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.
Double Patenting
Due to the same applicant and inventorship, and further due to similarities in the subject matter between the instant application and the co-pending applications 18/426,573 (published as US 20240302794), 18/427,050 (published as US 20240302796), and 18/430,012 (published as US 20240302795), an analysis regarding provisional non-statutory double patenting was conducted by the examiner. The examiner found no non-statutory double patenting between the instant and co-pending applications.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Fig. 3-5b, element 35 – this appears to the examiner to be the solid body of the “toothed wheel” (element 34). This element is not referenced in the specification or claims. However, the reading of “toothed wheel” would include such a solid body under the principles of broadest reasonable interpretation (BRI). Thus, the element label (35) may be removed from the illustrations without affecting the scope of the claimed invention, and further would not require changes to the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Examiner’s Note
The claim set presented contains reference elements for the drawings. These are in proper format for inclusion in the claim set as presented and no changes are needed. However, for the sake of readability and brevity these reference elements will be omitted by the examiner when quoting the claims, except where the examiner deems it necessary for clarity.
Claim Objections
Claims 14 and 15 objected to because of the following informalities:
Claim 14 recites “... in accordance with claim 1”, this should read “... according to claim 1” or “... of claim 1”
Claim 15 recites “... in accordance with claim 14”, this should read “... according to claim 14” or “... of claim 14”
Appropriate correction is required.
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:
(A) 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;
(B) 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
(C) 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.
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.
35 USC § 112(f) invoked due to presence of “means”
Regarding claims 1, 5, and 6, claim 1 recites (pg. 1, ln 17-18) “resilient stressing means configured to exert a resilient restoring action on the lever”, the phrase “means configured to exert” invokes § 112(f) as insufficient structure, material and/or acts are disclosed by which this function is performed. The “resilient stressing means” limitation is further used in claims 5 and 6.
Support for the above limitation is found within the specification in para. [0025] which recites “The resilient stressing means take the form of a strip-spring 70, 73.” This limitation is further supported by the illustrations, specifically the resilient stressing means are best shown in fig. 4 (element 70) and fig 5b (element 73).
Thus, the term “resilient stressing means” will be interpreted to mean “strip spring(s)”.
35 USC § 112(f) not invoked despite the presence of “means”
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation recites sufficient structure, materials, or acts to entirely perform the recited function.
Regarding claim 1, which recites “means for modifying the active length of the balance spring”. Claim 1 provides sufficient structural detail and materials by which the action is performed. Thus, despite the presence of the phrase “means for modifying”, this limitation is not being interpreted under 35 USC § 112(f).
Because this claim limitation is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Regarding claim 1, which recites the limitation “for an oscillator of the sprung balance type”. This limitation renders the claim indefinite, as the scope of a “sprung balance type” oscillator is unclear. Further, while the applicant acts as his or her own lexicographer to specifically define a term, the specification does not adequately redefine the term “sprung balance type”. Modern design in the field oscillators for timepieces has expanded to include those oscillators consisting of remote center of compliance (RCC) flexures which provide the restoring force for an oscillating inertial mass, thereby acting as springs for the balance. Thus, RCC sprung balances do not comprise a spiral spring as disclosed in the instant application, though they are “sprung balances”.
Further regarding claim 1, the claim recites the limitation "the sprung balance type" at pg. 1, ln. 2-3. There is insufficient antecedent basis for this limitation in the claim.
The above rejections under 35 USC § 112(b) may be overcome by rephrasing the limitation “for an oscillator of the sprung balance type” to read “for a balance-spring oscillator” which is a well defined term in the art and would further overcome the lack of antecedent basis rejection. Alternatively, the limitation may be rephrased to read “...a balance spring (5), for an oscillator (4) with balance spring...”, which would also overcome the rejections for both indefiniteness and lack of antecedent basis.
For the purposes of compact prosecution the claims will be examined as if claim 1 has been rephrased to read (in part) “for an oscillator (4) with balance spring”. Thus, the preamble for claim 1, as being examined, reads “A device for autonomously adjusting the active length of a balance spring (5), for an oscillator (4) with balance spring, ...”
Claims 2-15 depend from claim 1 and are likewise rejected under 35 USC § 112(b).
Allowable Subject Matter
Independent claim 1 and dependent claims 2-15 have been rejected under 35 USC § 112(b) for indefiniteness and lack of antecedent basis. Likewise, claims 14 and 15 have been objected to for informalities, and the drawings objected to for a reference element not in the specification. 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.
The following is a statement of reasons for the indication of potentially allowable subject matter:
The closest prior art neither anticipate nor makes obvious a means for autonomously adjusting the active length of a spiral balance spring to compensate for the effects of gravity wherein a lever having two extensions in the form of beaks acts upon the spiral spring to vary active length of the balance spring under the action of a freely rotating inertial mass.
The closest prior art includes:
Bravo (US 20190187618, hereinafter Bravo) which teaches “A device (para. [0025], “device”; fig. 2 element 6) for autonomously adjusting the active length of a balance spring (5) (para. [0024], “balance spring; fig. 1, element 5), for an oscillator (4) with balance spring, comprising a cock (para. [0024], “a cock”; fig. 1, element 12) mounted on a plate of a horological movement (abstract) and in which cock a staff of the balance pivots (para. 0024, “Staff 7 of balance 4 is pivotally mounted in cock 12”; see fig. 1), the balance spring including an inner end integral with the staff of the balance (para. [0024], “balance spring 5 is attached to a staff 7 of balance 4 by its inner end”; fig. 1) and an outer end integral with a first stud fastened to a stud-holder (para. [0024, “The outer end of balance spring 5 is attached in a conventional manner to a stud 8 fixed to a stud holder 10”; fig. 1), the stud-holder being pivotally mounted on the cock concentrically with the staff of the balance (para. [0024], “pivotally mounted on stud holder 10 concentrically to staff 7 of 2 balance 4”; fig. 2), and means for modifying the active length of the balance spring (para. [0024], “Means for changing the active length of balance spring”; fig. 2, element 18); wherein the means for modifying the active length of the balance spring comprise: a lever (para. [0024, “a pivot arm”; fig. 2, element 16) capable of pivoting on the stud-holder between a rest position (para. [0028], “a rest position”) ... resilient stressing means (para. [0028], “elastic stress means”; fig. 1, element 20) configured to exert a resilient restoring action on the lever (para. [0028], “Elastic stress means 20 are configured to exert an elastic, return-to-position action on regulator 14”); an inertia block rotatable about a shaft (para. [0028], “inertia block”; fig. 2, element 22; and para. [0031] “an arbor”; fig. 2, element 38) on which a cam is mounted (para. [0031], “Cam 24 is mounted on inertia block 22 concentrically to arbor 38 and is integral with arbor 38”) the inertia block being arranged to rotate freely about the shaft as a function of gravity (para. [0029], “the rotation of inertia block 22, which is itself subject to gravity”), the rotation of the inertia block rotating the cam and pivoting the lever (para. [0031], “a cam 24 driving pivot arm 16”) ...”.
However, Bravo fails to teach “... pivoting on the stud-holder between a rest position and two correction positions of the device”, that the lever consists of a free end “... and a second end having two beaks; ...”, or “... that one of the beaks acts on the balance spring and simultaneously modifies the active length of the balance spring; and damping means comprising a toothed wheel coaxial with the inertia block and mounted on the inertia block, and a damping device arranged to cooperate with the inertia block via the toothed wheel and to limit the change in the active length of the balance spring in the event of sudden acceleration or deceleration.”
No art was found which, alone or in combination, anticipates or makes obvious the distinguishing features discussed above.
Therefore, the examiner finds independent claim 1 and dependent claims 2-15 potentially allowable over the prior art based upon the rationale presented above, and pending the resolution of the claim rejections and claim and drawing objections detailed above.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Di Domenico – US 20170227930 – Timepiece Resonator Mechanism – Discloses a flexural pivot oscillator for use in timepieces.
Stas – CH 705605 – Device For Adjusting The Active Length Of A Hairspring – Discloses and alternate method of adjusting the active length of a balance spring using movable studs.
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.
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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.
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/MICHAEL JAMES WALKER/Examiner, Art Unit 2844
/REGIS J BETSCH/SPE, Art Unit 2844