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 .
DETAILED ACTION
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-18, 20 and 22-23 of copending Application No. 18/170,009, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the present limitations are anticipated by these claims of the copending application. The mere removal of limitations does not obviate double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 1 recites the limitations "the contact parts" in Line 8; "the contacting parts" in Line 11; "the coating" in Line 11.
Claim 4 recites the limitation ""the axis" in Line 2.
Claim 12 recites the limitation ""the elements" in Line 1.
There is insufficient antecedent basis for these limitations in the claims.
As far as understood by the Examiner, the rejection stands as follows:
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moulin et al. (CH 705906). Regarding Claim 1, Moulin discloses a device for guiding a rotary shaft (120) of a sprung balance, the device comprising: the rotary shaft; a guide bearing (101, 102) for guiding an end or a pivot (122) fastened to one end of the rotary shaft of the sprung balance, the guide bearing comprising a blade (126d) and a support part (126c) for corning into contact with and holding the end or the pivot of the rotary shaft of the sprung balance, wherein an one end part of the rotary shaft or of the pivot, contact parts of the guide bearing being made of a material (126 is made of glass) with a Young's modulus of less than or equal to 100 GPa and/or with a coefficient of friction of materials of contacting parts or of a coating of the contacting parts of less than or equal to 0.15.
Regarding Claim 2, Moulin discloses the support part is a support surface (126d) of any geometric shape adapted to make a single contact point or a contact line with the rotary shaft or the pivot mounted on the rotary shaft..
Regarding Claim 3, Moulin discloses the support part being a support surface (126d).
Regarding Claim 4, Moulin discloses two support parts including contact blades (126d) so as to have three contact blades in order to centre an axis of rotation of the sprung balance..
Regarding Claim 5, Moulin discloses the device including three contact blades (126d), each of said three blades being coil-shaped, and in that a first end of each blade is fastened to a ring coaxial with the rotary shaft, whereas a second end of each blade comes into contact with one end of the rotary shaft of the balance to hold it axially.
Regarding Claim 6, Moulin discloses each of the contact blades being rectilinear in shape, and wherein a first end of each blade is fastened to a ring coaxial (125) with the rotary shaft, whereas a second end of each blade comes into contact with one end of the rotary shaft of the balance to hold it axially.
Regarding Claim 7, Moulin discloses all of the blades being evenly spaced 120° apart from one another around the ring (Fig. 4).
Regarding Claim 8, Moulin discloses at least one blade (126d) or a support part comprising a contact portion (126c) making contact with the shaft or the pivot and formed so as to have only a single point of contact with the shaft or the pivot.
Regarding Claim 9, Moulin discloses each blade comprising a contact portion (126c) making contact with the shaft or the pivot and formed so as to have only a single point of contact in order to reduce friction.
Regarding Claim 10, Moulin discloses a contact part (122) of the shaft, the contact blade and the support part being made of the same ceramic, glass or filled or non-filled polymer material.
Regarding Claim 11, Moulin discloses a contact part (122) of the shaft, the contact blade and the support part of the guide bearing being made of two different ceramic, glass or filled or non-filled polymer materials.
Regarding Claim 12, Moulin discloses the elements of the guide bearing being made in one piece (Fig. 3).
Regarding Claim 13, Moulin discloses the coefficient of friction of the materials of the contacting parts or of the coating of the contacting parts is less than or equal to 0.1, or at least an end part of the shaft or of the pivot or at least the contact parts of the guide bearing being made of a material (126 is made of glass) with a Young's modulus of less than or equal to 100 GPa.
Regarding Claim 14, Moulin discloses a horological movement (Fig. 3) equipped with the device.
Regarding Claim 15, Moulin discloses a timepiece (Fig. 3) provided with a movement (Fig. 3) equipped with the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses timepieces, similar to Applicant’s claimed invention, having balances, rotary shafts and solid bodies to reduce gravity effects.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN A LEON whose telephone number is (571)272-2008. The examiner can normally be reached M-F 10am-6pm.
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, Renee S Luebke can be reached on 5712722009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWIN A. LEON/Primary Examiner, Art Unit 2833
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