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 .
EXAMINER’S NOTE
The discussions herein contain the use of the trademarked term Bluetooth ™ to conform with the specification as presented. The examiner notes and understands that the claim set under examination has been amended to remove the term from the claims. However, for ease of discussion regarding the disclosure of the instant application, specifically discussion of the specification, the occasional use of the trademarked term has been retained for brevity and for the sake of clarity. Thus, after amendment there will be no further objections generated by the examiner based upon the resulting use of the term in the discussion presented below, as the term does not appear within the claim set.
Response to Arguments
Claims 1-8, 10-11, and 15-18 have been amended, claim 9 has been cancelled, claims 12-14 and 19-20 are in original form. After amendment claims 1-8 and 10-20 are pending in the application.
Applicant’s arguments, see “Claim Objections” (pg. 8), filed 9 September 2025, with respect to the objections to claims 1, 8, and 15 for the use of the trademarked term Bluetooth™ have been fully considered and are persuasive. The objection to claims 1, 8, and 15 for the use of the trademarked term Bluetooth™ has been withdrawn.
Applicant’s arguments, see “CLAIM REJECTIONS UNDER 35 U.S.C. §112”, pg. 12, para. 2, filed 09 September 2025, with respect to the rejection under 35 USC § 112(b) regarding the use of the term “modified barrel” have been fully considered and are persuasive. The rejection under 35 USC § 112(b) regarding the use of the term “modified barrel” has been withdrawn.
Applicant’s arguments, see “CLAIM REJECTIONS UNDER 35 U.S.C. §112”, pg. 12, para. 2, filed 09 September 2025, with respect to the rejection under 35 USC § 112(b) regarding the use of “miniscule” have been fully considered and are persuasive. The rejection under 35 USC § 112(b) regarding the use of “miniscule” has been withdrawn.
Applicant's arguments, see “CITATIONS TO THE SPECIFICATION” (pg. 6-7) and “CLAIM REJECTIONS UNDER 35 U.S.C. §112” (pg. 8-11), filed 09 September 2025 have been fully considered but they are not persuasive.
Reading limitations disclosed in the specification back into the claim language is improper in the course of examining an application. The following is an excerpt of the Manual for Patent Examining Procedures (MPEP) § 2111.01(II):
2111.01 Plain Meaning [R-01.2024]
II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION
"Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) ("Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims."); Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order). See also subsection IV, below. When an element is claimed using language falling under the scope of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, 6th paragraph (often broadly referred to as means- (or step-) plus- function language), the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim, and the claimed element is construed as limited to the corresponding structure, material, or acts described in the specification and equivalents thereof. In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) (see MPEP § 2181- MPEP § 2186).
In Zletz, supra, the examiner and the Board had interpreted claims reading "normally solid polypropylene" and "normally solid polypropylene having a crystalline polypropylene content" as being limited to "normally solid linear high homopolymers of propylene which have a crystalline polypropylene content." The court ruled that limitations, not present in the claims, were improperly imported from the specification. See also In re Marosi, 710 F.2d 799, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) ("'[C]laims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.'" (quoting In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976)). The court looked to the specification to construe "essentially free of alkali metal" as including unavoidable levels of impurities but no more.).
In Sisvel Int’l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1236-37, 2023 USPQ2d 1030 (Fed. Cir. 2023), the court found that construing "connection rejection message" should be given its plain and ordinary meaning, and should not be construed in such a way as to improperly limit the claims to specific disclosed embodiments. The intrinsic evidence provided no basis to limit the claims to the preferred embodiments and a person of ordinary skill in the art would broadly interpret the claim language consistent with the broad statements in the specification.
Applicant’s arguments regarding the rejection of independent claims 1, 8, and 15 for enablement under 35 USC § 112(a) require the improper reading of numerous limitations of the specification into the claims as originally presented and currently amended.
Further, some of applicant’s arguments (see pg. 11, para. 2) rely upon an assembly of processor and other components (see pg. 7, para. 1 and fig. 7 of the specification) which is unclaimed, and therefore not a part of the claim set under examination. The incorporation of the assembly may not be read back into the claim set (as elucidated by the above passage of the MPEP) and the description thereof is not a clarification or definition of any term presented in the claim set.
Additionally, the instant application relies upon the use of the term “A radio frequency identification (RFID) chip” or “RFID chip” as a generic term for a broad class of technology with many variations. There are 3 general types of RFID tags: passive (unpowered, no transmitter, simply an integrated circuit and an antenna with limited functionality, read distance depends upon antenna size); semi-passive (requiring a connected power source, but having no transmitter for communication, relying upon inductive coupling to the reader to transmit information, short- to medium-distance); and, active (requiring a connected power source to function and containing a transmitter, may actively transmit tag information, long-distance). Additionally, RFID tags are further classified by their capabilities into 5 classes, which are listed below:
Class 1: a simple, passive, read-only backscatter tag with one-time, field-programmable non-volatile memory.
Class 2: a passive backscatter tag with up to 65 KB of read-write memory.
Class 3: a semi-passive backscatter tag, with up to 65 KB read-write memory; essentially, a Class 2 tag with a built-in battery to support increased read range.
Class 4: an active tag that uses a built-in battery to run the microchip’s circuitry and to power a transmitter that broadcasts a signal to a reader.
Class 5: an active RFID tag that can communicate with other Class 5 tags and/or other devices.
(for more information regarding the classification and capabilities of RFID tags, please see https://www.rfidjournal.com/expert-views/a-summary-of-rfid-standards/76205/)
RFID technology, itself, does not include Bluetooth™ or GPS capabilities, though RFID tagging devices do exist which incorporate such functionality. Likewise, the functionality claimed wherein the device according to the instant application can “monitor watch movements” (claim 5), “triggers an alarm” (claims 12 and 19), “alarm manifests as a vibration” (claims 13 and 19), requires circuitry (such as an accelerometer, alarm, and vibration inducing mechanism) and operation methods not claimed or described in the specification.
Based upon the above features as claimed in the instant application as best understood by the examiner and based on a thorough reading of the application, the incorporation of Bluetooth™ and GPS features into the invention as claimed would require either: A) a class 4 active RFID tag coupled with the appropriate circuitry to monitor, process, trigger, and manifest alarms, etc.; B) a passive class 2 RFID tag coupled with another, external transmission method, processor, programming, and power source which are neither claimed nor adequately described; or C) the use of already present circuitry in the timepiece with power, Bluetooth™, and GPS functionality. The limitations of the device as claimed are not sufficiently supported by the specification with any level detail which would allow the practice of the invention as claimed.
Additionally, the RFID, GPS, and Bluetooth™ components are all subject to the size constraints to be “dimensioned to reside within a cavern of a watch spring bar” as claimed by independent claims 1, 8, and 15. Variations in the dimensions of watch spring bars exist, and review of publicly available information sources shows that the dimensions of commonly available spring bars generally (though not always) fall within the following ranges and are illustrated below:
Diameter – 1.2mm to 2mm (standard diameters), above 2mm (heavy duty spring bar diameters).
Length – depends upon lug spacing for a specific timepiece, however 20mm, 22mm, and 24mm of overall length (as compressed in use and including the pins) are common sizes.
The central section of a commonly available 22mm spring bar is approximately 16.5mm, not including space for the springs and associated trunnion pins.
[AltContent: textbox (Figure 1 - Dimensions of a 22mm spring bar)]
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Assuming a 2mm diameter and a 22mm length for an example spring bar, as seen above, the components of the device described, including the “RFID chip”, Bluetooth™, GPS transceiver, and power source, and all associated circuitry need to be able to be fitted within a central cylinder with dimensions of approximately 1.5mm x 15mm, potentially much less depending on the thickness of the cylinder walls and any allowances for the bar and springs contained therein. Applicant has disclosed no dimensions, actual or hypothetical, for the components which meet these constraints. Applicant has failed to disclose or claim any means or method by which the aforementioned components and devices could be incorporated within the spring bar of a watch.
The state of the prior art available at the time of the instant application was not such that such limitations regarding the size, placement, power source, or antenna configuration could be implied or considered well known in the art of horology. These factors are critical to practicing the invention as disclosed. Even placed inside the casing and directly incorporated into the circuitry of a digital timepiece or smartwatch, the dimensions for these components and the required clearances for their placement are not trivial, and are major constraints which must be taken into consideration when designing a timepiece with these components fully integrated. Therefore, a description of the invention has not been provided with sufficient detail to allow one having ordinary skill in the art to practice the invention.
Thus, the arguments presented by the applicant, see “CITATIONS TO THE SPECIFICATION” (pg. 6-7) and “CLAIM REJECTIONS UNDER 35 U.S.C. §112” (pg. 8-11), filed 09 September 2025, in response to the initial office action are unpersuasive.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Independent claims 1, 8, and 15 and dependent claims 2-7, 10-14, and 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 1, which discloses “A radio frequency identification (RFID)chip embedded within a watch, configured for security and ownership confirmation purposes, comprising: a RFID chip dimensioned to reside within a cavern of a watch spring bar; a modified spring bar to enable reverberation of frequencies; and a RFID chip, coupled with a short-range wireless communication system and protocol.” The limitations presented in claim 1 fail to disclose sufficient structure, elements or acts to enable one having ordinary skill in the art to practice the claimed invention without undue experimentation. There is no teaching or direction in the specification or claims as to how the claimed complex devices could be realized in the extremely limited space where the chips are to be placed (as discussed above in “Response to Arguments”). The RFID tags and short range wireless communication technology, while claimed, are not given sufficient detail as to their operation, interaction, placement, interconnection, or sizing. There is no teaching in the specification which discloses a power source for the short-range communication system. There is no teaching as to the type, size, or placement of the antennas required to practice the invention as disclosed. There is no means, teaching, or direction as to how the “modified spring bar” generates the frequencies which are to be reverberated, or any detail as the types and ranges of the frequencies which are generated.
Therefore, independent claim 1 fails to comply with the enablement requirement under 35 USC § 112(a). Claims 2-7 are dependent upon claim 1 and fail to remedy the lack of enablement.
Thus, independent claim 1 and dependent claims 2-7 are rejected under 35 USC § 112(a) for enablement.
Regarding claim 5, which discloses “wherein said modified spring bar is said spring bar, cylinder, lug, or spring actuated pins that are modified to monitor watch movements and house said radio frequency identification chip”. The phrase “modified to monitor watch movements” is not sufficiently described as to allow for practicing the claimed invention without undue experimentation. Specifically, no teaching or direction is given for a means by which the claimed device could “monitor watch movements” as no circuitry or processor has been claimed which would allow for such monitoring.
Regarding claim 8, which discloses “A system for watch security and ownership confirmation, the system comprising: a radio frequency identification chip (RFID) embedded within a watch comprising: a RFID chip dimensioned to reside within a cavern of a watch spring bar; a modified spring bar to enable reverberation of frequencies; and a RFID chip, coupled with short-range wireless communication system and protocol arranged in lug localities, embedded within an axial spring-loaded barrel made of crystal.” As with claim 1 above, the means of operation for the short range wireless communication technology and protocol is not sufficiently described as to allow for their operation without undue experimentation. The description of the physical locations of the RFID chips short range wireless communication technology are worded in such a way that it would not be possible to practice the invention as claimed without undue experimentation. Further, there is no teaching or direction in the specification or claims as to how the claimed complex devices could be realized in the extremely limited space where the chips are to be placed (as discussed above in “Response to Arguments”). The short range wireless communication technology and various RFID chips, while claimed, are not given sufficient detail as to their operation, interaction, placement, interconnection, or sizing. There is no teaching in the specification which discloses a power source for the short-range communication system. There is no teaching as to the type, size, or placement of the antennas required to practice the invention as disclosed. There is no means, teaching, or direction as to how the “modified spring bar” generates the frequencies which are to be reverberated, or any detail as the types and ranges of the frequencies which are generated.
Therefore, independent claim 8 fails to comply with the enablement requirement under 35 USC § 112(a). Claims 10-14 are dependent upon claim 1 and fail to remedy the lack of enablement.
Thus, independent claim 8 and dependent claims 10-14 are rejected under 35 USC § 112(a) for enablement.
Regarding claims 10 and 17, which disclose “said short-range wireless communication system and protocol is configured to a said connectivity device is a mobile phone or other connectivity device to gather tracking tag data on a wristwatch”. The phrase “configured to a said connectivity device” is not described in such a way so as to allow one having reasonable skill in the art to practice the claimed invention without undue experimentation. The phrase “configured to a said connectivity device” would require the description and claiming of a means of configuration to a device. It appears to the examiner that the intended term may be “paired” which is a generally well-known term for matching specific electronic devices to each other.
These rejections may be overcome by modifying the claim to read “said short-range wireless communication system and protocol is which is a mobile phone or other connectivity device capable of tracking tag data on a wristwatch”
Regarding claims 11 and 18, which disclose “said RFID chip can report data such as when it was last seen, last disassembled, and its approximate geographic location”. No means, structures, or acts have been disclosed in the specification or claims by which an RFID chip may assess that it has been “seen” or “disassembled”. RFID chips do not by them selves have such capabilities, and no external means have been disclosed which would allow for such operations.
Regarding claim 12, which discloses “wherein said chip triggers an alarm upon an attempt to remove said chip, or an unauthorized disassembly of said watch”. No means, structures, or acts have been disclosed in the specification or claims by which an RFID chip may assess that it has been disassembled in an “unauthorized” manner. RFID chips do not by them selves have such capabilities, and no external means have been disclosed which would allow for such operations.
Regarding claim 13, which discloses “wherein said alarm manifests as a vibration triggered by a lost alert authorized from a wearer of a watch”. No means, structures, or acts have been disclosed in the specification or claims by which the device disclosed has the capability to manifest such vibration, nor collect, process, or react to a “a lost alert authorized from a wearer of a watch” or what form the communication of such a “lost alert” issued to the device would take. RFID chips do not by them selves have such capabilities, and no external means have been disclosed which would allow for such operations.
Regarding claims 14 and 20, which disclose “wherein said alarm notifies local vendors of a lost watch to prevent local vendors from distributing or negotiating a stolen watch”. No means, structures, or acts have been disclosed in the specification or claims by which the device disclosed has the capability to “notify local vendors” or by which such an alarm would “prevent local vendors from distributing or negotiating a stolen watch”. RFID chips do not by them selves have such capabilities, and no external means have been disclosed which would allow for such operations. Additionally, unscrupulous "local vendors" may ignore or remove the means of notification based upon the details of the disclosure as presented.
Regarding claim 15, which discloses “A method for watch security and ownership confirmation, the method comprising: identifying radio frequencies of an identification chip embedded within a watch; stationing a radio frequency identification (RFID) chip dimensioned to reside within a cavernous opening of a watch and spring bar; modifying a spring bar to enable a reverberation of frequencies by way of implementing an axial spring-loaded barrel; receiving an exact location of a watch by way of a RFID chip coupled with short-range wireless communication system and protocol that is arranged in various lug localities; and embedding RFID chips within a watch in said various lug localities, including said axial spring-loaded barrel.” As with claims 1 and 8 above, the means of operation for the short range wireless communication technology and protocol is not sufficiently described as to allow for their operation without undue experimentation. The description of the physical locations of the RFID chips short range wireless communication technology are worded in such a way that it would not be possible to practice the invention as claimed without undue experimentation. Further, there is no teaching or direction in the specification or claims as to how the claimed complex devices could be realized in the extremely limited space where the chips are to be placed (as discussed above in “Response to Arguments”). The short range wireless communication technology and various RFID chips, while claimed, are not given sufficient detail as to their operation, interaction, placement, interconnection, or sizing. There is no teaching in the specification which discloses a power source for the short-range communication system. There is no teaching as to the type, size, or placement of the antennas required to practice the invention as disclosed. There is no means, teaching, or direction as to how the “modified spring bar” generates the frequencies which are to be reverberated, or any detail as the types and ranges of the frequencies which are generated.
Therefore, independent claim 15 fails to comply with the enablement requirement under 35 USC § 112(a). Claims 16-20 are dependent upon claim 1 and fail to remedy the lack of enablement.
Thus, independent claim 15 and dependent claims 16-20 are rejected under 35 USC § 112(a) for enablement.
Regarding claim 19, which discloses “wherein said chip triggers an alarm upon an attempt to remove said chip, or an unauthorized disassembly of said watch, and wherein said alarm manifests as a vibration triggered by a lost alert authorized from a wearer of a watch”. No means, structures, or acts have been disclosed in the specification or claims by which the device disclosed has: the capability to trigger an alarm; an RFID chip may assess that it has been disassembled in an “unauthorized” manner; to manifest such vibration; collect, process, or react to a “a lost alert authorized from a wearer of a watch”; what form the communication such a “lost alert” issued to the device would take; a manner in which the device would have the capability to “notify local vendors”; or by which such an alarm would “prevent local vendors from distributing or negotiating a stolen watch”.
Claims 1-5 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.
Regarding claim 1, which recites “a modified spring bar to enable reverberation of frequencies”. The phrase “reverberation of frequencies” is indefinite as it is not described within the specification in such a way that it is clear what type of frequencies are being reverberated. Though reverberation is typically discussed as being related to audible frequencies and their interactions with their environment (and reflections of the sound waves therein), radio frequencies also reverberate based upon their immediate environment. This reverberation is mentioned on pg. 3 at ln. 25 (“While traditional axial spring-loaded barrels are made of aluminum, modified barrels, particularly utilizing crystal, could enable the reverberation of certain frequencies”), and again on pg. 7, ln. 13 (“a puck-like device that may be attached to the face of a watch, or a device that accommodates an axial loaded barrel that produces the necessary reverberations to alert, signal, and execute desired functions”), however in neither case is it clear what “certain frequencies” are reverberated.
Regarding claim 2, which recites “wherein said chip is stationed inside of a watch lug”. Claim 1, from which this claim depends, discloses two RFID chips. One is “dimensioned to reside within a cavern of a watch spring bar” and the other is “coupled with a short-range wireless communication system and protocol”. Based upon the presentation of claim 1, it is not possible to determine which of these disclosed chips is “said chip”. Thus, claim 2 is rendered indefinite under 35 USC § 112(b).
Regarding claim 3, which recites “wherein said chip is also coupled with a GPS transceiver that is located on an opposing end of a wristwatch”. Claim 1, from which this claim depends, discloses two RFID chips. One is “dimensioned to reside within a cavern of a watch spring bar” and the other is “coupled with a short-range wireless communication system and protocol”. Based upon the presentation of claim 1, it is not possible to determine which of these disclosed chips is “said chip”. Thus, claim 3 is rendered indefinite under 35 USC § 112(b).
Regarding claims 4 and 8, which discloses in claim 4 “wherein said modified spring bar is made of crystal to further enable the reverberation of frequencies”, and in claim 8 “...embedded within an axial spring-loaded barrel made of crystal”. Crystal is a term with numerous definitions. For instance, according to the Merriam-Webster Dictionary crystal is defined as:
crystal - noun - crys·tal ˈkri-stᵊl
quartz that is transparent or nearly so and that is either colorless or only slightly tinged
something resembling crystal in transparency and colorlessness
a body that is formed by the solidification of a chemical element, a compound, or a mixture and has a regularly repeating internal arrangement of its atoms and often external plane faces
a clear colorless glass of superior quality, also: objects or ware of such glass
the glass or transparent plastic cover over a watch or clock dial
a crystalline material used in electronics as a frequency-determining element or for rectification
Based upon the content of the disclosure, no guidance is given regarding the definition in use in the instant application. It appears that the applicant may intend the use of the common definition of “a clear colorless glass of superior quality, also: objects or ware of such glass”, however, in the art of horology, the term “crystal” typically refers to “the glass or transparent plastic cover over a watch or clock dial”. This creates confusion for one attempting to practice the claimed 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.
Regarding claim 5, which recites the limitation "said spring bar" in ln. 2. There is insufficient antecedent basis for this limitation in the claim.
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 MICHAEL J WALKER whose telephone number is (571)270-7599. The examiner can normally be reached from 8:00 AM - 4:00 PM ET Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Regis Betsch can be reached at (571) 270-7101. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JAMES WALKER/Examiner, Art Unit 2844
/REGIS J BETSCH/SPE, Art Unit 2844