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 1 is objected to because of the following informalities: “for timepiece resonator” in line 1 is idiomatically incorrect and should be -for a timepiece resonator-.
Claim 1 recites “adjusting stiffness of the strip” in line 6. However, claim 1 also recites that the strip has a “predefined stiffness” in lines 4-5. To be predefined is to be set/fixed, which is contrary to being adjustable. The limitation “adjusting stiffness of the strip” is suggested to be -adjusting a stiffness of the balance-spring- as the claimed strip and flexible element together form a balance-spring with variable stiffness. In line 10, “an additional stiffness to the strip” is likewise improper and suggested to be -an additional stiffness to the balance-spring-.
Claim 1 lacks antecedent basis for “the prestressing level” in the final line. The limitation has been read as -a prestressing level-.
Claim 15 recites “a balance-spring according to claim 1” in lines 2-3. Whether this limitation refers to claim 1’s balance-spring or a new balance-spring is unclear. The limitation has been read as -the balance-spring according to claim 1-.
Claim 15 recites a “rotary resonator mechanism,” which appears to be synonymous in meaning with a timepiece resonator mechanism. Applicant should change “rotary” to “timepiece” or clarify any differences in the two limitations.
Appropriate correction is required.
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 1-15 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “inner distal-most end” in claim 1 is used by the claim and appears to mean “innermost end located at the center of the coil” but to be “distal” is to be away from a center by definition. The term is indefinite because it is self-contradictory and the specification does not clearly redefine the term. The terms “outer distal-most end” and “inner distal-most end” are suggested to be changed to “outermost end” and “innermost end” in claims 1, 6, 9-11, and 13.
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.
Claims 1-13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hessler (US 20150234356) in view of Wikipedia (Springs.pdf).
Regarding Claim 1, Hessler discloses a balance-spring [4], particularly for timepiece resonator mechanism [1], the balance-spring comprising: a flexible strip [17] coiled around itself having a plurality of coils and including an outermost end and an innermost end [Figs. 3-5], the strip having a predefined stiffness [[0031]]; and means for adjusting a stiffness of the balance-spring [[0033]], wherein the adjustment means include a single elongated flexible element [18 or 20] arranged in series with an entirety of the strip [Figs. 3-5]. Springs are in series when they are directly connected to each other (see Springs.pdf). Though the flexible element is attached at 19/21 in Figs. 3-5, the flexible element is in series with the segment of the spring going from outer end 6 to 19/21, and also with the segment of the spring going from inner end 8 to 19/21.
Hessler also discloses the elongated flexible element being connected to an outermost section of said strip for connection to a fixed support [attachment points 19/21 in Figs. 3-5], in such a way as to add an additional stiffness to the strip [[0070]], the elongated flexible element having a stiffness greater than that of the strip [[0070]], the adjustment means including prestressing means to apply at least two different stresses on the elongated flexible element [Figs. 3-5: the arrows located at 18A and 22 represent the prestressing means], the first stress being provided by a tensile/compressive force directed substantially in a longitudinal direction FL of the elongated flexible element [See Figs. 3-5: as the prestressing means (arrows) are moved, 18/20 will be compressed or pulled, thus exerting a force longitudinally along 18/20], and the second stress being provided either by a force directed substantially in a direction substantially orthogonal FT to the longitudinal direction of the elongated flexible element [See Figs. 3-5: as the prestressing means (arrows) are moved, 18/20 will be pulled left or right, thus exerting a force orthogonally from 18/20], or by a torque M [See Figs. 3-5: 18/20 will have to bend one way or the other], in such a way as to vary the stiffness of the elongated flexible element depending on a prestressing level [[0033]].
Hessler does not show the flexible element being connected to the outermost end of the strip.
Wikipedia teaches (figure showing k1 and k2 springs in series) a flexible element (k1 spring) being connected to the outermost end of a strip (k2 spring).
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 Hessler’s attachment point so that the flexible element is connected to the outermost end of the strip, as suggested by Wikipedia. One of ordinary skill in the art would have been motivated to make this modification as a known configuration for arranging springs in series to compress and stretch together. Furthermore, the courts have ruled that a change in location is, absent any criticality, considered to be an obvious modification that a person having ordinary skill in the art would have been able to provide using routine experimentation since the courts have held that there is no invention in shifting position if operation of a device would not be modified. See In re Japikse, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04.VI.
Regarding Claim 3, Hessler discloses the balance-spring according to claim 1, wherein the longitudinal flexible element [18 or 20] is a single flexible blade [Figs. 3-5].
Regarding Claim 4, Hessler discloses the balance-spring according to claim 1, wherein the flexible element [20] is arranged in a radial direction of the balance-spring [Fig. 5].
Regarding Claim 5, Hessler discloses the balance-spring according to claim 1, wherein the flexible element [18] is arranged in a direction tangential to the balance-spring [Figs. 3-4].
Regarding Claim 6, Hessler discloses the balance-spring according to claim 1, wherein the prestressing means include a lever [18 or 20] joined to the outermost end of the strip [Figs. 3-5 and [0066]-[0067]].
Regarding Claim 7, Hessler discloses the balance-spring according to claim 6, wherein the lever is flexible [18 and 20 are flexible].
Regarding Claim 8, Hessler discloses the balance-spring according to claim 6, wherein the lever is curved and surrounds at least partially the coiled strip [Figs. 3-4].
Regarding Claim 9, Hessler discloses the balance-spring according to claim 6, wherein the lever comprises a free end [18A or 22] that can be actuated by a movement of said free end in order to apply said stresses on the outermost end [Figs. 3-5 and [0066]-[0067]].
Regarding Claim 10, Hessler discloses the balance-spring according to claim 1, wherein a means for applying a force is provided with a spring [18 or 20] connected to the outermost end of the strip to apply said longitudinal force FL or said orthogonal force FT on the outermost end [Figs. 3-5].
Hessler does not disclose that the prestressing means include two means for applying a force, each means for applying a force being provided with a spring connected to the end to apply said longitudinal force FL or said orthogonal force FT on the end.
However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04(VI)(B) and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In this case, adding a second means for adjustment leads to predictable results with a reasonable expectation of success; namely, the addition of an extra dimension for adjusting the force on the end.
Regarding Claim 11, Hessler discloses the balance-spring according to claim 1, wherein the outermost end of the strip comprises an attachment [2], the prestressing means and the elongated flexible element being joined to the attachment [Figs. 3-5].
Regarding Claim 12, Hessler discloses that the stresses can be continuously adjusted by the prestressing means [Figs. 3-5 and [0066]-[0067]].
Regarding Claim 13, Hessler in view of Wikipedia discloses that the flexible element is arranged at the outermost end of the strip [Figs. 3-5 of Hessler and Wikipedia spring series figure].
Regarding Claim 15, Hessler discloses a rotary resonator mechanism, for a horological movement, including an oscillating mass, wherein the resonator mechanism comprises a balance-spring according to claim 1 [Although not disclosed by name, an oscillating mass is implicit to a rotary resonator mechanism, which is disclosed by Hessler. Further, [0030]-[0031] disclose the Lagrangian for a resonator, including the inertia I which implicitly includes a mass.].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hessler in view of Petrillo (US Pat 1166853).
Regarding Claim 14, Hessler discloses the balance-spring according to claim 1.
Hessler does not disclose that the outermost end of the strip is stiffer than the elongated flexible element and the strip.
Petrillo teaches a spring wherein “the outer end of the auxiliary spring 13 for a limited distance is stiffer than the body of the spring” [p. 1, lines 100-102].
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to make the outer end of the strip to be stiffer than the body of the spring 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 protect the strip from permanent deformation due to pressure from the elongated flexible element.
The above combination of Hessler and Patrillo does not teach that the end of the strip is also stiffer than the elongated flexible element.
However, “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP 2143(I)(A). In this case there are a finite number of possible options; specifically, there are three: either the end of the strip is the same stiffness as the elongated flexible element, or less, or greater. In this case the same rationale applied above can be used to argue for making the stiffness of the strip greater than the elongated flexible element; namely to protect the spring from permanent deformation due to pressure from the elongated flexible element.
Response to Arguments
Applicant’s arguments with respect to claim(s) 2025-05-22 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. In particular, Applicant’s arguments concerning whether Rachdi discloses a flexible element connected in series with “an entirety” of the strip has been rendered moot because the new ground of rejection cites a secondary reference teaching the amended limitation.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stranczl et al. (US 20140286145) discloses (Fig. 1) a flexible element (96) arranged in series with an entire coil spring (Fig. 1), the flexible element being subjected to longitudinal (arrows on 90 connected to and parallel to 96) force and orthogonal (arrows on 95 perpendicular to 96) forces.
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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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.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
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