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 .
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
handling member in claim 1 and disclosed as element 32 and equivalents thereof;
connecting member in claim 2 and disclosed as a plate 23 and equivalents thereof;
gripping member in claim 6 and disclosed as element 25 and equivalents thereof;
angular positioning element adapted to cooperate with the middle in claim 8 and disclosed as element 26 and equivalents thereof;
a member for locking against rotation with respect to the base in claim 10 and disclosed as screws 270 and equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: the recitation of “hen solicited” seems to be in error for “when solicited”. Appropriate correction is required.
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.
Claims 1-10 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.
The recitation of “it” in claims 1 and 10, render the claims indefinite as to what is referring to.
The recitation of “when solicited by a resilient member” in claims 1-2 is unclear. The definition of solicit is ask for or try to obtain from someone. It is unclear how a resilient member would ask for or try to obtain something from someone.
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, 7 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0669888U (JP888) in view of Hauser US 2021/0165371 A1.
Re claim 1, JP888 teaches a press for driving a crystal or a bezel [fig. 1] into a middle 11 of a watch, comprising:
a support 2 to hold the middle 11 in position,
a bracket 14 supporting a tool-holder 7 to which a tool 6 is attached, said tool-holder 7 being movable in translation and cooperating with a handling member 1 so as to slide relative to said bracket 14 along an axis A-A upon actuation of said handling member 1,
wherein the support includes at least two jaws [rollers 12] designed to cooperate with the middle 11 so as to hold it in position.
JP888 does not teach each jaw being movable in a plane P orthogonal to the axis A-A, the jaws being, moreover, designed to bear against an internal surface of the middle and tending to move away from one another when solicited by a resilient member with which the support is equipped, so as to apply clamping forces to said middle.
Hauser teaches jaws 31[fig. 2] being movable in a plane P orthogonal to the axis A-A, the jaws being, moreover, designed to bear against an internal surface of the middle 9 and tending to move away from one another when solicited by a resilient member 39 with which the support is equipped, so as to apply clamping forces to said middle.
Thus, JP888 and Hauser each disclose jaws that cooperate with the middle to hold it in position. A person of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the jaws of Hauser could have been substituted for the jaws of JP888 because both serve the purpose of providing internal clamping force to the middle. Furthermore, a person of ordinary skill in the art would have been able to carry out the substitution. Finally, the substitution achieves the predictable result of clamping the middle for installation of crystal or bezels in a watch.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the jaws of Hauser for the jaws of JP888 according to known methods to yield the predictable result of clamping the middle for installation of crystal or bezels in a watch.
Re claim 7, JP888 further teaches wherein the jaws 12 are evenly distributed around the axis A-A.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0669888U (JP888) in view of Hauser US 2021/0165371 A1 and in further view of Cretenet US 2021/0302915,
Re claims 8-9, JP88 and Hauser teach the invention as discussed above for claim 1 but fail to teach wherein the support comprises an angular positioning element connected to the base and adapted to cooperate with the middle to eliminate any degree of rotational freedom about the axis A-A thereof.
However, Cretenet teaches an angular positioning element 103 adapted to cooperate with the middle to eliminate any degree of rotational freedom about the axis A-A thereof.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the angular positioning element of Cretenet with the system of JP888 in order to yield the predictable result of aligning the middle.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0669888U (JP888) in view of Hauser US 2021/0165371 A1 and Cretenet US 2021/0302915 and in further view of Koide JP S63259489 A,
Re claims 8-9, JP88, Hauser, and Cretenet teach the invention as discussed above for claim 8 but fail to teach wherein at least one of the jaws comprises a graphic representation for guiding the orientation, relative to the middle, of the bezel or crystal to be driven in.
However, Koide teaches a graphic representation for guiding the orientation, relative to the middle, of the bezel or crystal to be driven in Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the graphic representation of Koide in the system of JP888 in order to yield the predictable result of aligning the middle.
Allowable Subject Matter
Claims 2-6, 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not show or fairly render obvious the combination set forth in the claims. In particular, the prior art does not show for claim 2, wherein a support comprises a connecting member (interpreted under 35 USC 112 (f) above) kinematically connected to the jaws so that the connecting member displaces the jaws towards the axis A-A, against the forces exerted by the resilient member. The prior art does not show for claim 10, wherein the support includes comprises an adapter sole adapted to adjust the tension of the resilient member, receiving the second end of the resilient member by way of attachment and being rotatably attached to the base, said sole comprising a member for locking it against rotation with respect to the base.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carlos A. Rivera whose telephone number is (571)270-5697. The examiner can normally be reached 9AM -4PM.
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, Brian Keller can be reached at (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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C. A. R.
Primary Patent Examiner
Art Unit 3723
/C. A. RIVERA/Primary Patent Examiner, Art Unit 3723