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 .
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/24/2025.
Applicant’s election of the band link (claims 1-12) in the reply filed on 12/24/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Information Disclosure Statement
The information disclosure statements filed 6/9/2023, 10/15/2024, 2/6/2025, fail to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Examiner notes that most foreign references are not provided with an English copy, an English abstract, or any other means to show why the foreign references are relevant.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “coupling direction” and “a stacking direction” of claim 4, the “width direction” of claim 8, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2-3, applicant claims the second material “has a higher hardness” than the first material in claim 2. Applicant discloses the use of Vickers hardness test, but does not disclose the measurements of either the first or second material claimed. In claim 3, applicant improperly claims a trademark material name, and disclosing “chromium and molybdenum are mixed in cobalt” in [0033]. Applicant does not disclose hardness of COBARION® in the specification. Applicant also compares the hardness of pure titanium to COBARION ®, without disclosing the measurements for either material. Examiner has found the Vickers hardness of titanium to be 60, while cobalt is 253. For this reason, examiner believes applicant’s claim is plausible, however, it is not clearly disclosed or described in the specification.
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.
Claim 3 contains the trademark/trade name “COBARION”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe “COBARION” and, accordingly, the identification/description is indefinite.
Regarding claim 4, applicant claims “coupling direction crossing a stacking direction”. Examiner assumes the “stacking direction” is the vertical direction in figure 3. However, “rotatable in a coupling direction crossing a stacking direction” is unclear, and is not shown in any figure. Examiner contends that watch links pivot in two different directions around an axis of the coupling members 45 disclosed. The disclosure is not clear as to the “coupling direction”. Based on claim 7, examiner assumes that the “coupling direction” is the vertical direction in figure 2.
Regarding claim 5, applicant claims an inner side surface “that is opposed to a wearing object at the time of wearing”. The record is not clear as to what this means. Examiner notes that applicant is not claiming a full watch, examiner assumes that the inner side surface “is configured to be adjacent to a user”. Examiner similarly assumes that the outer side surface is opposite the inner side surface in claim 6.
Regarding claim 7, applicant previously claims one hole in claim 1. In claim 7, applicant claims the same hole is in two different locations. Examiner assumes that claim 1 is intended to read “at least one” hole, and claim 7 requires the use of a first and second hole.
Regarding claim 8, applicant claims “width direction” without assistance of including this direction in the drawings. Examiner assumes “width direction” is the horizontal direction in figure 2.
Regarding claim 9, applicant claims the hole portions “are arranged in juxtaposition in the width direction”. Examiner notes that the holes of the second projections 44b are parallel to the width direction, as assumed in claim 8.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over 7191586 Yamamoto in view of 2003/0008168 Shibuya.
Regarding claim 1, Yamamoto discloses a band link 2 comprising: formed of a first metallic material (stainless steel column 3 line 16) and with a hole portion 23 in which a coupling member 3 is disposed. Yamamoto does not disclose the material has a second layer.
Shibuya discloses a watch band 25 (figure 10) formed of a base layer 2 formed of a first metallic material (stainless steel [0143]) and a cover layer 26 formed of a second metallic material that is different from the first metallic material (“iron based amorphous alloy” [0146]), the cover layer 26 being stacked on one side of the base layer (figure 10), the base layer and the cover layer being formed of one piece.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the film material as taught by Shibuya on a stainless steel watch band, on the stainless steel watch band of Yamamoto, for purposes of “excellent corrosion resistance…and high mechanical strength” (Shibuya [0010]). The film could also be used as a “highly mirror polished surface” (also [0010]). Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07.
Regarding claim 2, Yamamoto as modified discloses the band link of Claim 1, wherein the second metallic material (layer 26 of Shibuya is amorphous alloy) has a higher hardness than the first metallic material (stainless steel is “soft” [0002] Shibuya).
Regarding claim 3, Yamamoto as modified discloses the band link of Claim 1, wherein the first metallic material is Ti (soft material can be a titanium alloy, [0016] Shibuya), and the second metallic material is COBARION (film containing cobalt [0028] Shibuya “55-95 atomic % cobalt”, please see 112b above).
Regarding claim 4, Yamamoto as modified discloses a watch band comprising: a plurality of the band links of Claim 1; and a plurality of coupling members 3 configured to couple the band links such that the band links are rotatable in a coupling direction crossing a stacking direction in which the base layer and the cover layer are stacked (please see 112b, Yamamoto links in figure 2 are connected in the same manner as applicant’s figure 2).
Regarding claim 5, Yamamoto as modified discloses the watch band of Claim 4, wherein the base layer (stainless steel) forms an inner-side surface that is opposed to a wearing object at a time of wearing (as best understood, the Shibuya film/layer 26 is only on the top surface).
Regarding claim 6, Yamamoto as modified discloses the watch band of Claim 4, wherein the cover layer (film 26 of Shibuya) forms an outer-side surface facing toward an outside at a time of wearing (as shown in figure 10).
Regarding claim 7, Yamamoto as modified discloses the watch band of Claim 6, wherein each of the band links (2 of Yamamoto) includes, at an end portion on one side in the coupling direction, a first projection portion 21 which projects toward the one side in the coupling direction and in which the hole portion 23 is formed, and includes, at an end portion on the other side in the coupling direction, a second projection portion 11 which projects toward the other side in the coupling direction and in which the hole portion 23 is formed. Please see 112b above; examiner assumes applicant means to claim two holes, in the locations as shown in Yamamoto figure 2.
Regarding claim 8, Yamamoto as modified discloses the watch band of Claim 7, wherein the hole portion 23 is formed along a width direction crossing the coupling direction and the stacking direction (please see 112b above, holes are in the same orientation as applicant’s figure 2).
Regarding claim 9, Yamamoto as modified discloses the watch band of Claim 8, wherein the second projection portion 22 of one of a pair of the band links that neighbor each other is arranged in juxtaposition in the width direction (examiner assumes applicant claims two second projections 22; Yamamoto figure 2 shows two projections 22) with the first projection portion of the other neighboring band link (first projection 21 is inserted between two second projections 22), and the hole portions 23 formed in the base layers of the pair of the band links are arranged in juxtaposition in the width direction (so that the pin 32 can be inserted, shown in figure 2).
Regarding claim 10, Yamamoto as modified discloses the watch band of Claim 9, wherein the band links 2 are rotatably coupled by the coupling member 3 being disposed in the first projection portion and the second projection portion that are juxtaposed in the width direction (figures 7-12).
Regarding claim 11, Yamamoto as modified discloses a watch (figure 1) comprising: the watch band of Claim 6; a watch case 100a to which the watch band is attached; and a module (clock face) disposed in an accommodation portion in the watch case.
Regarding claim 12, Yamamoto as modified discloses a watch (figure 1) comprising: the watch band of Claim 10; a watch case 100a to which the watch band is attached; and a module (clock face) disposed in an accommodation portion in the watch case.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/Primary Examiner, Art Unit 3677