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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure is objected to because:
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied.
The amended abstract as presented in marked up form has 196 words. Removal of the reference characters enclosed in parentheses reduces this to 157 words.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4, ln. 2 – reads “wherein ratio of”, should read “wherein the ratio”
This informality appears to be a minor typo introduced during the process of modifying the claim set to conform with US practice. Appropriate correction is required.
Claim Interpretation
Claims 1 and 16 use the term displacement to describe the motions of the arms connecting the hairspring relative to the “fastening elements” therefor. Displacement is a vector quantity that describes the net change in an object’s position from start point to end point, and includes the direction of the movement. There is no direction component claimed by the independent claim.
Claim 2 states “wherein the first amplitude and the second amplitude are measured perpendicular to: a first plane in which the spring blade extends, and/or a second plane in which the connecting member extends”, however claim 2 pends directly from claim 1 and no other claims reference claim 2, directly or indirectly. Thus, the limitation of the displacement being relative to the two planes claimed by claim 2 does not apply to claims 1 or 16, nor to any combination of the independent claim and the subsequent claims which comprise a limitation including a direction of displacement.
Therefore, only the combination of independent claim 1 and dependent claim 2 fully defines the displacement vector. All other combinations may be read with the directional component of the displacement vector occurring in any direction (axially, radially, rotationally, etc.).
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.
Claim 1 and 3-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a hairspring and connecting member which restricts the magnitude of displacement between a first arm and a second arm of the connecting member in the axial direction of the connecting member, does not reasonably provide enablement for said connecting member to restrict motion in all directions. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Regarding claim 1, the claim recites “... the hairspring being configured and/or arranged so that a first displacement of a first amplitude of the first fastening element relative to the second fastening element does not cause any displacement of the second arm, or causes a second displacement of a second amplitude of the second arm, relative to the second fastening element, the second amplitude being less than 0.15 times the first amplitude”. The specification of the instant application is directed to a combined hairspring and connecting member consisting of two arms in which (pg. 4, ln. 15-24) “The hairspring 1 is configured and/or arranged so that a first displacement (axial, parallel to the axis A1 or perpendicular to the plane P1 or the plane P2) of a first amplitude of the first fastening element 13a relative to the second fastening element 13b does not cause any displacement of the second arm 122, particularly of the first joining zone 122a, or causes a second displacement of a second amplitude of the second arm 122, particularly of the first joining zone 122a, relative to the second fastening element 13b, the second amplitude being less than 0.15 times or 0.1 times or 0.05 times the first amplitude”.
However, claim 1 of the instant application uses the term displacement with no directional component included. Thus, the displacement may take place an any direction according to claim 1. Based upon close reading of the specification and illustrations, it appears that this is not consistent with the applicant’s intent. Further, it is clear from the description and illustrations of the claimed invention that without a limitation of the direction of displacement, the device would not operate in the manner claimed. For instance, a planar displacement (i.e. – directional in the planes P1, P2, and/or P (specification pg. 5, ln. 1-3)) would not have the claimed effect. The second arm (122) would move with a magnitude approximately consistent with the planar displacement of the first arm (121).
Claim 2, which contains the necessary direction of displacement limitation, only applies to the combination of claim 1 and 2. However, as none of the subsequent claims include the limitations of claim 2 as currently presented, said claims are not thereby limited. Thus, dependent claims 3-20, which pend directly or indirectly from claim 1, do not remedy this lack of directionality of the displacement, and are likewise rejected under 35USC § 112(a) for scope of enablement.
These rejections may be easily overcome by amending claim 1 to include the limitations of claim 2, thereby properly limiting the scope of the claim set.
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Regarding claim 6, which recites the broad recitation “a metal alloy”, and the claim also recites “in particular an Nb-Zr alloy” which is the narrower statement of the range/limitation.
Regarding claim 13, which recites the broad recitation “the second joining zone for joining the first arm to the second arm is held”, and the claim also recites “in particular held interposed or clamped” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim (independent claim 1), but would be potentially allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Independent claim 1 and dependent claims 3-20 have been rejected under 35 USC § 112(a) for scope of enablement. Likewise, claims 6 and 13 have been rejected under 35 USC § 112(b) for indefiniteness. Claim 4 was objected to for informalities.
However, as best understood by the examiner, the underlying subject matter of independent claim 1 and the subsequent dependent claims is not taught in the prior art and contains subject matter which would be potentially allowable if amended to overcome the claim objections and the rejections set forth in this action.
Specifically, the incorporation of the claim limitations of claim 2 into the wording of claim 1 would suffice to overcome the rejections under 35 USC § 112(a) for scope of enablement. Likewise, amendments to claims 6 and 13 are necessary to overcome the finding of indefiniteness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bertrand – US 9811054 – System for Securing a Balance Spring – Discloses a device for the simplified positioning and adjustment of a balance spring.
Arakawa – CH 700408 – Supporting Structure For A Coil Spring, Equipped With The Support Structure Equipped Balance Structure, And With The Balance Structure Mechanical Watch – Discloses a support for a balance spring which minimizes the deviation from the plane of the spiral spring.
Boulenguiez – US 8672535 – Spiral-spring Balance Wheel Regulating Member – Discloses various configurations of spiral springs with arm-like extensions for attachment of the balance spring to a timepiece frame member.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL JAMES WALKER/Examiner, Art Unit 2844
/REGIS J BETSCH/SPE, Art Unit 2844