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
Applicant's election with traverse of Group I in the reply filed on 3/23/26 is acknowledged. The traversal is on the ground(s) that the resonator mechanism of Group II only comprises the balance of Group I and that the method claims of Group III are relating to the resonator mechanism of Group II.
The restriction requirement between Group I and Group II is withdrawn.
The traverse of the restriction requirement between Group I and Group II is found persuasive. By requiring the balance of Group I in the resonator of Group II the combination of Group II as claimed does require the particulars of the subcombination as claimed for patentability. Groups I and II therefore do not meet the combination/subcombination restriction requirement and the restriction requirement between Groups I and II is accordingly withdrawn
The restriction requirement between Group II and Group III is still deemed proper and is therefore made FINAL.
The traverse of restriction requirement between Group II and Group III is not found persuasive. The resonator mechanism of Group II being related to the process of Group III is not what determines the restriction requirement between a product and process of using. The restriction requirement between a product and process of using the product is met when the product as claimed can be used in a materially different process of using that product. As provided in the requirement for restriction, the product of Group II can be used in a materially different process of using the product than the process of Group III. Accordingly the restriction requirement between Group II and Group III is deemed proper and made final.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
112(f) invoked with presence of “Means”
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The claim limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Such claim limitation(s) is/are:
Claim 10 recites the limitation “return means configured to cause the inertial element (2) to oscillate” (line 5) but does not recite sufficient structure, material, or acts for performing the claimed function.
The corresponding structure described in the specification as performing the claimed function, and equivalents thereof, to which this limitation is being interpreted to require is a flexible pivot including a plurality of substantially longitudinal elastic blades, as described in paragraph [0034] of the specification.
Claim Rejections - 35 USC § 112(a)
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 7 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 Claim 7, it recites the limitation “at least one axial peripheral weight (9) for adjusting the inertia, mounted on two ends (7, 8) of the main arm (6).” Because claim 7 is inclusive to only one axial peripheral weight it must be disclosed that a single axial peripheral weight can be mounted on two ends of the main arm. However the specification and drawings do not disclose the details for an axial peripheral weight which is capable of meeting this claim limitation and being mounted on two ends of the main arm. Without the details for how this is accomplished a person of skilled in the relevant art would not be readily able to fill the gaps and instead would determine that the inventors, at the time the application was filed, did not have possession of the claimed invention.
For purposes of examination claim 7 will be interpreted as “axial peripheral weights for adjusting the inertia of the balance”.
Claim Rejections - 35 USC § 112(b)
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 1-12 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, it recites the limitation “so as to be able to adopt a plurality of positions more or less close to the main arm” in line 5, and it is not clear whether the phrase “more or less” is used (a) to describe how close all of the plurality of positions are to the main arm, or (b) to compare individual positions of the plurality of positions such that one position compared to another is either closer or further from the. However, for either interpretation the claim is rejected for being indefinite. For the first interpretation, the meaning of “more or less” synonymous with “give or take” renders the claim indefinite because it is a relative phrase of which the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the latter interpretation, a position being “more close” to the main arm is not grammatically correct and it is not clearly shown that anything but all of the plurality of positions are being described which defeats this interpretation.
Claims 2-12 depend from claim 1 and are rejected therein.
Regarding Claim 2, it recites the limitation “the lateral flyweight” in lines 1-2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 3, it recites the limitation “the lateral weight” in lines 1-2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 3, it recites the limitation “the main plane” in line 2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 4, it recites the limitation “the first lateral inertia adjuster” in line 3 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 5, it recites the limitation “the lateral weight or weights” in lines 1-2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 6, it recites the limitation “the lateral weight or weights” in lines 1-2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 7, it recites the limitation “at least one axial peripheral weight for adjusting the inertia” in line 2 and there is insufficient antecedent basis for the limitation “the inertia” in the claim because it is not clear if this is the same as the inertia of the balance as recited previously in the claims or the inertia of a different element.
Regarding Claim 9, it recites the limitation “the lateral adjustment weight or weights” in line 2 and there is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 12, it recites the limitation “the main plane of the balance” in line 2 and there is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 6-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Winkler et al. (US 20190324401 A1, hereinafter “Winkler”).
Regarding Claim 1, Winkler discloses a balance (2) for a clockwork resonator mechanism (100), including a main arm (main arm of 2) arranged along a longitudinal axis (Y) [fig. 4], comprising at least a first lateral weight (29) for adjusting the inertia of the balance [0074], the first lateral weight being mounted so as to be able to move on the main arm of the balance so as to be able to adopt a plurality of positions [0074] more or less close to the main arm in order to adjust the inertia of the balance (all weights 29 are more or less close to the main arm) [0074].
Regarding Claim 2, Winkler discloses the balance of claim 1, and further discloses that the first lateral weight is arranged perpendicular to the longitudinal axis of the main arm [fig. 4] in order to be able to modify the frequency of oscillation of the main arm about its longitudinal axis [0063, 0074].
Regarding Claim 3, Winkler discloses the balance of claim 1, and further discloses that the first lateral weight is movable in the main plane of the balance [fig. 4] [0074] (attaches into main plane).
Regarding Claim 4, Winkler discloses the balance of claim 1, and further discloses the balance further comprising a second lateral inertia adjuster (two sets of symmetrical lateral weights) arranged on the main arm symmetrically to the first lateral inertia adjuster with respect to the longitudinal axis of the main arm [fig. 4] (assuming the first lateral inertia adjuster is the first lateral weight).
Regarding Claim 6, Winkler discloses the balance of claim 1, and further discloses that the first lateral weight or lateral weights are off-centre on the main arm of the balance [fig. 4] (see annotated Fig. 4 below for identification of lateral weights).
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Annotated Winkler Fig. 4
Regarding Claim 7, Winkler discloses the balance of claim 1, and further discloses the balance further comprising axial peripheral weights (29) for adjusting the inertia of the balance [0074], mounted on two ends of the main arm [fig. 4] (see annotated Fig. 4 above for identification of axial weights).
Regarding Claim 8, Winkler discloses the balance of claim 1, and further discloses the balance further comprising a hub (279, 289) [fig. 3].
Regarding Claim 9, Winkler discloses the balance of claim 1, and further discloses that the main arm includes an enlarged part where the lateral adjustment weight or weights are disposed [fig. 4, fig. 8] (semicircular part where weights 29 are attached is enlarged compared to the width of the main arm).
Regarding Claim 10, Winkler discloses the balance (2) of claim 1, and further discloses a resonator mechanism (100) comprising a structure (1) and an anchoring block (30) from which is suspended at least one inertial element (2) arranged to oscillate with a first rotational degree of freedom RZ about a pivot axis (Z) [fig. 4] extending in a first direction Z [0030], said inertial element being configured to be subjected to return forces exerted by return means comprising a flexible pivot (200) including a plurality of substantially longitudinal elastic blades (3) [0032], the return means configured to cause the inertial element to oscillate [0027-0028], wherein the inertial element comprises the balance according to claim 1.
Regarding Claim 11, Winkler discloses the resonator of claim 10, and further discloses that the balance is mounted so that the longitudinal axis of the main arm is substantially perpendicular to the first Z direction [fig. 4].
Regarding Claim 12, Winkler discloses the resonator of claim 10, and further discloses that the balance is mounted so that the main plane of the balance is substantially perpendicular to the first Z-direction [fig. 4].
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Winkler as applied to claim 1 above, and further in view of Born et al. (US 20160179058 A1, hereinafter “Born”).
Regarding Claim 5, Winkler discloses the balance of claim 1, but does not explicitly disclose that the first lateral weight or lateral weights are screws.
Born discloses that when a timepiece balance uses additional weights to adjust the inertia and frequency of the balance the adjustment weights may be selected from either adjustment screw or inertia blocks [0071].
The prior art of Winkler contained a balance which only differs from the claimed invention by the substation of the inertia blocks of Winkler with adjustment screws. Born shows that the substituted components were known in the art as simple substitution of one another for achieving the same function. One of ordinary skill in the art could have substituted one known element for another, as demonstrated by adjustment screws and inertia blocks taught as equally valid options for adjustment weight in Born, and the result of the substation would have been entirely predictable as a simple substitution of nearly equivalent parts which perform identical functions.
Citation of Relevant Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Di Domenico et al. (EP 3627242 A1) discloses an oscillator with a resonator, inertial mass recalled by elastic return means and carrying input and output pallets cooperating with teeth an escape wheel each provided with a magnet each pallet comprising a magnetic arrangement.
Winkler (CH 715526 A2) discloses a clock resonator mechanism, comprising a structure carrying, by a flexible suspension, an anchoring block to which is suspended an inertial element oscillating around 'a pivot axis extending in a first direction, according to a first degree of freedom in rotation, under the action of the return forces of a flexible pivot comprising elastic longitudinal blades each fixed to said inertial element and to said anchoring block.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN A JOHNSTON whose telephone number is (571)272-4353. The examiner can normally be reached Monday - Friday 10 a.m. - 7p.m. ET.
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/KEVIN ANDREW JOHNSTON/Examiner, Art Unit 2831
/EDWIN A. LEON/Primary Examiner, Art Unit 2831