeating the oxidation-deoxidation process. However, the examiner provided a secondary reference showing that it is known to repeat similar oxidation-deoxidation steps on silicon substrates used to manufacture horological components. In this reference, Jeanneret teaches repeating the steps of oxidation and deoxidation as needed but also acknowledges that the repetition of these steps modifies the “stiffness” of the material acted upon. Given that these concepts are understood by Jeanneret, Jeanneret reasonably establishes that modifying the number of times that the process is repeated would reasonably have an effect on the stiffness and mechanical properties of his invention. As such, the supposed unexpected results of the current application may be different than that of Gandelhman but would not be unexpected when compared to Gandelhman in view of Jeanneret. The MPEP clearly states that the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112. In this regard, it is not patentable to disclose a particular broad concept of improvement of breaking stress when an improvement in mechanical properties would be expected based upon the teachings of Jeanneret.
Further the applicant argues that the method of Gandelhman teaches away from the current claims because Gandelhman intentionally keeps a scalloped edge in his invention. However, first it is noted that removal of scalloped edges is not a requirement of the current claims. Secondarily it is noted that in reducing the scalloped edges, the prior art also reduces what the current applicant seemingly views as surface defects, wherein it is noted by the applicant that an intent of their invention is to remove surface defects.
Further the applicant argues that Jeanneret does not teach performing his process in multiple step so as to improve the mechanical properties of horological components. However, the applicant then goes on to say “the oxidation-deoxidation process in Jeanneret is performed once to mechanical properties, and then, if the components are hairsprings, the oxidation deoxidation process can be repeated to adjust the stiffness of the hairsprings”. It is noted that this further modification of Jeanneret is reasonably considered to be an improvement in mechanical properties, stiffness being a known mechanical property. It is unreasonable to assume that the secondary and intentional modification of Jeanneret is arbitrary or not an improvement/refinement. Otherwise it would not be logical for Jeanneret to perform the step.
Further the applicant argues that Jeanneret does not teach wherein a pre-determined amount of silicon is removed but the applicant is effectively arguing that Jeanneret fails to teach all limitations provided in a 103-type rejection based on more than one reference. As stated above, Gandelhman clearly indicates a desired amount to be removed before the start of the procedure.
Further the applicant argues that Jeanneret only teaches repeating the oxidation-deoxidation process on hairsprings. While the examiner acknowledges that the only time repetition is mentioned in great detail is in an example revolving around hairsprings, it is noted that Jeanneret is not primarily drawn to the manufacture of any particular component. Further the paragraph below generally supports the concepts the modifications to the oxidation-deoxidation process are well-understood and useful on components at large, not just hairsprings. One reading the paragraph below would reasonably envisage the repetition of oxidation-deoxidation steps on all components described within Jeanneret, not just hairsprings.
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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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
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