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 .
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).
These following provisional nonstatutory double patenting rejections.
Claims 1-2, 4, and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/315,523 in view of Guy (CH 704687).
Regarding claims 1-2 and 10, co-pending claim 10 includes all the limitations of claim 1-2 and 10 except for the resilient element being arranged between the first stud and the coiled strip. Guy teaches (Fig. 3) a resilient element (10) arranged between a first stud (12) and a coiled strip (20). 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 ‘523’s resilient element to be between the first stud and coiled strip. One of ordinary skill in the art would have been motivated to make this modification as a known arrangement of elements that predictably allow for the automatic adjustment of a balance spring’s length in response to temperature to maintain isochronism ([0004] of Guy’s translation).
Regarding claim 4, copending claim 10 includes all of the limitations of claim 4 except for the system comprising a regulator that cooperates with a first part as it is unscrewed/screwed. Guy teaches (Fig. 3) an index-assembly system comprising a regulator (10) which cooperates with the first part (P) so as to move it as it is screwed/unscrewed ([0024] teaches screwing the regulator to the first part). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the regulator of Guy with the system of ‘523. One of ordinary skill in the art would have been motivated to make this combination to precisely and simply adjust the oscillation rate of a balance.
Regarding claim 7, copending claim 10 includes all the limitations of claim 7 except for a second part being unmovable relative to a plate. Guy teaches a second part (12) being unmoving relative to a plate ([0047] in the translation: “means of fixing…to the plate”). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have fixed the second part to be unmovable relative to a plate, as suggested by Guy. One of ordinary skill in the art would have been motivated to make this modification to create a functional component that precisely and simply adjusts a balance’s oscillation rate.
Regarding claim 8, copending claim 10 includes all the limitations of claim 8 except for a first part being capable of moving in rotation relative to a second part. Guy teaches (Fig. 3) a first part (P) is capable of moving in rotation relative to the second part (12). The second part is fixed ([0047]), so the first part can rotate around the second part through the spring 10. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made the first part capable of moving in rotation relative to the second part. One of ordinary skill in the art would have been motivated to make this modification to create a functional component that adjusts for gravitational effects and disturbances to a balance’s isochronism.
Regarding claim 9, copending claim 10 includes all the limitations of claim 9 except for a first part being capable of moving in rotation. Guy teaches (Fig. 3) a first part (P) is capable of moving in rotation (via spring 10). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made the first part capable of moving in rotation. One of ordinary skill in the art would have been motivated to make this modification to create a functional component that adjusts for gravitational effects and disturbances to a balance’s isochronism.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/328,362 in view of Guy because co-pending claim 5 includes all the limitations of claim 3 except for the resilient element being arranged between the first stud and the coiled strip. Guy teaches (Fig. 3) a resilient element (10) arranged between a first stud (12) and a coiled strip (20). 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 ‘523’s resilient element to be between the first stud and coiled strip. One of ordinary skill in the art would have been motivated to make this modification as a known arrangement of elements that predictably allow for the automatic adjustment of a balance spring’s length in response to temperature to maintain isochronism ([0004] of Guy’s translation).
Claims 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/315,523 in view of Guy, and further in view of Bravo (US 2019/0187618).
Regarding claim 5, copending claim 10 in view of Guy recites includes all the limitations of claim 5 except for an arm arranged on a first part and a cam cooperating with the arm, such that actuation of the cam moves the first part relative to a second part. Bravo teaches (Fig. 2) an arm (16) arranged on a first part (21) and a cam (24) cooperating with the arm, such that actuation of the cam moves the first part (21) relative to a second part (10). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the arm and cam of Bravo with the invention of ‘523. One of ordinary skill in the art would have been motivated to make this combination to precisely and simply adjust the oscillation rate of a balance.
Regarding claim 6, copending claim 10 in view of Guy includes all the limitations of claim 6 except for a return device exerting a force between a first part and a second part to hold an arm against a cam. Bravo teaches (Fig. 2) a return device (30) exerting a force between a first part (21) and a second part (34 and [0028]) to hold an arm (16) of the first part against a cam (24). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the return device of Bravo with the invention of ‘523. One of ordinary skill in the art would have been motivated to make this combination to precisely and simply adjust the oscillation rate of a balance.
Claims 11-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/315,523 in view of Guy, and further in view of Kahrobaiyan (US 2022/0171336).
Regarding claim 11, copending claim 10 in view of Guy includes all of the limitations of claim 11 except for a lever connected to the flexible element. Kahrobaiyan teaches (Fig. 29) a lever (124) with a free end (125) connected to a flexible element (51-52). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the lever of Kahrobaiyan with the invention of ‘523 so that the first stud is integral with the lever’s free end (attached components are integral, and the first stud is attached to the adjustment device). One of ordinary skill in the art would have been motivated to make this combination to effectively and precisely adjust the oscillation rate of a balance.
Regarding claim 12, copending claim 10 in view of Guy includes all of the limitations of claim 12 except for the flexible element joined to a fixed support. Kahrobaiyan teaches (Fig. 29) a flexible element (51-52) joined to a fixed support (117). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the fixed support of Kahrobaiyan with the invention of ‘523 so that the second stud is integral with the fixed support (attached components are integral, and the second stud is attached to the adjustment device). One of ordinary skill in the art would have been motivated to make this combination to effectively and precisely adjust the oscillation rate of a balance.
Regarding claim 13, copending claim 10 in view of Guy includes all of the limitations of claim 13 except for a semi-rigid structure arranged in parallel with a fixed support. Kahrobaiyan teaches (Fig. 29) a semi-rigid structure (127) arranged in parallel with a fixed support (117). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the semi-rigid structure and fixed support of Kahrobaiyan with the invention of ‘523. One of ordinary skill in the art would have been motivated to make this combination to effectively and precisely adjust the oscillation rate of a balance.
Regarding claim 14, copending claim 10 in view of Guy includes all of the limitations of claim 14 except for a horological movement comprising the regulating member. Kahrobaiyan teaches a horological movement comprising a regulating member ([0038]). 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 ‘523’s regulating member in a movement. One of ordinary skill in the art would have been motivated to create this application to create a functional timepiece.
Regarding claim 15, copending claim 10 in view of Guy includes all of the limitations of claim 15 except for a timepiece comprising a movement comprising the regulating member. Kahrobaiyan teaches a timepiece comprising a horological movement comprising a regulating member ([0011] and [0038]). 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 ‘523’s regulating member in a movement in a timepiece. One of ordinary skill in the art would have been motivated to create this application to create a functional timepiece.
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 1-2, 8-9, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Guy (CH 704687).
Regarding claim 1, Guy discloses (Fig. 3) a regulating member ([0001] of the translation) for a horological movement comprising an inertial mass ([0002] in the translation: “balance wheel”), a balance spring ([0002]), and an index-assembly system ([0002]: “movable stud holder”)) for adjusting the rate of the balance spring, the balance spring comprising a coiled strip ([0002]: “spiral spring”) and an adjustment device for adjusting the stiffness of the balance spring, which are provided with a resilient element (10, [0045]) arranged in series with the coiled strip, the index-assembly system comprising a stud-holder (P, 10, 12) mechanically joined to the resilient element, the stud-holder including a first point (12) and a second stud (P and [0038]), wherein the resilient element is arranged between the first point and the second stud and also between the first point and the coiled strip (Fig. 3), the first point being capable of moving relative to the second stud (Fig. 3 and [0045]), the movement of the first point changing the stiffness of the balance spring ([0045]).
Guy discloses the first point 12 being a means of connection ([0041]) for fixing the stud-holder ([0047]).
Guy does not show the first point being a second stud.
Studs are a known means of connection for fixing a structure.
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 a stud for fixing the first point of Guy. One of ordinary skill in the art would have been motivated to make this choice to achieve the predictable result of fixing the stud-holder ([0047] of Guy).
Regarding claim 2, Guy discloses (Fig. 3) the regulating member according to claim 1, wherein the stud-holder comprises a first part provided with the first stud (12), and a second part provided with the second stud (P), the first part being capable of moving relative to the second part in order to move the first stud (the spring 10 renders 12 movable with respect to P).
Regarding claim 8, Guy discloses (Fig. 3) the regulating member according to claim 1, wherein the first part (12) is capable of moving in rotation relative to the second part (P). The second part is not fixed ([0021]) while the first part is ([0047]), so relative to the second part P, the first part can move in rotation through the resilient element 10.
Regarding claim 9, Guy discloses the regulating member according to claim 1, wherein the first stud is capable of moving in rotation. Studs are also capable of rotating by definition due to their threading.
Regarding claims 14-15, Guy discloses a timepiece comprising a horological movement comprising the regulating member according to claim 1 ([0017]).
Allowable Subject Matter
Claims 4-7 and 10-13 appear to contain limitations that overcome the prior art: regarding claim 3, the prior art does not show or suggest a superimposed first part and second part, in combination with the other limitations.
Regarding claim 4, the prior art does not show or suggest a regulator that cooperates with the first part to move the first part as the regulator is screwed/unscrewed, in combination with the other limitations.
Regarding claim 5, the prior art does not show or suggest the index-assembly comprising an arm arranged on the first part and a cam cooperating with the arm such that an actuation of the cam moves the first part relative to the second part.
Regarding claim 7, the prior art does not show or suggest the second part being unmoving relative to a plate of the horological movement.
Regarding claim 10, the prior art does not show or suggest a prestressing device for applying a variable force or torque to the resilient element, the prestressing device being arranged between the first stud and the second stud, the movement of the first stud relative to the second stud actuating the prestressing device.
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 16, the prior art does not show or suggest a first stud and second stud arranged symmetrically relative to a staff of a balance, in combination with the other limitations.
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.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2833